01 September 2004
The Intellectual Property Code has streamlined the procedures that inventors must follow to protect their industrial designs in the Philippines. Ignacio S Sapalo offers a step-by-step guide to would-be applicants
The background: Republic Act 165
Because the Philippines was a US colony during the first half of the twentieth century, Republic Act 165 was heavily influenced by American statutes on the subject. Section 55 of the law provides that “any new, original and ornamental design for an article of manufacture….may be protected by the author thereof….by a patent for a design….in the same manner and subject to the same provisions and requirements as relate to patent for inventions insofar as they are applicable, except as otherwise provided”.
The rules implementing Republic Act 165 required that an industrial design must not only be new, original and ornamental for an article of manufacture but should not extend to designs dictated essentially by technical or functional considerations. It defined an article of manufacture to include any part of an article if that part is made and sold separately.
The object of the statute, according to the implementing rules, was to encourage the decorative arts, allowing designs that simply pleased the eye to be proper subjects for a design patent. That is to say, patentable designs must not only be new and original but ornamental as well. Ornamentation implies beauty, giving of a pleasing appearance. Patentable design must, therefore, show a variance that enhances the aesthetic beauty and an attractive appearance of the article and which differs significantly from known design features or combinations of known design features.
Certain principles in Republic Act 165 were not adopted in the new IP Code. These are: (a) the firstto- invent principle (b) the automatic substantive examination of the application, (c) relative novelty (the rule that everything disclosed or made available to the public anywhere in the world before the application’s filing date were considered prior art was subject to the qualification that public use or sale of the invention must be done in the Philippines before it would be considered prior art) (d) also in relation to novelty, the grant of a grace period. For industrial designs, this was six months before the filing date of the application.
Industrial designs under the IP Code
Getting a registration
An industrial design, as defined in Section 112 of the IP Code, is any composition of lines or colors or any three-dimensional form whether or not associated with lines or colors, provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft.
Only industrial designs that are new and original are entitled to protection. Those dictated essentially by technical or functional considerations, or those that are contrary to public order, health or morals, cannot be protected.
This definition is amplified by the implementing rules as follows: an industrial design is any new or original creation relating to the ornamental features of shape, configuration, form or combination thereof, of an article of manufacture, whether or not associated with lines, patterns, or colors, which imparts an aesthetic or pleasing appearance to the article. The design, which is embodied in any composition of lines, patterns or colors, must be inseparable from the article and cannot exist alone merely as a scheme of surface ornamentation. The rules add that a “patentable design must not only be new and original, but ornamental as well”.
Absolute novelty and non-prejudicial disclosure
To be novel, an industrial design, as in patents for inventions, should not form part of the prior art. Prior art consists of everything that has been made available to the public anywhere in the world before the filing date or the priority date of the application claiming the invention. However, disclosures by the inventor within six months preceding the filing date of the application are considered non-prejudicial.
Originality
Neither the law nor the implementing rules define the term “original” as used in the law. Reference may be made to Rule 123 of Republic Act 165, from which we can deduce that an industrial design, to comply with the requirements of originality and ornamentality, should show “a variance which enhances the aesthetic beauty and attractive appearance of the article and which significantly differs from known design features or combination of known design features”. Since the concept and conditions of the registrability of an industrial design in the IP Code is substantially the same as in Republic Act 165, we believe this rule is still valid.
Examination
According to Section 116 of the IP Code, the application is to be examined to ensure it complies with: (a) the definition of industrial design made in Section 112, and (b) the prohibition that it should not be dictated essentially by technical or functional considerations to obtain a technical result or contrary to public order, health or morals. It must be emphasized that the examination does not consider whether the design is new or original.
The application
Applications to register an industrial design must be in Filipino or English, addressed to the director of the Bureau of Patents, and should contain a request for registration of the industrial design, information identifying the applicant, an indication of the line of an article or handicraft to which the design shall be applied, a representation of it by way of drawings, photographs or adequate graphic representation of the design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which the design protection is claimed, and the name and address of the creator. Where the applicant is not the creator, the application should state the origin of the right to the industrial design registration. The application should also state the characteristic features of the design by describing the particular novel and ornamental features of it.
A specimen of the article embodying the industrial design may accompany it.
As regards the signatures in the application, an applicant can use a handwritten signature or other forms of signature, such as a printed or stamped signature, or a seal, or a thumb mark. However, where a seal or a thumb mark is used, it should be accompanied by a written indication of the name of the signatory.
No attestation, notarization, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs is required, except where the signature concerns the surrender of a certificate of registration.
Several industrial designs may be the subject of one application, provided that they relate to the same sub-class of the international classification or to the same set of composition of articles.
The filing date
The filing date of the application is deemed to be the date that the Bureau of Patents receives the application as long as it contains enough information to establish the identity of the applicant and a representation of the article embodying the industrial design or a pictorial representation of it.
