THE PHILIPPINES: TRYING TO BE FRIENDLY
01 September 2011
Ignacio S Sapalo and Anne Mariae Celeste V Jumadla of Sapalo Velez Bundang and Bulilan run through the actions being taken to improve IP protections
Working on the premise that the war against IP piracy and counterfeiting is a war against poverty and unemployment of Filipinos, the IP Philippines Office (IPOPHIL) implemented a holistic approach designed to “minimise at the minimum and eliminate at the maximum” the level of IP violations in the country. This approach is among IPOPHIL’s six paths toward an IP-friendly Philippines, namely:
- Holistic approach to effective enforcement;
- Heightened public education and awareness to build an IP-friendly constituency;
- Institution and capacity-building of relevant government and private institutions toward an IP regime;
- Timely and quality IP adjudication and other forms of dispute resolution;
- Continuing policy advocacy and legislative reforms; and
- Sustained international relations.
Holistic approach
The holistic approach begins with improved anti-counterfeiting border control measures in strategic airports and seaports, in cooperation with the country’s Customs, foreign and domestic trade, revenue and consumer protection agencies. So far, IPOPHIL has:
- Deputised IPOPHIL employees as agents of the Optical Media Board (OMB), with visitorial and inspection powers for optical media products;
- Arranged with the Bureau of Customs (BOC) to give IPOPHIL, upon request, mission orders to conduct visits and inspections of imported items in violation of the IP Code and the Tariff and Customs Code of the Philippines;
- Allowed Philippine National Police (PNP) and the National Bureau of Investigation (NBI) to conduct test buys;
- US Embassy ability to cancel the US visas of mall or store owners found violating IP;
- Department of Trade and Industry cancellation of business registrations of IP violators;
- Cancellation of business or mayor’s permit of IP violators by local government units;
- New anti-piracy legislation.
Building awareness
Aiming to develop an IP culture in the country, IPOPHIL utilised tri-media in creating public awareness of IP, including:
- A radio programme, Piracy Watch, aired at 810 kHZ RJAM;
- A TV programme, Intellectual Property, on the Global News Network (GNN) broadcast; and
- A network of print media contacts that regularly publish news on IP
In addition, the IPOPHIL conducted seminars, events and activities targeting the general public and specific sectors, such as the basic orientation seminars for organisations and institutions, the Leap IP (Learn, Earn and Protect IP) bi-weekly seminar for any interested individuals, as well as IP policy formulation, patent drafting, patent search and technology commercialisation.
IPOPHIL also established partnerships with various organisations, such as the Philippine Chamber of Commerce and Industry, to educate small and medium-sized entrepreneurs, Superbrand, which requires members to be registered with IPOPHIL; and various IP organisations which undertook the study of important IP issues.
As a result of all these efforts, from 2005 to 2010, the combined enforcement operations of the IP Unit of the BOC, the Anti-Fraud and Commercial Crimes Division of the PNP, the IPR Division of the NBI and the OMB confiscated counterfeit and pirated products amounting to P19.99 billion ($470 million), P5.3 billion of which was confiscated in 2010.
Capacity building
Most research in the country, whether by government or private educational or research institutions, is supported by government funds. To address the gap in the IP Code pertaining to the transfer of technology developed by government-funded research, the Philippine Congress enacted Republic Act (RA) 10055 or the Philippine Technology Transfer Act, which came into force on May 12 2010. RA 10055 serves as a mechanism through which government-funded research may be transformed into commercially valuable IP.
As an incentive, government-funded R&D institutions (RDI) are entitled under RA 10055 to share, at least equally with the funding agency, revenues from IP commercialisation. In the absence of a sharing agreement, all revenues from the commercialisation of IP arising from government-funded research shall accrue to the RDI.
As to the sharing of revenues between the RDI and the researcher, this is governed by RA 8439 or the Magna Carta for Scientists, Engineers, Researchers, and other Science & Technology (S&T) Personnel in the Government, which defines the share in the proceeds of royalty payments arising from patents, copyrights and other IP rights of S&T scientists, engineers, researchers and other S&T personnel to be 40%.
