Understanding the Basic Concepts of Intellectual Property Law in the Philippines and its Importance

“Understanding the Basic Concepts of Intellectual Property Law in the Philippines and its Importance”

            What is Intellectual Property Law? How does it work? Who and What IP Law Protects? I personally believe that people gave a little value on protecting their intellectual property not because they are not willing to protect their properties but because of lack of knowledge on how to protect their rights and how to enforce their rights with the help and aid of the Intellectual Property Law.  However, it is very important to know and understand the basic concepts of Intellectual Property Law in the Philippines.

            Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines took effect on June 6, 1997.  Section 2 of said Act provides that “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.”

It bears stressing that to obtain protection of one’s intellectual property it is necessary that it should be registered. It is also possible to register them internationally to obtain a wider protection. Once Intellectual Property is registered, the owner of such Intellectual Property is likewise protected in many countries in cases where a particular county and the Philippines are both signatories of International Conventions or Treaties because of reciprocity. The law provides that “  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.”1

Intellectual property rights consist of one or more of the following terms:

  1. Copyright and Related Rights;
  2. Trademarks and Service Marks;
  3. Geographic Indications;
  4. Industrial Designs;
  5. Patents;
  6. Lay-out Designs (Topographies) of Integrated Circuits; and
  7. Protection of Undisclosed Information

What are patentable inventions? Under Sec. 21 of R.A. No. 8293, this term refers to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. Furthermore, Sec. 22 of same Law provides for the Non-Patentable Inventions, to wit;

1. Discoveries, scientific theories and mathematical methods;

2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods; 

4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.

5. Aesthetic creations; and

6. Anything which is contrary to public order or morality. 

The key characteristics or the key features of Patent are:

v  Novelty –  an invention shall not be considered new if it forms parts of a prior art.2

v  Inventive step – an invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date of the application claiming the invention.3

v  Industrial applicability – an invention that can be produced and used in any industry shall be industrially applicable.4

v  The right to patent belongs to the inventor, his heirs, or assigns to the inventor, his heirs, or assigns. However, when two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly.5 However, First to file rule also applies.

v  The term of a patent is 20 years from the date of filing the application.

Moreover, Section 24 of R.A. No. 8293 provides that Prior art shall consist of:

 

  1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and

 

  1. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application

 

 

In addition, Sec. 71 of R.A. No. 8293 provides the exclusive rights conferred up by patent upon its owner. These are:

 

1. Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;

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

            In addition, patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same.6 In the absence of any provision to the contrary in the technology transfer arrangement, the grant of a license shall not prevent the licensor from granting further licenses to third person nor from exploiting the subject matter of the technology transfer arrangement himself.7 On the other hand, the licensee has the right to exploit the patent during the whole term.

            How about Utility Models? With regards to the registration of the same, it shall expire on the end of the seventh (7th) year after the date of filing of the application and non-renewable. Some of the provisions under Patent shall also apply to Utility Models. However, when the right to patent conflicts with the right to a utility model registration in the case referred to in Section 29 (first to file rule), the said provision shall apply as if the word “patent” were replaced by the words “patent or utility model registration.”8

            Another important category of Intellectual Property is Industrial Design. This term means any composition of lines or colors or any three dimensional form, whether or not associated with lines or colors, provided, that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. Only industrial design that are new or original shall benefit shall benefit from this Act.9 The term of industrial design registration is five (5) years and renewable for not more than two (2) consecutive periods.

            On the other hand, Section 121 of Republic Act No. 8293, the following terms are being defined.

 

1.  “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;

 

2.  “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; 

 

3. “Trade name” means the name or designation identifying or distinguishing an enterprise; 

 

            The rights in a mark shall be acquired through registration made validly in accordance with the provisions of law. However, there are marks that cannot be registered. Among those marks are:

 

1. Immoral, deceptive or scandalous;

 

2. The flag or coat or arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation;

 

3. Name, portrait or signature identifying a particular living individual except by his written consent, or the name of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of his widow;

 

4. Identical to those mark that are already registered belonging to a different proprietor; and

 

5. Contrary to public order or morality

           

The registered mark may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request.10 What constitutes infringement of registered mark? Any person who use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature that would likely cause confusion, or to cause mistake, or to deceive is liable for infringement of a registered mark.

Another important term under Intellectual Property Law is the Copyright Law. Under the copyright law we need to know the two important terms, namely:  the Original Works and Derivative works.

