Chapter 9 - Intellectual Property Rights

Early Laws and Issuances on IPR | Significant Developments in IP Law
International IPR Treaties | Government Agencies

In 1992, the Philippine Association of Certified Patent Agents [PACPA] was incorporated thereby recognizing and promoting the patent agent profession in the Philippines.

In the same year, the CD-ROM Version of the bibliographic data of registered Philippine patents was first introduced.

The following year, the Kantor-Navarro Agreement was signed as a result of negotiations between the Philippines and the United States for the purpose of delisting the Philippines from the Priority Watch List of Countries covered by the Super 301 List under the United States Trade Act.

In October of the same year, the Philippine component of the EC-ASEAN Program on Patents and Trademarks was officially launched thereby strengthening the capability of Industrial Property Offices in ASEAN countries to administer their respective patents and trademarks systems and to further facilitate the exchange of patent information among ASEAN members. Under this program, a Patent Documentation Center was established in Cebu in 1994.

In 1994, the patent and trademark search and examination procedures were modernized through the assistance of the European Commission. Made available were 2 CD-ROM workstations and a complete set of ESPACE CD-ROM containing the abstracts, first page and full text of the applications filed from 1988 to 1994 with the European Patent Office.

In 1995, special courts were designated by the Philippine Supreme Court to hear cases involving intellectual property rights.

The Present Intellectual Property Code (RA8293)

RA 8293 is also known as the Intellectual Property code of the Philippines.

The act begins with a state policy declaration:

"The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. "

"The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines."

The code itself is divided into five [5] parts:

PART I - deals with the establishment of the Intellectual Property Office.

PART II - covers the law on Patents.

PART III - deals with Trademarks, Service Marks and Trade Names.

PART IV - covers issues of Copyright.

PART V- deals with the Final Provisions.

The intellectual property rights covered under the Intellectual Property Code are the following:

1. Copyright and related rights;
2. Trademarks and service marks;
3. Geographic indications;
4. Industrial designs
5. Patents;
6. Layout designs [topographies] of integrated circuits; and
7. Protection of undisclosed information

The new law has significant differences from the former law code governing intellectual property.

In the new law a shift was made from the "first-to-invent system" under R. A. 165 [old law] to a "first-to-file system." .In the case of inventions, the period of the grant was increased from 17 years from grant under the old law to 20 years from date of filing under the new law.

In the case of utility models, the previous grant of 5 years plus renewals of 5 years each under the old law was changed to 7 years without renewal under the new law.

In the case of industrial designs, the previous grant of 5 years plus renewals of 5 years each was maintained.

Under the old law, there were no opposition proceedings and the examination was mandatory. Under the new law, the examination is made only upon request (possibly with or without examination).

Under the old law, the penalties for repetition of infringement were: PhP10,000 and/or 5 years of imprisonment and the offense prescribed in 2 years; under the present law, the penalties range from PhP100,000 to PhP300,000 and/or 6 months to 3 years of imprisonment and the offense prescribed in 3 years.

The Trademark Law (RA 8293)

The significant changes in the handling of trademarks under the old law [R. A. No. 166] and the present law are as follows:

Under the former, the element of use before filing a local application was a requirement although this was not required when the application was based on foreign registration; while under the latter, the element of use has been eliminated as a requirement for application.

Under the former, the term granted was 20 years renewable for 20-year periods; while under the latter, the term is for 10 years, renewable for 10-year periods.

Under the former, the affidavit of use or non-use was required on the 5th, 10th and 15th anniversaries; while under the latter, proof of use within 3 years from the filing of the application is required and the affidavit of use should be filed within 1 year from the 5th anniversary.

Under the former, a Supplemental Register was required to be maintained while under the latter it is no longer required.

Under the former law, penalties for infringement, unfair competition, false designation of origin and false description or representation ranged from fine of PhP500 to PhP2,000 and/or 6 months to 3 years and 4 months of imprisonment; while under the latter law, the penalties range from fine of PhP50,000 to PhP200,000 and/or 2 to 5 years of imprisonment.

The Copyright Law (RA 8293)

It is now required that "after the first public dissemination of performance by authority of the copyright owner of certain specified work, there shall, for the purpose of completing the records of the National Library and the Supreme Court library, within three (3) weeks, be registered and deposited with it, by personal delivery or by registered mail, two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe."

The scheme of penalties for infringement has also been changed. From the previous fine of PhP200 to PhP2,000 and/or imprisonment of 1 year, the current range of penalties are as follows:

§ For first offenders - fine of PhP50,000 to PhP150,000 and/or imprisonment of 1 to 3 years

§ For second offenders - a fine of PhP150,000 to PhP500,000 and/or imprisonment of 3 to 6years

§ For third and subsequent offenders - a fine of PhP500,000 to PhP1.5 Million and/or imprisonment of 6 to 9 years.

§ In case of insolvency, the offender shall furthermore suffer subsequent imprisonment.



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