IP LECTURE NOTES

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IP LECTURE NOTES

I. Basic Intellectual Property Information

What is IP? (WIPO Definition)

IP refers to creations of the mind: inventions, literary and artistic works , and symbols, names, images and designs used in commerce.

Pertinent Constitutional Provisions a) Article XIV, Sec. 13 The Benefit to the People Proviso The state shall protect and secure the exclusive right of

scientists, investors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial

to the people for such period as may be provided by law.

b) Art. XIV- Secs 10 and 12ARTICLE XIV

SCIENCE AND TECHNOLOGYSection 10. Science and technology are essential for national development and progress. The State shall give priority to research and development, invention, innovation, and their utilization; and to science and technology education, training, and services. It shall support indigenous, appropriate, and self-reliant scientific and technological capabilities, and their application to the country's productive systems and national life.Section 12. The State shall regulate the transfer and promote the adaptation of technology from all sources for the national benefit. It shall encourage the widest participation of private groups, local governments, and community-based organizations in the generation and utilization of science and technology. c) Art. XII, Sec 6 vis a vis Sec. 2 of the IP Code Art. XII Sec. 6 _ARTICLE XIINATIONAL ECONOMY AND PATRIMONY

Section 6. The use of property bears a social function, and all economic agents shall contribute to the common good. xxxxx

IP Code

Sec. 2. Declaration of State Policy The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State 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. (n) d) Art XII, Secs. 14 and 19 Section 14. The sustained development of a reservoir of national talents consisting of Filipino scientists, entrepreneurs, professionals, managers, high-level technical manpower and skilled workers and craftsmen in all fields shall be promoted by the State. The State shall encourage appropriate technology and regulate its transfer for the national benefit. Section 19. The State shall regulate or prohibit monopolies when the public interest so requires. No combinations in restraint of trade or unfair competition shall be allowed. Civil Law Basis Articles 712; 721;722; 724 Art. 721 of the Civil Code

By intellectual creations, the following persons acquire ownership

(ACPS) :

a) the AUTHOR , with regard to his literary,dramatic, historical, legal, philosophical, scientific or other work;

b) the COMPOSER, as to his musical composition;

c) the PAINTER, SCULPTOR or other ARTIST, with respect to product of his art ;

d) the SCIENTIST or TECHNOLOGIST or any other person with regard to his discovery or invention

Historical Background Mirpuri v. C.A (G.R No. 114508, 19 Nov. 1999 ; Taada vs. Angara [G.R. No. 118295. May 2, 1997.] EN BANC

Devt of IP in the world

PATENTS

precursors of modern patent system began in England in the 12th century

person who introduced a technology imported abroad was granted an incentive (LETTERS PATENT) which means an open letter =gives him monopoly powers or sole right to use it for a period enough to establish a new industry to shield him from competition during the formative years of new undertaking

based on such rationale, ist modern patent law was enacted in the Republic of Venice 1474 1628 Statute of Monopolies (England) 14 yrs protection from grant

1790 - USA

1815 - France

1826 - Spain

1864 Italy

1885 - Japan

COPYRIGHT (territorial in nature)

1709 Statute of Anne (England) first copyright law in the world that can be traced to the invention of printing

1741 (Denmark) copyright law

1790 U.S.A (copyright law and patent law)

1791 & 1793 (Copyright law in France)

1834 Chile

1849 Peru

1869 - Argentina

1871 Mexico

1886 , September BERNE Convention for the protection of literary and artistic works is the first international agreement for the protection of the rights of authors held in Berne, Switzerland due to the need for a uniform system of protection.

In view of fundamental changes in the means of creation, use and dissemination of literary and artistic works the following revisions cropped up:

Berlin -1908

Rome 1928

Brussels -1948

Stockholm -1967

Paris -1971

TRADEMARKS

In ancient cultures, trademarks were used by the makers of bricks, leather goods, books, weapons and other products to indicate their origins

Purpose of trademark is to establish a connection between a particular craftsman and his work in the mind of the consumer.

