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 (Approved on June 6, 1997, took
effect on January 1, 1998)

INTELLECTUAL PROPERTY refers to the creations of the mind: inventions, literary and artistic works,
symbols, names, images, and designs used in commerce. It means the legal rights which result from intellectual
activity in the industrial, scientific, literary, and artistic fields.

INTELLECTUAL PROPERTY RIGHTS

The term "intellectual property rights" consists 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

a. Copyright – right granted by statute to the author or originator of literary, scholarly, scientific, or artistic
productions including computer programs. A copyright gives him the legal right to determine how the work is
used and to obtain economic benefits from the work. It 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.

b. Trademarks – 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. It is vested from registration.

c. Geographic Indications – one which identifies a good as originating in the territory of a TRIPS member, or a
region or locality in that territory where a given quality, reputation or other characteristic of a good is essentially
attributable to its geographical origin.

d. Industrial Design – 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.

e. Patents – a government authority or license conferring a right or title for a set period, especially the sole right to
exclude others from making, using, or selling an invention.

f. Layout-Design (Topography) of Integrated Circuit – the three-dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and of some or all the interconnections of an integrated circuit,
or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture. It must be
original in a sense that they are the result of their creators’ own intellectual effort.

g. Undisclosed information – Information which:

a. Is a secret in a sense that it is not, as a body or in the precise configuration and assembly of components,
generally known among or readily accessible to persons within the circles that normally deal with the kind of
information in question;
b. Has a commercial value because it is secret; and
c. Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the
information, to keep it secret.

STATE POLICIES
a. To protect and secure the exclusive rights of scientists, investors, artists, and other gifted citizens to their
intellectual property and creations, particularly when beneficial to the people, for such periods as provided
R.A. No. 8293.
b. To promote the diffusion of knowledge and information for the promotion of national development and
progress and the common good.
c. 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

INTELLECTUAL PROPERTY OFFICE

 The Office is headed by a Director General who shall be assisted by two (2) Deputies Director General.
 The Office shall be divided into six (6) Bureaus, each of which shall be 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.

FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE (IPO)

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.

PATENT

Patent is a statutory monopoly which protects against unlicensed use of the patent device or process even by the one
who discovered it through independent research

Patentable Inventions — 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

REQUISITES OF PATENTABILITY
1. Any technical solution of a problem in any field of human activity
2. 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 or priority date of the application claiming the invention
3. Novelty - An invention shall not be considered new if it forms part of a prior art
4. Industrial Applicability - An invention that can be produced and used in any industry shall be industrially
applicable
5. Patentable subject matter – An invention that does not fall within the prohibitions of a non-patentable invention

NON-PATENTABLE INVENTIONS
 Discoveries, theories, math methods
 Business schemes, computer programs per se
 Surgical or therapeutic methods
 Animal breeds and plant varieties
 Aesthetic creations
 Anything against public morality

“Prior Art” – e verything 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

TERM OF PATENT
 The term of a patent shall be twenty (20) years from the filing date of the application.

Right To A Patent
 The right to a patent belongs to the inventor, his heirs, or assigns. When 2 or more persons have jointly
made an invention, the right to a patent shall belong to them jointly.
First to File Rule
 If 2 or more persons have made the invention separately and independently of each other, the right to the
patent shall belong to the person who filed an application for such invention, or where two or more
applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest
 priority date
INFRINGEMENT
 The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or
indirectly from a patented process, or the use of a patented process without the authorization of the patentee

TESTS OF PATENT INFRINGEMENT

A. Economic Interest Test: when the process-discoverer’s economic interests are compromised
B. Literal Infringement Test: there is infringement of patent under this test if one makes, uses, or sells an
item that contains all the elements of the patent claim. It is satisfied by either of the following:
C. Doctrine of Equivalents (function-means-and- results test): infringement takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some modification
and change, performs substantially the same function in substantially the same way to achieve substantially the
same result

REMEDIES FOR PATENT INFRINGEMENT

1. Action for Damages
Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have
been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such
damages sustained thereby. If the damages are inadequate or cannot be readily ascertained with reasonable
certainty, the court may award by way of damages a sum equivalent to reasonable royalty.
2. Injunction
Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have
been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer
such damages sustained thereby, plus attorney’s fees and other expenses of litigation, and to secure an
injunction for the protection of his rights
3. Disposal or Destruction
The court may, in its discretion, order that the infringing goods, materials and implements predominantly used
in the infringement be disposed of outside the channels of commerce or destroyed, without compensation
4. Criminal Action for Repetition of Infringement
If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of
the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages,
be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than 6
months but not more than 3 years and/or a fine of not less P100,000 but not more than P300,000, at the discretion
of the court. The criminal action herein provided shall prescribe in three (3) years from date of the
commission of the crime

TRADEMARK

"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

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.

