NIPS gives teeth to Philippine IP protection regime

In December last year, the Intellectual Property Office of the Philippines (IPOPHL) published the National Intellectual Property Strategy (NIPS) for 2020-25. Developed with the support of the World Intellectual Property Organization (WIPO), the NIPS aims to develop “an effective intellectual property system widely recognized and strategically utilized to benefit and uplift the lives of Filipinos”.

To help determine how best to achieve this goal, IPOPHL and WIPO have signed a memorandum of understanding to conduct a nationwide survey and measure IP awareness among Filipinos.

There are promising signs pointing towards the realization of the NIPS vision. Earlier this year, the Philippines marked its seventh consecutive year out of the US Trade Representative’s Special 301 watchlist of countries with inadequate IP protection and enforcement. The country’s exclusion from the list can be attributed to the government’s anti-counterfeiting and anti-piracy efforts, which are spearheaded by the National Committee on IP Rights, a 12-member inter-agency group led by the Department of Trade and Industry as chair, and IPOPHL as vice-chair.

The Philippines also improved its ranking in the 2020 Global Innovation Index (GII), climbing to 50 from 54 last year. The GII, co-published by Cornell University, INSEAD and WIPO, ranks countries’ innovation performance according to various indicators such as human capital and research, knowledge and technology output, and creative output.

In a statement posted on the IPOPHL wesbite, director general Rowel Barba noted that increased IP filings, particularly for utility models and industrial designs, had contributed to the country’s improved ranking. He also acknowledged the important role of innovation and technology support offices in higher educational institutions, and research and development centres.

Procedural changes should also make the legal process more efficient. In February, amendments to the rules and regulations on inter partes proceedings before the IPOPHL’s Bureau of Legal Affairs (BLA) took effect. Some notable amendments include:

• Filing and service of pleadings, and delivery of orders and decisions, may now be made via courier;
• If a party or their counsel or representative cannot be served with orders due to their refusal to receive, or a change or deficiency in their address, the BLA shall post the orders on the IPOPHL website. The date of posting on the website will be considered the date of the party’s receipt;
• In addition to hard copies, parties must also submit a flash drive containing soft copies of their pleadings and all supporting documents;
• The Apostille Convention entered into force in the Philippines in May 2019. Now the verification and certification against forum shopping, which must accompany a notice of opposition, petition for cancellation or answer, if executed and notarized abroad, may be authenticated by apostille;
• Parties are now required to undergo mediation to explore the possibility of amicable settlement. According to data posted on the IPOPHL website, out of the 223 cases that were referred to mediation in 2019, a total of 57 (about 25%) ended with the parties reaching a settlement;
• Motions for reconsideration of the decisions or final orders of the adjudication/hearing officer, BLA assistant director or BLA director are not allowed. The proper remedy is appeal;
• The 10-day period for the losing party to appeal a decision or final order of an adjudication/hearing officer, or the BLA assistant director to the BLA director, can be extended on meritorious grounds and on payment of the applicable fees; and
• The 10-day period for the adverse party to comment on the appeal can also be extended on meritorious grounds and on payment of the applicable fees.

In February, revised rules and regulations on voluntary licensing also took effect. Some of the notable revisions are as follows:

• A technology transfer arrangement is now defined more specifically, being limited only to the transfer, assignment or licensing of intellectual property rights that “involve the transfer of systematic knowledge”;
• The list of prohibited anti-competitive clauses or stipulations in restraint of trade now includes any other clauses with equivalent effects, such as unreasonable post-termination non-compete covenants; and
• The mandatory provision on the venue of arbitration being the Philippines or any neutral country now defines “any neutral country” as “any third country, other than the Philippines, where neither the licensor nor the licensee was organized, registered or existing, and one where neither party has a direct connection or legal ties”.

Going into the final quarter of 2020, the first year of the NIPS, it seems that there is a positive outlook for IP protection and enforcement in the Philippines for the next four years.

Amanda Carlota is an associate lawyer at Federis & Associates Law Office

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