Middle of 19th century, common law in England provided protection for trademarks

1857 France enacted a law in TM

1870 US, Trademark law was declared unconstitutional . reason : covers also registration of trademarks used in connection with goods traded interstate instead of limiting it to intrastate commerce

1905- US New Trademark Law *** Due to international trade it became desirable to obtain protection for

trademarks and inventions in several countries. The only problem is the principle of independence of industrial property meaning laws on trademark or patents differ from one country to another.

*** The fate of an application for the registration of a trademark or an invention in a particular country has no influence whatsoever on the fate of an application for registration of the same trademark or invention in another country.

*** Applications have to be made roughly at the same time in all countries where he wants protection.

Birth of the PARIS CONVENTION for the protection of industrial property in Paris in 1883. Revisions

Rome 1886

Madrid 1890 & 1891

Brussels 1897 & 1900

Washington 1911

The Hague 1925

London 1934

Lisbon - 1958

Stockholm - 1967

Devt of IP in Southeast Asia

IP in SE Asia has not kept pace with its economic growth due to 2 factors :

a) not all SE Asian countries are parties to the Berne Convention (only Malaysia, Phils and Thailand) are members; for the Paris Convention (only Malaysia, Philippines, Indonesia, Singapore and Vietnam are members of the convention

b) limited use of industrial property in 1993 patent applications in ASEAN was less than 5 % of patents in Japan and 8 % of that in US; over 4% of that in Western Europe

due to AFTA , the development of IP in Southeast Asia is likely to be rapid in the near future

Devt of IP in the Philippines

IP system followed those of Spain and US

SPANISH PERIOD

Copyright was governed by the Spanish law of 10 January 1879 which was extended to the Philippines by the Royal Decree of May 5, 1887

Trademark law governed by a Trademark Law promulgated by Queen Ma. Cristina of Spain on 26 Oct. 1888 ( a modified version version of the Spanish TM law)

Patents unknown whether Spanish Patent Law was enforced in the Philippines; records show that Spanish authorities referred patent matters to Sapain

TREATY OF PARIS (Dec. 10 1898)

Art. 13 of TP provides that copyrights, trademarks and patents tha were granted by the Spanish authorities continue to have legal effect in the Philippines

AMERICAN REGIME 1903 (Mar. 6) Act No. 666 Trademarks and Tradename Law of the Philippine Islands

1909 (Mar. 6) Act No 3134 (Copyright law of the Philippine Islands)

1913 (Feb. 10) US Patent Laws applicability in the Philippine island

Trademark system was under the Bureau of Forestry

Patent system under the Executive Bureau.

After Philippine Independence

1947 Philippine Patent Office was established

RA 165 Phil Patent Law

RA 166 Trademark Law

1972 (Dec. 15) effectivity date of PD 49 on Copyright

1951 (August 1) Philippines became contracting party to Berne Convention for Protection of Literary and Artistic works

1965(Sept. 27) Philippines became contracting paty to Paris convention for protections of industrial property 1980 Philippines became contracting party to Convention(establishing the WIPO/accorded to GATT) 1986- PPO was consolidated with the TTB to become the BPTTT 1994 Phils is included in the signatories to Uruguay Round Final Act, the Agreement establishing the WTO. Phils ratified the agreement ( SC upheld the constitutionality Of senates ratification to the agreement)

January 1, 1998 effectivity of the IP Code

Intellectual Property and Economics

Sec. 2 (RA 8293) Declaration of State Policy effective industrial property and IP system is vital to the development of domestic and creative activity. It also :a) facilitates transfer of technology

b)attracts foreign investment

c) ensures market access for our products

IP encourages creativity which promotes economic development IP confers monopoly rights to authors, merchants and inventors. It essentially protects info which is costly to produce but relatively inexpensive to transmit or info is difficult to appropriate Copyright ensures the payment of adequate royalties to authors of literary and artistic works as compensation for their efforts so they can devote fully their energies to the production of such works

Trademarks promote an open market & ensure free competition by enabling consumer to make informed choices between various goods

