BENGZON

NEGRE
UNTALAN

INTELLECTUAL PROPERTY RIGHTS

Intellectual Property Attorneys

FERDINAND M. NEGRE 9 June 2018

Outline

 Introduction
 IP and the Constitution
 IP in the International Regime
 IP Rights under the IP Code
 Patents,
Utility Models and Industrial Designs
 Trademarks and Tradenames

 Copyrights

 Special Rules on IPR Cases

 Jurisdiction in IP Cases
 Recent Jurisprudence
First, why IP?
➢ IP may make or unmake you as a bar passer, as a lawyer
➢ IP may make or unmake you as a bar topnotcher
➢ You will know what to do when confronted with an IP case
➢ IP practice is very international
➢ IP practice is very closely related to business, art and technology
➢ We are all consumers here -
➢ IP is closest to everyone’s daily life!
Why IP?
BAR QUESTIONS on IP (2007-2017)
 2007 5% or .75 pt. 1 copyright
 2008 12% or 1.8 pts. 2 copyright
 2009 9% or .1.35 pts. 2 copyright 1 trademark
 2010 15% or 2.25 pts licensing, trademark, patent
 2011/2012 MCQs only
 2013 8% or 1.2 pts 1 copyright
 2014 13% or 1.95 pts 2 trademark, 1 copyright
 2015 13% or 1.95 pts 1 copyright, 1 patent, 2 trademark
 2016 15% or 2.25 pts 3 trademarks
 2017 10% or 1.5 pts 2 copyright, 1 patent
Why IP?
2014 BAR EXAMS
 684 out of 5,984 passed (11.43%) at passing grade of 75%
 1,709 passed in mercantile law (28.65%)
 13% on IP of the total questions in mercantile law
 2,492 or 41.61% garnered a grade between 62 - 74%
 2,067 or 34.51% garnered a grade between 62 - 72%
 13% at 15% weight = 1.95 percentage points in total grade
 205 garnered a grade between 74-74.99
 224 garnered a grade between 73.05 - 73.99
 268 garnered a grade between 72 - 72.99
 287 garnered a grade between 71.05 – 71.99
• 984 total or 16.44%

 Difference between 10th and 11th place: 00.15% percentage points

Why IP?

The next 8 hours can make a big difference!

INTELLECTUAL PROPERTY RIGHTS
Intellectual Property Defined

 the legal rights which result from intellectual activities in the

industrial, scientific, literary and artistic fields
 creations of the mind, such as inventions; literary and artistic
works; designs; and symbols, names and images used in commerce.
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“The State 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
period as may be provided by law.”
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“The State 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
period as may be provided by law.”
 Exclusive Rights

 Limited in time, scope and space

 exceptions and limitations

“Intellectual Property Rights”
 It is property
 Articles 521 and 712, Civil Code of the Philippines
 Creations of the human mind or intellect
 Intangible asset
 Vs. Object/Embodiment
 Intellectual property rights
 Creators of intellectual property = rights
 Rights = assigned or licensed to others
Kinds of IP rights

Trademarks Patents

Trade name Utility Model

Geographic Industrial Design

Indications
Layout design
Copyright
Trade Secret
IP Rights Protected Under the IP Code

 Copyright – Programs in the smart phone

 Patent – Front and Rear Camera
 Trademark – word mark or logo shown on
or appearing in the smart phone
 Industrial Design – Design and Shape of
the phone
 Layout Design of Integrated Circuits –
The circuits or the map that compose the
microchip of the phone
 Geographic Indications
 Trade Secret – ?.
IP Rights Protected Under the IP Code

 Intellectual Property Code, R.A. 8293, January 1, 1998

 Amendments:
 R.A. 9502, the "Universally Accessible Cheaper and Quality Medicines
Act of 2008".
◼ Compulsory Licensing on manufacture of patented medicines
◼ Compulsory licensing of importation of medicines protected by patent or trademark
◼ Non-patentability of second use of known substance unless there is enhanced efficacy

 R.A. 10372 on Copyrights (2013)

◼ Retransmission of broadcast made a right (reversing ABS-CBN vs. Phil. Media [2009])
◼ Providing for vicarious liability including landlord liability
◼ Providing as aggravating circumstances the ff.: (i) circumvention of effective
technological measure and (ii) electronic rights management information
RA 8293, IP Code
Section 2. Declaration of State Policy. - 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.
Article XII, Constitution

SECTION 6. The use of property bears a social function, and all

economic agents shall contribute to the common good. Individuals and
private groups, including corporations, cooperatives, and similar
collective organizations, shall have the right to own, establish, and
operate economic enterprises, subject to the duty of the State to
promote distributive justice and to intervene when the common good
so demands.
Nature of IP Protection

SC:

“…intellectual property protection is merely a means towards the

end of making society benefit from the creation of its men and
women of talent and genius. This is the essence of intellectual property
laws, and it explains why certain products of ingenuity that are concealed
from the public are outside the pale of protection afforded by the law. It
also explains why the author or the creator enjoys no more rights than
are consistent with public welfare.” [ABS-CBN v. Phil. Multi-Media,
G.R. Nos. 175769-70, Jan 19, 2009]
Distinctions
“Trademark, copyright and patents are different intellectual property rights
that cannot be interchanged with one another. A trademark is any visible
sign capable of distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or marked container of
goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the
moment of their creation. Patentable inventions, on the other hand, refer
to any technical solution of a problem in any field of human activity which
is new, involves an inventive step and is industrially applicable.” (Kho vs. CA,
G.R. No. 115758, 2002)
 Distinctions
PATENT COPYRIGHT TRADEMARK
Subject matter Invention: Technical Literary or artistic Any visible sign capable
Solution of a problem work which is an original of distinguishing the
which is new, involves an intellectual creation; goods or services of an
inventive step and is Expression enterprise; Brand
industrially applicable

