The Philippine Intellectual Property Office (IPOPHIL) recently extended an invitation to the public for consultation on a number of proposed amendments to existing rules and regulations relating to copyrights, prosecution of patent and trademark applications, inter partes proceedings, increased official fees, and others. One proposed amendment introduces a change in the procedure for obtaining a design registration.
The proposed amendment is included in the Revised Implementing Rules and Regulations for Patents, Utility Model and Industrial Designs (IRR), which states:
“Rule 1703. Registration of Utility Model and Industrial Design without Adverse Information. Where the application meets all the formal requirements for registrability as set forth in these Regulations and the Office does not receive any adverse information from the concerned community after the expiration of the 30-day publication period, the Director shall decide whether or not to register the utility model or industrial design. For this purpose, the Director may issue a registrability report motu proprio (amendment underscored).
In the current IRR the applicant for industrial design is automatically granted a registration after the lapse of 30 days from the date of publication if no one files an adverse information. The proposed rule change now gives the Director of the Bureau of Patents the power to issue a Registrability Report motu proprio on a formally compliant design application before the registration is granted. As worded, the proposed amendment gives the director the sole option of issuing a registrability report after the adverse information period.
The amendment also authorizes the director to deny registration outright without issuing a registrability report. It remains to be seen how this rule change, if implemented, will impact the appetite of the community for design protection, or the rate of design filings in the Philippines, which has dramatically increased in recent years.
All the publicly available statistics point to a significant increase in the number of design applications being filed worldwide annually in the past decade. While high-income economies like US, China, Japan, South Korea and Germany lead in the number of increased design filings, recent IPOPHIL statistics show that the trend is no different in the Philippines.
Records show that 1,393 design patent applications were filed in 2017, and 1,522 were filed in 2018. The number of design patent applications filed by foreign or non-resident innovators during the past three years beginning 2016/2017 has increased with 516 applications being filed in 2016, and 666 in 2017. The total applications filed for 2018 was still higher than 2017, with resident applicants’ filings reaching 877, thereby compensating for the slight decrease in applications filed by non-residents at 645 applications.
Everyone recognizes the important role that design plays in the world economy today. There is no longer any disagreement as to the immense value of a great design as a tool used by a company to differentiate its products and services from those of its competitors, for building a brand, and for achieving a competitive edge in the marketplace.
To encourage companies to continue innovating through the use of design, governments must have comprehensive laws that will protect designs, and reasonable application processes that will provide easy access to design protection.
As a notable example, Japan’s government has recently published key changes to its design law. Unlike in the Philippines, design applications in Japan go through substantive examination. Because of the high level of creativity required of designs in Japan, a 15-year term for design protection has been perceived as inadequate because examinations sometimes take time.
The recent change increasing the term of protection from 15 years to 25 years from filing date addresses this concern. All the proposed amendments in Japan are meant to encourage more design filings, because the number of applications in Japan has decreased during this decade.
The term for design protection in the Philippines is 15 years, but because there is no substantive examination the applicant gets to enjoy a long period of protection, as the application is automatically granted registration when formal requirements are complied with, and when no adverse information has been filed within 30 days from date of publication.
With the proposed amendment, the grant of registration becomes uncertain because the director has the power to deny an application with or without a registrability report. While an appeal is available after denial, filing becomes impractical because of the possibility of delays in resolution.
Some opinions have been expressed that the proposed amendment is meant to discourage applicants from filing protection for designs that are not new. Because there is no substantive examination that will involve research for prior art at examination level, the IPOPHIL is concerned that there may be registered designs that do not comply with this requirement. If this were true, the proposed amendment will be a first step in solving this concern.
Mila Federis is the founder and managing partner of Federis & Associates.
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