The Philippines: Proposed amendments to the IP Code

On December 22 2017, the Intellectual Property Office of the Philippines (IPOPHL) published its proposed amendments to the IP Code (Republic Act No. 8293), just before it closed shop for the Christmas break, notifying the public to give their comments and informing it that the amendments shall be forwarded to the Philippine Congress this January 2018. Some of the major amendments are as follows:

1) Clarifying and expanding the functions and powers of the Bureau of Legal Affairs (BLA) which is the adjudication arm of the IPOPHL to include: (a) declaration of marks as well-known, including revocation of said declarations, (b) declaration as true and actual inventor, (c) declaration of ownership or having the right to intellectual property, (d) having original and exclusive jurisdiction over administrative complaints for violation of intellectual property laws, (e) awarding of damages;

2) Replacing the Documentation, Information and Technology Transfer Bureau with two new bureaus: (a) the Bureau of Innovation and Business Development, (b) creating the IP Academy;

3) Allowing parallel applications or the filing of two patent applications for the same subject as an invention patent application, and a utility model application within one year from the filing of the first application, which applications shall be processed independently. However, once, the invention patent application has been granted, the utility model registration shall be automatically cancelled, and the letters patent shall be issued;

4) Allowing parts or components of products or handicrafts as subject of industrial design registrations;

5) Giving power to the Director General of the IPOPHL to grant compulsory license to exploit a patented invention even without the agreement of the patent owner;

6) Removing the requirement that a mark has to be visible to be registrable, giving way to possibly including scent or sound marks;

7) Allowing the registration of series of marks, and certification marks.

There are other amendments touching on the organisation of the IPOPHL itself, and also on the other aspects of intellectual property law. Some of the proposed amendments are subject to further modifications, according to the IPOPHL.

Editha R Hechanova

Hechanova & Co., Inc.Salustiana D. Ty Tower104 Paseo de Roxas AvenueMakati City 1229, PhilippinesTel: (63) 2 812-6561Fax: (63) 2 888-4290editharh@hechanova.com.ph 

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