Kinds of intellectual property
Copyright and related rights, trademarks and service marks, patents, geographic indications, layout designs (topographics) of integrated circuits; protection of undisclosed information and industrial design.
Trademark
It 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.” Thus, a mark (1) must be a visible sign and (2) must be capable of distinguishing one’s goods and services from those of another.
Marks that cannot be registered
Those:
(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;
(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
But as regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive.
Effects of registering a trademark
It is important that you register your trademark because it distinguishes your goods from others. It represents your business identity, image, and reputation that sets it apart from your competitors. It is your asset and property. Thus, its registration will protect your business and shield it from scrupulous persons who want to ride on the goodwill which your business has already acquired.
Difference between a Trademark and a Service Mark
A trademark pertains to goods and those under International Class 1 to 34 while service marks refer to services and those goods under International Class 35 to 42.
On filing of an application of a trademark not being used.
Prior use of the mark is not required to file an application. What the law requires is that an application for registration may be based on actual use or intended use of a mark in the Philippines. In this regard, the use of a mark becomes necessary only after the application for its registration has been filed because a Declaration of Actual Use (“DAU”) is required to be submitted within 3 years from filing date. An application for registration can therefore be filed.
Rights to a mark acquired by means of:
Through registration. Generally, protection against infringement is accorded only to a duly registered marks. Also, priority of rights in a mark is not anymore based on prior actual use but on prior filing of an application for registration. Thus, it is important for you to file your application with the IPO immediately. We observe the first-to-file rule. Thus, if you filed an application for a mark, no one can file an application for the same mark anymore.
Filing of multiple classes in one trademark application
In one application may relate to several goods and/or services, whether they belong to one class or to several classes of the Nice Classification. Where goods and/or services belonging to several classes of the Nice Classification have been included in one application, such an application shall result in one registration. Moreover, any application referring to several goods or services referred to as the “initial application” may be divided by the applicant into two (2) or more applications hereafter referred to as the “divisional applications” by distributing among the latter the goods or services referred to in the initial application, subject to the following conditions:
- A single class shall not be subdivided.
- The divisional applications must be submitted before examination of the initial application or within two (2) months from mailing date of the first action of the Bureau.
- Upon receipt of the divisional applications, the Office shall cancel the initial application together with its application number. New application numbers shall be given to the divisional applications but the filing date shall be the same as the filing date of the initial application. The divisional applications shall likewise preserve the benefit of the right of priority of the initial application.
Period of protection of a trademark registration
Ten (10) years from the date of issuance and is renewable for a period of ten (10) years at a time.
Copyright
Copyright is a set of prerogatives conferring on the authors of literary and artistic works control over the public exploitation of their works and ensuring them renumeration to which they are entitled in consideration of their creative work.
Difference between patent and copyright
A patent is a document securing to an inventor for a term of years exclusive right to his or her invention. While a copyright chiefly in literary, musical, artistic, photographic and audio-visual works.
Period of copyright and its effectivity
The class designation of copyrightable works under R.A. 8293 have the following terms of protections:
- For literary works – Lifetime of the author and for 50 years after his/her (class A,B,C,D,E,F,G,I,J,M,N,O.) death.
- For Applied Art – Twenty-five(25) years from the date of making of the (class H) work.
- For photographic – Fifty (50) years from publication of the work and for (class K) unpublished fifty (50) years from the date of making of the work.
- Audio-Visual work – Fifty(50) years from the publication and if unpublished (class L) from the date of making of the work.
- Sound Recording – Fifty(50) years from the end of the year in which the (class P) recording took place.
- Broadcast Recording – Twenty(20) years from the date the broadcast took (class Q) place.
A patent/copyright in other countries recognized in the Philippines, and vice versa
Those countries which are signatories to the Berne Convention are required to extend to the nationals of other signatory-countries the rights and privileges that they give to their own nationals relative to the copyright. The Philippines is a signatory to the Berne Convention; hence, it recognizes patent/copyright in other signatory countries.
Where to apply for a copyright
The registration of copyright is in the: Copyright Office, The National Library.
Applicant for Copyright
- The Employer/Company owns copyright if the work is the result of performance of regular assigned duties of employee unless otherwise agreed upon.
- The Employee owns copyright if object of copyright is not part of his regular duties even if he uses the time, facilities and materials of employer
- If work is commissioned, one who commissioned owns the same and the copyright is jointly owned unless stipulated otherwise.
