lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA - THE REVIEW SCHOOL OF ACCOUNTANCY ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
CPA Review Batch 41  May 2021 CPA Licensure Examination  Week No. 19
REGULATORY FRAMEWORK for BUSINESS TRANSACTIONS Atty. J. Domingo  Atty. N. Soriano Week No. 19: INTELLECTUAL PROPERTY LAWS

 Non-patentable inventions:
RFBT-10: INTELLECTUAL PROPERTY LAWS 1. Discoveries, scientific theories and mathematical method
2. Schemes, rules and methods of performing mental acts, playing games or doing business and programs for
computers
 Effectivity: January 1, 1998 3. Methods for treatment of the human body or animal body by surgery or therapy and diagnostic methods
practiced on the human or animal body
 Intellectual property: 4. Plant varieties or animal breeds of essentially biological process for the production of plants or animals
1. Copyright and related rights 5. Aesthetic creations
2. Trademark and service marks 6. Anything which is contrary to public order or morality
3. Patents 7. In the case of drugs and medicines:
4. Geographical indications a. Mere discovery of a new form or new property of a known substance which does not result in the
5. Layout designs (topographies) of integrated circuits enhancement of the known efficacy of that substance
6. Protection of undisclosed information b. Mere discovery of any new property or new use for a known substance
7. Industrial designs: any composition of lines or colors any three-dimensional form, whether or not associated c. Mere use of a known process unless such known process results in a new product that employs at least
with lines or colors, provided that such composition or form gives a special appearance to and can serve as one new reactant
pattern for an industrial product or handicraft
 Novelty (Section 23 of RA8293): An invention shall not be considered new if it forms part of a prior art.
 Technology transfer arrangements: contracts or agreements involving the transfer of systematic knowledge
for the manufacture of a product, the application of a process, rendering of a service including management  Prior Art:
contracts; and the transfer, assignment of licensing of all forms of intellectual property rights, including 1. Everything which has been made available to the public anywhere in the world, before the filing date or the
licensing of computer software except computer software developed for mass market priority date of the application claiming the invention; and
2. The whole contents of an application for a patent, utility model, or industrial design registration, published in
Copyright Patent Trademark accordance with law, filed or effective in the Philippines, which a filing or priority date that is earlier than the
New, useful filing or priority date of the application
Subject Literary, and Goods
matter of the scientific or industrially manufactured  Non-prejudicial Disclosure: The disclosure of information contained in the application during the 12 months
right artistic work applicable or produced preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground
inventions of novelty if such disclosure was made by:
Where right 1. The inventor;
National 2. A patent office and the information was contained (a) in another application filed by the inventor and should
is to be IPO IPO
Library not have been disclosed by the office, or (b) in an application filed without the knowledge or consent of the
registered
20 years inventor by a third party which obtained the information directly or indirectly from the inventor; or
Generally 50 10 years from 3. The third party which obtained the information directly or indirectly from the inventor.
from the
Duration of years after issuance of
filing date of
right death of the
the
certificate of  Inventive Step: if having regard to prior art, it is not obvious to a person skilled in the art at the time of the
author registration filing date or priority date of the application claiming the invention
application

 International Conventions and Reciprocity (Section 3 of RA8293): Any person who is national or who is  Right to a patent: belongs to the inventor, his heirs or assigns; when 2 or more persons have jointly made an
domiciled or has a real and effective industrial establishment in a country which is a party to any convention, invention, said right shall belong to them jointly
treaty, or agreement relating 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  First-to-File Rule: If two or more persons have made the invention separately and independently of each other
benefits to the extent necessary to give effect to any provision of such convention, treaty, or reciprocal law, in the right to the patent shall belong to the person who first filed an application for such invention.
addition to the rights to which any owner of an intellectual property right is otherwise entitled under the law.
 Inventions created pursuant to a commission:
1. The person who commissions the work shall own the patent, unless otherwise provided in the contract.
PATENTS 2. In case the employee made the invention in the course of his employment contract, the patent shall belong to:
a. The employee, if the inventive activity is not part of his regular duties even if the employee uses the
 Patentable Inventions: any technical solution of a problem in any field of human activity which is new, time, facilities and materials of the employer
involves an inventive step and is industrially applicable; may be or may relate to, a product, a process, or an b. The employer, if the invention is a result of the performance of his regularly-assigned duties, unless
improvement of any of the foregoing there is an agreement, express or implied, to the contrary

 Requisites:  Right of Priority: An application for patent filed by any person who has previously applied for the same
1. A technical solution of a problem in any field of human activity invention in another country which by treaty, convention or law affords similar privileges to Filipino citizens,
2. It must be a novel invention shall be considered as filed as of the date of filing the foreign application: provided that:
3. Industrially applicable (can be produced and used in any industry) 1. A local application expressly claims priority
2. It is filed within 12 months from the date the earliest foreign application was filed
 Classes of patentable inventions: 3. A certified copy of the foreign application together with an English translation is filed within 6 months from the
1. Useful machine date of filing in the Philippines
2. Product
3. Process  Priority Date: the date of filing of the foreign application for the same invention
4. Improvement of (1), (2) or (3)
5. Micro-organism  Contents of Patent Application (in Filipino or English):
6. Non-biological and microbiological process 1. A request for the grant of a patent;
2. A description of the invention (sufficiently clear and complete for it to be carried out by a person skilled in the
art);