Office where right Bureau of Patents, Not required; Optional Bureau of Trademarks,
is registered Intellectual Property at The National Library Intellectual Property
Office or IPO Office

Duration of Right 20 years from filing or Generally, 50 years after 10 years, renewable
priority date the death of the author indefinitely
International Regime of IP Rights

 Berne Convention (WIPO)

 Paris Convention (WIPO)
 Internet Treaties (WIPO)
 WIPO Copyright Treaty
 WIPO Performance and Phonograms Treaty

 Patent Cooperation Treaty (WIPO)

 Madrid Protocol (WIPO)
 TRIPs Agreement (WTO)
International Regime of IP Rights

 Berne Convention for the Protection of Literary and Artistic

Works (1886)
 3 Basic Principles
◼ National Treatment
◼ Automatic Protection
◼ Independence of Protection
 Minimum Standards of Protection
International Regime of IP Rights

 Paris Convention on the Protection of Industrial Property (1883)

 including patents, trademarks, industrial designs, utility models, service
marks, trade names, geographical indications and the repression of
unfair competition.
 Basic principles
◼ National Treatment
◼ Right of Priority (date of filing)
◼ Common Rules
International Regime of IP Rights

 WIPO Copyright Treaty (WCT)

 deals with the protection of works and the rights of their authors in
the digital environment.
 Two subject matters to be protected by copyright: (i) computer
programs, whatever the mode or form of their expression;
and (ii) compilations of data or other materials ("databases"), in any
form, which, by reason of the selection or arrangement of their
contents, constitute intellectual creations
 grants: (i) the right of distribution; (ii) the right of rental; and (iii) a
broader right of communication to the public.
International Regime of IP Rights

 The WIPO Performances and Phonograms Treaty (WPPT)

 Rights of two beneficiaries, particularly in the digital
environment: (i) performers (actors, singers, musicians, etc.);
and (ii) producers of phonograms. These rights are addressed in the same
instrument, because most of the rights granted by the Treaty to performers
are rights connected to their fixed, purely aural performances (which are the
subject matter of phonograms).
 The Treaty grants performers economic rights in their performances fixed
in phonograms (not in audiovisual fixations, such as motion
pictures): (i) the right of reproduction; (ii) the right of distribution; (iii) the
right of rental; and (iv) the right of making available.
International Regime of IP Rights

Trade-Related aspects of Intellectual Property Agreement or TRIPs

(WTO)
 Annex C to the General Agreement on Tariffs and Trade or GATT
 Basic principles
 National Treatment
 Most-Favoured-Nation Treatment

 3 Main Sets of Provisions

 Minimum Standards: Berne-Plus and Paris-Plus
 Enforcement: Inaudita Altera Parte; border enforcement

 Dispute Settlement: WTO Procedures

International Regime of IP Rights

Patent Cooperation Treaty or PCT (WIPO)

 A filing system. A PCT application has the effect of automatically

designating all Contracting States bound by the PCT on the international

filing date, as if a national patent application had been filed with the
national patent office of that member State.
 Advantages:

 brings the world within reach;

 provides a strong basis – through ISR - for patenting decisions

 Postpones [by 18 months] the major costs associated with international patent
protection;
International Regime of IP Rights

Madrid Protocol (WIPO)

 The Madrid System for the International Registration of Marks:

◼ filing one application with the International Bureau (through the office of the
home country),
◼ in one language (either English, French or Spanish)
◼ and paying one set of fees.
 Includes maintenance, renewals, amendments and assignments.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
Background:

 In 2012, the Philippines acceded to the Madrid Protocol through

mere ratification by the President.

 The IPAP petitioned the SC to declare the accession as

unconstitutional on the ground that it was in the nature of the
treaty and the accession had not been approved by Congress.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

 Whether or not the IPAP has locus standi to challenge the

President's ratification of the Madrid Protocol

 Whether or not the President's ratification of the Madrid Protocol

is valid and constitutional; and

 Whether or not the Madrid Protocol is in conflict with the IP

Code.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

 On 19 July 2016, the Supreme Court voted 13-0 in denying the petition as
executive agreements do not require the consent of Congress

 “The ruling upheld the ‘exercise of discretion’ of the Secretary of Foreign

Affairs to determine whether an agreement should be considered an
executive agreement or a treaty”

 Moreover, the SC categorically stated that the accession was not in conflict
with the IP Code.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

“I have no doubt that many of the lawyers who practice in the

field of trademark protection in Intellectual Property Law do
not have the myopic goal of simply being administrative
agents or local post offices for owners of foreign marks. I have
full confidence that they can meet the skill and accreditation
requirements to work under the Madrid Protocol as well as
any foreign lawyer…”
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

“…In an era of more transnational transactions and markets

evolving from national boundaries, we should adapt as a
profession, as surely as our products become more
competitive. The sooner our profession adapts, the better it
can assist our entrepreneurs and our own industries to
weather the difficult political economies of the world market.”
BENGZON
NEGRE
THANK YOU
UNTALAN
Intellectual Property Attorneys
FOR YOUR PATIENCE!☺

FERDINAND M. NEGRE