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 |
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| Major international treaties signed |
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| Costs of obtaining a patent | Please contact us at philippines@mirandah.com |
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| 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 |
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| Official language for patent prosecution | English | ||||||||||||||||||
| Non-patentable subject matter |
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| Grace period for prior disclosure or sale | Up to 12 months before the first filing | ||||||||||||||||||
| Major prosecution events (calculated from priority or filing date) |
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| 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 |
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| Pharmaceutical Data Exclusivity Laws | Not available | ||||||||||||||||||
| Parallel Imports | Permissible | ||||||||||||||||||
| Term of patent | 20 years | ||||||||||||||||||
| Patent Term 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 3 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) |
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| Specialized courts for IP | Yes | |||||||||||
| Outline of the enforcement steps | (i) Notice of Cease and Desist (ii) Action for Infringement |
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| 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 |
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| 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 |
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| 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 (11th Edition Nice Classification) |
| Multiple class filing | Available |
| Filing of series marks | Not available |
| Necessary document for filing | Power of Attorney |
| Common objections |
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| Electronic filing | Available |
| Opposition Term | 30 days from issuance of eGazette |
| Duration of protection | 10 years from the date of registration for national registrations
10 years from the international registration date for international registrations |
| 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 between the 5th to 6th year from date of registration (c) Renewal DAU (d) 5th year Declaration of Actual Use |
| 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 |
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| 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 |
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| Any specialized courts for IP | Yes |
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