Side-by-Side Comparison
Compiled by: Maligad, Anton
Any technical solution of a problem in any Literary and artistic works, are
field of human activity which is: original intellectual creations in the
literary and artistic domain protected
a.) New; from the moment of their creation and
b.) Involves an Inventive Step; and shall include:
c.) Industrially applicable.
(a) Books, pamphlets, articles
It may be, or may relate to a: and other writings;
(d) Letters;
What cannot be [Section 22; RA 8293 as amended by RA [Section 123.1; RA 8293]—Registrability [Section 175 & 176; RA 8293]—
registered? 10372]—Non-Patentable Inventions Unprotected Subject matter/Works
A mark cannot be registered if it: of the Government
The following shall be excluded from patent
protection: (a) Consists of immoral, deceptive or No protection (copyright) shall be
scandalous matter, or matter which may extended under this law:
(a) Discoveries, scientific theories and disparage or falsely suggest a connection
mathematical methods, and in the with persons, living or dead, institutions, (a) Any idea, procedure, system,
case of drugs and medicines, the beliefs, or national symbols, or bring them method or operation, concept,
mere discovery of a new form or into contempt or disrepute; principle, discovery or mere
new property of a known substance data as such, even if they are
which: (b) Consists of the flag or coat of arms or other expressed, explained,
Doesn’t result in the insignia of the Philippines or any of its illustrated or embodied in
enhancement of the known political subdivisions, or of any foreign work;
efficacy of that substance; nation, or any simulation thereof;
or (b) News of the day and other
The mere discovery of any miscellaneous facts having the
new property or new use of (c) Consists of a name, portrait or signature character of mere items of
a known substance; or identifying a particular living individual press information;
The mere use of a known except by his written consent, or the name,
process unless such known signature, or portrait of a deceased (c) Any official text of a legislative,
process results in a new President of the Philippines, during the life administrative or legal nature,
product that employs at of his widow, if any, except by written as well as any official
least one reactant. consent of the widow; translation thereof.
(b) Schemes, rules and methods of (d) [Registered Mark] Is identical with a (d) No copyright shall subsist in
performing mental acts, playing registered mark belonging to a different any work of the Government of
games or doing business, and proprietor or a mark with an earlier filing the Philippines
programs for computers; or priority date, in respect of:
(i) The same goods or services, or (e) Works that don’t require prior
(c) Methods for treatment of the (ii) Closely related goods or services, or approval for use—
human or animal body by surgery (iii) If it nearly resembles such a mark as
or therapy and diagnostic methods to be likely to deceive or cause confusion; The use of any purpose of
practiced on the human or animal statutes, rules, and
body. This provision shall not apply (e) [Well-Known Brand w/n registered in regulations;
to products and composition for the Philippines] Is identical with, or Speeches, lectures, sermons,
use in any of these methods; confusingly similar to, or constitutes a addresses, dissertations,
translation of a mark which is considered pronounced, read or rendered
(d) Plant varieties or animal breeds or by the competent authority of the in courts of justice, before
Ownership of the [Section 28; RA 8293]—Right to a [Section 122; RA 8293] The one who has acquired [Section 178-179, RA 8293]
Right Patent— The right to a patent belongs to the mark through registration in accordance with Copyright ownership—
the following: the provisions of the law.
(1) In case of original literary
(a) The inventor; and artistic works—author of
(b) The heirs of the inventor; or the work;
(c) The assigns of the inventor.
This is a Derivate Work, unlawful reproduction is a violation of RA 8293. 5
(2) In case of works of joint
When two (2) or more persons have jointly ownership—co-authors shall
made an invention, the right to a patent be the original owners,
shall belong to them jointly. governed by the law on co-
ownership;
[Section 29; RA 8293]—First to File Rule
(3) In case of work created
(1) Two (2) or more person have during employment—
made the invention separately Employee; if the creation is
and independently of each not part of his regular duties;
other—The right of the patent shall
belong to the person who filed an (4) In case of work created
application for such invention; during employment—
Employer; if the creation is
(2) Two (2) or more applications are part of the regular duties of
filed for the same invention—The the employee;
right of the patent shall belong to
the applicant who has the earliest (5) In case of Commissioned
filing date, or the earliest priority work—The work is owned by
date. the person commissioning
such work; however the
[Section 30; RA 8293] copyright is owned and shall
remain with the creator;
(1) In case of commissioned work—
The person who commissions the (6) In case of audiovisual
work; work—The copyright shall
belong to the producer, the
(2) In case of work created during author of the scenario, the
employment—The employer; if the composer of the music, the
invention is the result of the film director, and the author
performance of the duties of the of the work so adapted;
employee;
(7) In respect of letter—the
(3) In case of work created during copyright shall belong to the
employment—The employee; if the writer;
invention is not part of his regular
duties (8) In Anonymous and
Pseudonymous work—the
publishers shall be deemed to
represent the authors of
articles and other writings
In connection to novelty:
[Section 24; RA 8293] Prior Art—The two
(2) classes of prior art are the following:
2.) Accordance of the filing date 2.) Accordance of the filing date [Sections
[Section 31, 40, 41; RA 8293]; 127, 131, 132; RA 8293];
4.) Classification and Search [Section 4.) Opposition and Period of Filing of
43; RA 8293]; Opposition [Sections 134-135; RA 8293];
(d) One or more claims—The (f) Where the applicant claims the priority
application shall contain one or of an earlier application, an indication of:
more claims which shall define the
matter for which protection is i) The name of the State with
sought. Each claim shall be clear whose national office the earlier
and concise, and shall be application was filed or if filed with
supported by the description; an office other than a national
office, the name of that office,
(e) An Abstract—An abstract shall
consist of a summary of the
ii) The date on which the earlier
disclosures of the invention as
application was filed, and
contained in the description, claims
and drawings in preferably not
more than 150 words. The abstract iii) Where available, the application
shall merely serve for technical number of the earlier application;
information.
