Reporter: NEHEMIAH P.
MONTECILLO
Intellectual Property Rights
1. Republic Act No.8293
1.1 Historical Background of Republic Act No. 8293
-R.A. No. 8293 or the “Intellectual Property Code of the Philippines” is
actually a codification of the country’s various intellectual property laws. The
law repealed all Acts and parts of Acts inconsistent with it, more particularly
R.A. No. 165 that established an independent patent system, R. A. No.166
that’s governs Trademark and Presidential Decree No. 49 known as the
“Decree on Intellectual Property,” and Articles 188 and 189 of the Revised
Penal Code( See Sec.239)
1.2 Non-Retroactivity
-By express provision of the law, R.A. No.8293 became effective on January
1,1998. The IP Code, repealing the Trademark Law, was approved on June
6,1997. Section 241 therefore expressly decreed that it was to take effect
only on January 1,1998, without any provision for retroactive application.
1.3 State Policies on Intellectual and Industrial Property System
-The policies of the State on intellectual property rights are stated in Section
2 of the law, as follows:
“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.”
1.4 International Conventions and Reciprocity
-Any person who is a national or who is domiciled or has a real and
effective industrial establishment in a country which is a party to any
convention, treaty or agreement relating to intellectual property rights or the
repression of unfair competition, to which the Philippines is also a party, or
extends reciprocal rights to nationals of the Philippines by law, shall be
entitled to benefits to the extent necessary to give effect to any provision of
such convention, treaty or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise entitled by this Act.(Sec.3)
-Any condition, restriction, limitation, diminution, requirement, penalty or
any similar burden imposed by the law of a foreign country on a Philippine
national seeking protection of intellectual property rights in that country, shall
reciprocally be enforceable upon nationals of said country, within Philippine
jurisdiction.(Sec.231)
2. Intellectual Property Rights
2.1 Intellectual Property Rights,Defined
-The term “ intellectuals property rights” has a statutory definition as that
consisting of : a) Copyright and Related Rights; b) Trademarks and Service
Marks; c) Geographic indications; d) Industrial Designs; e) Patents; f) Layout
Designs ( Topographies) of Integrated Circuits; g) Protection of Undisclosed
Information.(Sec.4) This statutory definition, however, does not quite capture
the essence of the term as it merely enumerates what compromises the term
being defined.
2.2 Differences Between Copyrights, Patents, and Trademarks
-Patents, trademark, and copyright cannot be interchanged and must
therefore be taken separately. 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.
Meanwhile, 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. On the other hand, patentable inventions 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.
3. Technology Transfer Arrangement
3.1 Technology Transfer Arrangement, Defined
-The term “technology transfer arrangements” refers to contracts or
agreements involving the transfer of systematic knowledge for the
manufacture of a product, the application of a process, or rendering of a
service including management contracts; and the transfer, assignment or
licensing of all forms of intellectual property rights, including licensing of
computer software except computer software developed for mass market.
(Sec.4.2)
3.2 Nature
-To encourage the transfer and dissemination of technology, prevent or
control practices and conditions that may in particular cases constitute an
abuse of intellectual property rights having an adverse effect on competition
and trade, all technology transfer arrangements shall comply with the
provisions(See Sec.85)
-This is a highly-regulated contract given its role in the fulfillment of the
State’s desire to bring technologies into public domain through disclosures.
Regulation of such contracts is also necessary to prevent practices that may
have an adverse effect on competition and trade.
3.3 Required and Prohibited Stipulations
-Failure to comply with such mandatory and prohibited clauses would
automatically render the Technology Transfer Arrangement unenforceable.
(See Sec.92)
- However, in certain exceptional cases, the Technology Transfer
Arrangement may still be valid even if it contains a prohibited clause or it
does not stipulate a mandatory clause if the same is approved and registered
with the Documentation,Information and Technology Transfer Bureau.
Ten Fast Laws on Intellectual Property Rights
1. The law that primarily governs Intellectual Property Rights in our country is
Republic Act No. 8293 which took effect on January 1,1998.
2. Republic Act No. 8293 has no retroactive effect.
3. The principle of reciprocity applies in Intellectual Property Rights.
4. Unfair Competition is a public crime.
5. The term “intellectual property rights” consist of: a) Copyright and Related Rights;
b) Trademarks and Service Marks; c) Geographic Indications; d) Industrial
Designs; e) Patents; f) Layout Designs ( Topographies) of Integrated Circuits;
and g) Protection of Undisclosed Information.
6. Trademark, copyright and patents are different intellectual property rights that
cannot be interchanged with one another.
7. 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 an enterprise.
8. 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.
9. Patentable inventions 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.
10. Technology Transfer Arrangement is a contract. The law states that there are
mandatory and prohibited clauses in such contracts.
Intellectual Property Office
4.Intellectual Property Office
4.1 Creation
- The Intellectual Property Office was created under Republic Act No. 8293.
This office replaced the Bureau of Patents, Trademarks and Technology
Transfer.
4.2 Organization
-The Intellectual Property Office is headed by a Director General who is assisted
by two Deputies Director General. The Office is divided into seven Bureaus,
each of which is headed by a Director and assisted by an Assistant Director.
These Bureaus are:
a) The Bureau of Patents;
b) The Bureau of Trademarks;
c) The Bureau of Legal Affairs;
d) The Documentation, Information and Technology Transfer Bureau;
e) The Management Information System and EDP Bureau;
f) The Administrative, Financial and Personnel Services Bureau; and
g) The Bureau of Copyright and Other Related Rights.
4.3 Functions
-The following are the declared functions of the office:
a) Examine applications for grant of letters patent for inventions and register utility
models and industrial designs;
b) Examine applications for the registration of marks, geographic
indication, integrated circuits;
c) Register Technology transfer arrangements and
settle disputes involving technology transfer payments covered by the provisions
of Part II, Chapter IX on Voluntary Licensing and develop and implement
strategies to promote and facilitate technology transfer;
d) Promote the use of Patent information as a tool for technology development;
e) Publish regularly in its own publication the patents, marks, utility models and
industrial designs, issued and approved, and the technology transfer arrangements
registered;
f) Administratively adjudicate contested proceedings affecting intellectual property
Rights; and
g) Coordinate with other government agencies and the private
Sector efforts to formulate and implement plans and policies to strengthen the
Protection of intellectual property rights in the country. (Sec.5)
