Image source: https://blog.ipleaders.in/intellectual-property-rights-claimed/

This article has been written by  Eriobu – Aniede Onyekachi Ngozi pursuing the Diploma in US Intellectual Property Law and Paralegal Studies from LawSikho. This article has been edited by Smriti Katiyar (Associate, Lawsikho) and Ruchika Mohapatra (Associate, Lawsikho). 

Introduction 

The Intellectual Property Office of the Philippines (IPOPHL), is the government agency under the Department of Trade and Industry that is saddled with the registration of intellectual property (IP), conflict resolution of intellectual property rights administration and implementation of State policies IP to strengthen the protection of IP rights in the Philippines. The Philippines Intellectual Property Office (IPOPHL) maintains a Registry of Patents and Trademarks that are widely recognized in Southeast Asia and dates back to the Spanish and American colonial eras. It was established by the Republic Act No. 8293, known as the Intellectual Property Code of the Philippines that came into effect on January 1, 1998, during the administration of President Fidel V. Ramos. The IPOPHL has the unique characteristic of operating under the Office of the President and enjoys a level of impact and influence not achieved in many other countries.

Mandate & function

IPOPHL’s mandate forms the acronym DREAM and as such, it is called the DREAM mandate. IPOPHL mandates aim to achieve the following;

  1. DEVELOPMENT-ORIENTED: Promote the use of patent information as a tool for technological development
  2. REGULATORY
  1. Examine applications and grant patents, or register utility models, industrial designs,
    trademarks, geographical indication, and integrated circuits;
  2. Help protect copyright by assisting in the facilitation of deposit of work with the National
    Library
  3. Register technology transfer arrangements
  4. ENFORCEMENT
  1. Undertake enforcement functions supported by concerned agencies such a the PNP, NBI, Customs, OMB, LGUs, etc.
  2. Conduct visits during reasonable hours to establishments and businesses engaging in activities violating IPRs and provisions of the IP Code based on the report, information or complaint received by the Office.
  3. ADJUDICATORY
  1. Hear and decide cases relating to:
  2. Violations of IP Rights
  3. Cancellations and oppositions to registration
  4. Compulsory licensing
  5. Settle disputes involving technology transfer payments
  6. POLICY-MAKING
  1. Coordinate with relevant government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country.
  2. Develop and implement strategies to promote and facilitate technology transfer

Vision and mission

A progressive Philippines using intellectual property assets for inclusive economic and social development by 2030 with a Mission to build an inclusive IP system that serves the need of Filipinos.

The history

IPOPHL was initially known as the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), and was created through the executive order of President Corazon C. Aquino to revamp the Department of Trade and Industry. Between 1980 and 1997 the Technology Transfer Board was abolished and its function was absorbed into the BPTT. On June 6, 1997, the IP Code of the Philippines, Republic Act 8293 was signed into law but came into force on ist January 1998. This Code abolished the BPTT and established and vested the BPTT functions in IPOPHL. Between 2005 to 2009, the administration of Atty. Adrian S. Cristobal Jr, the second Director-General IPOPHL, office function and IP administration took a different turn leading to the achievement of the following;

  1. A stronger IP policy-creation through the creation of a policy/international relations unit that became the country’s mission in Geneva and in DTI’s bilateral and multilateral trade negotiations for producing policy papers, comments on draft bills regarding IP rights. 
  2. The fortification of enforcement mandate of the IPOPHL through the establishment of inter-agency IP task force in 2008 which actively engaged the government’s law enforcement sector in the pursuit of counterfeiters and vendors of pirated goods
  3. Designed a National Intellectual Property Strategy (NIPS) under the umbrella program of the DOST’s “Filipinnovation,” the country’s innovation strategy
  4. Launched the Intellectual Property Fields Operations Unit to create the Intellectual Property Satellite Offices (IPSOs) to serve the needs of entrepreneurs, inventors, and IP creators.