(g) Where the applicant claims color as a
Note: No patent may be granted unless the distinctive feature of the mark, a statement
application identifies the inventor. to that effect as well as the name or names
If the applicant is not the inventor, the of the color or colors claimed and an
Office may require to submit said authority. indication, in respect of each color, of the
principal parts of the mark which are in
that color;
[Section 38; RA 8293]—Unity of
Invention
(h) Where the mark is a three-dimensional
(1) Application shall relate to:
mark, a statement to that effect;
One invention only; or
To a group of inventions
forming a single general (i) One or more reproductions of the mark,
inventive concept; as prescribed in the Regulations;
(4) Not a ground for Cancellation of 3.) Otherwise, the application shall be refused
Patent— The fact that a patent has or the mark shall be removed from the
been granted on an application that Register by the Director.
did not comply with the
requirement of unity of invention Note: As compared to Patent applications, a
shall not be a ground to cancel the Trademark Application requires a declaration of
patent actual use of the mark applied for or registered.
Previously, it was a requirement of Prior use.
However, upon the amendment under RA 8293 the
requirement is now Actual use.
Foreign/Non- [Section 33; RA 8293] Appointment of [Section 125; RA 8293] Representative; Address No Provision provided under RA 8293
Resident Agent or Representative: for Service
Applicants 1.) Appointment of an Agent—An 1.) Applicant not Domiciled or no
applicant who is not a resident of Commercial Establishment—If the
the Philippines must appoint and applicant is not domiciled or has no real
maintain a resident agent or and effective commercial establishment in
representative in the Philippines; the Philippines, he shall designate by a
written document in the Office, the name
2.) Role of Agent—Upon whom notice and address of a Philippine resident;
or process for judicial or
administrative procedure relating to 2.) Role of Philippine Resident—The
the application for patent or the Philippine resident shall be served notices
Priority Date/Right [Section 31; RA 8293]—Right of Priority [Section 131; RA 8293]—Priority Right No Provision provided under RA 8293
(1) Local Application—An application for
(1) Local Application—An application registration of a mark filed in the
for patent filed by any person; Philippines by a person referred to in
Section 3
(2) Foreign Application—who has Any person who is a national or
previously applied for the same who is domiciled; or
invention in another country which Has a real and effective industrial
by treaty, convention, or law affords establishment in a country;
similar privileges to Filipino The country is a party to any
citizens; convention, treaty or agreement
relating to Intellectual Property
(3) Priority Right—The local rights to which the Philippines is
application shall be considered filed also a party; or
as of the date of the filing of the Extends reciprocal rights to
foreign application. nationals in the Philippines by law
Rights Before and [Section 45; RA 8293] Confidentiality No Provision provided under RA 8293 No Provision provided under RA 8293
After Publication of before publication— A patent application,
the Application which has not yet been published, and all
related documents, shall not be made
available for inspection without the consent
of the applicant.
Actual Knowledge—Actual
knowledge that the
invention that he was using
was the subject matter of a
published application; or
Written notice—Received
written notice that he was
using was the subject
matter of a published
application being identified
in the said notice by its
serial number
2.) That the inventor is not identified (5) Verification—The opposition is verified by
in the application; the oppositor or by any person on his
behalf who knows the facts;
3.) That the invention applied for is
against morals, conduct or law (6) Grounds—The opposition shall specify the
grounds on which it is based and include a
statement of the facts relied upon;
Amendment of [Section 49; RA 8293] Amendment of [Refer to Section 133; RA 8293] No Provision provided under RA 8293
Application during Application:
Substantive
Examination (1) An applicant may amend the patent
application during examination;
9th STEP: [Section 52; RA 8293] Publication Upon [Section 139; RA 8293] Publication of No Provision provided under RA 8293
Publication of Grant of Patent— Registered Marks
Grant (1) Published in the IPO Gazette—
The grant of the patent together (1) Publication of Mark— The Office shall
with other related information shall publish, in the form and within the period
be published in the IPO Gazette fixed by the Regulations, the marks
within the time prescribed by the registered, in the order of their
Regulations; registration, reproducing all the particulars
referred to in Subsection 137.2;
(2) Inspection by interested party—
Any interested party may inspect (2) Inspection of Registered Marks— Marks
the complete description, claims, registered at the Office may be inspected
and drawings of the patent on file free of charge and any person may obtain
with the Office copies thereof at his own expense. This
provision shall also be applicable to
[Section 53; RA 8293] Contents of transactions recorded in respect of any
Patent—That patent shall be: registered mark.
