J. Intellectual Property Law (excluding Implementing Rules and Regulations) I.
Banking Laws
1. Intellectual Property Rights in general
1. The New Central Bank Act (RA 7653)
a. Intellectual property rights
a. State policies
b. Differences between copyrights, trademarks and patent
b. Creation of the Bangko Sentral ng Pilipinas (BSP)
c. Technology transfer arrangements
c. Responsibility and primary objective
2. Patents
d. Monetary Board - Powers and functions
a. Patentable inventions
e. How the BSP handles banks in distress
b. Non-patentable inventions
(1) Conservatorship
c. Ownership of a patent
(2) Closure
(1) Right to a patent
(3) Receivership
(2) First-to-file rule
(4) Liquidation
(3) Inventions created pursuant to a Commission
f. How the BSP handles exchange crisis
(4) Right of priority
(1) Legal tender power
d. Grounds for cancellation of a patent
(2) Rate of exchange
e. Remedy of the true and actual inventor
2. Law on Secrecy of Bank Deposits (RA 1405, as amended)
f. Rights conferred by a patent
a. Purpose
g. Limitations of patent rights
b. Prohibited acts
(1) Prior user
c. Deposits covered
(2) Use by the government
d. Exceptions
h. Patent infringement
e. Garnishment of deposits, including foreign deposits
(1) Tests in patent infringement
f. Penalties for violation
(a) Literal infringement
3. General Banking Act (RA 8791)
(b) Doctrine of equivalents
a. Definition and classification of banks
(2) Civil and criminal action
b. Distinction of banks from quasi-banks and trust entities
(3) Prescriptive period
c. Bank powers and liabilities
(4) Defenses in action for infringement
(1) Corporate powers
i. Licensing
(2) Banking and incidental powers
(1) Voluntary
d. Diligence required of banks - relevant jurisprudence
(2) Compulsory
e. Nature of bank funds and bank deposits
j. Assignment and transmission of rights
f. Stipulation on interests
3. Trademarks
g. Grant of loans and security requirements
a. Definitions of marks, collective marks, trade names
(1) Ratio of net worth to total risk assets
b. Acquisition of ownership of mark
(2) Single borrower’s limit
c. Acquisition of ownership of trade name
(3) Restrictions on bank exposure to DOSRI
d. Non-registrable marks
(directors, officers, stockholders and their related
e. Prior use of mark as a requirement
interests)
f. Tests to determine confusing similarity between marks
h. Penalties for violations
(1) Dominancy test
(1) Fine, imprisonment
(2) Holistic test
(2) Suspension or removal of director or officer
g. Well-known marks
(3) Dissolution of bank
h. Rights conferred by registration
4. Philippine Deposit Insurance Corporation Act
i. Use by third parties of names, etc. similar to registered
a. Basic policy
mark
b. Concept of insured deposits
j. Infringement and remedies
c. Liability to depositors
(1) Trademark infringement
(1) Deposit liabilities required to be insured with
(2) Damages
PDIC
(3) Requirement of Notice
(2) Commencement of liability
k. Unfair competition
(3) Deposit accounts not entitled to payment
l. Trade names or business names
(4) Extent of liability
m. Collective marks
(5) Determination of insured deposits
n. Criminal penalties for infringement, unfair competition, false
(6) Calculation of liability
designation of origin, and false description or
(a) Per depositor, per capacity rule
misrepresentation
(b) Joint accounts
4. Copyrights
(c) Mode of payment
a. Basic principles, Secs. 172.2, 175, and 181
(d) Effect of payment of insured
b. Copyrightable works
deposit
(1) Original works
(e) Payments of insured deposits as
(2) Derivative works
preferred credit under Art. 2244, Civil
c. Non-copyrightable works
Code
d. Rights of copyright owner
(f) Failure to settle claim of insured
e. Rules on ownership of copyright
depositor
f. Limitations on copyright
(g) Failure of depositor to claim
(1) Doctrine of fair use
insured deposits
(2) Copyright infringement
i. Examination of banks
(a) Remedies
and deposit accounts
(b) Criminal penalties
ii. Prohibition against
splitting of deposits
iii.Prohibition against
issuances of TROs, etc.
INTELLECTUAL PROPERTY LAW 5. Articles 188 and 189 of the Revised Penal Code of
the Philippines.
State policy declaration:
Parts of the law:
The State recognizes that an effective intellectual and
industrial property system is vital to the development of
The Intellectual Property Code of the Philippines is divided
domestic and creative activity, facilitates transfer of
into five [5] parts, to wit:
technology, attracts foreign investments, and ensures
market access for our products. It shall protect and secure
the exclusive rights of scientists, inventors, artists and PART I - The Intellectual Property Office
other gifted citizens to their intellectual property and PART II - The Law on Patents
creations, particularly when beneficial to the people, for PART III - The Law on Trademarks, Service Marks
such periods as provided in this Act. and Trade Names
PART IV - The Law on Copyright
PART V - Final Provisions
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 Intellectual property rights under the I. P. Code:
development and progress and the common good.
