IPOPHL seeks power to take down piracy sites

MANILA, Philippines — The Intellectual Property Office of the Philippines (IPOPHL) is pushing for steeper fines and the power to take down websites that infringe on IP rights as part of priority amendments to the IP Code.

In a statement yesterday, IPOPHL director general Rowel Barba outlined priority amendment proposals that the agency would want Congress to focus on in modernizing the IP Code as it lauded efforts at the House of Representatives to consolidate the bills to amend the IP Code of 1998.

Being merged are House Bill 8062 authored by Reps. Christopher de Venecia and Sharon Garin; HB 1597 authored by Deputy Speaker Michael Romero, and HB 8620 by Deputy Speaker Weslie Gatchalian.

On enforcement and adjudication, Barba said the IPOPHL proposes imposing stiffer fines on infringers and removing the P200,000 damage claim threshold as cases with claims falling below this, usually by micro, small and medium enterprises, cannot be adjudicated.

He also pushed for granting IPOPHL the power to order the takedown of websites with infringing material.

In addition, the IPOPHL wants the alternative dispute resolution mechanisms to be recognized as official modes for dispute settlement, and for the IP Rights Enforcement Office to be institutionalized.

On amendments to benefit inventors, Barba is proposing parallel-protection system through which inventors can register for a patent grant and simultaneously file a utility model (UM) for the same invention.

“A parallel-protection will allow inventors to wait and stake a chance for a patent grant while already commercializing their works under UM protection – the UM applications are shorter, taking two to 10 months on average, while a substantive examination on patent applications can take a few years,” he said.

He said the provisional patent protection would give applications immediate protection on the date of filing.

“A provisional patent will protect inventions even while the inventor is still making refinements or is assessing the commercial viability of the invention before undergoing the formal patent application,” he said.

Also part of the proposed amendments are the alignment of the “industrial design” definition with the multilateral Trade-Related Aspects of IP Rights Agreement and protection of partial designs or designs that make part of a certain product or article.

On the trademark law, IPOPHL  wants the protection of non-visual marks such as sound marks and certification marks which indicate that a product has met certain standards whether with respect to origin, material, mode of manufacture or performance.

On copyright and related rights, Barba said the priority amendments being pushed are clear-cut rules on orphan works; recognizing extended collective licensing by which collective management organizations can extend the license they issue to works of non-members; expanding the limitations for copyright; and centralizing the registration and deposit of copyright works in IPOPHL to avoid confusion among stakeholders.

IPOPHL also wants one of its units to be turned into a Bureau of Innovation and Business Development to promote the use of IP documents and databases for innovation and creativity pursuits, as well as increase IP commercialization and technology transfer in the country.

IPOPHL is likewise pushing for the institutionalization of its IP Academy, the national center for IP learning, skills training and research.

“Through IPOPHL’s proposed priority amendments, we hope to create an enabling environment that will promote and steer creativity, innovation and development not only for large companies but, more importantly for micro, small and medium enterprises, including startups, so the IP system could contribute to the national goal of inclusive and sustainable growth,” Barba said.