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mirandah asia’s office in the Philippines is always efficient in the handling of client matters, providing the seamlessly professional level of service that only local specialists can. The country is primed for rapid development, so our expertise is imperative to ensure that your IP rights are protected.

Overview

The first laws protecting IP rights were enacted in the Philippines in 1947. These were later enshrined in the 1973 Constitution, which provides that “the exclusive right to inventions, writings and artistic creations shall be secured to inventors, authors, and artists for a limited period” and in the 1987 Constitution, which explicitly mandates that the State shall protect intellectual property. In 1980, the Philippines became a member of the World Intellectual Property Organization [WIPO], a milestone in the establishment of the country’s IP landscape.

To further boost the country’s IP landscape, the Philippine government increased its efforts in IP protection. In 1992, the Philippine Association of Certified Patent Agents [PACPA] was incorporated, thereby recognising and promoting the patent agent profession in the Philippines.

This was followed by a series of significant legislative and regulatory reforms to strengthen IP protection and enforcement. On 1 January 1998, the Philippine government made it a State policy to protect and promote intellectual property rights, leading to the establishment of the Intellectual Property Office of the Philippines (IPOPHL), the government body that oversees the enforcement of IPRs.

Growth of the Philippines’ IP Landscape

Today, the country continues in its efforts in IP protection. The Philippines has recently enacted several policy initiatives to allow the ratification of several international IPR treaties, such as the Nice Agreement on the classification of goods and services in trademark applications; the Vienna Agreement on the classification of figurative parts of trademarks; the Singapore Trademark Law Treaty, which harmonizes various trademark prosecution procedures; and the Hague Agreement which provides for a centralized design registration system.

As contained in the 2016 Special Report of the US Trade Representative, the Philippines has also made some alliances with international organizations such as the Business Action to Stop Counterfeiting and Piracy (BASCAP) to conduct crackdowns on counterfeits. All these initiatives have enhanced the country’s position in IP.

The Philippines is now on its way to becoming one of the leading countries in IP in the ASEAN region.

 

Legal Basis 1987 Philippine Constitution effective from 2 February, 1987
Republic Act No. 8293 Intellectual Property Code effective from 1 January, 1998
Republic Act No. 9168, Plant Varieties Protection Act effective from 7 June, 2002
IP Philippines Memorandum Circulars and Orders
Major international treaties signed
  • Patent Co-operation Treaty
  • Paris Convention
  • Budapest Treaty
  • Agreement on Trade Related Aspect of Intellectual Property Rights  (TRIPS)
Costs of obtaining a patent Please contact us at philippines@mirandah.com
Average time to obtain a patent About 36 months for PCT national phase filings
About 52 months for Convention and Direct filings
About 6 months for Utility Models about 24-48 months from filing in the Philippines
Official language for patent prosecution English
Non-patentable subject matter
  • Discoveries, scientific theories and mathematical method
  • Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers
  • Methods of medical treatment for the human or animal body for surgery
  • Plant varieties or animal breeds
  • Aesthetic creations
  • Anything that is contrary to public order or morality
Grace period for prior disclosure or sale Up to 12 months before the first filing
Major prosecution events (calculated from priority or filing date)
Event PCT-National Phase Non-PCT
Request for Search 12 months 18 months
Request for Examination 34 months 21 months
Filing Due Date 30 months 12 months
Payment of Annual Fees 48 months 48 months
Renewal (after grant) Every year Every year
Extension of deadlines (i)    2 months for responding to Office Actions
(ii)   18 months for Search and Examination events
(iii)  2 months for most other deadlines
Pharmaceutical Data Exclusivity Laws Not available
Parallel Imports Permissible
Term of patent 20 years
Patent Tern Extension Not available
Restoration of Lapsed Patent No specific provisions are present. However, in case the application is pending examination, an application can be revived by filing a Petition for Revival within 4 months from the mailing date of the Notice of Abandonment.
Search and Examination Local examination of patents is not compulsory. Search and Examination reports established in other countries or during PCT international phase can be relied upon for the purposes of patent grant in the Philippines.
Other forms of patents (e.g. petty/innovation patents) Utility model
Useful links www.mirandah.com
www.ipophil.gov.ph
Infringement offence Civil and Administrative
Criminal (in certain cases)
Specialized courts for IP Yes
Outline of the enforcement steps (i)  Notice of Cease and Desist
(ii) Action for Infringement
Relief against groundless threats Not available
Declaration of non-infringement Not Available
Preliminary injunctions Available
Time frame for various legal actions Infringement proceedings: 12-24 months
Alternative dispute resolution Mediation
Availability of damages and other relief for infringement
(i) Injunction
(ii) Loss of revenue
(iii) Account of profits
(iv) Attorney’s fees and other expenses for litigation

TABLE 1: Total number of patent applications filed 2005-2016:

 Year

Non-Resident (Direct)

Non-Resident (PCT)

Resident

Total

2005  421  2312

 210

 2,943

2006

 372

2664

226

3262

2007

332

 2949

193

3474

2008

 255

 2845

 210

3310

2009

219

2503 175 2897

2010

251 2972 168 3391

2011

254 2716 190 3160

2012

224 2577 180 2981

2013

220 2664 206 3090

2014

150 2877 263 3290

2015

188 2853 299 3340

2016

196 1934 159 2289

TABLE 2: Total number of patents registered 2005-2016:

