ASEAN: towards greater harmony

06-10-2017

Rowanie Nakan

ASEAN: towards greater harmony

jankovoy / iStockphoto.com

The Philippines plays an active role in helping to improve harmonisation and cooperation efforts in the area of IP, as Rowanie Nakan of Cruz Marcelo & Tenefrancia reports.

The Association of Southeast Asian Nations (ASEAN), comprising ten member states—Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, the Philippines, Singapore, Thailand, and Vietnam—is now the third largest market in the world, with a population of more than 600 million. With this market size and a GDP of $2.432 trillion as of 2015, the ASEAN region continues to attract investors from around the globe, making it a major global business and manufacturing hub.

These figures are expected to rise within the next decade with ASEAN’s efforts towards economic integration , making it a strategic move for companies to expand their businesses and/or establish their presence in the ASEAN region.

Cross-border business expansion means that companies must adopt strategies that effectively protect their assets. A company’s assets include not only tangible assets, such as equipment, buildings and land, among others, but also intangible items such as IP assets, which include patents, industrial designs, trademarks, copyright and trade secrets.

The existence of registered IP rights plays a key factor in cross-border transactions and also provides protection against IP theft as, generally, only registered IP rights may be enforced. Since each ASEAN member country has its own IP regime, harmonised IP standards and examination procedures are necessary to facilitate IP registration and protection in ASEAN countries.

Harmonisation efforts are ongoing, so IP owners may, in the meantime, utilise a hybrid of ASEAN innovations and other bilateral/multilateral agreements to formulate an effective ASEAN IP strategy.

The Philippines:
a closer look at patents

Among the steps taken for greater cooperation among the various national IP offices is the implementation of the ASEAN Patent Examination Cooperation (ASPEC), which allows the participating IP offices to share search and examination results. For example, the IP owner may file its initial patent application in the Philippines. Since the Philippines is a member of ASPEC, which includes the Philippines, Brunei, Cambodia, Indonesia, Laos, Malaysia, Singapore, Thailand, and Vietnam, the examination results of the examiner of the Intellectual Property Office of the Philippines (IPOPHIL) may, upon request of the applicant, be adopted by the examiners in other ASPEC-member countries to expedite their own examination process.

As patent application documents in English are accepted by the IPOPHIL, there is no need for translation of patent applications which are already in English. Likewise, as ASPEC operates in English, search and examination documents issued by Philippine patent examiners also need not be translated.

Aside from ASPEC, the IPOPHIL has patent prosecution highway (PPH) agreements with the USA, Japan, and Korea which allow expedited examination of Philippine patent applications where at least one claim of the corresponding foreign patent application has been allowed by the appropriate foreign IP office. Further, the IPOPHIL has entered into a PPH programme with the European Patent Office which took effect on July 1, 2017.

Inherent to greater cooperation is an undertaking by each IP office to ensure quality processes. The IPOPHIL is ISO 9001:2008 certified, and has begun preparing to transition to ISO 9001:2015 certification, which is the latest standard for quality management.

In October 2017, the IPOPHIL will be accredited as an international searching authority and international preliminary examining authority (ISA/IPEA) under the Patent Cooperation Treaty (PCT) following the unanimous endorsement of the Working Group on PCT.

"Cross-border business expansion means that companies must adopt strategies that effectively protect their assets."

Trademarks

With respect to brand protection, most ASEAN IP offices have expedited trademark registration processes. In the Philippines, a certificate of registration to an unopposed application may be issued within six months from the filing of the trademark application.

The Philippines acceded to the Madrid Protocol in 2012, allowing foreign applicants to directly file their trademark applications with the IPOPHIL. Companies may also take advantage of the low handling fee of approximately $58 being charged by the IPOPHIL as office of origin, which is one of the lowest handling fees among Madrid Protocol member states.

Enforcement

IP owners have to consider the enforcement activities in a specific country. In the Philippines, IP rights holders such as multinational companies may enforce their IP rights by filing an administrative complaint before the Bureau of Legal Affairs of the IPOPHIL. Civil or criminal complaints may also be initiated before the regional trial courts established as special IP courts. Either remedy allows the IP rights holder to secure provisional remedies such as a temporary restraining order or other preliminary injunctive reliefs.

The IP owner therefore has to assess the various tools available in different countries when considering where to register its IP rights and where first to file its applications to come up with a cost-effective ASEAN IP strategy. 

Rowanie Nakan is a partner at  Cruz Marcelo & Tenefrancia. She handles patent, trademark and copyright matters, with increasing focus on the effect of the ASEAN cooperation on the Philippine IP system. Her work also includes rendering various patent-related services, such as patent procurement, maintenance, enforcement, commercialisation, and IP litigation. She can be contacted at: ra.nakan@cruzmarcelo.com. 

Rowanie Nakan, Cruz Marcelo & Tenefrancia , , ASEAN, patent, Philippines, IPOPHIL, examination, cooperation, ASPEC, trademark, harmony, enforcement

WIPR