Industrial Designs and Layout Designs (Topographies) of Integrated Circuits
– The Intellectual Property Code, and Implementing Rules and Regulations, effective January 1, 1998.
– Republic Act (R.A.) No. 9150, an Act providing for the protection of layout designs (topographies) of integrated circuits, amending for the purpose certain sections of the Intellectual Property Code.
– Decisions of Philippine Courts.
Membership in International Conventions
– Paris Convention, since September 27, 1965, Lisbon Act and Stockholm Act, with the exception of Art. 1 to 12, since July 16, 1980.
– Convention Establishing the World Intellectual Property Organization (WIPO), since July 16, 1980.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since May 14, 2019.
Subject matter: Letters Patent may also be applied for (a) industrial designs; and (b) layout designs (topographies) of integrated circuits.
Definitions: in order to be entitled to a patent, an industrial design means any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors. Such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft; integrated circuit means any product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; layout design is synonymous with topography and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.
Novelty: a design shall not be considered new if it forms a part of prior art, or if it differs from prior designs only in minor respects, obvious to an average observer.
Substantive conditions for protection: only industrial designs that are new or ornamental shall benefit from protection under this Act. Only layout designs of integrated circuits that are original (result of its creator’s own intellectual effort and is not commonplace among creator’s layout designs and manufacturers of integrated circuits at the time of its creation) shall benefit from protection. Note: a layout design consisting of a combination of elements and interconnections that are commonplace shall be protected only if the combination, taken as a whole, is original.
Not protectable: industrial designs dictated essentially by technical or functional consideration to obtain a technical result, or those that are contrary to public order, health or morals shall not be protectable. Note: the applicability of R.A. No. 9150 shall include layout designs of integrated circuits that were commercially exploited anywhere in the world on and after January 1998, provided they meet the conditions for protection under this Act.
Priority: according to the Paris Convention.
Filing requirements for an application (to be sent to resident agent):
For an industrial design or layout design:
1. A request for registration of the industrial design or layout design, with information identifying the applicant;
2. An indication of the kind of article of manufacture or handicraft to which the industrial or layout design shall be applied;
3. A representation of the article of manufacture or handicraft by way of drawings, photographs or adequate graphic representation as applied to the article of manufacture or handicraft, which clearly and fully disclose those features for which protection is claimed;
4. The name and address of the creator, or where the applicant is not the creator, a statement indicating the origin of the right to the industrial design or layout design registration;
5. Certified copy of the foreign application, with an English translation, if priority is claimed.
Note: the application may be accompanied by a specimen of the article embodying the industrial design and shall be subject to the payment of the prescribed fee.
Electronic filing: available.
Electronic signatures: are accepted.
The Intellectual Property Office shall accord as the filing date the date of receipt of the application containing indications allowing the identity of the applicant to be established and a representation of the article embodying the industrial design or the layout design or a pictorial representation thereof. If the application does not meet these requirements, the filing date should be that date when all the elements specified in the contents of the application are filed or the mistake corrected. Otherwise, if the requirements are not complied within the prescribed period, the application shall be considered withdrawn. After the application has been accorded a filing date and the required fees paid on time, the applicant shall comply with the requirements of the contents of application within the prescribed period, otherwise the application shall be considered withdrawn.
Where the Intellectual Property Office finds that the substantive conditions for protection are fulfilled, it shall order that registration be effected in the industrial design or layout design Register and cause the issuance of an industrial design or layout design certificate of registration, otherwise, it shall refuse the application The form and contents of an industrial design or layout design certificate shall be established by the regulations, but the name and address of the creator shall be mentioned in every case. The Intellectual Property Office shall record in the Register any change in the identity of the proprietor of the industrial design or layout design or his representative, if proof thereof is furnished to it. A fee shall be paid, with the request to record the change in the identity of the proprietor. If the fee is not paid, the request shall be deemed not have been filed. In such case, the former proprietor and the former representative shall remain subject to the rights and obligations as provided in the Act.
Duration – renewals: (a) for an industrial design: five years from the date of filing, renewable for not more than two consecutive periods of five years each by paying the renewal fee. Renewal fees must be paid, within twelve months prior to expiry date. A grace period of six months with fine shall be granted for payment of the fees; (b) for a layout design: ten years to be counted from the date of commencement of the protection accorded to the layout design, without renewal.
The protection shall commence: (1) 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 and an application for registration is filed with the Intellectual Property Office within two years from such date of first commercial exploitation; or (2) on the filing date accorded to the application for the registration of the layout design if the layout design has not been previously exploited commercially anywhere in the world.
Modification of Protection after Registration
Compulsory licensing: same as for “Patents“.
Grounds for cancellation: (1) For an industrial design: (a) if the subject matter of the industrial design is not registrable; (b) if it is not new; or (c) if the subject matter of the industrial design extends beyond the content of the application as originally filed. (2) For a layout design: (a) if the layout design is not protectable; (b) if the right holder is not entitled to protection; (c) if the application is not filed within two years from its first commercial exploitation anywhere in the world.
Effect of cancellation of layout designs: any cancelled layout design registration or part thereof, shall be regarded as null and void from the beginning and may be expunged from the records of the Intellectual Property Office.
Assignment– Infringement: same provisions as for “Patents“.