Philippines: Congress moves to modernise IP Code
Editha R Hechanova of Hechanova & Co explains the key provisions put forward by the three house bills to move the IP Code of the Philippines towards international standards
The 18th Congress of the Philippines, which opened on July 22 2019 and ends some time in 2022, is its first regular session. The Committee on Trade and Industry of the House of Representatives is conducting public hearings on three house bills related to the IP Code of the Philippines, namely House Bills (HB) No. 1597, 8062 and 8620.
While the IP Code has been amended several times since its promulgation in 1998, the intention of the amendments is to keep pace with technological changes and harmonise the Philippines’ IP system with international standards. A technical working group has been organised to receive comments from the public, and to review and consolidate these house bills.
HB 1597 seeks to amend the IP Code by increasing:
The protection period from 10 to 15 years;
The period within which to file the fifth year declaration of use;
The criminal penalty and imprisonment for IP violations; and
The right of the author or his heirs to participate in the gross proceeds of the sale or lease of the work from 5% to 8%.
The Intellectual Property Office of the Philippines (IPOPHL) itself objected to the increase in the protection period, since most countries adopt the 10-year period.
HB 8062 seeks to overhaul the entire IP Code by expanding the organisational structure and powers of the IPOPHL, but stops short of granting it clear police powers for IP enforcement. It allows for the filing of provisional patents and the creation of the IP academy.
HB 8620 proposes to amend certain provisions of the IP Code, which is more in line with the IPOPHL’s proposed amendments. According to the IPOPHL, there is no need to revise the entire IP Code but only certain provisions. Some of the major amendments being proposed are:
Expansion in the organisational structure of the IPOPHL from four bureaus to seven bureaus. For example, the Bureau of Copyrights and Related Rights, and the Bureau of Innovation and Business Development. This bill proposes to transfer the copyright function of the National Library entirely to the IPOPHL. Currently, the IPOPHL is allowed by the National Library to accept applications for copyright registrations.
Granting police powers to the IPOPHL insofar as counterfeit and pirated products are concerned. This would allow it to undertake enforcement functions supported by concerned agencies, including:
• Conduct of visits during reasonable hours of establishments suspected of violation, and the issuance of provisional or final confiscation orders against counterfeit and pirated goods; and
• Issuance of provisional and final take down orders, or cease and desist orders to the internet service providers, domain name registries/registrars, website owners, online intermediaries, online platforms, social media platforms, or any similar medium. The power to issue provisional remedies to address any violations of IP rights.
Creation of new offices under the Office of the Director General. This includes the following, among others:
• The Learning Environment, Accreditation and Research Network, whose function includes the accreditation and registration of IP lawyers, agents and representatives; and
• The Intellectual Property Rights Enforcement and Coordination, which has enforcement functions related to counterfeit and pirated goods.
On patents, similar to HB 8062, the bill allows for:
• The filing of provisional patent applications; and
• The parallel filing of two applications, a utility model and invention patent application, for the same subject matter, which shall be prosecuted independently. However, the applicant has to make a choice whether to maintain the utility model (UM) registration or the letters patent, should both be granted.
For trademarks, the bill seeks to:
• Remove the requirement that the mark has to be visible, thereby allowing for the registration of non-visible marks; and
• Provide for the recognition of certification marks.
On copyright, the bill proposes:
• No copyright infringement for the making of a painting, drawing, engraving or photograph of the work or the inclusion of the work in a cinematographic film or in a television broadcast, for a work that is permanently situated in a public place; and
• The work must be registered to obtain award of statutory damages.
The bill imposes solidary liability to landlords, unless they can prove that they have no knowledge nor participation in the infringing act of his tenants. This also applies to internet service providers, domain name registries, website owners or similar mediums used in selling or making available to the public, who fail to exercise due diligence, or fail to take down or block access to the infringing materials, unless it can prove that it has no knowledge or participation in the infringing act.
Editha R Hechanova
President, Hechanova & Co