The intellectual property rights under the Intellectual
It is also the policy of the State to streamline Property Code are as follows:
administrative procedures of registering patents,
trademarks and copyright, to liberalize the registration on 1. Copyright and related rights;
the transfer of technology, and to enhance the 2. Trademarks and service marks;
enforcement of intellectual property rights in the 3. Geographic indications;
Philippines. 4. Industrial designs;
5. Patents;
Effect on international conventions and on principle of 6. Layout designs [topographies] of integrated
reciprocity: circuits; and
7. Protection of undisclosed information.
Any person who is a national or who is domiciled or has a
real and effective industrial establishment in a country Government Agencies:
which is a party to any convention, treaty or agreement
relating to intellectual property rights or the repression of The agency of the government in charge of the
unfair competition, to which the Philippines is also a party, implementation of the Intellectual Property Code is the
or extends reciprocal rights to nationals of the Philippines Intellectual Property Office which replaced the Bureau of
by law, shall be entitled to benefits to the extent necessary Patents, Trademarks and Technology Transfer. It is divided
to give effect to any provision of such convention, treaty into six [6] Bureaus, namely:
or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise
[1] Bureau of Patents;
entitled by this Act.
[2] Bureau of Trademarks;
[3] Bureau of Legal Affairs;
Laws repealed: [4] Documentation, Information and Technology
Transfer Bureau;
Republic Act No. 8293 repealed all Acts and parts of Acts [5] Management Information System and EDP
inconsistent therewith, more particularly: Bureau; and
[6] Administrative, Financial and Personnel Services
Bureau.
1. Republic Act No. 165, as amended [An Act Creating
a Patent Office, Prescribing its Powers and Duties,
Regulating the Issuance of Patents, and Appropriating Functions of the Intellectual Property Office:
Funds Therefor];
The Intellectual Property Office is mandated under the law
2. Republic Act No. 166, as amended[An Act to to:
Provide for the Registration and Protection of Trademarks,
Trade-Names, and Service-Marks, Defining Unfair 1. Examine applications for the grant of letters patent
Competition and False Marking and Providing Remedies for inventions and register utility models and industrial
Against the Same, and for Other Purposes]. designs;
.
3. Presidential Decree No. 49 [Decree on the 2. Examine applications for the registration of marks,
Protection of Intellectual Property]; geographic indication and integrated circuits;
.
4. Presidential Decree No. 285, as amended [Decree 3. Register technology transfer arrangements and settle
on the Protection of Intellectual Property]; disputes involving technology transfer payments covered
by the provisions of Part II, Chapter IX on Voluntary registration; while under the latter, the element of use has
Licensing and develop and implement strategies to been eliminated as a requirement for application.
promote and facilitate technology transfer;
. 2. Under the former, the term granted is 20 years
4. Promote the use of patent information as a tool for renewable for 20-year periods; while under the latter, the
technology development; term is for 10 years, renewable for 10-year periods.
.
5. Publish regularly in its own publication the patents,
3. Under the former, the affidavit of use or non-use is
marks, utility models and industrial designs, issued and
required on the 5th, 10th and 15th anniversaries; while
approved, and the technology transfer arrangements
under the latter, proof of use within 3 years from the filing
registered;
of the application is required and the affidavit of use
.
should be filed within 1 year from the 5th anniversary.
6. Administratively adjudicate contested proceedings
affecting intellectual property rights;
and 4. Under the former, a Supplemental Register is
. required to be maintained; while under the latter, it is no
7. Coordinate with other government agencies and the longer required.
private sector efforts to formulate and implement plans
and policies to strengthen the protection of intellectual 5. Under the former law, penalties for infringement,
property rights in the country. unfair competition, false designation of origin and false
description or representation range from fine of PhP500 to
Significant features of the law: 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
1. A shift was made from the "first-to-invent system" years of imprisonment.
under R. A. 165 [old law] to "first-to-file system" under the
new law.
Significant changes in the copyright law:
2. In the case of inventions, the period of the grant
was increased from 17 years from grant under the old law It is now required that after the first public dissemination of
to 20 years from date of filing under the new law. 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)
3. In the case of utility models, the previous grant of 5
weeks, be registered and deposited with it, by personal delivery or
years plus renewals of 5 years each under the old law was
by registered mail, two (2) complete copies or reproductions of the
changed to 7 years without renewal under the new law.
work in such form as the directors of said libraries may prescribe.
4. In the case of industrial designs, the previous grant
The scheme of penalties for infringement has also been changed.
of 5 years plus renewals of 5 years each was maintained.
From the previous fine of Php200 to Php2,000 and/or imprisonment
of 1 year, the current range of penalties are as follows:
5. Under the old law, there was no opposition
proceedings and the examination is mandatory; under the
new law, the examination is made only upon request
For first offenders - fine of PhP50,000 to PhP150,000 and/or
[possibly with or without examination].
imprisonment of 1 to 3 years
6. Under the old law, publication is made after the
grant; under the new law, publication is effected after 18 For second offenders - fine of PhP150,000 to PhP500,000
months from filing date or priority date. and/or imprisonment of 3 to 6
years
7. Under the old law, the penalties for repetition of
infringement are: PhP10,000 and/or 5 years of For third and subsequent offenders - fine of PhP500,000 to
imprisonment and the offense prescribes in 2 years; under PhP1.5 Million and/or
the present law, the penalties range from PhP100,000 to imprisonment of 6 to 9 years.
PhP300,000 and/or 6 months to 3 years of imprisonment
and the offense prescribes in 3 years.
In case of insolvency, the offender shall furthermore suffer
subsidiary imprisonment.
Significant changes in the trademark law:
The significant changes in the trademark law under the
old law [R. A. No. 166] and the present law are as follows:
1. Under the former, the element of use before filing
a local application is a requirement although this is not
required when the application is based on foreign
