Relationship to Intellectual Property Code
- Republic Act No. 9150 amends Sections 112, 113, 114, 116, 117, 118, 119 and 120 under Chapter XIII of Republic Act No. 8293 (the Intellectual Property Code of the Philippines).
- Chapter XIII is structured as “INDUSTRIAL DESIGN AND LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS.”
- The operative rules on protection for industrial designs and layout-designs are expressed within Chapter XIII and incorporate mutatis mutandis application of selected patent provisions.
Policy and declared framework
- Protection under the law is limited to industrial designs and layout-designs that meet the Act’s substantive conditions for protection.
- The law establishes originality and non-functionality requirements, and it ties layout-design protection to the timing of commercial exploitation or first filing.
- The law provides an administrative registration system through the Office, with publication, recordation of changes, inspection rights, and cancellation proceedings.
Key definitions and protected subject matter
- An Industrial Design is any composition of lines or colors or any three-dimensional form—whether or not associated with lines or colors—that gives a special appearance and can serve as a pattern for an industrial product or handicraft (Section 112(1)).
- An Integrated Circuit is a product, in its final form or an intermediate form, where the elements—at least one being an active element—and some or all interconnections are integrally formed in and/or on a piece of material, intended to perform an electronic function (Section 112(2)).
- A Layout-Design (synonymous with “Topography”) is the three-dimensional disposition, however expressed, of elements—at least one active element—and of some or all interconnections of an integrated circuit, or a three-dimensional disposition prepared for an integrated circuit intended for manufacture (Section 112(3)).
Substantive conditions for protection
- Only industrial designs that are new or ornamental benefit from protection under the Act (Section 113.1).
- Industrial designs dictated essentially by technical or functional considerations to obtain a technical result are not protected (Section 113.2).
- Industrial designs contrary to public order, health or morals are not protected (Section 113.2).
- Only layout-designs of integrated circuits that are original benefit from protection under the Act (Section 113.3).
- A layout-design is original if it is the result of the creator’s own intellectual effort and is not commonplace among creators of layout-designs and manufacturers at the time of creation (Section 113.3).
- A layout-design consisting of a combination of commonplace elements and interconnections is protected only if the combination taken as a whole is original (Section 113.4).
Application filing, examination, and registration
- Every application for registration of an industrial design or layout-design must include:
- (a) a request for registration;
- (b) information identifying the applicant;
- (c) an indication of the kind of article of manufacture or handicraft to which the industrial design or layout-design shall be applied;
- (d) a representation of the article by drawings, photographs, or adequate graphic representation that clearly and fully discloses the features claimed; and
- (e) the name and address of the creator, or if the applicant is not the creator, a statement indicating the origin of the right (Section 114.1).
- An application may be accompanied by a specimen of the article embodying the industrial design or layout-design, subject to payment of the prescribed fee (Section 114.2).
- The Office must accord the filing date as the date of receipt of an application containing indications allowing identity of the applicant to be established and containing a representation of the article embodying the design or a pictorial representation (Section 116.1).
- If the application does not meet the filing-date requirements, the filing date becomes the date when all elements specified in Section 114 are filed or the mistakes are corrected (Section 116.2).
- If the requirements are not complied with within the prescribed period, the application is considered withdrawn (Section 116.2).
- After a filing date is accorded and required fees are paid on time, the applicant must comply with Section 114 requirements within the prescribed period, otherwise the application is considered withdrawn (Section 116.3).
- The Office examines whether the industrial design or layout-design complies with Section 112 (Definitions) and Section 113 (Substantive Conditions for Protection) (Section 116.4).
- If the Office finds the conditions in Section 113 are fulfilled, it orders that registration be effected and causes issuance of an industrial design or layout-design certificate of registration; otherwise, it refuses the application (Section 117.1).
- The form and contents of the certificate are established by Regulations, and the name and address of the creator must be mentioned in every case (Section 117.2).
- Registration must be published in the form and within the period fixed by the Regulations (Section 117.3).
- The Office records changes in the identity of the proprietor or representative if proof is furnished; a fee must be paid with the request to record the change, and if the fee is not paid the request is deemed not filed—leaving the former proprietor and representative subject to rights and obligations under the Act (Section 117.4).
- Anyone may inspect the Register and the files of registered industrial designs or layout-designs, including files of cancellation proceedings (Section 117.5).
Registration terms and commencement rules
- Industrial design registration is for five (5) years from the application filing date (Section 118.1).
- Industrial design registration may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee (Section 118.2).
- The renewal fee must be paid within twelve (12) months preceding expiration; a grace period of six (6) months is granted for payment after expiration upon payment of a surcharge (Section 118.3).
- Regulations fix the amount of renewal fee, the surcharge, and other requirements for recording renewals (Section 118.4).
- Layout-design registration is valid for ten (10) years, without renewal, counted from the date of commencement of the protection accorded to the layout-design (Section 118.5).
- Layout-design protection commences either:
- (a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by or with the consent of the right holder, provided an application is filed with the Intellectual Property Office within two (2) years from that date; or
- (b) on the filing date accorded to the registration application if the layout-design has not been previously exploited commercially anywhere in the world (Section 118.5(a)-(b)).