Page 1 of 15 0915-2303213  www.resacpareview.com Page 2 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
Week No. 19: INTELLECTUAL PROPERTY LAWS Week No. 19: INTELLECTUAL PROPERTY LAWS

3. Drawings necessary for the understanding of the invention; Patent owners shall also have the right to assign, or transfer by succession the patent and to conclude licensing
4. One or more claims (define the matter for which protection is sought; clear and concise); and contracts for the same.
5. An abstract (concise summary of the disclosure of the invention as contained in the description, claims, and
drawings in preferably not more than 150 words)  Limitation of patent rights: The owner of a patent has no right to prevent third parties from performing,
Note: Inventor must always be identified. Any authorized person may file an application for the inventor. Before without his authorization, the acts within his rights in the following circumstances:
publication, no application may inspected without the consent of the applicant. 1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or
with express consent, in so far as such use is performed after the product has been so put on the said market
 Unity of Invention: An application shall relate to one invention only or to a group of inventions forming a 2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose, provided, that
single general inventive concept. it does not significantly prejudice the economic interests of the owner of the patent
Note: Violation is not a ground to cancel the patent. 3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject
matter of the patented invention
 Publication of Patent Application: 4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional in
1. The application shall be published in the IPO Gazette together with a search document (determining a prior accordance with a medical prescription or acts concerning the medicine so prepared
art) after the expiration of 18 months from the filing date or priority date. 5. Where the invention is used in any ship, vessel, aircraft or land vehicle of any other country entering the
2. After publication, any interested party may inspect the application documents. territory of the Philippines temporarily or accidentally, provided, that such invention is used exclusively for the
3. The Director General, subject to the approval of DTI Secretary, may prohibit or restrict the publication of an needs of the ship, vessel, aircraft or land vehicle and not used for the manufacturing of anything to be sold
application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic within the Philippines
of the Philippines.
4. After publication, the applicant shall have all the rights of a patentee against any person who, without  Prior User: Any prior user, who, in good faith was using the invention or has undertaken serious preparations
authorization, exercised any of the rights conferred under the law in relation to the invention claimed in the to use the invention in his enterprise or business, before the filing date or priority date of the application on
published application, as if a patent had been granted for that invention, provided that said person had: which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations
a. Actual knowledge that the invention that he was using was the subject matter of a published within the territory where the patent produces its effect. The right of the prior user may only be transferred or
application; or assigned together with his enterprise or business, or with that part of his enterprise or business in which the
b. Received written notice that the invention he was using was the subject matter of a published use or preparations for use have been made.
application being identified in the said notice by its serial number. (Note: No action may be filed
however until the grant of a patent and only within 4 years from commission of the acts complained  Use by the Government: A government agency or third person authorized by the Government may exploit the
of.) invention even without agreement of the patent owner where:
1. The public interest, in particular, national security, nutrition, health or the development of other sectors, as
 Substantive Examination: Within 6 months from date of publication, a written request for examination must determined by the appropriate agency of the government, so requires
be submitted and fees must be paid; otherwise, the application shall be deemed withdrawn. Any withdrawal of 2. A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or
the request for examination shall be irrevocable and shall not authorize the refund of any fee. his licensee, is anti-competitive

 Grant of Patent:  Patent Infringement: the making, using, offering for sale, selling or importing a patented product or a product
1. If the application meets the requirements, IPO shall grant the patent, provided all fees are paid on time. obtained directly or indirectly from a patented process, or the use of a patented process without the
2. If fees are not paid in due time, the application shall be deemed to be withdrawn. authorization of the patentee
3. Effectivity: on the date of the publication of the patent in the IPO Gazette.
4. In case of refusal, the final order shall be appealable to the Director.  Literal Infringement: if one makes, uses or sells an item that contains all elements of the patent claim. This
test is satisfied in either of the following:
 Grounds for cancellation of a patent: 1. Exactness rule: the item that is being sold, made or used conforms exactly to the patent claim of another
1. What is claimed as the invention is not new or patentable 2. Addition rule: one makes, uses or sells an item that has all the elements of the patent claim of another plus
2. The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by other elements
any person skilled in the art
3. The patent is contrary to public order or morality  Doctrine of Equivalents: An infringement also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some modification and change, performs substantially
 Committee of Three: composed of the Director of Legal Affairs as chairman and 2 members who have the the same function in substantially the same way to achieve substantially the same result.
experience or expertise in the field of technology to which the patent sought to be cancelled relates, in cases
involving highly technical issues; decision shall be appealable to the Director General  Civil action: to recover from the infringer such damages (actual damages not exceeding 3 times of damages
sustained) sustained thereby, plus attorney’s fees and other expenses of litigation, and to secure an injunction
 Effect of Cancellation of Patent: for the protection of his rights
1. Notice of cancellation shall be published in the IPO Gazette.
2. Rights conferred shall terminate.  Criminal action: imprisonment for a period not less than 6 months but not more than 3 years and/or a fine of
3. Unless restrained by the Director General, the decision shall be immediately executory even pending appeal. not less than P100,000.00 but not more than P300,000.00.

