Philippines

Copyright

Copyright is a legal term used to describe the exclusive rights granted to authors, artists and other creators for their creations. The IP Code extends legal protection, in the form of copyright, to the owner of the rights to an original work, such as books and other writings, musical works, films, paintings, photographs, computer programs and others (as listed in Section 172 of the IP Code).

What you need to know

The Philippine’s IP Code grants authors, artists and other creators automatic protection for their literary, scientific and artistic creations, from the moment they are created. The IP Code defines ‘author’ as the person who has created the work. Therefore, when applying for copyright registration in the Philippines, the author of the work must be a natural person.

There are two types of rights under the copyright system of the Philippines: economic rights and moral rights. Economic rights are limited in time and can be licensed or sold. They consist of the exclusive rights of the creator or author to exploit their works. Authors have the right to authorise or prevent the use and copying of the work, its public performance (e.g. playing copyrighted songs in public areas) and/or the transformation of the work (e.g. adaptation of a book to a movie). Moral rights, which last during the lifetime of the author and in perpetuity after the author’s death, are independent from economic rights. These are not assignable or subject to a license. Moral rights entitle the author or creator to take measures to protect the connection between himself and the work. This includes the right to:

Require authorship of the works to be attributed to him/ her;
• Make alterations to the work prior to, or withhold it from, publication;
• Object to any distortion, mutilation, or other modification of, or other derogatory action in relation to, the work;
• Prohibit the use of their name, with respect to any work not created by them or distorted versions of their work.

The fair use of a copyrighted work for criticism, comment, news reporting, teaching (including a limited number of copies for classroom use), research, and similar purposes is not an infringement of copyright in the Philippines. In determining fair use, the following are considered:

The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
• The nature of the copyrighted work;
• The amount and substantiality of the portion used in relation to the copyrighted work as a whole;
• The effect of the use upon the potential market for, or value of, the copyrighted work.

To strengthen the provisions of the IP Code, Republic Act No. 10372 (the ‘IP Code amendment’) was enacted in 2013 and, among other things, initiated the following:

Establishment of the Bureau of Copyright and Other Related Rights (BCRR), which has policy formulation, rulemaking and adjudication functions to servecopyrightandother related rights-based industries.
• Granting of visitorial powers to the IPOPHL, allowing them to act on complaints or reports and visit establishments that violate IP rights, including copyright.
• Introduction of landlord liability in case of copyright infringement cases. For example, owners of establishments or malls may now be held liable for copyright infringement if, after being given notice, they continue to allow, and benefit, from the copyright infringing activities of stalls or shops in their establishments/malls.

The owner may file an application for a certificate of registration and deposit copies of the works with the Copyright Section of the National Library or with the IPOPHL. The Applicant will be required to provide information regarding the date, place and person/entity that first completed the printing and the date, place, and person/establishment where the work was first published or sold in the Philippines.

Duration of Protection

Generally, legal protection lasts for 50 years after the death of the author of the original or derivative work. For photographic and audio-visual works, the term is 50 years from the date of publication.

Industrial Design

An industrial design is the ornamental or aesthetic aspect of an article. Design may include three-dimensional features (shape or surface of an article), or two-dimensional features (patterns or lines of colours). Subjects of industrial designs range from fashion to industrial goods and include handicrafts, jewellery, vehicles, and appliances.

The owners of industrial design registrations possess the same rights, and have the same remedies available to them, as patentees under the IP Code. The registered design allows the owner of that design to control its use, exploit the design and prohibit others from copying, using, selling, importing or exporting objects with that design without their permission.

The Philippines is party to the Paris Convention for the Protection of Industrial Property; applicants for industrial designs are entitled to a ‘right of priority’ if the same filing has been made within six months in any other country also party to the convention. This is very useful to the design owner because, after filing your first application, you have up to six months of leeway to decide which other countries you want to register in before having to commence international filing.

Not Registrable Designs

In order to be registrable, an industrial design must be a new or original creation. The following industrial designs are not registrable:

a. Industrial designs that are dictated essentially by technical or functional considerations to obtain a technical result;
b. Industrial designs that are merely schemes of surface ornamentations existing separately from the industrial product or handicraft;
c. Industrial designs that are contrary to public order, health, or morals.

It is possible to file a single application for multiple designs. However, in order to do so the designs must relate to the same subclass of the International Classification or to the same set or composition of articles. A ‘set of articles’ which is customarily sold or used together as a set may be made a proper subject matter in one application for design registration, provided that each article is of, or has, the same design or a substantially similar design. An application for registering an industrial design will be done at the Intellectual Property Office of the Philippines (IPOPHL).

Duration of Protection

An industrial design registration is valid for a period of five years from the date of the application and is renewable for two consecutive five year periods by paying the renewal fee. The maximum total duration is 15 years.

Patent and Utility Models

Patents (also known as ‘Letter Patents’ in the Philippines) are defined as exclusive rights granted to an inventor of a product or process that provides any technical solution to a problem in any field of human activity that is new, inventive and industrially applicable. A patent confers its owner the exclusive right to restrain, prohibit and prevent any unauthorised person or entity from making, using, offering for sale, selling or importing the patented product.

If the subject matter of the patent is a process, then the right granted is the right to restrain, prohibit and prevent any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any products obtained directly or indirectly from such a process.

The Philippines follows the first-to-file rule, meaning that when two or more applications are filed for the same invention, the right to the patent will belong to the applicant who has the earliest filing or priority date.

