PHILIPPINES

Amendments to IP Rules and Regulations Result in Streamlined Procedure for Inter Partes Proceedings

The Intellectual Property Office of the Philippines (IPOPHL) issued Memorandum Circular No. 2022-013 on the Amendments to the Rules and Regulations on Inter Partes Proceedings ("Amended Rules"), which took effect on 30 June 2022. The Amended Rules aim to modernise the procedure for the adjudication of intellectual property ("IP") cases by using information and communication technology, and to streamline the procedure in Inter Partes cases to improve the accessibility, resiliency, and cost efficiency of IPO's services. Inter Partes proceedings include oppositions to applications for trademark registration, petitions to cancel registration, and petitions for compulsory licensing.

Under the Amended Rules, the filing and service of pleadings, motions, manifestations, interlocutory orders, notices, summons, and other processes shall be done through electronic mail ("e-mail"). Copies of decisions, final orders, and entries of judgements shall also be served via e-mail.

The filing of a single pleading (such as an opposition, petition, or answer) involving more than one application or registration is also now allowed, provided that the same parties are involved.

To expedite proceedings, the extension period that may be granted for the filing of oppositions and answers has been shortened. Under the Amended Rules, only a single extension of 45 calendar days to file the opposition or answer is allowed upon a motion founded on meritorious grounds. Moreover, adjudication officers are now mandated to issue their decisions within a shorter period of 20 calendar days from the date the case is deemed submitted for decision, extendable for another 20 calendar days for justifiable reasons.

On the other hand, the period to file an appeal to the Director of the Bureau of Legal Affairs was increased from 10 calendar days to 15 calendar days from receipt of the decision or final order of adjudication officer. This period may be extended for another 15 calendar days on meritorious grounds. 

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IPOPHL Drafts Rules on Geographical Indications

On 12 May 2022, the Intellectual Property Office of the Philippines ("IPOPHL") announced that the Bureau of Trademarks has drafted the Implementing Rules and Regulations ("IRR") on Geographical Indications ("GI"). The draft IRR aims to strengthen the protection of GI and GI products and fulfill the obligations of the Philippines as a member of the World Trade Organization by providing rights and protection to GIs of other member countries. 

The draft IRR defines GIs as "any indication which identifies a good as originating in a territory, region or locality, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin and/or human factors."

The draft IRR also provides for: 

   a.  the right to prevent others the use of GI products in the following instances:

• misleading the public as to the geographical origin of the goods;
• falsely representing to the public that the goods originate in another territory;
• for wines or spirits – using in translation or accompanied by expressions such as "kind", "type", "style", "imitation", "method", "as produced in" or other similar qualifying terms, if such use would be misleading to the public;
• for agricultural products, foodstuff and any product of handicraft or industry – using in translation or accompanied by expressions such as "kind", "type", "style", "imitation", "method", "as produced in" or other similar qualifying terms, if such use would be misleading to the public;
• constituting an act of unfair competition as defined by the Paris Convention; and 
• any other use similar or analogous to the above.

   b. The requirements and registration process; and

   c. The grounds to revoke a registration which includes the following:

• the conditions for protection have not been fulfilled;
• there has been a change in the geographical origin of the goods including the natural and human factor;
• a court or tribunal rules that the identified producer has no effective control over the use of the GI, standards of production of the goods and other product specifications; 
• the registration of the GI was obtained through false statements and documents during the course of the application; and
• the registered or protected GI has been proven to be generic for, or a common or customary name of the goods covered in the Philippines.

According to IPOPHL, the protection granted to a GI will remain valid until the registration is cancelled.

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Participation in International Certification System and Support for Interoperability of Data Protection Frameworks

As a member of the Asia-Pacific Economic Cooperation ("APEC") Cross-Border Privacy Rules ("CBPR") System since March 2020, the Philippines expressed its support for the creation of the Global CBPR Forum ("Forum"), which seeks to promote interoperability of different regulatory approaches to data protection and privacy.  This is in furtherance of the National Privacy Commission’s vision of upholding the right to privacy in the age of accelerated digitalisation.

Among the objectives of the Forum is to establish an international certification system based on the CBPR and Privacy Recognition for Processors ("PRP"), albeit separate and independently administered from other APEC systems.