 Remedies of the true and actual inventor: If a person, who was deprived of the patent without his consent or  Prescription: 3 years from the date of commission of the crime (repetition of infringement)
through fraud is declared by final court order or decision to be the true and actual inventor, the court shall Note: Under Section 79 of RA8293, no damages can be recovered for acts of infringement committed more than 4 years
order for his substitution as patentee, or at the option of the true inventor, cancel the patent and award actual before the institution of the action for infringement.
and other damages in his favor if warranted by the circumstances.
Note: This may be availed within one year from the date of publication  Defenses in action for infringement: In addition to other defenses available to him, he may show the
invalidity of the patent or any claim thereof on any of the grounds for cancellation of a patent.
 Rights conferred by a grant: A patent shall confer on its owner the following exclusive rights:
1. Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or  Voluntary Licensing: To encourage the transfer and dissemination of technology, prevent or control practices
entity from making, using, offering for sale, selling or importing that product. and conditions that may in particular cases constitute an abuse of intellectual property rights having an
2. Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or adverse effect on competition and trade, all technology transfer arrangements shall comply with the provisions
entity from using the process and from manufacturing, dealing in, using, selling or offering for sale, or of the IP Code.
importing any product obtained directly or indirectly from such process

Page 3 of 15 Page 4 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
Week No. 19: INTELLECTUAL PROPERTY LAWS Week No. 19: INTELLECTUAL PROPERTY LAWS

 Mandatory provisions: 4. Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority
1. That the laws of the Philippines shall govern the interpretation of the same and in the event date, in respect of:
of litigation, the venue shall be the proper court in the place where the licensee has its a. The same goods or services
b. Closely related goods or services
principal office; c. If it nearly resembles such a mark as to be likely to deceive or cause confusion
2. Continued access to improvements in techniques and processes related to the technology 5. Identical with, or confusingly similar to, or constitutes a translation if a mark which is considered by the
shall be made available during the period of the technology transfer arrangement; competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not
3. In the event the technology transfer arrangement shall provide for arbitration, the it is registered here
Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of 6. Identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known, which is
registered in the Philippines with respect to goods or services which are not similar to those with respect to
the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of which registration is applied for
Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and 7. Likely to mislead the public, particularly as to the nature, quality, characteristics, or geographical origin of the
the venue of arbitration shall be the Philippines or any neutral country; and goods or services
4. The Philippine taxes on all payments relating to the technology transfer arrangement shall 8. Generic terms for goods or services
be borne by the licensor. 9. Descriptive marks
10. Customary sign in everyday language
 Compulsory Licensing: issuance of a license by the Director General of the IPO to exploit a patented invention 11. Color by itself
without the permission of the patent holder, either by manufacture or through parallel importation 12. Shapes
Grounds: 13. Contrary to public order or morality
1. National emergency or other circumstances of extreme urgency
2. Where the public interest, in particular, national security nutrition, health or the development of other vital  Contents of Trademark Application: (in Filipino or English)
sectors of the national economy as determined by the appropriate agency of the Government, so requires 1. A request for registration
3. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the 2. Name and address of the applicant
patent or his licensee is anti-competitive 3. Name of a State of which the applicant is a national or where he has domicile, and the name of a State in which
4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason the applicant has a real and effective industrial or commercial establishment, if any
5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of 4. If applicant is a juridical entity, the law under which it is organized and existing
being worked, without satisfactory reason, provided, that the importation of the patented article shall 5. Appointment of an agent or representative, if the applicant is not domiciled in the Philippines
constitute working or using the patent 6. If applicant claims priority of an earlier application:
6. Where the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable a. The name of the State with whose national office the earlier application was filed,
terms, as determined by the Secretary of DOH b. The date of which the earlier application was filed, and
c. Application number of the earlier application, if available.
 Assignment of inventions: An assignment may be of the entire right, title or interest in and to the patent and 7. If applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or
the invention covered thereby, or of an undivided share of the entire patent and invention, in which event the names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the
parties become joint owners thereof. An assignment may be limited to a specified territory. It must be in mark which are in that color
writing, acknowledged before a notary public or other officer authorized to administer oath or perform notarial 8. If the mark is a three-dimensional mark, a statement to that effect
acts, and certified under the hand and official seal of the notary or such other officer. 9. One or more reproductions of the mark
10. A transliteration or translation of the mark or of some parts of the mark
11. The names of the goods or services for which the registration is sought
TRADEMARKS 12. A signature by, or other self-identification of, the applicant or his representative
Note: One application may relate to several goods and/or services, whether they belong to one class or to several
 Mark: any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an classes of the Nice Classification.
enterprise
 Prior Use: not required before registration, however, there must be actual use after registration
 Requirements:
1. Visible sign  Declaration of Actual Use: must be filed within 3 years from the filing date of application; otherwise,
2. Capable of distinguishing the goods of an enterprise application shall be refused or the mark shall be removed from the Register; after certificate of registration is
issued, declaration must be filed within one year from the 5 th anniversary of the date of registration
 Collective mark: 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  Division of Application: Any application referring to several goods or services (initial application) may be
different enterprises which use the sign under the control of the registered owner of the collective mark divided by the applicant into 2 or more applications (divisional applications), by distributing among the latter
the goods or services referred to in the initial application.
 Trade name: name or designation identifying or distinguishing an enterprise Note: The divisional applications shall preserve the filing date of the initial application or the benefit of the right of
priority.
 How acquired: The rights in a mark shall be acquired through registration (from the filing date of application)
with the IPO.  Issuance and Publication of Certificate: When the period for filing opposition has expired, or when the
Director of Legal Affairs shall have denied the opposition, the IPO upon payment of the required fee, shall issue
 Non-registrable marks: the certificate of registration. Upon issuance of said certificate, notice thereof making reference to the
1. Immoral, deceptive or scandalous matter or matter which may disparage or falsely suggest a connection with publication of the application shall be published in the IPO Gazette.
persons living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute
2. Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of  Certificate of Registration: prima facie evidence of the validity of the registration, the registrant’s ownership
any foreign nation, or any simulation thereof of the mark, and of the registrant’s exclusive right use the same in connection with the goods or services and
3. Consists of a name, portrait or signature identifying a particular living individual except by his written consent, those that are related thereto specified in the certificate; may be renewed for periods of 10 years upon
or the name, signature or portrait of a deceased President of the Philippines, during the life of his widow, if any, payment of prescribed fee and filing of request
except by written consent of the widow