Non-Patentable in the Philippines

Discoveries, scientifictheories and mathematical methods.
In relation to drugs and medicines – the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere use of a known process unless such known process results in a new product that employs at least one new reactant. New forms of known drugs that are not significantly different with regard to efficacy are not patentable. Salts, esters, ethers, polymorphs, metabolites, pure form, particle size isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance, are considered to be the same substance, unless they differ significantly in efficacy.
Abstract ideas or theories, fundamental concepts (apart from the means of, or processes for, developing concepts so that they may produce technical effects).
Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers.
Methods for treatment of the human or animal body by surgery or therapeutic and diagnostic methods practiced on the human or animal body. This provision does not apply to products and composition for use in any of these methods.
Plant varieties, animal breeds, or essentially any biological process for the production of plants or animals. This provision does not apply to microorganisms and nonbiological and microbiological processes. Plant varieties are not patentable but can be protected under the Plant Variety Protection Act of 2002 (Republic Act No. 9168).
Aesthetic creations.
Anything contrary to public order, health, welfare or morality, or processes for cloning or modifying the germline genetic identity of humans or animals or use of the human embryo.

An invention is not considered to be new if it forms part of prior art. Prior art consists of all the works publicly disclosed anywhere in the world by written or oral means, by prior use, or by any other way, before the filing date or the priority date of the application. To be patentable, the invention must also be inventive and industrially applicable. An invention is considered inventive if it is not obvious to a person skilled in the art.

Patent-related International Treaties

The Philippines is party to the Paris Convention Treaty (PCT) for the Protection of Industrial Property; applicants for patents are entitled to a ‘right of priority’ if the same filing has been made within 12 months in any other country also party to the convention. This is very useful for patent owners because after filing the first application in their home country, they then have 12 months of leeway to decide which other countries they want to register in before having to commence international filings.

The Philippines is a member of the PCT. The PCT makes it easier for foreign businesses to obtain patents in the Philippines as formal examinations, searches and publications are done at the WIPO’s International Bureau. This mechanism allows a longer ‘wait and see’ period before the applicant decides on the countries in which he or she requires patent. Via the PCT route, you will have up to 30 months from the priority date to decide on filing a patent in the Philippines or in other countries.

Duration of Protection

Protection for patents lasts for 20 years from the filing of the application, it is subject to the payment of annuities for validity, and is not renewable.

Utility Model

An invention that lacks inventiveness but is new and industrially applicable may be registered as a utility model. Utility model registrations are relatively less expensive, and quicker to obtain compared to securing Letters Patent. The rights and remedies granted to patentees are also granted to owners of utility model registrations. Thus, entities with patentable innovations may opt to register the innovation as a utility model in order to secure protection for their IP assets.

The conversion of patent applications and utility model applications is allowable. At any time before the granting or refusal, the applicant can submit a request for converting their patent application into the utility model application and vice versa. A patent or utility model application is allowed to be converted only once and conversion fees are required.

Duration of Protection

A utility model registration’s term lasts for seven years after the filing date of the application and is not renewable.

Trademark

A trademark is any visible sign in the form of words, letters, images, symbols, logos or a combination thereof that identifies and differentiates the source of the goods or services of one entity from those of others.

The Philippines follows the first-to-file rule, it is therefore very important to register your trademark as early as possible, before entering the market, so as to diminish the risk of your trademark being registered by others. The Philippines is party to the Paris Convention for the Protection of Industrial Property; applicants for trademarks are entitled to a ‘right of priority’ within six months of the filing date of the first application for the same trademark in other countries also party to the convention. The trademark application filed in the Philippines will then be measured from the date on which the application was first filed in the foreign country.

When filling your trademark application, you have to keep in mind that identical applications may be objected to in view of a prior application/registration. Nevertheless, you can prove your superior right (through prior use or prior registration in a different jurisdiction) over the Filipino mark and oppose the prior application. Cancellation of a prior registration, although costly, is also available.

The Madrid Protocol entered into force in the Philippines on 25 July 2012. The Madrid System administered by the WIPO is a convenient and cost-effective solution for registering and managing trademarks worldwide. The system allows brand owners to seek protection for their trademarks in up to 122 countries by filing one application, using one language and paying one set of fees. Foreign entities may seek to protect their marks in the Philippines by submitting an international trademark application in their home office and choosing the Philippines as one of the designated countries.

Non-Registrable Trademarks

The IP Code highlights marks that cannot be registered. They may consist of:

Immoral, deceptive or scandalous matters;
A flag or coat of arms, name, portrait or signature identifying a particular living individual (except by his written consent);
Shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
Signs identical with the registered marks of others;
Signs identical with, or confusingly similar to, or constituting a translation of, a well-known mark;
Signs likely to mislead the public about the nature, quality, characteristics or geographical origin of goods or services;
Generic signs for the goods and services in question;
Colour alone, unless defined by a given form;
Signs contrary to public order or morality.

Registrable Trademarks

Three-dimensional marks, collective marks, and stamped or marked containers of goods are registrable in the Philippines. Certification marks, associated marks or series of marks are not recognised in the Philippines.

After receiving the application, the examiner will assess the application to ensure that all formalities are met before publishing it in the IPOPHL’s e-Gazette for public inspection for a period of 30 days. If someone believes they would be damaged by the registration of the mark, they may file an opposition to the application within those 30 days. If no opposition is filed against the application, the substantive examination process will proceed, and the registration certificate will be issued if the trade mark qualifies for protection. It usually takes about six months to register a trade mark in the Philippines.

Duration of Protection

Once a trademark is registered, the registration will be valid for 10 years from the registration date, provided that the DAU is filed in due course. The registration can be renewed every 10 years.