15 November, 2015
Industrial designs are the unique shapes and colours which distinguish your product’s appearance. Whereas a trade mark is a logo or other symbol which identifies your brand, an industrial design is the sleek curves or shapes which make a iPad or Toberlone bar look so distinct.
In this edition of our South-East Asia IPR Basics series, we will look at how industrial designs are handled in the Philippines. For more information, be sure to visit our website or contact one of our experts.
The Philippines: a background for SMEs
The Philippines is an emerging, newly-industrialized market with the world’s 39th-largest economy, according to the World Bank. With Q2 2015 GDP growth of 5.6% and the EU-Philippines Partnership and Cooperation Agreement signed in 2012 set to be implemented soon, the Philippines presents a number of ready business opportunities for European SMEs. Low wage inflation, consistent liberalizing reforms to the economy and regulatory efficiency, and a free banking sector contribute to the Philippines’ Ease of Doing Business score of 95. Balancing these strengths are lingering issues with corruption and an inefficient and political judiciary.
The EU is the largest investor in the Philippines, contributing roughly 8 billion euros, or 30% of FDI, while EU-Philippines trade reached 12.47 billion Euros in 2014. Major EU exports to the Philippines grew an average of 16.1% per annum from 2010 to 2014 and included machinery and transport equipment (58.8%), chemicals and related products (11.5%), and food and live animals (10.3%) in 2014. That year, primary Filipino exports to the EU included machinery and appliances (60.2%), optical and photographic instruments (11.1%), and animal or vegetable fats and oils such as coconut oil (6.2%).
The Philippines is a member of the following international conventions regulating IP matters[1]:
Patent Cooperation Treaty
- Berne Convention for the Protection of Literary and Artistic Works
- Paris Convention for the Protection of Industrial Property
- Convention Establishing the World Intellectual Property Organization
- WIPO Copyright Treaty
- WIPO Performances and Phonograms Treaty
- Madrid Agreement and Protocol
- ASEAN Framework Agreement on Intellectual Property Cooperation
- ASEAN Trade in Goods Agreement
Industrial design in the Philippines
Applications for industrial designs are handled by the Bureau of Patents at the Intellectual Property Office. According the Philippines’ Intellectual Property Code (Republic Act No. 8293), an industrial design is “any composition of lines or colours or any three-dimensional form, whether or not associated with lines or colours” which serves to distinguish a product. Industrial designs must:
- Be new; they must not have been made available to the public before anywhere in the world before the filing date and contains no content present in an earlier patent, utility model, or industrial design application. This does not extend to disclosures made the inventor, other patent offices which release the information in an unauthorized way, or a third party which gained information directly from the inventor.
- Not be dictated by technical or functional considerations; essentially, a product design cannot be registered as an industrial design if the product had to be shaped in that way in order for it to work or to be functional.
- Not be “mere schemes of surface ornamentations” which do not relate to the industrial handicraft
Applying for an industrial design
Applications can be made in either English or Filipino. An application for an industrial design must pay the requisite fees and must contain:
- A request for registration of the industrial design
- Information identifying the applicant
- An indication of the article of manufacture or handicraft to which the design will be applied
- A representation of the design by drawings, photographs, or other graphic means which fully disclose the distinctive features of the design
- The name and address of the creator or, should the applicant not be the creator, a statement indicating the origin of the right to the design
- (optional) a specimen of the article bearing the design
- An application may relate to two or more designs given that the designs relate to the same sub-class of the International Classification or to the same set of articles. Changes in ownership of industrial design can be registered with the IPO if proof of such ownership changes is provided.
