By Jennifer Lou Dinopol, DCLaw
Designs are a crucial part of intellectual property, reflecting the visual appeal and innovation of a product. Protecting these designs ensures that creators and businesses can maintain a competitive edge in the market. For those looking to register a design in the Philippines, understanding the process, requirements, and potential challenges is essential. This article provides a detailed guide on design registration in the Philippines, covering everything from what can be registered to the associated costs and benefits.
Contents
1. What Can Be Registered as a Design in the Philippines?
2. Reasons for Refusal of a Design Application in the Philippines
3. The Design Registration Process in the Philippines
4. Documents Required for Design Registration in the Philippines
5. Design Opposition Process in the Philippines
6. Design Costs in the Philippines
7. Why File a Design in the Philippines?
1. What Can Be Registered as a Design in the Philippines?
A design, in the context of intellectual property, refers to the aesthetic aspects of a product that distinguish it from others. In the Philippines, the design must be new or original and involve the appearance, shape, configuration, or surface ornamentation of an article. The design can be two-dimensional, such as patterns or lines, or three-dimensional, like the shape of a product.
However, not all designs are eligible for registration. To be considered for design registration in the Philippines, the design must meet the following criteria:
- Novelty: The design must be new and not disclosed to the public before the date of application.
- Industrial Applicability: The design should be applicable to a product that can be mass-produced.
- Non-functionality: The design should be purely ornamental and not dictated by the function of the product.
Designs that are purely functional, contrary to public order or morality, or have been disclosed to the public before filing cannot be registered.
An industrial design is any composition of shape, lines, colors, or a combination thereof, or any three-dimensional form, whether or not associated with shape, lines, or colors, which produces an aesthetic and ornamental effect in their entirety or when taken as a whole, provided that such composition or form gives a special appearance to and can serve as a pattern for an industrial product or handicraft.
Industrial products include articles of manufacture that belong to the useful or practical arts or any part thereof, which can be made and sold separately.
2. Reasons for Refusal of a Design Application in the Philippines
The Intellectual Property Office of the Philippines (IPOPHL) is responsible for examining design applications. Several reasons might lead to the refusal of a design registration application:
1. Non-registrable Industrial Design: The following industrial designs shall not be registrable:
- (a) Industrial designs that are dictated essentially by technical or functional considerations to obtain a technical result;
- (b) Industrial designs that are mere schemes of surface ornamentation existing separately from the industrial product or handicraft; and
- (c) Industrial designs that are contrary to public order, health, or morals.
2. Lack of Novelty: If the design is found to be similar to an existing registered design or has been made available to the public prior to the application date, it may be refused.
3. Functional Features: Designs that are dictated solely by the function of the product are not registrable. For instance, a design necessary for the product to perform its function may be rejected.
4. Contrary to Public Order or Morality: Designs that are deemed offensive or violate public norms may be refused.
5. Insufficient Disclosure: If the application does not adequately describe or depict the design, it may be rejected due to insufficient information.
Understanding these grounds for refusal can help applicants avoid common pitfalls in the registration process.
3. The Design Registration in the Philippines
Registering a design in the Philippines involves several steps, beginning with the preparation of the application and ending with the issuance of the certificate of registration. Here’s an overview of the process:
Step 1: Search for Existing Designs
Before filing, it’s advisable to conduct a design search to ensure that the design is novel. This can be done through IPOPHL’s online databases or by hiring a professional service. Also check how to register a trademark in the Philippines.
Step 2: Prepare and File the Application
The application should include a duly accomplished request form, drawings, and a brief description of the design. The applicant must provide details such as the name of the designer and any priority claims if applicable.
Step 3: Formality Examination
IPOPHL will conduct a formality examination to ensure that the application meets the basic filing requirements. If deficiencies are found, the applicant will be notified and given a chance to correct them.
Under existing practice, a design application issues into registration without substantive examination upon compliance with all formal filing requirements. If a formal examination report is issued, the applicant must respond to it within two months from the mailing date.
Step 4: Publication and Opposition
Once the design passes the substantive examination, it will be published in the IPOPHL Gazette. This publication initiates a period during which third parties can oppose the registration of the design.
Any interested party may furnish the Director of Patents with information, evidence, or data in writing and under oath showing that the design is NOT new. Such adverse information or third-party observations may cause the refusal of the design application. Within two months from receipt of this adverse information, the Director of Patents will issue a decision to deny or register the design.
Step 5: Issuance of Certificate of Registration
If no opposition is filed, or if opposition proceedings are resolved in favor of the applicant, IPOPHL will issue a certificate of registration, granting exclusive rights to the design for a period of five years, renewable for two consecutive five-year periods.
4. Documents Required for Design Registration in the Philippines
The design registration process requires several key documents:
- Accomplished Request Form: This form includes details about the applicant, designer, and the design itself.
- Drawings or Representations: Clear illustrations of the design in different views, showing all relevant aspects.
- Description of the Design: A brief explanation of the design’s novel features and industrial applicability.
- Priority Documents (if applicable): If claiming priority based on an earlier application in another country, certified copies of the foreign application must be provided.
- Power of Attorney (if filed through a representative): This authorizes the representative to act on behalf of the applicant.
Ensuring all documents are complete and accurate can streamline the registration process and reduce the likelihood of delays.
5. Design Opposition Process in the Philippines
After a design is published in the IPOPHL Gazette, third parties have two months to file an opposition. The opposition process allows others to contest the registrability of the design on grounds such as lack of novelty or similarity to existing designs.
The opposition process typically involves the following steps:
- Filing the Notice of Opposition: The opposing party submits a notice, along with evidence and arguments, to IPOPHL.
- Submission of Applicant’s Response: The applicant has the opportunity to respond to the opposition.
- Decision: IPOPHL reviews the submissions from both parties and makes a decision. If the opposition is upheld, the application may be refused or amended.
This process ensures that only truly novel designs receive protection.
6. Design Costs in the Philippines
The cost of design registration in the Philippines includes several components:
| Profefssional fee for 1 design | $250 |
| Government fee for 1 design | $85 |
| Government fee for each each embodiment in excess of one design | $40 |
The design registration cost in the Philippines via the iPNOTE platform starts from as low as $335, which includes all government fees and document preparation. Find the best IP attorney in the Philippines on iPNOTE
7. Why File a Design in the Philippines?
Filing a design in the Philippines offers several benefits:
- Market Protection: A registered design provides exclusive rights, preventing others from copying or using the design without permission.
- Competitive Advantage: Protecting a unique design can enhance brand identity and consumer recognition.
- Legal Recourse: Registered designs give the owner the right to take legal action against infringers.
- Business Expansion: For businesses looking to expand in the Philippines, design registration secures their products in a growing market.
With its strategic location and growing economy, the Philippines presents a valuable market for design protection.
8. Conclusion
Registering a design in the Philippines is a vital step for businesses and creators looking to protect their intellectual property. By understanding the requirements, process, and costs involved, applicants can navigate the system effectively and secure their designs. The protection afforded by a registered design not only safeguards against infringement but also strengthens a business’s position in the competitive market. Whether you are a local entrepreneur or an international company, design registration in the Philippines is a prudent investment in your product’s future.
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