Trade name – the name of designation identifying or distinguishing an enterprise; any individual name or
surname, firm name, device or word used by manufacturers, industrialists, merchants, and others to identify their
businesses, vocations or occupations.

FUNCTIONS OF TRADEMARKS
1. To indicate the origin of the goods to which they are attached;
2. To guarantee the standard of quality of the goods; and
3. To advertise the goods.

DURATION
Section 145. A certificate of registration shall remain in force for 10 years and may be renewed for periods of 10 years as
its expiration upon payment of the prescribed fee and upon filing of a request.

UNFAIR COMPETITION
 Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or
who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an
 action therefor.
When is unfair competition present?
a. When there is passing off of a product format of another
b. Giving goods (or service) the appearance of goods of another.

Marks that cannot be registered

A mark cannot be registered if it is:
a) Immoral, deceptive, scandalous content
b) Identical/confusing marks
c) National symbols, flags
d) Descriptive/generic signs
e) Marks likely to mislead consumers

TYPES OF CONFUSION
There are two types of confusion in trademark infringement: confusion of goods and confusion of business.
a. Confusion of goods in which event the ordinarily prudent purchaser would be induced to purchase one product in
the belief that he was purchasing the other. In which case, defendant’s goods are then bought as the plaintiffs, and
the poorer quality of the former reflects adversely on the plaintiff’s reputation.

b. Confusion of business: Here though the goods of the parties are different, the defendants product is such as might
reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief
or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist.

TWO TESTS TO DETERMINE LIKELIHOOD OF CONFUSION

a. Dominancy Test focuses on the similarity of the main, prevalent or essential features of the competing
trademarks that might cause confusion. It relies on visual, aural, and connotative comparisons and overall
impression between the two trademarks. The test is whether there is a similarity of the prevalent features of
the competing trademarks which might cause confusion.
b. Holistic Test considers the entirety of the marks, including labels and packaging, in determining confusing
similarity. It relies only on visual. The test is whether the general confusion made by the article upon the eye of
the casual purchaser, who is unsuspicious and off his guard, is such as to likely result in the confounding it
with the original.

REMEDIES AGAINST TRADEMARK INFRINGEMENT

1. Civil action for damages (Section 156.1)
2. Impounding of infringing goods by the court (Section 156.2)
3. Doubling of damages (Section 156.3)
4. Injunctive relief (Section 156.4)
5. Dispose of infringing goods outside the channels of commerce (Section 157.1)
6. Destruction of infringing goods (Section 157.1)

COPYRIGHT

Copyright is the right over literary and artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of creation. It relates to artistic creations, such as books, music,
paintings, and sculptures, films and technology-based works as well as to the main act which, in respect of literary
and artistic creations, may be made only by the author or his authorization.

However, protection only extends to the expression of idea, not to the idea itself or any procedure, system, method or
operation, concept, principle, discovery or mere data.

REQUISITES OF A COPYRIGHTABLE WORK

1. Originality – Does not mean novelty. It simply means that the work owes its origin existence to the author
2. Expression – A work must be embodied in a medium sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than transitory duration

Protected Works (Sec. 172):

 Books, writings, music, lectures
 Paintings, sculptures, architecture
 Films, photos, computer programs
 Illustrations, maps, applied arts
 Audiovisual and broadcast materials

Derivative Works
These are works based upon one or more pre-existing works:
 Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of
literary or artistic works;
 Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by
reason of the selection or coordination or arrangement of their contents

Unprotected Works (Sec. 175):

 Ideas, methods, discoveries
 News, official texts
 Government works (with conditions)
 Generic packaging and unoriginal designs

Who owns the copyright?

a. Creator – the creator, his heirs, or assigns, shall own the copyright.
b. If Joint creation – co-authors shall be the original owners of the copyright and in the absence of agreement, their rights
shall be governed by the rules on co-ownership.
c. Commissioned work – the person commissioning owns the work; ownership of copyright remains with the creator, unless
there is a written stipulation to the contrary.
d. Audio-visual work – producer for purposes of exhibition; for all other purposes, the producer, the author of the scenario, the
composer, the film director, the photographic director and the author of the work are the owners.
e. Pseudonymous and anonymous works – unless the author is undisputably known, the publisher shall be presumed to be
the representative of the author. (Secs. 178 and 179, IPC)
f. Employee’s work during course of employment – employer, if the result of regular functions or duties but the employee
owns it if it is not part of his duties