Examination process and length of protection
The Philippines has a first to file system, meaning that industrial designs are assigned to the first person to file for them. The law provides two exceptions to this; first, industrial designs belong to those who commission work leading to the design, or to an employer if an employee creates the invention in the course of his regularly-assigned duties. Second, designs gain priority when the same design was earlier filed with an international IPR convention or a in a nation with an IPR treaty with the Philippines. To gain priority in this way,
there are three requirements:
- The local application must expressly claim priority
- The local application must be filed within 6 months of the earliest foreign filing date
A certified copy of the foreign application must be provided along with an English translation within 6 months of filing in the Philippines
An application with a priority date is treated as though it was filed on that date and thus offer additional protection to companies’ IPR. For example, if Company A files a design in France, Company B may read the details of that design and try to copy that design in the Philippines. Claiming priority would allow Company A to be treated as though it had filed its Filipino design at the same time as its French design, giving it a leg up over Company B in the Philippines’ first-to-file system. Even if no priority is claimed, earlier applications or searches conducted by European, Japanese, or US patent offices can or may be requested to be submitted in order to expedite the application.
Fees for patent applications are assessed differently for small (assets worth one hundred million Philippines Pesos or less) and large entities (all others). Applicants are assumed to be large entities unless they can prove otherwise. Please visit here for a list of fees for industrial design applications.
Examinations and period of protection
Once the application is complete, the IPO will classify the design and conduct a formality examination to double-check that the design meets all requirements.
If a design is refused, the decision may be appealed to the Director of the Bureau of Patents. That decision may then itself be appealed to the Director General of the Intellectual Property Office, to the Court of Appeals, and to the Supreme Court. If an application passes the examination and all fees have been paid, an Industrial Design Certificate will be granted. The certificate will take effect on the date of the publication of the granting of the patent in the Gazette. Industrial designs are protected for up to two consecutive periods of five years each. Renewal fees must be paid a full year before the scheduled expiration of the design, although there is an option for a six-month grace period for a fee.
Enforcing your Intellectual Property Rights
Grounds for action and cancellation petitions
Industrial design certificates allow their holders to prevent others from using their industrial designs without permission. In pursuing legal action, no damages can be recovered for acts of infringement more than four years old or for acts of infringement committed before the infringer knew or could reasonably be expected to know of the patent. Additionally, any prior user of a design who did so in good faith and had undertaken “serious preparations” to use the design before the filing date or priority date of the application will have the right to continue use of the design. The Legal Affairs Bureau of the Intellectual Property Office is the organ responsible for resolving many patent disputes, including:
- Cancellation or suspension of any permits or licenses issued by the IPO
- Administrative complaints for violations of IPR laws where total damages do not exceed 200,000 Filipino pesos
- Issuance of cease and desist orders
- Seizure of products and properties which are subject of IPR offenses
- Issuance of administrative fines of up to 150,000 pesos
If a company finds another firm attempting to register a design which infringes upon its IP rights, it can petition to cancel the infringing patent by paying a fee. This petition must be clearly argued and in writing. If printed publications or patents from other countries are used as evidence, they must be supplied with an English translation. If the court finds that the “true and actual inventor” has been deprived of a design without his consent, then the court can cancel or transfer the design and assign damages according to circumstances.
Civil action
Anyone possessing an infringed right may bring a civil action. The court can award damages or, if damages are inadequate or difficult to assess, the court can award damages of equal value with reasonable royalties. Awards can also exceed damages, though they are capped at 300% of total damages, and can include destruction of infringing goods. Anyone who supplies the infringer with components of a patented process knowing them to be “especially adopted for infringing the patented invention and not suitable for substantial non-infringing use” can also be held jointly liable with the infringer.
Relevant contacts
Intellectual Property Office of the Philippines
28 Upper McKinley Road, McKinley Hill Town Center
Fort Bonifacio, Taguig City 1634, Philippines
Web: http://www.ipophil.gov.ph/index.php/contact-us#sthash.zP4D8nWc.dpuf
[1] For a full list, see the WIPO website at: http://www.wipo.int/wipolex/en/profile.jsp?code=ph
Samuel Sabasteanski, South-East Asia IPR SME-Helpdesk
