FAQs on INDUSTRIAL DESIGN LAW IN THE PHILIPPINES
What is an industrial design?
An industrial design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors; provided, that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft (Sec. 112, IP Code).
What are the substantive conditions for protection of an industrial design?
Only industrial designs that are new or original shall benefit from protection under the Intellectual Property Code (IP Code). Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals are not protected (Sec 113, IP Code).
What are the requirements in an industrial design application?
Every application for registration of an industrial design shall contain:
- Request for registration of the industrial design;
- Information identifying the applicant;
- An indication of the kind of article of manufacture or handicraft to which the design shall be applied;
- The name address of the creator, or where the applicant is not the creator, a statement indicating the origin of the right to the industrial design; and
- A representation of the article of manufacture or handicraft by way of drawings, photographs, or other graphic representation of the design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which design protection is claimed.
The application may also be accompanied by a specimen of the article embodying the industrial design (Sec. 114, IP Code).
What drawings are required to be submitted together with the application for registration of industrial design?
Drawings depicting all views i.e. front view, rear view, right side view, left side view, top view and bottom view, are required for industrial design application, However, in cases where the opposite views are mirror images, only one of these views is required provided, that the applicant mention in the specification that this is the case. Sectional views may also be submitted at the option of the applicant.
Is substantive examination conducted in industrial model applications?
There is no substantive examination of industrial design applications.
What is the term of industrial design and layout design of integrated circuits?
Industrial design registrations are protected for a period of five (5) years from the filing date of the application. The registration may be renewed for not more than two (2) consecutive periods of five (5) years each by paying the renewal fee. The renewal fee shall be paid twelve (12) months pre ceding the expiration of the period of registration. However, a grace period of six (6) months may be granted for the payment of the fees after such expiration, upon payment of a surcharge (Sec. 118, IP Code).
Can an industrial design be protected as a copyrighted work?
Yes. Original ornamental designs or models for articles of manufacture, whether or not registrable as industrial design, and other works of applied art may be protected also as a copyrighted work (Sec.172 (h), IP Code).
Is there a novelty grace period for industrial design in the Philippines?
Yes. Philippine law provides a novelty grace period of six months for disclosure of information contained in the application if such disclosure was made by:
- The inventor;
- A patent office and the information was contained in another application filed by the inventor and should not have been disclosed by the office; or
- A third party which obtained the information directly or indirectly from the inventor.
What are the requirements in order to maintain an industrial design registration?
A signed petition for renewal of the design registration together with the renewal fee is required within twelve (12) months preceding the expiration date of the registration.
Is there a grace period for renewal of an industrial design registration?
Yes, a grace period of six (6) months is granted for payment of the fees after the expiration of the design registration, upon payment of a surcharge.
Does the Philippines have a secret design system?
What the Philippines has is deferment of publication of an industrial design application. The applicant may opt to file a request for deferred publication simultaneously with the filing of the application or at any time prior to its publication. The maximum period allowed for the deferred publication of an industrial design application is thirty (30) months from the filing date or priority date of the application. In case the request for the deferred publication is made after the filing of the application, the allowable period for the deferred publication will be the remaining time from the allowed thirty (30) months deferred publication period. The applicant may request for a specific time to publish the application provided it does not go beyond the allowed deferment period of thirty (30) months.
Can one industrial design application cover multiple designs?
Multiple designs in one application are acceptable provided there is unity of design i.e. the designs are all of the same subclass of the International Classification or of the same set or composition of articles (Sec. 115, IP Code).
Is it possible to file a single design application for multiple designs applied to the same product? Are there any disadvantages of doing so?
Yes, provided that a number of articles presented should not be patentably distinct from each other, and they should be of substantially similar dominant design features that are embodied in a single design concept. They must relate to the same subclass of the International Classification or the same set or composition of articles.
Since multiple designs are covered by a single design, the imitation by a third party of one part of the designs will con constitute an infringement of the entire article of manufacture and this is a disadvantage of filing a single design for multiple designs.
Does the Philippines have a partial design system?
Partial design is also acceptable. In the Philippines, partial design sought to be protected must include an environment/outward form to be shown in broken lines where the partial design is attached.
Generally, what should the applicant take care of in filing a design application in the Philippines in terms of formalities in the particular?
In terms of formalities, the applicant must take note of the following:
- The description and claim and drawings are made in accordance with the Rules and Regulations of Industrial Designs;
- The filing fee and other required fees have been fully paid;
- If priority is claimed, the priority document is submitted together with its English translation if not in the English language.
Is a divisional design application allowed in the Philippines?
A divisional design application is allowed. A divisional design application can keep the filing date and priority of the main application. The term of a divisional application is five (5) years from the filing date of the patent application and could be renewed for not more than two (2) consecutive periods of five (5) years each. To maintain the design registration, a renewal fee must be paid on or within one (1) year before the expiration of the current term.
Can photographs of the design application be submitted in lieu of drawings?
The applicant may submit photographs of the industrial design in lieu of drawings. The photographs however should be printed on an A4 size paper and with figure numbers shown in black ink on the paper proximate the corresponding photographs.
Can a party file an opposition against an industrial design?
No. Oppositions are not available for industrial designs.
Are there any remedial measures in attacking the registrability of an industrial design application?
Yes. Third party observations may be submitted. Following the publication of an industrial application in the E-Gazette, a third party observation may be filed within thirty (30) days. Any third party may present observations in writing concerning the application. Such observations shall be communicated to the applicant who in turn may comment on them (Sec. 47, IP Code).