Intellectual Creation
Intellectual Creation
Intellectual Creation
All software that we used is a product of a list of instructions which the machine is capable to follow. These
lists of instruction are called program which is then translated into machine language which the computers can directly
understand. A computer program is a set of instructions expressed in words, codes, schemes or in any other form,
which is capable when incorporated in a medium that the computer can read, of causing the computer to perform or
achieve a particular task or result (Sec. 1714 RA 8293). Of course, machines cannot understand our language, thus,
programs are written is some programing language. So if one is to write programs, he must learn an appropriate
programming language.
Writing programs is not easy, thus, before the open source technology blooms, it is normal for a programmer
not to share and/or distribute his program or source code. A programmer’s source code is like a recipe, or a secret
formula or process from which the execution by the computers is anchored. If a programmer had written programs for
his employer, who will own the system, the employer or the programmer? How about the source code? Can the
employer demand, as a matter of right, from his programmer to provide him with the source code? These are some of
the questions which will be addressed by this chapter.
INTELLECTUAL CREATION
Our civil code provides for different modes of acquiring ownership, thus;
1) Occupation;
2) Law;
3) Donation;
4) Tradition;
5) Intellectual Creation;
6) Prescription and
7) Succession. We will focus on the fifth mode, which is, acquiring ownership through intellectual creations.
To illustrate, suppose Engr. Sean designed a car which uses a gas-saving device which lessen the gasoline
consumption by ninety percent (90%), the patent of the said invention belongs to Engr. Sean. Another example is a
painting made by an artist, books written by an author, a logo designed by a student and programs written by a
programmer, newspaper articles, powerpoint presentations, thesis and dissertations. These are considered as
intellectual creations.
Under the Republic Act 8293 otherwise known as the Intellectual Property Code of the Philippines, the term
“intellectual property rights” consists of
a) Copyright and related rights; b) Trademarks and Service Marks;
c) Geographic Indications; d) Industrial Design;
e) Patents; f) Layout-designs and
g) Protection of Undisclosed Information.
From the above intellectual property rights, this chapter will deal more on patents and copyrights since
programmers and other ICT professionals are concerned more on these two intellectual property rights.
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, facilities 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
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and information for the promotion of national development and progress and the common good.
It is also policy of the state to streamline administrative procedures of registering patents, trademarks and copyright,
AN EFFECTIVE INTELLECTUAL AND INDUSTRIAL PROPERTY SYSTEM IS VITAL.
1. To the Development of Domestic and Creative Activity.
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will be loyal to him. Chances are, after knowing his secret invention, his employee will leave him, establish his own
business and worst, register the patent in his name to the prejudice of Sean! Will the State protect Sean? No, because
he did NOT register his patent. “NO PATENT, NO PROTECTION” Pearl and Dean vs. SMI, G.R. No. 148222. August
15, 2003). Worst, the State will protect the said employee of Sean under the principle of “First to File rule.” Section 9
of the Intellectual Property Code reads:
Sec. 29. First to File Rule. – If two (2) or more persons have made the invention separately and independently of
each other, the right to the patent shall belong to the person who filed an application for such invention, or where
two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the
earliest priority date. (3rd Sentence, Sec. 10, R.A No. 165a.)
The patent law has a three-fold purpose: “First, patent law seeks to foster and reward inventions; second, it
promotes disclosures of inventions to stimulate other innovation and to permit the public to practice the invention once
the patent expires; third, the stringent requirements for patent protection seek to ensure that areas in the public domain
remain there for the free use of the public.”
It is only after an exhaustive examination by the patent office that a patent is issued. Such an in-depth
investigation is required because “in rewarding a useful invention, the rights and welfare of the community must be
fairly dealt with and effectively guarded. To that end, the prerequisites to obtaining a patent exactly observed and when
a patent is issued, the limitations on its exercise are usually To begin with, a genuine invention or discovery must be
demonstrated lest in the constant demand for new appliances, the heavy hand tribute be laid on each slight
technological advance in art,” (Pearl and dean vs. MI, G.R, No. 148222, August 15, 2003)
FACTS:
Pearl and Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising display units simply
referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and
illuminated with back lights. Pearl and Dean was able to secure a Certificate of Copyright Registration dated January
20, 1981 over these illuminated display units. The advertisement light boxes were marketed under the trademark
“Poster Ads.”
Sometimes in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc, (SMI) for the lease and
installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under construction at that time,
SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean Vergara, submitted for signature
the contracts covering SM Cubao and SM Makati to SMI’s Advertising Promotions and Publicity Division Manager,
Ramonlito Abano. Only the contract for SM Makati, however, was returned signed.
Two years later, SMI contracted with Metro Industrial Services, the company formerly contracted by Pearl and
Dean to fabricate its display units. After its contract with Metro Industrial was terminated, SMI engaged the services of
EYD Rainbow Advertising Corporation to make the light boxes. Some 300 units were fabricated in 1991. These were
delivered on a staggered basis and installed at SM Megamall and SM City.
In the light of its discoveries, Pearl and Dean sent a letter dated December 11, 1991 to both SMI and NEMI
enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments. It also
demanded the discontinued use of the trademark “Poster Ads” and the payment to Pearl and Dean of compensatory
damages in the amount of Twenty Million Pesos (P20,000,000.00).
