AND
ESTABLISHING THE INTELLECTUAL PROPERTY
OFFICE,
PROVIDING
FOR ITS POWERS AND FUNCTIONS, AND FOR OTHER PURPOSES
PART I
THE INTELLECTUAL
PROPERTY OFFICE
Section 1.
Title.
- This Act shall be known as the "Intellectual Property Code of the
Philippines."
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)
Sec. 3. International
Conventions and Reciprocity. - Any person
who is a national or who is domiciled or has a real and effective industrial
establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of
unfair competition, to which the Philippines is also a party, or extends
reciprocal rights to nationals of the Philippines by law, shall be entitled
to benefits to the extent necessary to give effect to any provision of
such convention, treaty or reciprocal law, in addition to the rights to
which any owner of an intellectual property right is otherwise entitled
by this Act. (n)
Sec. 4. Definitions.
-
4.1. The term "intellectual
property rights" consists of:
[a] Copyright and Related
Rights;
[b] Trademarks and Service
Marks;
[c] Geographic Indications;
[d] Industrial Designs;
[e] Patents;
[f] Layout-Designs (Topographies)
of Integrated Circuits; and
[g] Protection of Undisclosed
Information (n) [TRIPS].
4.2. The term
"technology transfer arrangements" refers to contracts or agreements
involving the
transfer of systematic knowledge for the manufacture of a product, the
application of a
process, or rendering of a service including management contracts; and
the transfer,
assignment or licensing of all forms of intellectual property rights, including
licensing of
computer software except computer software developed for mass market.
4.3. The term "Office"
refers to the Intellectual Property Office created by this Act.
4.4 The term "IPO
Gazette" refers to the gazette published by the Office under this Act.
(n)
Sec. 5. Functions of
the Intellectual Property Office (IPO).
-
5.1. To administer
and implement the State policies declared in this Act, there is hereby
created
the Intellectual Property Office (IPO) which shall have the following functions:
[a] Examine applications
for grant of letters patent for inventions and register utility models
and industrial designs;
[b] Examine applications
for the registration of marks, geographic indication, integrated
circuits;
[c] Register technology
transfer arrangements and settle disputes involving technology
transfer payments covered by the provisions of Part II, Chapter IX on Voluntary
Licensing and develop and implement strategies to promote and facilitate
technology
transfer;
[d] Promote the
use of patent information as a tool for technology development;
[e] Publish regularly
in its own publication the patents, marks, utility models and industrial
designs, issued and approved, and the technology transfer arrangements
registered;
[f] Administratively
adjudicate contested proceedings affecting intellectual property rights;
and
[g] Coordinate
with other government agencies and the private sector efforts to formulate
and implement plans and policies to strengthen the protection of intellectual
property
rights in the country.
5.2. The Office shall
have custody of all records, books, drawings, specifications, documents,
and
other papers and things relating to intellectual property rights applications
filed with the Office.
(n)
Sec. 6. The Organizational
Structure of the IPO. - 6.1. The Office
shall be headed by a Director General who shall be assisted by two (2)
Deputies Director General.
6.2. The Office shall
be divided into six (6) Bureaus, each of which shall be headed by a Director
and assisted by an Assistant Director. These Bureaus are:
[a] The Bureau of
Patents;
[b] The Bureau of Trademarks;
[c] The Bureau of Legal
Affairs;
[d] The Documentation,
Information and Technology Transfer Bureau;
[e] The Management Information
System and EDP Bureau; and
[f] The Administrative,
Financial and Personnel Services Bureau.