In addition, RA 10055 directs RDIs to allow its researcher-employee to commercialise its IP by creating, owning, controlling, or managing a company or spin-off firm, or accepting employment thereof.
To provide support, IPOPHIL launched its programme to establish a network of Innovation & Technology Support Offices (ITSO) or Patent Libraries with the aim of “strengthen(ing) local institutional capacity to access patent information and make use of the patent system”. More particularly, through the ITSO network, IPOPHIL intends to build the institutional capacity of universities, R&D entities, government field offices, industry service providers, consultants and associations to teach and conduct, on their own, patent searches, patent drafting and provide assistance in patent prosecution.
ITSO will:
- Serve as a patent search facility and library for patent information, provide skills training in patent searching, render patent search services, and organise a community of patent information users;
- Provide general information on patents and patenting, provide skills training in patent drafting and prosecution, render patent drafting and prosecution services, and organise a community of experts to participate in patent examination; and
- Render IP audit and evaluation services, provide licensing support, provide advice on IP management and commercialisation strategies, and be a depositary of patent-related documents, papers and statistics.
With the ITSO intended to work hand in hand with the implementation of RA 10055, it is hoped that the patent landscape will drastically change to enable the country’s science and technology sector to keep up with the rest of the world and usher the country into a new era of economic progress.
IP adjudication
To expedite the disposal of its IP cases, IPOPHIL promulgated the Rules of Procedure for IPO Mediation Proceedings which took effect on October 21 2010. The cases covered by these new rules include administrative complaints for IP rights violations, inter partes proceedings such as opposition and cancellation cases involving patents and trade marks, cases appealed to the Office of the Director General from the decisions of the Bureau of Legal Affairs, and disputes relating to the terms of licence involving the author’s rights to public performance or other communication of his work.
Under these rules, referral of cases that are pending before the Bureau of Legal Affairs and the Office of the Director General is mandatory. Once referred to mediation, adjudication will be suspended until the Mediation Office sends the case back for resumption of the proceedings. The parties are given 60 days, which is extendible for another 30 days, to settle their dispute. If no agreement is reached, the mediation will be terminated.
The failure of the party who filed the case to appear before mediation is a ground for the dismissal of the case. The respondent may be declared in default if he fails to participate in the mediation proceedings.
The entire proceeding under the Mediation Office is confidential and any admission and statement made during mediation is inadmissible in a proceeding, unless specifically provided otherwise by law. Subject to contempt and other sanctions, the parties are not allowed to pass on any information obtained in the course of the mediation proceedings to any person or to mention them through other means. If any of this information is cited in any document or pleading of the case, it may be expunged from the records.
Policy and legislative reforms
IPOPHIL published on April 26 2011 a revised Implementing Rules and Regulations (IRR) for Patents, Utility Model and Industrial Designs, and thereafter published further corrections and amendments on July 13 2011.
The revisions are aimed at standardising the practice of patent examiners in the country in evaluating patent, utility model and industrial applications. The important amendments are discussed below.
Patentable inventions
Under the revised IRR, computer-related inventions are among the statutory classes of patentable inventions, together with products, processes and their improvements. This departs from the enumeration made under Republic Act 8293, or the IP Code of the Philippines that a patentable invention “may be, or may relate to, a product, or process, or an improvement of any of the foregoing”.
Strictly speaking, computer-related inventions do not constitute a separate statutory class. As the law does not treat them as sui generis, computer-related inventions are evaluated as a product, a process or an improvement of a product or a process. This is in consonance with the United States Supreme Court’s statement in Diamond v Diehr that a process may be patentable irrespective of the particular form of the instrumentalities used.
As computer programs are expressly excluded from patentability by the IP Code, the Manual of Substantive Examination Practice of the Bureau of Patents provides that a computer-related invention may be patentable if the computer program used, in combination with a computer, causes the computer to operate in a different way, from a technical point of view.