With the Director General  Atty. Ricardo Blancaflor (2010-2014), the IPOPHL witnessed;

  1. The automation of the end-to-end processing of IP applications from filing to registration (publications, printing of certificates and post-registration/post-granting) known as the Industrial Property Automation System (IPAS) instituted in partnership with the World Intellectual Property Organization (WIPO).
  2. The Innovation and Technology Support Offices (ITSOs) were initiated to spread its expertise and technical knowledge in patent drafting and search.
  1. IPOPHL began deliberations with the Greenhills Shopping Center for a development-oriented methodology in decreasing the continued sales of counterfeit and pirated goods.
  2. IPOPHL secured the support fund of P10 million from the Office of the President for the National Committee of Intellectual Property Rights (NCIPR)’s operational requirements. Leading to the seizure of its biggest haul of counterfeit and pirated goods, to a tune of P 13 billion. the removal of the Philippines from the USTR Special 301 Priority Watch List is cited as the most significant effort of the NCIPR’s, 

Since 2015 till date, modernization had been the focus of IPOPHL leading to;

  1. The launch of different online filing platforms such as; eTMFile, eLDFile and the eUMFI in 2016.
  2. An improvement on TM classification was initiated by IPOPHL joining of sixty-two other countries to use TMClass which can translate terms in 42 different languages and;
  3. IPOPHL became a World Intellectual Property Organisation (WIPO) designated State for the filing of international applications being the second of its kind in ASEAN., 
  4. The online database of the Intellectual Property Office of the Philippines (IPOPHL), particularly for trademarks, is constantly updated as this is used to monitor filed applications. 

IPOPHL is built on five core values;                                                                                                             

  1. JUSTNESS

It respects and promotes justness, equity and equality in the delivery of services and functions, concerning individual differences by gender, religious, social and political affiliation to ensure that nobody is deprived of their rights according to what is required by the law.

2. HARMONY AND TEAMWORK

IPOPHL promotes an environment where respect and recognition prevail through the provision of venue and mechanism for posting camaraderie among team members to enhance productivity and morale. 

3. ACCOUNTABILITY

IPOPHL accepts with high responsibility and trust the consequences/results of one’s actions and decisions, guided by the government policies and rules on the use of government resources.

4. INTEGRITY

IPOPHL demonstrates moral courage, honesty and decency in the performance of duties, avoids conflict of interest, conforms with the professional code of ethics, practices openness and transparency, and serves as a role model for integrity within and outside IPOPHL.

5. EXCELLENCE

IPOPHL creates and sustains a culture of excellence in the organization. Domesticate QMS for continuous improvement in the work processes to deliver quality service and achieve high customer satisfaction. We seek and engage in activities that provide continuous career and self-development, a benchmark from global best practices and innovative approaches to meet the global standards in all aspects of IP services.

Through IPOPHL, the Philippines developed an IP legal framework that is international standards-compliant and has also assented to international agreements, conventions and protocols, such as:

  1. Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (since 25 July 2012);
  2. Patent Cooperation Treaty (PCT) (since 17 August 2001);
  3. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (since 1 January 1995);
  4. Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (since 25 September 1984);
  5. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for Purposes of Patent Procedure (since 21 October 1981);
  6. Convention Establishing the World Intellectual Property Organization (the WIPO Convention) (since 14 July 1980);
  7. Paris Convention for the Protection of Industrial Property (since 27 September 1965)
  8. Marrakesh Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities’ (since 18 March 2019) and;
  9. Berne Convention for the Protection of Literary and Artistic Works (the Berne Convention) (since 1 August 1951).
     

Overview of the IPOPHL IP System

IPOPHL IP functions can be broken into three components:

  1. Registration and protection system: This is the registration structure operated by IPOPHL for trademarks, designs and patents and related utilities that IPOPHL operates.
  2. The commercialisation of IP: These are the various IP contractual agreements such as licenses, assignments, among others.
  3. Enforcement: criminal and civil courts and administrative routes. The administrative process is through the IP Enforcement Office (IEO) of the IPOPHL. Once a complaint is filed with the IEO, right holders and their associates may coordinate with IEO in taking suitable action to enforce their IP rights. Administrative remedies are available through the Bureau of Legal Affairs (BLA) of the IPOPHL. The BLA has jurisdiction in administrative complaints about violations of IP rights with overall damages claimed that are not below Two Hundred Thousand Pesos (Php 200,000). It also has the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings.

The IPOPHL Intellectual Property Rights Enforcement Office (IEO), can also receive complaints involving outright counterfeiting and piracy via the applicability of these rules:

  1. The IP Code – sets out the remedies available to the complainant;
  2. Rules and Regulations on Administrative Complaints for Violation of Law Involving IP Rights (IPV Rules), as amended;
  3. The Rules of Procedure for IPR Cases, which apply in supplementary character to the IPV Rules; and
  4. The Rules of Court, which also apply in supplementary character to the IPV Rules. For cases filed with the IEO, the Rules and Regulations on Enforcement of IPOPHL apply.

