A robust IP regime is vital to the promotion of creativity, the facilitation of technology transfer and the effective enforcement of IP rights. This chapter summarises recent policy and procedural changes implemented by the Intellectual Property Office of the Philippines (IPOPHL) to streamline its processes and encourage the use of intellectual property in the Philippines.
IPOPHL has adopted the Industrial Property Automation System (IPAS), an integrated IP administration system which automates the processing of applications, incorporating an electronic document management system for the handling of electronic versions of relevant paper documents. With IPAS, IPOPHL aims to achieve greater efficiency and transparency by reducing application processing times and keeping IP stakeholders updated about the status of their applications.
In early 2015, as a result of a collaboration with the Office for Harmonisation in the Internal Market, IPOPHL became the 38th IP office worldwide to integrate TMview into its trademark search facilities. TMview is a platform that uses an all-in-one search feature to provide vital information and access to almost 25.3 million trademarks around the world, free of charge and 24/7. Notably, TMview has streamlined trademark searching and become a useful resource for local companies seeking to register trademarks. IPOPHL has also joined the other members of the Association of Southeast Asian Nations (ASEAN) in launching the ASEAN Online TMview. This platform makes ASEAN trademark data widely available and accessible to all interested parties.
IPOPHL has also partnered with higher-education institutions across the country as part of its Innovation and Technology Support Office (ITSO) programme, aimed at upgrading participating institutions’ research facilities in the context of IP rights and instilling a culture of IP asset protection. The ITSO programme also seeks to increase awareness and access to IP rights in the Philippines, ultimately contributing to national economic growth and development.
Meanwhile, IPOPHL is working with the National Commission on Indigenous Peoples to enact rules and regulations for the protection of the traditional knowledge systems and practices of indigenous cultural communities. The rules and regulations are intended to address the lack of protection for certain forms of creation and invention which fall short of the requirements for protection under the current IP framework. To this end, the possibility of a sui generis set of laws for the protection of traditional knowledge as intellectual property is being explored.
IPOPHL currently uses the 10th edition of the Nice Classification for the registration of trademarks. In relation to International Classes 35 and 40, trademark examiners are now required to inquire from the applicant whether services involving advertising or manufacturing are carried out for the benefit of others or itself. IPOPHL has clarified that ‘advertising’ under Class 35 refers only to advertising services rendered to others and does not cover advertising made by the applicant for its own goods and services. Regarding the treatment of materials under Class 40, a mark will be considered a service mark only where processing or transformation is effected for another party. It will be considered a trademark in all cases where the goods are marketed by the party which processed or transformed them.
IPOPHL has also issued guidelines to aid trademark examiners in determining the distinctiveness of non-traditional marks. Under the guidelines, examiners may require the submission of additional documents to facilitate examination where necessary. Further, the guidelines specify the requirements for drawings depicting non-traditional marks, as follows:
- Three-dimensional marks – a drawing of the mark showing a single view is sufficient if the distinctive character of the mark is evident from the drawing. If necessary, the examiner may ask the applicant to submit drawings showing more views.
- Colour marks – examiners may require a sample of the colour on paper, the designation of the colour using its common name or a description of how the colour is applied to the goods or services.
- Holograms – a single view which captures the holographic effect in its entirety is acceptable, although the examiner may require multiple views where necessary.
- Motion marks – the examiner may require drawings of the mark (consisting of a series of still images which depict movement when put together) or a description of the movement.
- Position marks – the drawings may consist of a single view and the examiner may require that the part(s) of the mark not claimed for protection be drawn in dotted or broken lines.
Patents, utility models and industrial designs
In order to reduce paper submissions to IPOPHL, sequence listings may now be submitted in electronic format. As an incentive, the fee for electronic filing is discounted. Request forms for patent applications have been correspondingly modified and are available on the IPOPHL website. The modifications are designed to identify whether the sequence listings are submitted in paper or PDF format for the proper assessment of fees.
The procedure for the payment of annuity fees for granted or published divisional patent applications has been harmonised. As of March 2015, the first annual fee shall be due and payable four years after the publication date of the parent application. Thus, the first annuity payment of a direct route divisional application is due four years after the publication date of the direct route parent application; similarly, the first annuity payment of a Patent Cooperation Treaty national phase divisional application is due four years after the international publication date of the parent international application.
To address delays in service by post, the prescribed due date of one month from the filing date of the application for payment of the filing fee is now reckoned from the date of physical receipt by the IPOPHL duty officer (or IP satellite office officer), regardless of the postage date. This applies to inventions (direct route), utility models (direct route), industrial designs and integrated circuit topography applications filed by post.
Bureau of Legal Affairs and Office of the Director General
Supplemental guidelines to the Rules of Procedure for IPO Mediation Proceedings (Office Order 154/2010) have been issued by IPOPHL, granting parties the option to submit their dispute to World Intellectual Property Organisation (WIPO) mediation. Likewise, the penalties provided under the rules now also apply to cases submitted to WIPO mediation. Under the guidelines, all cases filed with IPOPHL primarily involving one or more parties domiciled outside the Philippines (as provided in the WIPO-IPOPHL Memorandum of Understanding) shall be referred to mediation.