 Year

Non-Resident (Direct)

Non-Resident (PCT)

Resident

Total

2005  1615  45

 15

 1675

2006

 1175

82

54

1311

2007

1388

 602

125

2115

2008

 327

 543

 150

1020

2009

418

1267 98 1783

2010

155 903 26 1084

2011

119 1008 26 1153

2012

115 1270 18 1403

2013

208 1829 29 2066

2014

175 1823 23 2021

2015

130 1874 24 2028

2016

95 1454 30 1579

 

Source: Business Intelligence Report (October 2016)

Legal Basis 1987 Philippine Constitution effective from 2 February, 1987
Republic Act No. 8293 Intellectual Property Code effective from January 1, 1998
Republic Act No. 6675, The Generics Act effective from 13 September, 1988
Republic Act No. 623 An Act to Regulate the Use of Duly Stamped or Marked
Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers effective from 5 June, 1951
Customs Administrative Orders and Circulars
IP Philippines Memorandum Circulars and Orders
Major international treaties signed
  • WTO – GATT Treaty Uruguay Round (Annex C – Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
  • Paris Convention
  • Madrid Protocol
Cost of obtaining a trademark Please contact us at  philippines@mirandah.com
Average time to obtain a trademark 12 to 15 months
Official language for trademark prosecution English
Registrable marks Any visible sign capable of distinguishing goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods
Filing and prosecution procedures Stage 1: Filing
Stage 2: Examination
Stage 3: Publication in eGazette
Stage 4: Opposition (if any)
Stage 5: Registration
Number of classes 45 (9th Edition Nice Classification)
Multiple class filing Available
Filing of series marks Not available
Necessary document for filing Power of Attorney
Common objections
  • Prior conflicting rights with another proprietor
  • Conflict with a well-known trademark
  • Distinctiveness
  • Descriptiveness
  • Description of goods/services is broad
  • Generic; customary or usual signs or indications
  • Shapes that may be necessitated by technical factors
  • Colour alone
Electronic filing Available
Opposition Term 30 days from issuance of eGazette
Duration of protection 10 years from the date of registration
Restoration of lapsed trademark Not available if registered mark. A mark can only be restored if during the pendency of the application, the trademark owner files a Petition for Revival within 3 months from mailing date of Notice of Abandonment, provided the cause of abandonment is not due to failure to file the 3rd year Declaration of Actual Use
Compulsory period of use to avoid cancellation action 3 consecutive years
Parallel Imports Allowable, except in cases where an exclusive importer/distributor is appointed in the Philippines, and allowing parallel imports may constitute a breach of contractual obligation
Use (a) 3rd year Declaration of Actual Use
– Required within 3 years from filing date of application
– Original deadline can be extended once for a period of 6 months
– Mandatory regardless of basis of application
(b) 5th year Declaration of Actual Use
– Required to be filed on the 5th year from date of registration
Useful links www.ipophil.gov.ph

 

 

 

Outline of the
enforcement steps
Test Buy

Secure Search & Seizure Warrant

Filing of Criminal Case with City Prosecutor

Infringement

Unfair Competition

Civil Remedies
  • Cancellation of Registration
  • Damages
  • Injunction (with prayer for Temporary Restraining Order)
  • Action for False or Fraudulent Declaration
  • Action for False Designation of Origin
  • False Description or Representation
Criminal Sanctions Imprisonment from 2 – 5 years; and Fine from PHP50,000 to PHP200,000 (approximately US$1,000 – US$4,000)
Others Border Control Measure – Registration of registered marks with the Bureau of Customs
Time frame for various legal actions 18 – 36 months
Alternative dispute resolution
  • Mediation
  • Arbitration
Any specialized courts for IP Yes

Trademark Applications

Year Resident  Non-Resident Total
2005 7,048 5,684 12732
2006 8,317 6,178 14495
2007 8,676 6,402 15078
2008 8,882 6,965 15847
2009 8,874 6,135 15009
2010 8,855 7,983 16838
2011 10,572 8,039 18611
2012 11,679 9,137 20816
2013 12,269 10,772 23041
2014 14,490 11,526 26016
2015 14,809 11,511 26320

Trademark Registrations

Year Resident Non-Resident Total
2005 3,208 6,816 10024
2006 5,027 7,636 12663
2007 7,414 10,178 17592
2008 6,715 7,389 14104
2009 5,380 5,801 11181
2010 5,655 6,542 12197
2011 6,510 6,976 13486
2012 7,282 7,687 14969
2013 6,626 9,464 16090
2014 8,348 9,223 17571
2015 9,978 11,440 21418

Source: WIPO

Want to find out more about
Philippines's IP landscape?
Drop us a line or visit
our office.

mirandah asia (philippines), inc.
Unit 1502, One Global Place 5th Avenue Corner 25th Street Bonifacio Global City ,1634 Philippines

Tel: +(632) 519 9660
Fax: +(632) 519 9662

Email: philippines@mirandah.com