IPOPHL Chief welcomes consolidated IP Code, points out 17 critical areas for Congress to amend

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By Victoria “NIKE” De Dios

Ensuring to be relevant and responds to the ongoing trend of globalization and integration, the Intellectual Property Office of the Philippines (IPOPHL) lauded efforts at the House of Representatives to consolidate the bills that will amend the Intellectual Property (IP) Code of 1998, taking the much-needed modernization of the IP law closer to fruition.  

With the consolidation to be undertaken by a Technical Working Group (TWG) created earlier this month by the House Committee on Trade and Industry, this will pave the way to the merging of House Bill (HB) 8062, authored by Representatives Christopher V.P. De Venecia and Sharon S. Garin; HB 1597, by Deputy Speaker Michael L. Romero; and HB 8620, by Deputy Speaker Weslie T. Gatchalian.

“We would like to thank the proponents of the bills for pushing for the much-needed changes in our current legal IP framework,” IPOPHL Director General Rowel S. Barba said. 

“As international legal frameworks, standards and best practices are evolving in line with the rapid advances in technology and its resulting globalization, a modernized IP Code will help the Philippines keep step with global trends, making the country more competitive and attractive to foreign investors,” Barba added. 

Barba gave special thanks to Gatchalian for authoring the bill as proposed by IPOPHL. At its Feb. 22 meeting, the TWG agreed to use Gatchalian’s HB 8620 as its working draft. 

Priority amendments

The IPOPHL chief outlined 17 “priority amendment-proposals” which he called on Congress to set its focus on, given that these will greatly benefit stakeholders and the consuming public. 

On enforcement and adjudication, Barba said IPOPHL proposes imposing steeper fines on infringers; removing the P200,000 damage claim threshold––cases with claims falling below this, usually by MSMEs, cannot be adjudicated; granting IPOPHL the power to order the take-down of websites with infringing material; recognizing its alternative dispute resolution mechanisms as official modes for dispute settlement; and institutionalizing its IP Rights Enforcement Office.

On amendments to benefit inventors, Barba highlighted IPOPHL’s proposed parallel-protection system through which inventors can register for a patent grant and simultaneously file a utility model (UM) for the same invention. 

“A parallel-protection will allow inventors to wait and stake a chance for a patent grant while already commercializing their works under UM protection––the UM applications are shorter, taking two to ten months on average while a substantive examination on patent applications can take a few years,” the IPOPHL chief said.

IPOPHL DG Rowel Barba (Photo from IPOPHL)

Barba also touted as priority the provisional patent protection which will give applications immediate protection on the date of filing.

“A provisional patent will protect inventions even while the inventor is still making refinements or is assessing the commercial viability of the invention before undergoing the formal patent application,” Barba said.

The proposed amendments also include alignment of the “industrial design” definition with the multilateral Trade-Related Aspects of Intellectual Property Rights Agreement and protection of partial designs or designs that make part of a certain product or article.

Under the trademark law, new changes proposed are the protection of non-visual marks, such as sound marks, among others, and certification marks, which indicate that a product has met certain standards whether with respect to origin, material, mode of manufacture or performance.

On copyright and related rights, Barba stressed the priority for including clear-cut rules on orphan works; recognizing extended collective licensing, by which collective management organizations can extend the license they issue to works of non-members; expanding the limitations for copyright; and centralizing the registration and deposit of copyright works in IPOPHL to avoid confusion among stakeholders.

IPOPHL is also pushing for the transformation of one of its units into a “Bureau of Innovation and Business Development” which will promote the use of IP documents and databases for innovation and creativity pursuits, as well as increase IP commercialization and technology transfer in the country. 

The institutionalization of its IP Academy, the national center for IP learning, skills training and research, is also part of the priority list. 

“Through IPOPHL’s proposed priority amendments, we hope to create an enabling environment that will promote and steer creativity, innovation and development not only for large companies but, more importantly for micro, small and medium enterprises, including start-ups, so the IP system could contribute to the national goal of inclusive and sustainable growth,” Barba said.