FREQUENTLY ASKED QUESTIONS ON UTILITY MODEL AND INDUSTRIAL DESIGN
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 is a utility model?
A utility model is a protection awarded to inventions that fall short of the inventive requirement. It is any technical solution of a problem in any field of human activity which is new and industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing (Sec.109 in relation to Sec. 21, IP Code).
What are integrated circuits and layout designs?
Integrated circuit means a 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 electric 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.
What are the requirements in an industrial design application?
Every application for registration of an industrial design shall contain:
(a) Request for registration of the industrial design;
(b) Information identifying the applicant;
(c) An indication of the kind of article of manufacture or handicraft to which the design shall be applied;
(d) 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
(e) 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 conversion from patent application to utility model application or from utility model application to patent application allowed?
Yes, conversion of a patent application to a utility model application and vice versa is allowed. Conversion of the application is allowed at any time before the grant or refusal of a patent or utility model registration upon payment of the prescribed fee. It shall be accorded the filing date of the initial application. Conversion of the application may be only done once.
Are parallel applications (utility model application and patent application for one subject) allowed?
No. An applicant may not file two (2) applications for the same subject, one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively (Sec.111, IP Code).
Is substantive examination conducted in utility model and industrial model applications?
There is no substantive examination of the utility model or industrial model application.
What is the term of utility model, industrial design and layout design of integrated circuits?
A utility model is protected for seven (7) years from the date of the filing of the application, without possibility of renewal (Sec. 109.3, IP Code).
Both industrial design and lay-out designs of integrated circuits 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:
(a) The inventor;
(b) 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
(c) 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:
(a) The description and claim and drawings are made in accordance with the Rules and Regulations of Industrial Designs;
(b) The filing fee and other required fees have been fully paid;
(c) 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.
When are dotted lines permissible in an industrial design application?
The use of dotted lines is required only if the applicant files a partial design application for an article of manufacture.
Is a statement of novelty required?
A statement of novelty is not required by the IPO.
Are written descriptions of parts of the design application required to be submitted? If so, when should the descriptions be submitted?
Written descriptions of all parts of the design is not required. Only a brief description of the several views of the drawings must be submitted at the time of filing the design application.
Can a party file an opposition against a patent, utility model and industrial design?
No. Oppositions are not available under the rules.
Are there any remedial measures in attacking the registrability of a utility model or industrial design application?
Yes. Third party observations may be submitted. Following the publication of utility model or 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. The observations and the comments will be included in the file wrapper of the application and will be studied by the Bureau (Sec. 47, IP Code).