Duration of Copyright
a. Literary artistic works and derivative works – during the lifetime of the creator and for fifty (50) years after his death.
b. Joint Creation – the economic rights shall be protected during the life of the last surviving author and for fifty (50) years
after the death of the last surviving author.
c. Anonymous or pseudonymous work – until the end of fifty (50) years following the date of their first publication. The fifty
(50) year duration commences from January following the date of publication.
d. Work of applied art – twenty five (25) years from the date of making.
e. Photographic works – fifty (50) years from the publication of the work, or from making if unpublished (the same term is
given to audio-visual works produced by photography or analogous processes).
f. Broadcast – twenty (20) years from the date of broadcast.
RIGHTS OF AUTHORS
a. Copyright or Economic Rights
b. Moral Rights

Fair Use
 Fair use is defined as the privilege to use the copyrighted material in a reasonable manner without the consent of
the copyright owner or as copying theme or ideas rather than their expression.
 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.

INFRINGEMENT
 Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing
by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute
on the owner of the copyright.

REMEDIES FOR COPYRIGHT INFRINGEMENT

1. Injunction
The court may order the defendant to desist from an infringement, among others, to prevent the entry into the
channels of commerce of imported goods that involve an infringement, immediately after customs clearance of
 such goods

2. Damages
Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other
expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made
due to such infringement, and in proving profits the plaintiff shall be required to prove sales only and the
defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and
profits, such damages which to the court shall appear to be just and shall not be regarded as penalty.
3. Criminal Penalties
Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such
infringement shall be guilty of a crime punishable by:
FREQUENCY PENALTY
1st offense 1 – 3 years P50,000 to P150,000
2 nd offense 3 years and 1 day – 6 years P150,000 to P500,000
3rd offense 6 years and 1 day – 9 years P500,000 to P1,500,000
4. Seizure and Impounding
Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the
court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging
alleged to infringe a copyright and implements for making them
5. Destruction without any compensation
Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates,
molds, or other means for making such infringing copies as the court may order

SAMPLE CASE FOR R.A. 8293

Case Title: Gloria Maris Shark’s Fin Restaurant, Inc. v. Pacifico Q. Lim
G.R. Nos. 264919-21
Date Decided: May 20, 2024
Relevant Law: Republic Act No. 8293 – Intellectual Property Code of the Philippines

FACTS:
Gloria Maris Shark’s Fin Restaurant, Inc. is a well-known restaurant brand offering Chinese cuisine with several established branches
in the Philippines. The name “Gloria Maris” had been used and developed by the corporation over time, establishing a reputation and
goodwill with the public.
Pacifico Q. Lim, a former business associate of the company, registered the trademark “Gloria Maris Shark’s Fin Restaurant” under
his own name with the Intellectual Property Office of the Philippines (IPOPHL). After registering, Lim attempted to assert ownership
of the trademark and restrict the restaurant from using the name it had long used in the market.
The corporation filed a petition to cancel Lim’s registration, alleging bad faith, as Lim was fully aware of the prior and continuous use
of the name “Gloria Maris” by the restaurant.

ISSUE:
Whether the trademark registration by Pacifico Q. Lim is valid under RA 8293 despite prior use and established goodwill of “Gloria
Maris” by the corporation.

RULING:
No. The Supreme Court held that the trademark registration was invalid due to bad faith. The Court emphasized that although the
Intellectual Property Code follows a first-to-file rule, the law does not allow registration done in bad faith. Lim’s knowledge of the
restaurant’s prior use of the “Gloria Maris” name and his relationship with the corporation supported the finding that he acted in bad
faith when registering the trademark under his own name.

DOCTRINE:
Trademark rights acquired through registration under RA 8293 may be invalidated if done in bad faith.
Registration does not legitimize ownership when the registrant knowingly appropriates a mark already in use by another with
established goodwill. Prior use and honest commercial practice remain protected under the law.

SIGNIFICANCE:
The case strengthens the principle that registration alone is not enough to confer valid trademark rights—good faith is essential.
It also serves as a warning against opportunistic filings by insiders or associates who attempt to exploit a business’s existing brand
reputation.
The ruling aligns with Section 123.1(d) of RA 8293, which prohibits registration of a mark that is confusingly similar to a previously
used mark known to the applicant.