Page 5 of 15 Page 6 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
Week No. 19: INTELLECTUAL PROPERTY LAWS Week No. 19: INTELLECTUAL PROPERTY LAWS

 Tests:  Remedies:
1. Dominancy Test: focuses on the similarity of the prevalent features of the competing trademarks which might 1. Damages: reasonable profit (doubled if there is actual intent to mislead or defraud)
cause confusion or deception, and thus infringement; question: whether the use of the marks involved is likely 2. Impoundment of sales invoices and other documents evidencing sales
to cause confusion or mistake in the mind of the public or deceive purchasers 3. Injunction
2. Holistic Test: requires that the entirety of the marks in question be considered in resolving confusing 4. Destruction of infringing material
similarity 5. Criminal action

 Well-known Mark: which is determined by competent authority (competent courts or Bureau of Legal Affairs  Requirement of notice: In any suit for infringement, the owner of the registered mark shall not be entitled to
of IPO) to be well-known internationally and in the Philippines, whether or not it is registered in the recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to
Philippines, as being already owned by someone taking into account the knowledge of the relevant sector in the cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice
Philippines which has been obtained as a result of the promotion of the mark that his mark is registered by displaying with the mark the words <Registered Mark= or ® or if the defendant
had otherwise actual notice of the registration.
 Rights conferred by registration:
1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s  Rules in trade names or business names:
consent from using in the course of trade identical or similar signs or containers for goods or services which 1. A name or designation may not be used as a trade name if by its nature or the use to which such name or
are identical or similar to those in respect of which the trademark is registered where such use would result in designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade
a likelihood of confusion. circles or the public as to the nature of the enterprise identified by that name.
2. The exclusive right of the owner of a well-known mark which is registered in the Philippines, shall extend to 2. Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall
goods and services which are not similar to those in respect of which the mark is registered: provided, that the be protected, even prior to or without registration, against any unlawful act committed by third parties.
use of that mark in relation to those goods or services would indicate a connection between those goods or 3. In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or
services and the owner of the registered mark: provided further, that the interests of the owner of the collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed
registered mark are likely to be damaged by such use. unlawful.
4. Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof
 Use by third parties: Registration of the mark shall not confer on the registered owner the right to preclude identified by that name.
third parties from using bona fide their names, addresses, pseudonyms, a geographical name or exact
indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of  Rules on collective marks:
supply, of their goods or services: provided, that such use is confined to the purposes of mere identification or 1. An application for registration of a collective mark shall designate the mark as a collective mark and shall be
information and cannot mislead the public as to the source of the goods or services. accompanied by a copy of the agreement, if any, governing the use of the collective mark.
2. The registered owner of a collective mark shall notify the Director of any changes made in respect of the
 Assignment of Application and Registration: allowed with or without the transfer of the business using the agreement.
mark; no effect against third parties until recorded at the IPO 3. The court shall cancel the registration of a collective mark if the person requesting the cancellation proves that
only the registered owner uses the mark, or that he uses or permits its use in contravention of the agreements
 Cancellation of Registration: Any person who believes that he is or will be damaged by the registration may or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any
file with the Bureau of Legal Affairs: other common characteristics of the goods or services concerned.
1. Within 5 years from the date of registration; 4. The registration of a collective mark, or an application therefor shall not be the subject of a license contract.
2. At any time,
a. if the registered mark becomes the generic name for the goods or services, or a portion thereof, for  Unfair competition:
which it is registered, or 1. Any person who shall employ deception or any other means contrary to good faith by which he shall pass the
b. has been abandoned, or goods manufactured by him or in which he deals, or his business, or services for those of the one having
c. its registration was obtained fraudulently or contrary to law, or established such goodwill, or who shall commit any acts calculated to produce said result.
d. if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent 2. Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer
the source of goods or services on or in connection with which the mark is used, or or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or
e. if the registered owner of the mark without any legitimate reason fails to use the mark within the the devices or words thereon, or in any other feature of their appearance, which would be likely to influence
Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual
period of 3 years or longer manufacturer or dealer, who otherwise clothes the goods with such appearance as shall deceive the public and
defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor
 Non-use: may be excused if caused by circumstances arising independently of the will of the trademark owner; engaged in selling such goods with a like purpose
lack of funds shall not excuse non-use 3. Any person who by any artifice, or device or who employs any other means calculated to induce the false belief
that such person is offering the services of another who has identified such services in the mind of the public
 Misuse: if it does not alter its distinctive character, it is not a ground for cancellation 4. Any person who shall make any false statement in the course of trade or who shall commit any other act
contrary to good faith of a nature calculated to discredit the goods, business or services of another
 Trademark Infringement: Any person who shall, without the consent of the owner of the registered mark:
1. Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same  Criminal penalties: independent of the civil and administrative sanctions imposed by law, imprisonment from
container of a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of 2 years to 5 years and a fine ranging from P50,000.00 to P200,000.00
any goods or services including other preparatory steps necessary to carry out the sale of any goods or services
on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive COPYRIGHTS
2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers,  Basic Principles:
receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering 1. Moment of creation: Works are protected by the sole fact of their creation, irrespective of their mode or form of
for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to expression, as well as of their content, quality and purpose.
cause confusion, or to cause mistake, or to deceive 2. Unprotected subject matter: No protection shall extend to any idea, procedure, system method or operation,
concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or
embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press
information; or any official text of a legislative, administrative or legal nature, as well as any official translation
thereof.