6.3. The Director
General, Deputies Director General, Directors and Assistant Directors shall
be
appointed by the President, and the other officers and employees of the
Office by the
Secretary of Trade and Industry, conformably with and under the Civil Service
Law. (n)
Sec. 7. The Director
General and Deputies Director General. -
7.1. Functions.
- The Director General shall exercise the following powers and functions:
[a] Manage and
direct all functions and activities of the Office, including the promulgation
of rules and regulations to implement the objectives, policies, plans,
programs and projects of the Office: Provided, That in the exercise of
the authority to propose policies and standards in relation to the following:
(1) the effective, efficient, and economical operations of the Office requiring
statutory enactment; (2) coordination with other agencies of government
in relation to the enforcement of intellectual property rights; (3) the
recognition of attorneys, agents, or other persons representing applicants
or other parties before the Office; and (4) the establishment of fees for
the filing and processing of an application for a patent, utility model
or industrial design or mark or a collective mark, geographic indication
and other marks of ownership, and for all other services performed and
materials furnished by the Office, the Director General shall be subject
to the supervision of the Secretary of Trade and Industry;
[b] Exercise exclusive
appellate jurisdiction over all decisions rendered by the Director of Legal
Affairs, the Director of Patents, the Director of Trademarks, and the Director
of the Documentation, Information and Technology Transfer Bureau. The decisions
of the Director General in the exercise of his appellate jurisdiction in
respect of the decisions of the Director of Patents, and the Director of
Trademarks shall be appealable to the Court of Appeals in accordance with
the Rules of Court; and those in respect of the decisions of the Director
of Documentation, Information and Technology Transfer Bureau shall be appealable
to the Secretary of Trade and Industry; and
[c] Exercise original
jurisdiction to resolve disputes relating to the terms of a license involving
the author’s right to public performance or other communication of his
work. The decisions of the Director General in these cases shall be appealable
to the Secretary of Trade and Industry.
7.2. Qualifications.
- The Director General and the Deputies Director
General must be natural
born citizens of the Philippines, at least thirty-five (35) years of age
on the day of their
appointment, holders of a college degree, and of proven competence, integrity,
probity and
independence: Provided, That the Director General and at least one (1)
Deputy Director
General shall be members of the Philippine Bar who have engaged in the
practice of law for
at least ten (10) years: Provided further, That in the selection of the
Director General and the
Deputies Director General, consideration shall be given to such qualifications
as would result,
as far as practicable, in the balanced representation in the Directorate
General of the various
fields of intellectual property.
7.3. Term
of Office. - The Director General and
the Deputies Director General shall be appointed
by the President for a term of five (5) years and shall be eligible for
reappointment only once:
Provided, That the first Director General shall have a first term
of seven (7) years.
Appointment to any vacancy shall be only for the unexpired term of the
predecessor.
7.4. The Office
of the Director General. - The Office
of the Director General shall consist of the
Director General and the Deputies Director General, their immediate staff
and such Offices
and Services that the Director General will set up to support directly
the Office of the Director
General. (n)
Sec. 8. The Bureau of
Patents. - The Bureau of Patents shall
have the following functions:
8.1 Search
and examination of patent applications and the grant of patents;
8.2 Registration
of utility models, industrial designs, and integrated circuits; and
8.3 Conduct
studies and researches in the field of patents in order to assist the Director
General
in formulating policies on the administration and examination of patents.
(n)
Sec. 9. The Bureau of
Trademarks. - The Bureau of Trademarks
shall have the following functions:
9.1 Search
and examination of the applications for the registration of marks, geographic
indications and other marks of ownership and the issuance of the certificates
of registration;
and
9.2 Conduct
studies and researches in the field of trademarks in order to assist the
Director
General in formulating policies on the administration and examination of
trademarks. (n)
Sec. 10. The Bureau
of Legal Affairs. - The Bureau of Legal
Affairs shall have the following functions:
10.1. Hear and decide
opposition to the application for registration of marks; cancellation of
trademarks; subject to the provisions of Section 64, cancellation of patents,
utility models, and industrial designs; and petitions for compulsory licensing
of patents;
10.2. (a) Exercise
original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights: Provided, That its jurisdiction
is limited to complaints where the total damages claimed are not less than
Two hundred thousand pesos (P200,000): Provided, further, That availment
of the provisional remedies may be granted in accordance with the Rules
of Court. The Director of Legal Affairs shall have the power to hold and
punish for contempt all those who disregard orders or writs issued in the
course of the proceedings. (n)
(b) After formal investigation,
the Director for Legal Affairs may impose one (1) or more of the following
administrative penalties:
(i) The issuance of
a cease and desist order which shall specify the acts that the respondent
shall cease and desist from and shall require him to submit a compliance
report within a reasonable time which shall be fixed in the order;
(ii) The acceptance
of a voluntary assurance of compliance or discontinuance as may be imposed.