The procedure is as follows:
- Where a case is referred to IPOPHL mediation under Office Order 154/2010, the disputing parties will be informed at the briefing stage of their option to submit their dispute to WIPO mediation and receive a copy of the agreement and request for WIPO mediation. On request, a party then has 15 calendar days in which to confirm the submission to WIPO mediation. If the parties fail to agree to submit the dispute to WIPO mediation, the IPOPHL mediation process will immediately resume.
- If the parties agree to refer the case to WIPO mediation, they must complete and sign the agreement and request for WIPO mediation.
- Within five days of signing the agreement and request for WIPO mediation, the Bureau of Legal Affairs Alternative Dispute Resolution Services (ADRS) will issue an order stating that the parties agree to submit the case to WIPO mediation and suspending the IPOPHL mediation. On the issuance of the order, the director of the ADRS will notify the WIPO Arbitration and Mediation Centre, providing a copy of the order.
- After confirming receipt of the notice and the order, the WIPO Arbitration and Mediation Centre will notify the parties and conduct the mediation under the WIPO Mediation Rules, including the applicable fees for IPOPHL cases. The parties may appoint any mediator from the WIPO panel of international mediators (which includes IPOPHL-accredited mediators). If the claimant fails to attend the mediation, the case will be dismissed. If the respondent fails to attend, it may be declared in default.
- The WIPO Arbitration and Mediation Centre will notify the ADRS of the results of the mediation proceedings within five days of termination. If the dispute is settled, the ADRS will return the records of the case to the originating office for the promulgation of the appropriate order of dismissal or a decision based on a compromise agreement. In case of failure to settle, the ADRS will return the records of the case to the originating office for the resumption of adjudication proceedings. In either case, the ADRS action will be issued within five days of receipt of the notice from the WIPO Arbitration and Mediation Centre.
IPOPHL has also amended its rules and regulations on inter partes proceedings to achieve a more efficient and expeditious resolution of inter partes cases before the Bureau of Legal Affairs.
Under the amended rules, the party opposing an application for registration of a mark is no longer required to file its opposition in duplicate and may now file only the original. Further, the opposing party now has 10 days from receipt of the order to resolve any of the following defects, where necessary:
- non-payment of filing fees or other applicable fees; or
- failure to attach accompanying documents.
This also applies to parties seeking a time extension to file a notice of opposition.
Notably, the opposition or petition need not be accompanied by the original affidavits of witnesses and documentary or object evidence on filing. Photocopies can now be appended, as long as the originals are submitted within 10 days of receipt of an order to complete the application. Similarly, the period for the respondent to complete or cure any defects in the filing of its answer has been extended to 10 days from receipt of the order to do so. In the instances cited above, a second five-day extension may now be granted on meritorious grounds.
Cooperation with other IP offices
Pursuant to its memorandum of understanding with the Korean Intellectual Property Office (KIPO), IPOPHIL has begun implementing the Patent Prosecution Highway pilot programme, which entails an accelerated and preferential examination for patent applicants whose applications have already been accepted by the KIPO. Along with 33 IP offices in other countries, IPOPHL expects to reduce the duplication of processes, resulting in faster prosecution of patent applications.
IPOPHL and the Japan Patent Office (JPO) have also entered into a memorandum of cooperation involving capacity-building programmes for patent examiners, alternative dispute resolution, enforcement, IP education and university partnerships. The memorandum of cooperation is a step towards strengthening and expanding the IP regime in the Philippines, making use of Japan’s proven expertise and technological resources – particularly in the patent field. A further goal of the partnership with the JPO is to develop IPOPHL’s university innovation network, bringing new technologies to the Philippines while enhancing the domestic benefits of IP rights.
An adaptive legal and policy framework is essential in order to meet the evolving demands of IP practice. Hence, national IP offices, including IPOPHL, must continue to take a proactive role in retooling their operations and procedures. As the central agency responsible for handling the registration and conflict resolution of IP rights, IPOPHL must also find ways to harness IP rights for the growth and expansion of businesses. In view of the social function and economic potential of intellectual property, IPOPHL must constantly innovate and reform in order to protect and secure the exclusive rights of scientists, inventors and artists.
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Patricia A O Bunye
Patricia A O Bunye is a partner in the IP department of Cruz Marcelo & Tenefrancia. She also heads the mining and natural resources department and the energy practice group.
Her IP practice focuses on trademarks, copyright, due diligence and commercialisation, including licensing and franchising and the registration of food, cosmetics and pharmaceutical products with the Food and Drug Administration.
She is president-elect of the Licensing Executives Society International (LESI) for 2015-2016. Previously, she served as vice president of LESI and chaired the LESI Asia-Pacific Committee.