Page 7 of 15 Page 8 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
Week No. 19: INTELLECTUAL PROPERTY LAWS Week No. 19: INTELLECTUAL PROPERTY LAWS

3. Copyright and material object: The copyright is distinct from the property in the material object subject to it. c. First public distribution of the original copy of the work
Consequently, the transfer or assignment of the copyright shall not itself constitute a transfer of the material d. Rental of the original or a copy of an audiovisual or cinematographic work
object. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer e. Public display of the original or a copy of the work
or assignment of the copyright. f. Public performance of the work
g. Other communication to the public of the work
 Definition of Terms: 2. Moral rights (Term: 50 years after author’s death; not assignable or subject to license)
1. Author: the natural person who has created the work a. Require that the authorship of the works be attributed to him, in a prominent way on the copies, and
2. Collective work: created by 2 or more natural persons at the initiative and under the direction of another with with the public use of the work
the understanding that it will be disclosed by the latter under his own name and that contributing natural b. Make any alterations of his work prior to or to withhold it from publication
persons will not be identified c. Object to any distortion, mutilation or other modification of, or other derogatory action in relation to,
3. Public lending: transfer of possession of the original or a copy of a work or sound recording for limited period, his work which would be prejudicial to his honor or reputation
for non-profit purposes, by an institution the services of which are available to the public, such as public library d. Restrain the use of his name with respect to any work not if his own creation or in a distorted version
or archive of his work
4. Published works: works, which with the consent of the authors, are made available to the public Note: An author may waive his moral rights by a written instrument except when the waiver permits another
5. Rental: transfer of possession of the original copy or a copy of a work or sound recording for a limited period of that would substantially tend to injure the literary or artistic reputation of another author or use the name of
time, for profit-making purposes the author with respect to a work he did not create. The person or persons to be charged with the posthumous
6. Work of applied art: an artistic creation with utilitarian functions or incorporated in a useful article, whether enforcement of these rights shall be named in writing to be filed with the National Library. In default of such
made by hand or produced on an industrial scale person or persons, it shall devolve upon either the author’s heirs, and in default of the heirs, the Director of the
National Library.
 Copyright: right over literary and artistic works, which are original intellectual creations in the literary and
artistic domain protected from the moment of creation  Publisher’s rights:
1. The right to publish granted by the author, his heirs or assigns
 Copyrightable works: 2. The publisher shall have a copyright consisting merely of the right of reproduction of the typographical
1. Literary and artistic works: arrangement of the published edition of the work
a. Books, pamphlets, articles and other writings 3. If submitted to newspaper, magazine and the like, the right to publish once materials sent by a writer, a
b. Periodicals and newspapers photographer, an artist to a periodical r newspaper publisher, but such writer or artist retains his copyright on
c. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in the piece
writing or other material form
d. Letters  Rules on ownership of copyright:
e. Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows 1. One creator: creator, his heirs or assigns owns copyright
f. Musical compositions, with or without words 2. Joint creation: co-authors shall be the original owners of the copyright and in the absence of agreement their
g. Works of drawing, painting, architecture, sculpture, engraving, lithography or other works or art; rights shall be governed by the rules on co-ownership.
models or designs for works of art 3. Commissioned work: the person commissioning owns the work; ownership of copyright remains with the
h. Original ornamental designs or models for articles of manufacture, whether or not registrable as an creator, unless there is a stipulation to the contrary
industrial design, and other works of applied art 4. Audiovisual work: producer for purposes of exhibition; for all other purposes, the producer, the author of the
i. Illustrations, maps, plans, sketches, charts and 3-dimensional works relative to geography, topography, scenario, the composer, the film director, the photographic director and the author of the work are the owners
architecture or science 5. Pseudonymous and anonymous works: unless the author is indisputably known, the publisher shall be
j. Drawings or plastic works of a scientific or technical character presumed to be the representative of the author
k. Photographic works including works produced by a process analogous to photography; lantern slides 6. Employee’s work during course of employment: employer, if the result of regular functions or duties but the
l. Audiovisual works and cinematographic works and works produced by a process analogous to employee owns it if it is not part of his duties
cinematography or any process for making audiovisual recordings
m. Pictorial illustrations and advertisements  Limitations on Copyright: does not constitute infringement:
n. Computer programs 1. The recitation or performance of a work, once it has been lawfully made accessible to the public, if done
o. Other literary, scholarly, scientific and artistic works privately and free of charge or if made strictly for a charitable or religious institution or society;
2. Derivative works: 2. The making of quotations from a published work if they are compatible with fair use and only to the extent
a. Dramatizations, translations, adaptations, abridgments, arrangements and other alterations of literary justified for the purpose;
or artistic works 3. The reproduction or communication to the public by mass media of articles on current political, social,
b. Collections of literary, scholarly or artistic works and compilations of data and other materials which economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are
are original by reason of the selection or coordination arrangement of their contents delivered in public if such use is for information purposes and has not been expressly reserved and the source
is clearly indicated;
 Published Edition of Work: In addition to the right to publish granted by the author, his heirs, or assigns, the 4. The reproduction and communication to the public of literary, scientific, or artistic works as part of reports of
publisher shall have a copyright consisting merely of the right of reproduction of the typographical current events by means of photography, cinematography, or broadcasting to the extent necessary for the
arrangement of the published edition of the work. purpose;
5. The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or
 Non-copyrightable works: film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use, and
1. Any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if source and name of author are mentioned;
they are expressed, explained, illustrated or embodied in a work 6. The recording made in schools, universities, or educational institutions of a work included in a broadcast for
2. News of the day and other miscellaneous facts having the character of mere items of press information the use of such schools, universities, or educational institutions (such recording must be deleted within a
3. Any official text of a legislative, administrative or legal nature, as well as any official translation thereof reasonable period after first broadcast);
4. Any work of the government of the Philippines 7. The making of ephemeral recordings by a broadcast organization by means of its own facilities and for use in
its own broadcast;
 Rights of copyright owner: 8. The use made of a work by or under the direction or control of the Government, by the National Library or by
1. Economic rights: exclusive right to carry out, authorize or prevent: educational, scientific, or professional institutions where such use is in the public interest and is compatible
a. Reproduction of the work or substantial portion of the work with fair use;
b. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work

