REPUBLIC ACT NO.

8293 INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES

Reporters: Clarice J. Casalan Franz Ryan R. Ybaez

REPUBLIC ACT NO. 8293

An act prescribing the intellectual property code and establishing the intellectual property office, providing for its powers and functions, and for other purposes

This Act is also known as the "Intellectual Property Code of the Philippines. Signed into law on June 6, 1997

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.

STATE POLICY DECLARATION

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.

LAWS

REPEALED

Republic Act No. 8293 repealed all Acts and parts of Acts inconsistent therewith, more particularly:

Republic Act No. 165, as amended [An Act Creating a Patent Office, Prescribing its Powers Republic Act No. 166, as amended and Act to Provide for the Registration and Protection of [An Duties, Regulating the Issuance of Patents, and Presidential Decree No. 49 Appropriating Funds Therefor] Service-Marks, Defining Trademarks, Trade-Names, and Presidential Decree No. Marking and Providing Unfair Competition and False 285, as amended [Decree Against the Same, Intellectual Penal Remedieson 188 Protectionofand for OtherProperty Articles the and 189 of the Revised Purposes] [Decree on the Protection of Intellectual Property] Code of the Philippines

PARTS OF THE LAW

The Intellectual Property Code of the Philippines is divided into five [5] parts, namely: PART I - The Intellectual Property Office PART II - The Law on Patents PART III The Law on Trademarks, Service Marks and Trade Names PART IV The Law on Copyright PART V Final Provisions

INTELLECTUAL PROPERTY RIGHTS UNDER THE INTELLECTUAL PROPERTY CODE:

The intellectual property rights under the Intellectual Property Code are as follows: 1. 2. 3. 4. 5. 6. Copyright and related rights; Trademarks and service marks; Geographic indications; Industrial designs; Patents; Layout designs [topographies] of integrated circuits; 7. Protection of undisclosed information.

GOVERNMENT AGENCIES
The agency of the government in charge of the implementation of the Intellectual Property Code is the Intellectual Property Office which replaced the Bureau of Patents, Trademarks and Technology Transfer. It is divided into six [6] Bureaus, namely: [1] Bureau of Patents [2] Bureau of Trademarks [3] Bureau of Legal Affairs [4] Documentation, Information and Technology Transfer Bureau [5] Management Information System and EDP Bureau [6] Administrative, Financial and Personnel Services Bureau

DEFINITION OF TERMS
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 "Mark" means 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; (Sec. 38, R.A. No. 166a)

DEFINITION OF TERMS

"Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark; (Sec. 40, R.A. No. 166a) "Trade name" means the name or designation identifying or distinguishing an enterprise; (Sec. 38, R.A. No. 166a)

DEFINITION

OF TERMS

"Author" is the natural person who has created the work; Collective work" is a work which has been created by two (2) or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified; "Communication to the public" or "communicate to the public" means the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them; A "computer" is an electronic or similar device having informationprocessing capabilities, and a "computer program" is a set of instructions expressed in words, codes, schemes or in any other form, which is capable when incorporated in a medium that the computer can read, of causing the computer to perform or achieve a particular task or result;

171.5. "Public lending" is the transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public library or archive; 171.6. "Public performance", in the case of a work other than an audiovisual work, is the recitation, playing, dancing, acting or otherwise performing the work, either directly or by means of any device or process; in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds accompanying it audible; and, in the case of a sound recording, making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and that family's closest social acquaintances are or can be present, irrespective of whether they are or can be present at the same place and at the same time, or at different places and/or at different times, and where the performance can be perceived without the need for communication within the meaning of Subsection 171.3;

171.7. "Published works" means works, which, with the consent of the authors, are made available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them: Provided, That availability of such copies has been such, as to satisfy the reasonable requirements of the public, having regard to the nature of the work; 171.8. "Rental" is the transfer of the possession of the original or a copy of a work or a sound recording for a limited period of time, for profitmaking purposes; 171.9. "Reproduction" is the making of one (1) or more copies of a work or a sound recording in any manner or form (Sec. 41 (E), P.D. No. 49 a); 171.10. A "work of applied art" is an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale; 171.11. A "work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as a part of his regularly prescribed official duties.

FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE

The Intellectual Property Office is mandated under the law to: Examine applications for the grant of letters patent for inventions and register utility models and industrial designs Examine applications for the registration of marks, geographic indication and integrated circuits 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

FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE

Promote the use of patent information as a tool for technology development; Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; Administratively adjudicate contested proceedings affecting intellectual property rights; 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

SIGNIFICANT FEATURES OF THE LAW

A shift was made from the "first-to-invent system" under R. A. 165 [old law] to "first-to-file system" under the new law. 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.

SIGNIFICANT FEATURES OF THE LAW

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 [possibly with or without examination]. Under the old law, publication is made after the grant; under the new law, publication is effected after 18 months from filing date or priority date. Under the old law, the penalties for repetition of infringement are: PhP10,000 and/or 5 years of imprisonment and the offense prescribes 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 prescribes in 3 years.

SIGNIFICANT CHANGES IN THE

TRADEMARK LAW
OLD LAW [R. A. NO. 166]

PRESENT LAW [R. A. NO. 8293]

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 registration Under the former, the term granted is 20 years renewable for 20-year periods.

While under the latter, the element of use has been eliminated as a requirement for application

While under the latter, the term is for 10 years, renewable for 10-year periods.

SIGNIFICANT CHANGES IN THE

TRADEMARK LAW
OLD LAW [R. A. NO. 166]

PRESENT LAW [R. A. NO. 8293]

Under the former, the affidavit of use or non-use is 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 is required to be maintained

While under the latter, it is no longer required

SIGNIFICANT CHANGES IN THE

TRADEMARK LAW
OLD LAW [R. A. NO. 166]

PRESENT LAW [R. A. NO. 8293]

Under the former law, penalties for infringement, unfair competition, false designation of origin and false description or representation range 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

SIGNIFICANT CHANGES
LAW

IN THE COPYRIGHT

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.

SIGNIFICANT CHANGES
LAW

IN THE COPYRIGHT

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 - fine of PhP150,000 to PhP500,000 and/or imprisonment of 3 to 6 years For third and subsequent offenders - 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 subsidiary imprisonment.