- The author or creator of any work can waive or transfer hi/her work in favor of a corporation or individual to own a copyright.
Works that may be copyrighted
The following are the copyrightable works:
CLASS
A – Books, Pamphlets and other writings;
B- Periodicals and newspapers;
C – Lectures, sermons, addresses, dissertations prepared for oral delivery. Whether or not reduced in writing or other material form;
D – Letters;
E – Dramatic or dramatico-musical composition (T.V. or movie scripts), Choreographic works or entertainment in dumb shows;
F – Musical compositions, with or without works;
G – Works of drawing , painting, architecture, sculpture, Engraving, lithography or other works of art, models or designs of work of art;
H – Original ornamental designs or models for articles of manufacture; whether or not registrable as an industrial design, and other works of applied art;
I – Illustrations, maps, plans, sketches, charts and three-dimensional relative to geography, topography, architecture or science;
J – Drawings or plastic works of a scientific or technical racter;
K – Photographic works and cinematographic works and works produced By a process analogous to photography; lantern slides;
L – Audiovisual works and cinematographic works works produced by a Process analogous to cinematography or any process for making audio-Visual recordings;
M – Pictorial illustrations and advertisement
N – Computer programs; and
O – Other literary, scholarly, scientific and artistic works.
Period of potection when designs are copyrighted.
The protection for the design is twenty (25) years from the date of making of the work.
Securing a copyright for a design that has already been patented by another company.
This can be done because unlike the patent office, the copyright office performs ministerial functions. The copyright office only relies on the back of the application form/affidavit that the applicant is submitting his/her original work to the copyright office.
Determining if a product design offered by a designer is copyrighted by another
Ask for the certificate of copyright registration or do a research with the copyright office.
Patent
It refers to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrial applicable.
Those that can be patented.
Machines, articles of manufacture, methods, (processes), compositions of matter (chemicals, cell lines), any field of human activity which is new or involves an inventive step and is industrially applicable is patentable. An invention shall not be considered new if it forms part of prior art. Special kind of patents cover the appearance of useful objects (industrial design) or a technical solution of a problem in any field of human activity that is new and industrially applicable (utility model).
Those that cannot be patented
Discoveries, naturally occurring (unaltered) scientific theories & and mathematical methods, purely mental processes, schemes, playing games, methods of doing business, programs for computers, aesthetic creations, arrangements of printed matter, plant varieties or animal breeds or essentially biological process for the production of plants & animals; inventions solely useful in making atomic weapons or anything contrary to public order or morality, and human beings cannot be patented.
Validity of a patent
Invention patents are valid for a term of twenty (20) years from the filing date of the application. This means that the owner of the invention or process essentially has a 20-year monopoly to exclude others from making, using, selling or importing the invention in return for which the owner fully discloses the information. However, a patent shall cease to be in force and effect if any prescribed annual fee is not paid within the prescribed time or if the patent is cancelled in accordance with the provisions of the Intellectual Property Code. However, for a utility model, the term is seven (7) years without renewal; and for an industrial design, the term is five (5) years plus two (2) renewals of five years each.
Those entitled to a patent
We follow the first-to-file rule in the granting of patents. Essentially, this means that if two (2) or more persons have made the same invention independently of each other, the right to the patent shall belong to the person who filed for such an invention. In other words, where two or more applications are filed for the same invention, the right of the patent shall belong to the applicant who has the earliest filing date or the earliest priority date. The patent belongs to the inventor, his heir or assigns. When two or more persons have made an invention, they will own the patent proportionately (i.e. if there are two inventors, each one is entitled to one-half share). In case where an employee creates an invention during the course of his employment contract, the patent shall belong to the employee, if the inventive activity was not a part of his regular duties even though he uses the time, facilities and materials of his employer. However, if the invention is the result of the employee’s regular duties, it belongs to his employer, unless there was a prior express or implied agreement to the contrary. In the case when an invention is commissioned, the person who commissions the work shall own the patent unless otherwise stipulated in the contract.
Requirements of filing a patent
The law requires that the patent application should be in English or Filipino and shall include the following:
1. Request for a grant of patent
2. Specifications containing the following:
a. Title of the Invention
- Disclosure and description of the invention
- Drawings necessary for the understanding of the invention
- A brief explanation of the drawings, if any
- A distinct and explicit claim or claims of the invention
- An abstract
- Priority claim, if any
- Power of Attorney
- Filing fees