The present

As part of its mandate, IPOPHL partners with other government agencies such as the Department of Trade and Industry (DTI) and the Department of Science and Technology (DOST), to create awareness of IP among entrepreneurs and micro, small and medium enterprises (MSMEs), associations, startups, creators and inventors, by elevating IP roles in the economic growth of the nation and wealth for right holders. They designed different IP training mechanisms fit for their needs;

  1. IP Academy The Intellectual Property (IP) Academy: This academy is the national centre for the acquisition of IP knowledge, publication, research and development
  2. WinIP: Women In IP, the pilot batch was inducted in June 2016. The host of women were pulled from the members of the agency of the National Committee on Intellectual Property Rights (NCIPR) with the intent to expand the scope to accommodate women from other government agencies, academia, research institutes, non-governmental agencies and the business sector.
  3. Young IP Advocate (YIPA): This training program targets Filipinos in secondary schools and was launched in 2013. Its members include students from 77 schools spread across Cagayan de Oro, Cebu, Baguio, Metro Manila, Davao, and Iloilo, with IP clubs established in some of these schools intensifying campaigns on IP.
  4. Learn, be Empowered, Adopt, and Profit from IP Virtually (iLEAP IP): This is an e-learning platform series on the basics of IP with Free weekly introductory webinars on trademarks, copyright, patents, utility models, and industrial designs. It targets the general public with resource persons from the DITTB and BCRR. 
  5. Trade fair: IPOPHL has been participating in trade fairs and exhibits since 2006, which targets MSMEs. It provides IP advisory services through Information officers designated in the IPOPHL booth during the event.
  6. IP Awards: the GAWAD YAMANG ISIP IP Award is the most esteemed Intellectual Property award in the Philippines and it aims to encourage the innovative use of the IP system in support of the country’s creative industry and serves as an IPOPHL  promotional tool in the creation of IP awareness, goodwill, and brand retention.

Innovative works

  1. IPOPHL established the Communications and Marketing Office (CMO) to strengthen its online presence to adapt to new ways of communicating with the public as a service-oriented organization. This Unit is designated for creating and implementing awareness campaigns on the Social media accounts leading to IPOPHL’s online presence on; Facebook, Twitter, LinkedIn, and Instagram @IPOPHL and a Website: www.ipophil.gov.ph.
  2. The IPOPHL also published the National IP Strategy (NIPS)  in December 2019, which outlines the goals and strategies of the IPOPHL as an agency leading IP rights protection and supporting Philippine innovation and creativity. The NIPS publication came after the two innovation bills were signed into law in April 2019.
  3. In November 2019,  IPOPHL published comments on the proposed amendment to its last amendment to the IP Code which was in 2013. The recommended amendments included;
  1. provision of landlord liability and contributory liability in case of trademark infringement, among others 
  2. the establishment of the National Council on Intellectual Property Rights, which reiterates the establishment and function of the NCIPR, through a legislative pronouncement as against an executive order, and
  3. the creation of the Sub-Committee on Enforcement Intellectual Property Rights in the Digital Environment to address the need for digital IP enforcement.
  4. IPOPHL’s Improvement of the Customs IP border protection system, with evidence of seizures of imported, counterfeited branded goods recorded with Customs towards a State free of counterfeited good is commendable.

Unfortunately, this was short-lived with the United States Trade Representative (USTR) Special 301 Report 2020 that cited the findings of the Organisation for Economic Co-operation and Development (OECD) that the Philippines is among the leading sources of counterfeit medicines distributed globally. In a similar publication, with the European Union Intellectual Property Office, OECD also mentioned the Philippines as a possible source of fake medicines, footwear, leather goods and bags.

Conclusion

It is no surprise the innovative activities of the IPOPHL earned it a WIPO designated state for the filing of international marks. It, therefore, follows that an IP Registry that initiates steps in the development of IP in compliance with the international best practices and line with the World Intellectual Property Organisation (WIPO) objectives and mandates will improve its performance index, participation at the international scene and secure a spot as a WIPO designated state or attract other WIPO partnerships and funding.

The IPOPHL maintains an uncommon nomenclature by operating under the Office of the President thereby relinquishing impact and influence not seen in most other countries. This should be emulated globally towards building a strong worldwide IP system. There should also be a broad scope in the mandates of IP state offices that are all-inclusive; registration, protection, enforcement, commercialization and policy creation among others. A deliberate government effort to back the mission and visions of IP state offices in curbing the evolving challenges in the IP sector. A special committee with the presidency as chairman should be set by countries to promote IP development and management. The IPOPHL no doubt is a state of the arts and has attracted to itself goodwill in nomenclature, structure and functionality.


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