Mutatis mutandis patent rules and rights
- For industrial designs, the following patent provisions apply mutatis mutandis:
- Section 21 (Novelty),
- Section 24 (Prior art) (with the proviso that disclosure is contained in printed documents or in any tangible form),
- Section 25 (Non-prejudicial Disclosure),
- Section 28 (Right to a Patent),
- Section 29 (First to File Rule),
- Section 30 (Inventions Created Pursuant to a Commission),
- Section 31 (Right of Priority) (with the condition that the industrial design application must be filed within six (6) months from the earliest filing date of the corresponding foreign application),
- Section 33 (Appointment of Agent or Representative),
- Section 51 (Refusal of the Application),
- Sections 56 to 60 (Surrender, Correction of and Changes in Patent),
- Chapter VII (Remedies of a Person with a Right to Patent),
- Chapter VIII (Rights of Patentees and Infringement of Patents), and
- Chapter XI (Assignment and Transmission of Rights) (Section 119.1).
- Industrial design protection cannot be invoked against the injured party if the essential elements of an industrial design subject of an application were obtained from the creation of another person without consent (Section 119.2).
- For layout-designs of integrated circuits, selected patent provisions apply mutatis mutandis, including:
- Section 28 (Right to a Patent),
- Section 29 (First to File Rule),
- Section 30 (Inventions Created Pursuant to a Commission),
- Section 33 (Appointment of Agent or Representative),
- Section 56 (Surrender of Patent),
- Section 57 (Correction of Mistakes of the Office),
- Section 58 (Correction of Mistakes in the Application),
- Section 59 (Changes in Patents),
- Section 60 (Form and Publication of Amendment),
- Chapter VII (Remedies of a Person with a Right to Patent),
- Chapter VIII (Rights of Patentees and Infringement of Patents) with the proviso that layout-design rights and limitation of layout-design rights provided hereunder shall govern,
- Chapter X (Compulsory Licensing), and
- Chapter XI (Assignment and Transmission of Rights) (Section 119.3).
Exclusive rights and layout-right limitations
- The owner of a layout-design registration has the right:
- (1) to reproduce the registered layout-design in its entirety or any part thereof, whether by incorporation in an integrated circuit or otherwise, except reproducing any part that does not comply with the requirement of originality; and
- (2) to sell or otherwise distribute for commercial purposes the registered layout-design, or an article or integrated circuit in which the registered layout-design is incorporated (Section 119.4).
- The owner of a layout-design has no right to prevent third parties from reproducing, selling, or distributing for commercial purposes the registered layout-design in these situations:
- (1) reproduction for private purposes or for the sole purpose of evaluation, analysis, research, or teaching (Section 119.5(1));
- (2) acts performed on a layout-design created on the basis of such evaluation or analysis when the resulting layout-design is itself original (Section 119.5(2));
- (3) acts performed regarding a registered layout-design, or an integrated circuit incorporating it, that has been put on the market by or with the consent of the right holder (Section 119.5(3));
- (4) acts regarding an integrated circuit where the person performing or ordering had no knowledge and no reasonable ground to know at the time of acquisition that the integrated circuit incorporated an unlawfully reproduced layout-design, with these consequences:
- after receiving sufficient notice of unlawful reproduction, the person may perform the acts only with respect to stock on hand or ordered before that time; and
- the person becomes liable to pay the right holder a sum equivalent to at least 5% of net sales or such other reasonable royalty as would be payable under a freely negotiated license for the layout-design (Section 119.5(4));
- (5) acts regarding an identical layout-design that is original and independently created by a third party (Section 119.5(5)).
Cancellation proceedings for designs
- During the term of industrial design registration, any person who pays the required fee may petition the Director of Legal Affairs to cancel the industrial design on these grounds:
- (a) the subject matter is not registerable under Sections 112 and 113;
- (b) the subject matter is not new; or
- (c) the industrial design extends beyond the content of the application as originally filed (Section 120.1).
- If the grounds for cancellation relate only to a part of the industrial design, cancellation may be effected only to that extent, including by altering the affected features (Section 120.2).
- Any interested person may petition that a layout-design registration be cancelled on these grounds:
- (i) the layout-design is not protectable under the Act;
- (ii) the right holder is not entitled to protection under the Act; or
- (iii) the application was not filed within two (2) years from the layout-design’s first commercial exploitation anywhere in the world (Section 120.3).
- If grounds for cancellation are established only as to part of the layout-design, only the corresponding part of the registration is cancelled (Section 120.3).
- Cancelled layout-design registrations or parts are regarded as null and void from the beginning, may be expunged from the Intellectual Property Office records, and references to all cancelled registrations must be published in the IPO Gazette (Section 120.3).
Implementing rules and transitional applicability
- The Intellectual Property Office may issue Regulations prescribing details for implementation, including provisions for the payment of fees connected with applications for registration of layout-designs of integrated circuits and matters related thereto, including administrative instructions on procedures and functions of the responsible unit designated by the Director General (Section 2).
- The Act applies to layout-designs of integrated circuits commercially exploited anywhere in the world from and after January 1998, provided they meet the Act’s conditions for protection (Section 3).
Repeal and separability
- Inconsistent acts and parts of acts are repealed or amended accordingly (Section 4).
- If any provision of the Act or its application to any circumstance is held invalid, the remainder of the Act remains effective (Section 5).