Patents secure the result of investment in research and innovation

II. Classes of Intellectual Property (2 Main Divisions)

Copyright and related rights

Industrial property

1. distinctive signs trademarks, service marks and geographical indications

2. IP relating to technological advances patent, industrial designs, lay-out designs, protection of undisclosed information

III. IPR under the IP Code1. Copyright and related rights

2. Trademarks and Service Marks

3. Geographical Indications

4. Industrial Designs

5. Patents

6. Lay-out Designs (Topographies) of Integrated Circuits (RA 9150)

7. Protection of Undisclosed Information

IV. International Treaties/ Conventions to which the Philippines is a Signatory

1) Convention creating the WIPO

2) Uruguay Round (creating the WTO)

3) Paris Convention

4) Berne Convention

5) Budapest Treaty

WIPO and WTO

Berne and Paris conventions had separate international secretariats to administer the 2 conventions. They were later placed under the supervision of the Swiss Federal government with their headquarters in Berne.

1893, the two secretariats united and after undergoing several changes became the United International Bureau for the Protection of Intellectual Property (BIRPI, the acronym for the French version of the name)

1960 BIRPI moved its headquarters to Geneva

1967 diplomatic conference on IP in Stockholm (creation of WIPO) to succeed BIRPI

1974 WIPO became a specialized agency of the UN

Relationship between WIPO and WTO

US believed that issues on IP protection involves trade

GATT (General Agreement on Tariff and Trade) is the main multilateral treaty on the elimination of trade barriers.

US advocated that IP issues be addressed under the auspices of GATT because it has dispute settlement mechanism

Developing countries opposed this because of the view that their interests would be better protected within the framework of WIPO due to their numerical number

Developing countries urged WIPO to draft its own treaty for a dispute resolution mechanism ( said proposals not adopted for various reasons

WTO

1993 Uruguay Round of the multilateral trade negotiations under the auspices of GATT was concluded on Dec. 15, 1993which involved discussions for the first time on the protection of intellectual property in relation to international trade

countries cant agree on the most basic issues of the agenda such as :

1. coverage of IP

2. minimum levels of protection

3. adoption by member countries of procedures for the enforcement of IPR

discussions collapsed on 2 occasions but later paved the way for the Agreement on Trade Related Aspects of IPR (TRIPS Agreement ) which took effect on Jan. 1, 1995

also led to the agreement establishing the WTO, effective Jan. 1, 1995

International Treaties Protecting Copyrights

1. Berne Convention for protection of literary works, established in Aug. 1,

1951.

Core Principles:

1. national treatment treat foreigners the way you protect nationals

2. principle of automatic protection no need to register copyrights

3. principle of independence of protection nationals from different states should have protection of their own works

2. TRIPS Agreement Trade Related Aspects of IP Rights, a sub-agreement of the GATT,

Core Principles:

1. Principle of independence of protection of Intellectual property 2. National treatment of the IP owner

3. Most favored nation principle treat all signatories similarly, no special treatment should be given to any nation

Establishment of minimum standards of protection as to enforcement of IPR transnationally is likewise embodied in the TRIPS agreement as one of its salient features Notable Features of the TRIPS Agreement

1. incorporates by reference most of the standards of protection of copyright/related rights under the two conventions

2. explicit recognition of computer software as proper subject of copyright

3. explicit recognition of micro-organisms and non-biological processes for the production of plants and animals as patentable

4. includes substantial number of additional obligations on matters where the Berne and Paris Conventions were silent or inadequate, eg :

a) adoption by member countries of procedures for enforcement of IP

b) provides a dispute resolution mechanism for member countries

TRIPS Compliance commitments

Jan. 1, 1996 all provisions of TRIPS must be complied by developed countries

Jan. 1, 2000 for developing countries

Jan. 1, 2006 least developed countries

***WTO and IPO has a mutually supportive relationship. WTOhas a dispute resolution mechanism, while WIPO promotes

IP in developing countries. The two concluded an agreement which took effect on Jan. 1, 1996 providing cooperation in areas such as :

2. access

3. collection

4. translation of national laws and regulation