The first-to-file rule
Applying the first-to-file rule, the implementing rules provide that if two or more persons have made the same design, separately and independently of each other, the right to the design registration belongs to the person who filed for such design, or where two or more applications are filed for the same design, to the applicant who has the earliest filing date or the earliest priority date.
Priority right
An application for industrial design, filed by any person who has previously applied for the same design in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing of the foreign application. However, there are some qualifications. These are: (a) the local application expressly claims priority (b) it is filed within six months of the earliest filing date of the corresponding foreign application and (c) a certified copy of the foreign application together with an English translation is filed within six months from the date of filing in the Philippines.
Formality examination
The application is examined once the industrial design application has been accorded a filing date and the applicant has paid the fees.
Classification and search
The application should then be classified in accordance with the international classification and a prior-art search carried out. The documents cited in the search report of the corresponding foreign application may be taken into consideration in assessing novelty. In this regard, the implementing rules require the applicant, upon request, to furnish the Bureau of Patents with the date and number of any application filed by him in other countries relating to the same industrial design claimed in his Philippine application. Considering that Section 116 of the IP Code excludes from the examination of the industrial design application whether the design is new or original, the Bureau carries out the prior-art search, the results of which it will provide to the applicant upon request, to enable him to assess the legal viability of his design.
Publication of the application
The rules also require that the bibliographic data of the application and representative drawing, if any, be published in the IPO Gazette. If the applicant has previously requested a registrability report, the publication must include it.
What is the registrability report? Insofar as it contains citations of relevant prior art documents, it is similar to the search report. As an added feature, it indicates the degree of relevance of the cited prior art to the industrial design sought to be registered. As such, it serves as an aid to the applicant or to third parties including judicial and quasi-judicial bodies, in the determination of the validity of the industrial design claims in respect to newness. It will also allow the public either to request a registrability report or to furnish the examiner information, evidence or data in writing under oath showing that the industrial design is not new. The application may be refused registration based on this evidence after the applicant is given an opportunity to contest this evidence in writing.
The objective of this publication may be laudable but it is without any legal basis because it allows the public to oppose the registration of the application, a procedure that the law does not provide for. Besides, it is inconsistent with Section 116 of the law, excluding from the examination of the application, whether the design is new or original. Publication may therefore create more problems than it will solve.
Term
The term of the industrial design registration is five years from the filing date of the application. It may be renewed for not more than two consecutive periods of five years by paying renewal fees.
Cancellation
The industrial design registration may be cancelled anytime during its term if the subject matter of the industrial design is not registrable within the terms of Sections 112 and 113 of the IP Code and the Rules, if it is not new or original, or dictated essentially by technical or functional considerations to obtain a technical result, or is contrary to public order, health or morals, or if the subject matter extends beyond the contents of the application as originally filed.
Remedies against infringement
Remedies consist of a civil action for infringement or a criminal action if there is a repetition of infringement.
Making, using, offering for sale, selling or importing a registered industrial design without the authorization of the registrant constitutes infringement, for which the registrant may recover from the infringer damages and costs. The registrant can also apply for an injunction. The civil or criminal action may be filed with the regional trial courts, more than 20 of which have been designated as commercial courts with jurisdiction to hear and adjudicate infringement cases. If the claim for damages exceeds P200,000 ($3,568), the registrant may opt to bring an administrative action before the Bureau of Legal Affairs of the Intellectual Property Office.
To determine infringement, identity or substantial identity with the registered design is considered evidence of copying. A design that differs from earlier embodiments in minor respects does not constitute a valid defence.
Contact details
Sapalo & Velez Law Offices
11th Floor, Security Bank Centre
6776 Ayala Avenue
Makati City 1200
Philippines
Tel: +63 2 891 1316
Fax: +63 2 891 1198
Email: info@sapalovelez.com
Website: www.sapalovelez.com
IGNACIO S SAPALO
Ignacio S Sapalo obtained a Bachelor of Science degree (with a major in engineering) in 1963 and his Bachelor of Laws in 1967 from Ateneo de Manila.
He was the director of the Bureau of Patents, Trademarks and Technology Transfer of the Philippine government from 1987 to 1996, during which time he led the group that drafted the 1998 Intellectual Property Code of the Philippines. He is author of Background Reading Material on the Intellectual Property System of the Philippines (WIPO, 1994) and has been professor of intellectual property at the Ateneo School of Law since 1991. He has also lectured at WIPO seminars and acts as a consultant on IP matters for the Department of Trade and Industry of the Philippines. He worked for the ASEAN secretariat in 1998 and acted as WIPO consultant to Cambodia in 1999.
Sapalo is founder and president of the Intellectual Property Foundation, 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. He is also a member of the Integrated Bar of the Philippines, the Philippine Bar Association, Associacion de Internationale Pour la Protection De La Propriete Industrielle, Asian Patent Attorney’s Association, and Intellectual Property Association of the Philippines.
He is the managing partner of the firm Sapalo & Velez.
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