Page 9 of 15 Page 10 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
Week No. 19: INTELLECTUAL PROPERTY LAWS Week No. 19: INTELLECTUAL PROPERTY LAWS

9. The public performance or the communication to the public of a work, in a place where no admission fee is  Effectivity: during the lifetime of the author and for 50 years after his death
charged in respect of such public performance or communication, by a club or institution for charitable or
educational purpose only, whose aim is not profit making; Exception: prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily
10. Public display of the original or a copy of the work not made by means of a film, slide, television image or derives gain from the proceeds of reproductions
otherwise on screen or by means of any other device or process;
11. Any use made if a work for the purpose of any judicial proceedings or for the giving of professional advice by a
legal practitioner. Works Term of Protection
Original, derivative, and During the life of the author and for 50 years after his death
 Doctrine of Fair Use: Fair use of a copyrighted work for criticism, comment, news reporting, teaching posthumous works
including multiple copies for classroom use scholarship, research and similar purposes is not an infringement Works of joint authorship During the life of the last surviving author and for 50 years after his death
of copyright. Anonymous or 50 years from the date on which the work was first lawfully published
Factors: pseudonymous works
1. Purpose and the character of the use During the life of the author (or last surviving author) and for 50 years after his death
2. Nature of the copyrighted work
3. Amount and substantiality of the portions used If author’s identity is 50 years from the making of the work
4. Effect of the use upon the potential market of the copyrighted work revealed or is no longer in
doubt
 Work of Architecture: includes the right to control the erection of any building which reproduces the whole
or a substantial part of the work either in its original form or in any form recognizably derived from the If not published
original; excludes the right to control the reconstruction or rehabilitation in the same style as the original of a Works of applied art 25 tears from the date of making
building to which that copyright relates Photographic works 50 years from publication