Issued in the name of the Republic
of the Philippines;
Certificate of No Provision provided under RA 8293 [Section 138; RA 8293] Certificate of No Provision provided under RA 8293
Registration Registration— A certificate of registration of a
mark shall be prima facie evidence of the validity of
the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use
the same in connection with the goods or services
and those that are related thereto specified in the
certificate.
Term of Right [Section 54; RA 8293] Term of Patent— [Refer to Section 145; RA 8293]—10 years from [Section 213; RA 8293] Term of
The term of a patent shall be twenty (20) the date of grant Protection
years from the filing date of the application.
(1) Original and Derivative
Not Absolute: The patent shall cease to be Work of an Author/Creator—
in force and effect if any prescribed annual during the lifetime of the
fees therefor is not paid within the author and for fifty (50) years
prescribed time or if the patent is cancelled after his death;
in accordance with the provisions of the
law. (2) Works of Joint Authorship—
During the life of the last
surviving author and for fifty
(50) years after his death;
(3) Anonymous or
Pseudonymous Work—Fifty
(50) years from the date of
publication of such work. If
not published, fifty (50) years
from the date of the making of
such work. Provided, that if
before expiration of the said
period, the author’s identity is
revealed or is no longer in
doubt, the duration for 213.1
and 213. 2 shall apply;
Cancellation of [Section 61; RA 8293] Cancellation of [Section 140; RA 8293] Cancellation upon No Provision provided under RA 8293
Right Patent— Application by Registrant; Amendment or
Disclaimer of Registration—
(a) Who may file—Any interested
person; (1) By Application for Cancellation—Upon
application of the registrant, the Office
(b) Payment of Fee—Upon payment of may permit any registration to be
the required fee; surrendered for cancellation, and
Limitations of [Section 72; RA 8293 as amended by RA No Provision provided under RA 8293 [Section 184; RA 8293 as amended
Rights Conferred 9502] Limitation of Patent Rights—The by RA 10372] Limitation of
owner of a patent has no right to prevent Copyright—The following acts shall
third parties from performing, without his not constitute infringement of
authorization, the acts referred to in copyright:
Section 71 hereof in the following (a) The recitation or performance
circumstances: of a work, once it has been
1.) Using a patented product which lawfully made accessible to
has been put on the market in the the public, if done privately
Philippines by the owner of the and free of charge or if made
product, or with his express strictly for a charitable or
consent, insofar as such use is religious institution or society;
performed after that product has (Sec. 10(1), P.D. No. 49)
been so put on the said market:
Provided, That, with regard to The reproduction or
drugs and medicines, the limitation distribution of published
on patent rights shall apply after a articles or materials in a
drug or medicine has been specialized format exclusively
introduced in the Philippines or for the use of the blind,
anywhere else in the world by the visually- and reading-impaired
patent owner, or by any party persons:
authorized to use the invention:
Provided, further, That the right to Provided, That such copies
import the drugs and medicines and distribution shall be made
contemplated in this section shall on a nonprofit basis and shall
be available to any government indicate the copyright owner
agency or any private third party; and the date of the original
publication
2.) Where the act is done privately and
on a non-commercial scale or for a (b) The making of quotations from
non-commercial purpose: Provided, a published work if they are
That it does not significantly compatible with fair use and
prejudice the economic interests of only to the extent justified for
the owner of the patent; the purpose, including
quotations from newspaper
articles and periodicals in the
3.) Where the act consists of making or form of press summaries:
using exclusively for experimental Provided, That the source and
Infringement of [Section 76; RA 8293 as amended by RA [Sections 155-159; RA 8293 as amended by RA No Provision provided under RA 8293,
Rights 9502] Civil Action for Infringement 9502] Remedies; Infringement—Any person who but relate to the economic rights and
shall, without the consent of the owner of the moral rights of the Author or Creator.
1.) The making, using, offering for sale, registered mark:
selling, or importing a patented (1) Use in commerce any reproduction,
product or a product obtained counterfeit, copy, or colorable imitation of
directly or indirectly from a a registered mark or the same container or
patented process, or the use of a a dominant feature thereof in connection
patented process without the with the sale, offering for sale, distribution,
authorization of the patentee advertising of any goods or services
constitutes patent infringement. including other preparatory steps
necessary to carry out the sale of any
The making, using, offering for sale, goods or services on or in connection with
selling, or importing a patented which such use is likely to cause
product or a product obtained confusion, or to cause mistake, or to
directly or indirectly from a patented deceive; or
process, or the use of a patented
process without the authorization of (2) Reproduce, counterfeit, copy or colorably
the patentee constitutes patent imitate a registered mark or a dominant
infringement: Provided, That, this feature thereof and apply such
shall not apply to instances covered reproduction, counterfeit, copy or colorable
by Sections 72.1 and 72.4 imitation to labels, signs, prints, packages,
(Limitations of Patent Rights); wrappers, receptacles or advertisements
Section 74 (Use of Invention by intended to be used in commerce upon or