As to the other classes, examples are given. More examples are enumerated under non-patentable inventions, without technically adding new categories. Lumped together with inventions contrary to public order, health, welfare, or morality are processes for cloning or modifying the germ line genetic identity of humans or animals or uses of the human embryo.
There is a debate as to the “public order, health, welfare or morality” repercussions of cloning or modifying the germ line genetic identity of humans, or using human embryos. In the absence of a Supreme Court ruling on the matter, the IP Office takes a conservative stance.
As for animals however, the patentability of inventions relating to them may be assessed in view of the patentability exclusion of “animal breeds or essentially biological process for the production of animals”. Thus, if an invention is not an animal breed or essentially not a biological process, then there should be no reason for withholding patent protection. In addition, there is no strong argument against adopting the position of the Technical Board of Appeals of the European Patent Office in the public order or morality issue of inventions like the so-called oncomouse.
Prior art and equivalents
Expounding on the definition of prior art under the IP Code, or that which is available to the public anywhere in the world, the revised IRR expressly provides that information is deemed available to the public when it is not confidential or restricted to use by a selective group. In addition, prior use and oral disclosure have to be proven with substantial evidence.
In appreciating prior art, the revised IRR also expressly provides that equivalents are to be considered only in assessing inventive step, and not novelty.
Enabling disclosure
It is now required that an enabling disclosure must contain a clear and detailed description of at least one way of doing the invention using working examples. It must contain a sufficient and clear disclosure of the technical features of the invention, including the manner or process of making, performing and using it.
This follows from the requirement in the IP Code that the application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. However, the example need not be the best mode of doing the invention, as required in the United States.
In the case of chemical and pharmaceutical inventions, the disclosure must include one or more representative embodiments or working examples, and all compounds must include their claimed activity. For pharmaceuticals, there must be a description of the result of the pharmacological test.
Considering that compounds are commonly disclosed in a generic formulation, i.e., the “Markush grouping”, where these compounds have a common basic structure and the variable substituents have a common property or activity, the requirement to include the claimed activity of each of the compounds is unnecessary.
IGNACIO S SAPALO
Ignacio S Sapalo is the managing partner in Sapalo Velez Bundang and Bulilan. He obtained a bachelor of science in engineering in 1963 and a bachelor of law from Ateneo de Manila in 1967. He was director of the Philippine Bureau of Patents, Trade Marks and Technology Transfer from 1987 to 1996. During this time, he led the group that drafted the 1998 IP Code of the Philippines. Ignacio is the author of Background Reading Material on the Intellectual Property System of the Philippines (WIPO, 1994) and has been a professor of IP at the Ateneo School of Law since 1991. He is the founder and president of the Intellectual Property Foundation, president of Iprobe (an IP investigation and consulting firm), a member of the executive board of the International Chamber of Commerce of the Philippines and of the board of trustees of the Philippine Dispute Resolution Center. Ignacio is also a member of the Integrated Bar of the Philippines, the Philippine Bar Association, Association Internationale pour la Protection de la Propriété Intellectuelle, the Asian Patent Attorney’s Association and Intellectual Property Association of the Philippines.
ANNE MARIAE CELESTE V JUMADLA
Anne Mariae Celeste V Jumadla obtained her bachelor of science degree in chemistry from Ateneo de Manila University, her bachelor of laws from the University of the Philippines and her master of chemistry degree from the Ateneo de Manila University. She is a licensed chemist, a registered patent agent, a lecturer and mentoring fellow of the Intellectual Property Research and Training Institute of Intellectual Property Philippines, and a member of the Integrated Bar of the Philippines, the Integrated Chemists of the Philippines and the Philippine Association of Certified Patent Agents. Anne Mariae has been handling IP cases for the firm since December 2003, and has participated in training courses sponsored by the Japanese Patent Office, in cooperation with the Japanese Institute of Invention and Innovation and the Association of Overseas Technical Scholarship and training courses sponsored by the European Patent Office under the EC-ASEAN Intellectual Property Rights Cooperation Program and WIPO.
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