Such voluntary assurance may include one or more of the following:
(1) An assurance to
comply with the provisions of the intellectual property law violated;
(2) An assurance to
refrain from engaging in unlawful and unfair acts and practices subject
of the formal investigation;
(3) An assurance to
recall, replace, repair, or refund the money value of defective goods distributed
in commerce; and
(4) An assurance to
reimburse the complainant the expenses and costs incurred in prosecuting
the case in the Bureau of Legal Affairs.
The Director of Legal
Affairs may also require the respondent to submit periodic compliance reports
and file a bond to guarantee compliance of his undertaking;
(iii) The condemnation
or seizure of products which are subject of the offense. The goods seized
hereunder shall be disposed of in such manner as may be deemed appropriate
by the Director of Legal Affairs, such as by sale, donation to distressed
local governments or to charitable or relief institutions, exportation,
recycling into other goods, or any combination thereof, under such guidelines
as he may provide;
(iv) The forfeiture
of paraphernalia and all real and personal properties which have been used
in the commission of the offense;
(v) The imposition
of administrative fines in such amount as deemed reasonable by the Director
of Legal Affairs, which shall in no case be less than Five thousand pesos
(P5,000) nor more than One hundred fifty thousand pesos (P150,000). In
addition, an additional fine of not more than One thousand pesos (P1,000)
shall be imposed for each day of continuing violation;
(vi) The cancellation
of any permit, license, authority, or registration which may have been
granted by the Office, or the suspension of the validity thereof for such
period of time as the Director of Legal Affairs may deem reasonable which
shall not exceed one (1) year;
(vii) The withholding
of any permit, license, authority, or registration which is being secured
by the respondent from the Office;
(viii) The assessment
of damages;
(ix) Censure; and
(x) Other analogous
penalties or sanctions. (Secs. 6, 7, 8, and 9, Executive
Order No. 913 [1983]a)
10.3. The Director
General may by Regulations establish the procedure to govern the implementation
of this Section. (n)
Sec. 11. The Documentation,
Information and Technology Transfer Bureau.
- The Documentation, Information and Technology Transfer Bureau shall have
the following functions:
11.1. Support the search
and examination activities of the Office through the following activities:
(a) Maintain and upkeep
classification systems whether they be national or international such as
the International Patent Classification (IPC) system;
(b) Provide advisory
services for the determination of search patterns;
(c) Maintain search
files and search rooms and reference libraries; and
(d) Adapt and package
industrial property information.
11.2. Establish networks
or intermediaries or regional representatives;
11.3. Educate the public
and build awareness on intellectual property through the conduct of seminars
and lectures, and other similar activities;
11.4. Establish working
relations with research and development institutions as well as with local
and international intellectual property professional groups and the like;
11.5 Perform state-of-the-art
searches;
11.6 Promote the use
of patent information as an effective tool to facilitate the development
of technology in the country;
11.7. Provide technical,
advisory, and other services relating to the licensing and promotion of
technology, and carry out an efficient and effective program for technology
transfer; and
11.8. Register technology
transfer arrangements, and settle disputes involving technology transfer
payments. (n)
Sec. 12. The Management
Information Services and EDP Bureau. -
The Management Information Services and EDP Bureau shall:
12.1. Conduct automation
planning, research and development, testing of systems, contracts with
firms, contracting, purchase and maintenance of equipment, design and maintenance
of systems, user consultation, and the like; and
12.2. Provide management
information support and service to the Office. (n)
Sec. 13. The Administrative,
Financial and Human Resource Development Service Bureau. -
13.1. The Administrative
Service shall:
(a) Provide services
relative to procurement and allocation of supplies and equipment, transportation,
messengerial work, cashiering, payment of salaries and other Office's obligations,
office maintenance, proper safety and security, and other utility services;
and comply with government regulatory requirements in the areas of performance
appraisal, compensation and benefits, employment records and reports;
(b) Receive all applications
filed with the Office and collect fees therefor; and
(c) Publish patent
applications and grants, trademark applications, and registration of marks,
industrial designs, utility models, geographic indication, and lay-out
designs of integrated circuits registrations.