ISSUES:
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1. if the engineering or technical drawings of an advertising display unit (light box) are granted copyright
protection(copyright certificate of registration) by the National Library, is the light box depicted in such
engineering drawings ipso facto 25 also protected by such copyright?
2. or should the light box be registered separately and protected by a patent issued by the Bureau of Patents
Trademarks and Technology Transfer (now Intellectual Property Office) – In addition of the copyright of the
engineering drawings?
3. can the owner of a registered trademark legally prevent others from using such trademark if it is a mere
abbreviation of a term descriptive of his goods, services or business?
RULING:
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Stated otherwise, what petitioner seeks is exclusivilitywithout any opportunity for the patent office (IPO) to
scrutinize the light box’s eligibility as a patentable invention. The irony here is that, had petitioner secured a patent
instead, its exclusivity would have been for 17 years only. But through the simplified procedure of copyright-registration
with the National Library – without undergoing the rigor or defending the patentability of its invention before teh IPO
and the public – the petitioner would be protected for 50 years. This situation could not have been the intention of the
law.
In the oft-cited case of Baker vs Selden, The United States Supreme Court held that only the expression of an
idea is protected by copyright, not the idea itself. In that case, the plaintiff held the copyright of a book which expounded
on a new accounting system he had develped. The publication illustrated blank forms of ledgers utilized in such a
system. The defendant reproduced forms similar to those illustrated in the plaintiff’s copyrighted book. The US Supreme
Court ruled that:
“There is no doubt that a work on the subject of book-keeping, though only explanatory of well known system,
may be the subject of a copyright; but, then, it is claimed only as a book. xxx. But there is a clear distinction between
the books, as such, and the art, which it is, intended to illustrate. The mere statement of the proposition is so evident
that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as
that of bookkeeping. A treatise on the composition and use of medicines, be they old or new; on the construction and
use of ploughs or watches or churns; or on the mixture and application of colors for painting or dyeing; or on the mode
of drawing lines to produce the effect of perspective, would be the subject of copyright; but no one would contend that
the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The copyright
of the book, if not pirated from other works, would be valid without regard to the novelty or want of novelty of its subject
matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To
give to the author of the book an exclusive property in the art described therein , when no examination of its novelty
has ever been officially made, would be a surprise and a fraud upon the public. That is the province of the letters
patent, not of copyright. The claim to an invention of discovery of an art or manufactured must be subjected to the
examination of the Patent Office before an exclusive right therein can be obtained; and a patent from the goverment
can only secure it.
The different between two things, letters patent and copyright, may be illustrated by reference to the subjects
just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the
discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right
to the manufactured and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right,
he must obtain a patent for the mixture as a new art, manufacture or composition of matter. He may copyright his book,
if he pleases; but that only secures to him the exclusive right of printing and publishing his book. sonof all other
inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives
no exclusive right to the modes of drawing described, through they may never have been known or used before. By
publishing the book without getting a patent for the art, the latter is given to the public.
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nevertheless have been used for so long and so exclusively by one producer with reference to his article that, in the
trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his
property. The admission by petitioner’s own expert witness thet he himself could not associate “Poster Ads” with
petitioner P & D because it was “too generic” definitely precluded the application of this exception. Having discussed
the most important and critical issues, we see no need to belabor the rest.
Considering the above elements, elements no. 3 is absent with regard to computer programs. Take for instance
the swapping algorithm swap (x,y), which swap or exchange the values of two parameters x and y, imagine if someone
applies for its patents, which means to say, others will be deprived to use such algorithm for the next 20 (20) years!
Section 22. Non-Patentable Inventions. – The following shall be excluded from patent protection:
xxx
22.2 Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for
computers;
xxx
The law is very clear that programs for computers shall be excluded from patent protection. This is because if the law
is otherwise, programmers will be deprived of using or even thinking of a simple algorithm like the swap algorithms.
The swap algorithm can be designed by a novice programmer and hence, does not involve an inventive steps.
So, how can programmers protect their programs? The answer is found in Section 172 which reads:
Section 172. Literary and Artistic Works. – 172.1. Literary and artistic works, hereinafter
referred to as “works”, are original intellectual creations in the literary and artistic domain
protected from the moment of their action and shall include in particular:
A. Books, pamphlets, articles and other writings;
B. Periodicals and newspapers;
C. Lectures, sermons, addresses, dissertations prepared for oral delivery whether or not
reduced in writing or other material form;
D. Letters;
E. Dramatic or dramatico-musical compositions; choreographic works or entertainment
in dumb shows;
F. Musical compositions, with or without words;
G. Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs fir works of art;
H. Original ornamental designs or models for articles or manufacture, whether or not
registrable as an industrial design, and others works of applied art;
I. Illustration, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
J. Drawings or plastic works of scientific or technical character;
K. Photographic works including works produced by a process analogous to
photography; lantern slides;
L. Audio-visual works and cinematographic works and works produces by a process
analogous to cinematography or any process for making audio-visual recordings;
M. Pictorials illustrations and advertisements;
N. Computer programs; and
O. Other literary, scholarly scientific and artistic works.
As a guide in interpreting the above provision of the law, Section 172 is under PART IV – LAW ON
COPYRIGHT of RA 8293. Thus, computer programs shall be governed by the rules of copyright ownership.