 Rules on Reproduction: permitted If not published 50 years from making

1. Published work: private reproduction in a single copy made by a natural person exclusively for research and Audio-visual works 50 years from publication
private study, without the authorization of the owner of copyright, except:
a. Work of architecture; If not published 50 years from making
b. Entire book or a substantial part thereof, or of a musical work in graphic form by reprographic means; How to compute: The term of protection subsequent to the death of the author shall run from the date of his death or
c. Compilation of data and other materials; of publication, but such terms shall always be deemed to begin on the first day of January of the year following the
d. Computer program; and event which gave rise to them.
e. Where reproduction would unreasonably conflict with a normal exploitation of the work or would Example: If the author of a literary work dies on July 1, 2017, the 50 year-term shall begin to run on January 1, 2018.
otherwise unreasonably prejudice the legitimate interests of the author. Hence, the protection expires on December 31, 2067 and not June 30, 2067.
2. By libraries: make a single copy of the work by reprographic reproduction, without the authorization of the Performances not 50 years from the end of the year in which the performance took place
author or copyright owner: incorporated in recordings
a. Where the work by reason of its fragile character or rarity cannot be lent to user in its original form; Sound or image and sound 50 years from the end of the year in which the recording took place
b. Where the works are isolated articles in composite works or brief portions of other published works recordings and for
and the reproduction is necessary to supply them, when this is considered expedient, to persons performances incorporated
requesting their loan for purposes of research or study instead of lending the volumes or booklets therein
which contain them; and Broadcasts 20 years from the date the broadcast took place
c. Where the making of such copy is in order to preserve and, if necessary in the event that it is lost,
destroyed, or rendered unusable, replace a copy, or to replace, in the permanent collection of another
 Presumption of Authorship:
similar library or archive, a copy which has been lost, destroyed, or rendered unusable and copies are
1. The natural person whose name is indicated on a work in the usual manner as the author shall, in the absence
not available with the publisher.
of proof to the contrary, be presumed to be the author of the work. (applicable where the pseudonym leaves no
3. Computer program: reproduction in one back-up copy or adaptation of a computer program, without doubt as to the identity of the author)
authorization of the author, or other copyright owner
2. The person or body corporate whose name appears on an audio-visual work in the usual manner shall, in the
absence of proof to the contrary, be presumed to be the maker of said work.
 Importation for Personal Purposes: permitted without the authorization of the author of or other copyright
owner
 Ownership of Deposit and Instruments: All copies deposited and instruments in writing filed with the
1. When copies of the work are not available in the Philippines, and: National Library and the Supreme Court Library in accordance with RA8293 shall become the property of the
a. Not more than one copy at one time is imported for strictly individual use only; or
Government.
b. The importation is by authority of and for the use of the Philippine Government; or
c. The importation, consisting of not more than 3 such copies or likenesses in any one invoice, is not for
 Copyright Infringement: when there is piracy or substantial reproduction
sale but for use only of any religious, charitable, or educational society or institution duly incorporated
or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or
free public library in the Philippines
 Remedies:
2. When such copies form parts of libraries and personal baggage belonging to persons or families arriving from
1. Injunction to prevent infringement
foreign countries and are not intended for sale (should not exceed 3 copies)
2. Action for damages which should be filed within 4 years
3. Criminal case
 Breach of Contract: An author cannot be compelled to perform his contract to create a work or for the
publication of his work already in existence. However, he may be held liable for damages for breach of such
 Criminal penalties:
contract.
1. Imprisonment of 1 to 3 years plus fine from P50,000.00 to P100,000.00 for the first offense
2. Imprisonment of 3 years and 1 day to 6 years plus fine from P150,000.00 to P500,000.00 for the second offense
 Sale or Lease of Work: In every sale or lease of an original work of painting or sculpture or of the original
3. Imprisonment of 6 years and 1 day to 9 years plus fine from P500,000.00 to P1,500,000.00 for the third and
manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the author or his
subsequent offenses
heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of 5%.
4. In all cases, subsidiary imprisonment in cases of insolvency

Page 11 of 15 Page 12 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10 ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10
Week No. 19: INTELLECTUAL PROPERTY LAWS Week No. 19: INTELLECTUAL PROPERTY LAWS

1. It refers to a work which has been created by 2 or more natural persons at the initiative and under the 15. When a material is sent by a writer or an artist to a periodical or newspaper publisher, who owns the
direction of another with the understanding that it will be disclosed by the latter under his own name copyright over the material?
and that contributing natural persons will not be identified. A. Still the writer or the artist C. The publisher
A. Collective work C. Work of applied art B. The writer/artist and the publisher, jointly D. No more copyright due to publication
B. Joint work D. Joint product
16. Recordings made in schools, universities, or educational institutions of a work included in a broadcast
2. It refers to an artistic creation with utilitarian functions or incorporated in a useful article, whether made for the use of such institutions do not constitute copyright infringement if said recordings are deleted
by hand or produced on an industrial scale. within:
A. Work of applied art C. Collective work A. A reasonable period C. 15 days from date of recording
B. Joint work D. Joint product B. 5 days from date of recording D. 30 days from date of recording
.
3. When do rights over copyrights conferred? 17. How many back-up copy/ies of a computer program can be made without committing copyright
A. From the moment of creation infringement?
B. Upon publication A. 1 B. 2 C. 3 C. 5
C. Upon registration with IPO
D. Upon registration with National Library 18. It refers to use of a copyrighted work for criticism, comment, news reporting, teaching including multiple
copies for classroom use, scholarship, research, and similar purposes which is not an infringement of
4. In case of joint creation, who owns the copyright? copyright.
A. Co-authors C. State A. Fair Use C. Use in Good Faith
B. Main author D. The heirs and assigns B. Good Use D. Justified Use
5. In case of commissioned work, who owns the copyright? 19. The importation of a copy of a work by an individual for his personal purposes shall be permitted
A. Creator, unless there is a contrary agreement without the authorization of the author of, or other owner of copyright if the copies form part of libraries
B. Creator, notwithstanding a contrary agreement and personal baggage belonging to persons or families arriving from foreign countries and are not
C. Person commissioning the work intended for sale, provided that such copies do not exceed __ copies.
D. Employer A. 3 B. 4 C. 5 C. 6
6. For purposes of exhibition, who owns the copyright over an audio-visual work? 20. It is committed when there is piracy or substantial reproduction.
A. Producer C. Author A. Copyright Infringement C. Patent Infringement
B. Composer D. Director B. Trademark Infringement D. Unfair Competition
7. In case of pseudonymous and anonymous works and the author is indisputably unknown, who shall be 21. What are the remedies available in case there is copyright infringement?
presumed to be the representative of the author? A. Injunction, action for damages, and criminal case
A. Publisher C. Heirs and assigns B. Injunction only
B. Distributor D. Employer C. Action for damages only
D. Criminal case only
8. In case of employee’s work during the course of employment and it results from the regular functions or
duties, who owns the copyright? 22. An action for damages in case of copyright infringement must be filed within __ years.
A. Employer C. Publisher A. 4 B. 3 C. 2 C. 1
B. Employee D. Heirs and assigns
23. The basic requirements of a trademark are:
9. In case of employee’s work during the course of employment and it does not result from the regular A. Visibility and distinctiveness C. Originality and distinctiveness
functions or duties, who owns the copyright? B. Visibility and originality D. Visibility, distinctiveness and originality
A. Employee C. Publisher
B. Employer D. Heirs and assigns 24. How are rights in a mark required?
A. Registration with IPO C. Prior use
10. The duration of copyright for joint creation is during the life of the last surviving author and for 50 years B. Actual use D. Reservation with IPO
after the death of the __ surviving author.
A. Last C. Second 25. The registrant shall file a declaration of actual use of the mark with evidence to that effect within __ years
B. First D. Heirs of the last from the filing date of the application otherwise it may be cancelled.
A. 3 B. 4 C. 5 C. 6
11. The duration of copyright for an anonymous or a pseudonymous work is until the end of 50 years
following the date of its first: 26. The certificate of registration of a mark shall be __ evidence of the validity of the registration, the
A. Publication C. Registration registrant’s ownership of the mark, and the registrant’s exclusive right to use the same.
B. Creation D. Distribution A. Prima facie C. Conclusive
B. Disputable D. Iota of
12. The 50-year duration of copyright for anonymous or pseudonymous works commences from:
A. January 1 following the date of publication C. January 1 following the date of registration 27. First Statement: A registrant’s right over a mark may be questioned by a person who has a better right
B. January 1 following the date of distribution D. The moment of creation including persons with internationally known marks.
Second Statement: Registration of a mark is not important to keep the goodwill that identifies in the
13. The duration of copyright for published photographic works is: mind of the public the goods he manufactures or deals in.
A. 50 years from the publication of the work C. 50 years from the creation of the work A. Both statements are true. C. Only second statement is true.
B. 25 years from the publication of the work D. 25 years from the creation of the work B. Only first statement is true. D. None of the statements is true.
14. How many times can a periodical or newspaper publisher publish a material sent by a writer, a 28. It provides that a generic or descriptive mark may later acquire the characteristic of distinctiveness and
photographer, or an artist? can later be registered if it acquires a meaning which is different from its ordinary connotation.
A. Only once C. Thrice A. Doctrine of Secondary Meaning C. Doctrine of Tertiary Meaning
B. Twice D. Unlimited B. Doctrine of Primary Meaning D. Doctrine of Second Meaning