The APEC CBPR System is a voluntary, accountability-based, government-backed data privacy certification, endorsed by economies like Canada, Japan, South Korea, Singapore, Taiwan, and USA.  It enjoins economies and certified companies to demonstrate compliance with internationally-recognised data privacy standards for cross-border data transfers. Participants of the CBPR System agreed to the implementation of 50 CBPR program requirements as baseline protections across different legal regimes. The CBPR System then grants certifications to companies that are able to demonstrate its compliance to an "Accountability Agent" (an independent CBPR-recognised entity with investigative/adjudicatory powers).  Subject to monitoring, certified companies must show that they can provide security safeguards for personal data that are proportional to the probability and severity of threatened harm as well as the confidential or sensitive nature of the information.  Meanwhile, the APEC PRP System is a certification designed for data processors.

APEC CBPR and PRP certifications will continue to be provided through APEC-approved Accountability Agents until further notice.  The founding members of the Global CBPR Forum that are currently participants of these APEC systems which plan to transition into the Forum must provide at least 30 days' notice to their Accountability Agents. All approved Accountability Agents and certified companies under the APEC systems will automatically be recognised in the new Forum. The Forum is also open to other jurisdictions that accept its principles.

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Electric Vehicle Industry Development Act to Develop Electric Vehicle Industry

On 15 April 2022, Republic Act No. 11697, or the "Electric Vehicle Industry Development Act" ("EVIDA"), lapsed into law. Against the backdrop of rising fuel prices, the EVIDA promises energy security and independence by reducing reliance on imported fuel for the transportation sector and an enabling environment for the development of electric vehicles. 

The EVIDA mandates the creation of a Comprehensive Roadmap for the Electric Vehicle ("EV") Industry ("CREVI"), which refers to a national development plan for the EV industry with an annual work plan to accelerate the development, commercialisation, and utilisation of EVs. The CREVI has the following four components: (i) EVs and charging stations; (ii) manufacturing; (iii) research and development; and (iv) human resource development.

Further, the EVIDA seeks to generate demand and develop the EV industry by requiring at least 5% of the fleet of industrial and commercial companies, public transport operators, local government units, national government agencies, and government-owned and controlled corporations to be EVs. The EVIDA seeks to eventually convert the entire fleet of the foregoing entities to be EVs through a gradual increase of the percentage. The EVIDA also requires the allotting of parking slots for EVs in both private and public buildings and the construction or installation of charging stations in select gasoline stations.

The EVIDA provides for fiscal incentives, such as:

1. the possible inclusion of the manufacture and assembly of EVs, charging stations, batteries, and other parts and components, and the establishment and operations of charging stations and other related support infrastructure in the strategic investment priority plan (IPP) of the Bureau of Investments (BOI);
2. the exemption of importers for importation of completely built units of EVs from the payment of duties for eight years from the effectivity of EVIDA; and
3. the entitlement to a discount from the payment of motor vehicle user’s charge imposed under Republic Act No. 8794, otherwise known as "Motor Vehicle User's Charge Act", and vehicle registration and inspection fees.

There are likewise non-fiscal incentives, such as priority registration and expeditious processing in certain government agencies.

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Supreme Court Upholds its March 2020 Decision Allowing Foreign Construction Firms to Obtain Regular Licenses to Engage in Construction in the Philippines

On 10 March 2020, in Philippine Contractors Accreditation Board v. Manila Water Company, Inc., G.R. No. 217590 ("Decision"), the Supreme Court sitting En Banc invalidated Section 3.1, Rule 3 of the Implementing Rules and Regulations of Republic Act No. 4566 or the Contractor’s License Law ("IRR of RA 4566") promulgated by the Philippine Contractors Accreditation Board ("PCAB"). Section 3.1, Rule 3 limited the issuance of a contractor’s regular license only to those contractor-firms that are at least 60% Filipino-owned. The Supreme Court found that Section 3.1, Rule 3 is void because (i) RA 4566 did not itself provide for such restriction or discriminate against foreign contractors; (ii) there is also no constitutional prohibition against foreign entities engaging in the business of contracting/construction; and (iii) the construction industry is not among the investment areas or activities specifically reserved to Philippine nationals by executive policy as contained in the foreign investment negative list.

PCAB filed a Motion for Reconsideration on the ground that PCAB has amended Section 3.1(a), Rule 3 of the IRR of RA 4566 that made the regular license available to foreign contractors. In a Notice published on 3 March 2022, the Supreme Court nonetheless affirmed the Decision. The Supreme Court found that PCAB had not alleged or shown that the amendments to IRR of RA 4566 were published as required by law, or that they have taken effect. 

In any case, the Supreme Court observed that the amendments still suffered from the same defect since the amendment still provides for different licenses for local contractors (Quadruple A Platinum) and foreign contractors (Quadruple A Gold, under which foreign contractors are only authorised to engage in certain types of projects). The Supreme Court reiterated that RA 4566 did not sanction PCAB to impose a nationality-based license classification. 

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