Literary and artistic works, hereinafter referred to as “works”, are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include literary, scholarly, scientific, and artistic works like musical compositions and audio visual works. Derivative works on the other hand consist of dramatizations, adaptations, collections of literary, scholarly or artistic works, and compilations of data. Under Section 213 of R.A. No. 8293, the copyright in works shall be protected during the life of the author and for fifty (50) years after his death. This rule also applies to posthumous works.

            It is important to note that the recitation or performance of a work once it has made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society, and the recording made in schools and universities or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions provided that such recording must be deleted within a reasonable period after they were first broadcast.

Likewise, “the fair use of a work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright. Recompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include: 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; and The effect of the use upon the potential market for or value of the copyrighted work.”11

However,  the afore-cited provision was amended by Section 12 of R.A. No. 10372, and read as follows “the fair use of a copyrighted work for criticism, comment, news reporting, teaching including limited number of copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright. Decompilation, which is understood here to be the reproduction of the code and translation of the forms of a computer program to achieve the interoperability of an independently created computer program with other programs may also constitute fair use under the criteria established by this section, to the extent that such decompilation is done for the purpose of obtaining the information necessary to achieve such interoperability.

            Upon understanding the International Law of the Philippines, I came up thinking if I am also guilty of infringing the Intellectual Property Law? Maybe almost all of us will say yes. However, almost all of us will also reason out that we are not that familiar of the law. However, as we all know that ignorance of the law excuses no one.

The advent of information technology today, almost all people are very much active in social media. Almost all of us have a facebook account, we access also you tube, yahoo mails, twitter, internet games and the like. Admittedly, we spent too much on social media and we keep on sharing files without thinking of any responsibility or infringement of Intellectual Property Law. As what Professor Lawrence Lessig said that “being obsessed with you tube or game called mine craft like his kids, this go together as an expression of culture and how culture is changing to understand what expression and creativity to be. He this as remix, a time honored tradition of call and response.”

I agree with what Professor Lessig when he said  that we have to find a way to make sure that culture is not so entwined  with the regulation of law and to regulate culture where it make sense and not where it does no good. He also made mention of the doctrine in American Law called the “fair use” where it put the copyright on the defensive. Under that doctrine is that when a particular lawyer who is asserting a right to control a particular use, the defense will say what’s the reason why the respondent should stop remixing the work of the plaintiff. His view is that the capacity to make remix should be a general right, a human right, to take remix and to share but this should be done legally. He further said that Creative Commons is not a solution of that problem but it prepares us for the solution by building and encouraging a certain practice that shows the world exactly what creators actually choose not there lawyers.

Honestly, before I studied the Intellectual Property Law, I am not aware what really constitutes an infringement of Intellectual Property Law. Of course I knew that there exist Intellectual Property like Trademarks, Copyright, Patents and other Intellectual Properties, however, I am not that familiar of how it works. I was amazed upon knowing that when I let other people take a picture of me even using my camera and I uploaded such picture to my facebook account without the consent of the person who took the picture, it already made me a violator of the law. In addition, I thought that when someone is importing a copyright material like a book, you can do so anytime and even you have two (2) copies of such book, however, such allowance of importation was already deleted by the amendments of R.A. No. 8293.

The most important I learned in studying Intellectual Property Code of the Philippines, our own law, and the upon watching the video of Professor Lawrence Lessig is that, people not only students like me but as well as others, like businessmen or entrepreneurs, composers, authors, writers and the like, should learn to assert our own right to protect our Intellectual Property and we should also be responsible enough in using social media as well. We need to share legally, and we need to attribute or respect the original creator of the work. It’s not the question of do we really violate or infringe Intellectual Property law? If so, why nobody is arresting us or calling our attention? But we should always remember that even if you were not called, doesn’t mean that you are not a violator of the Intellectual Property Law.

 

 

 

 

 

 

 

Footnotes

1. Sec. 3, R.A. No. 8293

2. Sec. 23, ibid.

3. Sec. 26, ibid.

4. Sec. 27, ibid.

5. Sec. 28, ibid.

6. Sec. 71.2, ibid.

7. Sec. 89, ibid.

8. Sec. 108.2, ibid.

9. Sec. 113, ibid.

10. Sec. 146, ibid.

11. Sec. 185, ibid.

 

 

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