Page 13 of 15 Page 14 of 15

Downloaded by Shy Dy ([email protected]) Downloaded by Shy Dy ([email protected])

 lOMoARcPSD|20984121

ReSA – THE REVIEW SCHOOL OF ACCOUNTANCY RFBT-10

Week No. 19: INTELLECTUAL PROPERTY LAWS

29. How many renewal can be made on a trademark registration?

A. Indefinite C. 10 of 5 years each
B. 10 of 10 years each D. 5 of 10 years each
30. It is when an otherwise prudent purchaser is induced to purchase one product in the belief that he is
purchasing another, in which case the defendant’s goods are then bought as the plaintiff’s and its poor
quality reflects badly on the plaintiff’s reputation.
A. Confusion of goods C. Merger of goods
B. Confusion of business D. Merger of business
31. It focuses on the similarity of the prevalent features of the competing trademarks which might cause
confusion or deception, and thus infringement.
A. Dominancy Test C. All Events Test
B. Holistic Test D. Comparative Test
32. These refer to contested cases filed before the IPO.
A. Inter Partes Cases C. Multi-party Cases
B. Related Cases D. Multiple Cases
33. It provides that a mark cannot be registered if it is identical with, or confusingly similar to, or constitutes
a translation of a mark considered well-known 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.
A. Theory of Dilution C. Theory of Similarity
B. Theory of Confusion D. Theory of Connection
34. It refers to 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.
A. Inventive step C. Novelty
B. Industrial applicability D. Originality
35. Who is presumed to be an ordinary practitioner aware of what was common general knowledge in the
art at the relevant date?
A. Person skilled in the art C. Consultant
B. Expert D. Researcher
36. If two or more persons have made the invention separately and independently of each other the right to
the patent shall belong to the person who:
A. First filed an application for such invention
B. First started with the invention
C. First finished the invention
D. Has the greatest use for the public
37. It refers to importation of drugs and medicines by a government agency or by any private third party.
A. Parallel importation C. Technical smuggling
B. Illegal smuggling D. Complex importation
38. 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.
A. Literal Infringement C. Exactness Rule
B. Doctrine of Equivalents D. Addition Rule
39. First Statement: Compulsory license should be granted to any person who has shown his capability to
exploit the invention.
Second Statement: The compulsory license will only be granted after the petitioner has made efforts to
obtain authorization from the patent owner on reasonable commercial terms and conditions but such
efforts have not been successful within a reasonable period of time.
A. Both statements are true. C. Only the second statement is true.
B. Only the first statement is true. D. None of the statements is true.
40. This concept comes into play when two or more inventions are claimed in a single application but are of
such a nature that a single patent may not be issued for them.
A. Concept of divisional applications C. Concept of complex applications
B. Concept of multiple applications D. Concept of complicated applications

ANSWER KEY TO ALL ITEMS (Nos. 1 to 40): Letter A

Page 15 of 15

Downloaded by Shy Dy ([email protected])