13.2. The Patent and
Trademark Administration Services shall perform the following functions
among others:
(a) Maintain registers
of assignments, mergings, licenses, and bibliographic on patents and trademarks;
(b) Collect maintenance
fees, issue certified copies of documents in its custody and perform similar
other activities; and
(c) Hold in custody
all the applications filed with the office, and all patent grants, certificate
of registrations issued by the office, and the like.
13.3. The Financial
Service shall formulate and manage a financial program to ensure availability
and proper utilization of funds; provide for an effective monitoring system
of the financial operations of the Office; and
13.4. The Human Resource
Development Service shall design and implement human resource development
plans and programs for the personnel of the Office; provide for present
and future manpower needs of the organization; maintain high morale and
favorable employee attitudes towards the organization through the continuing
design and implementation of employee development programs.
(n)
Sec. 14. Use of Intellectual
Property Rights Fees by the IPO. -
14.1. For a more effective
and expeditious implementation of this Act, the Director General shall
be authorized to retain, without need of a separate approval from any government
agency, and subject only to the existing accounting and auditing rules
and regulations, all the fees, fines, royalties and other charges, collected
by the Office under this Act and the other laws that the Office will be
mandated to administer, for use in its operations, like upgrading of its
facilities, equipment outlay, human resource development, and the acquisition
of the appropriate office space, among others, to improve the delivery
of its services to the public. This amount, which shall be in addition
to the Office's annual budget, shall be deposited and maintained in a separate
account or fund, which may be used or disbursed directly by the Director
General.
14.2. After five (5)
years from the coming into force of this Act, the Director General shall,
subject to the approval of the Secretary of Trade and Industry, determine
if the fees and charges mentioned in Subsection 14.1 hereof that the Office
shall collect are sufficient to meet its budgetary requirements. If so,
it shall retain all the fees and charges it shall collect under the same
conditions indicated in said Subsection 14.1 but shall forthwith, cease
to receive any funds from the annual budget of the National Government;
if not, the provisions of said Subsection 14.1 shall continue to apply
until such time when the Director General, subject to the approval of the
Secretary of Trade and Industry, certifies that the above-stated fees and
charges the Office shall collect are enough to fund its operations. (n)
Sec. 15. Special Technical
and Scientific Assistance. - The Director
General is empowered to obtain the assistance of technical, scientific
or other qualified officers and employees of other departments, bureaus,
offices, agencies and instrumentalities of the Government, including corporations
owned, controlled or operated by the Government, when deemed necessary
in the consideration of any matter submitted to the Office relative to
the enforcement of the provisions of this Act. (Sec. 3, R.
A. No. 165a)
Sec. 16. Seal of
Office. - The Office shall have a seal,
the form and design of which shall be approved by the Director General.
(Sec. 4, R. A. No. 165a)
Sec. 17. Publication
of Laws and Regulations. - The Director
General shall cause to be printed and make available for distribution,
pamphlet copies of this Act, other pertinent laws, executive orders and
information circulars relating to matters within the jurisdiction of the
Office. (Sec. 5, R. A. No. 165a)
Sec. 18. The IPO
Gazette. - All matters required to be
published under this Act shall be published in the Office's own publication
to be known as the IPO Gazette. (n)
Sec. 19. Disqualification
of Officers and Employees of the Office.
- All officers and employees of the Office shall not apply or act as an
attorney or patent agent of an application for a grant of patent, for the
registration of a utility model, industrial design or mark nor acquire,
except by hereditary succession, any patent or utility model, design registration,
or mark or any right, title or interest therein during their employment
and for one (1) year thereafter. (Sec. 77, R. A. No. 165a)
Harvard
Computer Systems, Inc.