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Edmund Jason Baranda
External Expert, South-East Asia IPR SME Helpdesk
Managing Partner, Baranda & Associates – Rouse
29 April 2020
Managing Intellectual Property During the COVID-19 Pandemic
An initiative of the
Core Services – What We OfferEnquiry Helpline
Webinars and E-learning modules
Training Workshops
Website & BlogNewsletter, E-Bulletin
Guides and factsheets
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Latest developments in the Philippine Intellectual Property landscape
• IP protection and compliance through the use of technology / managing
intellectual property portfolio amidst COVID-19
• Post-COVID-19 IP trends
Agenda
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Utilize E-Services of IPOPHL
• Confirm deadlines/extension of deadlines
• Identify matters that are solely for offline compliance/physical filing
• Online use of TM
*Enhanced Community Quarantine period in Metro Manila (where IPOPHL
is located) is 15 March 2020 to 15 May 2020.
IP protection and compliance through the use of technology / Managing intellectual property portfolio amidst COVID-19
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Searches still available for trademarks, patents, utility models and industrial
design
• Watch out: There may be delays in updating registry data on prior
trademarks/prior arts. Additional search after the lockdown is encouraged.
E-Services of IPOPHL
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
http://www.ipophil.gov.ph/online-filing/
An initiative of the
• Manual filing is suspended
• Use online filing system of IPOPHL - available for trademarks, patents, utility
models and industrial design
• No online system for copyright recordal, but this will not affect rights of IP
owner as protection attaches from the moment of creation
E-Services of IPOPHL
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
http://www.ipophil.gov.ph/online-filing/
An initiative of the
• Other requirements (POA, DAU, priority claim) may also be submitted online.
• eCorr system is available - IPOPHL communications relating to
applications/registrations are sent via email. However, this is not heavily used
because IPOPHL will only process applications after the lockdown.
E-Services of IPOPHL
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
http://www.ipophil.gov.ph/online-filing/
An initiative of the
• Payment of filing fees
- Pay online; or
- Within 60 days from due date
• Pleadings, documents and other payments
- Within 60 days from due date
- But those falling due from 16 March 2020 to 31 March 2020 only up to 31 May
2020 (IPOPHL MC NO. 2020-011).
Confirm deadlines/extension of deadlines
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• E-Services of IPOPHL for patents, utility models and industrial applications
are, for now, only for new filings
• Filing of TPO/AI is within 60 days from publication/request for substantive
examination under patent rules
• On 20 April 2020, IPOPHL issued Memorandum Circular No. 2020-01 (MC
2020-010)
- Extension of deadline due to the lockdown will cause delay in processing of patent
applications for personal protective equipment (PPE), medical/health care
equipment/devices, and pharmaceutical products which are considered urgently needed
to contain the Covid-19 situation (“PPE and medical products”)
Filing of Third Party Observation (TPO) and Adverse Information (AI)
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Extension of period to file all papers, documents and payments shall not
apply to the PPE and medical products
• Filing of TPO/AI due from 16 March to 21 April 2020 – file online (via email to
[email protected]) or file on or before 11 May 2020
• Filing of TPO/AI due from 22 to 30 April 2020 – file online (via email to
[email protected]) or file within 15 calendar days from due date
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
Filing of Third Party Observation (TPO) and Adverse Information (AI)
An initiative of the
• Hearings and mediation before IPOPHL
• Submission of documents that require notarization – e.g. Declarations of
Actual Use, Verified Pleadings, etc.
• Patent/UM/ID patent application-related submissions (NOT new filings)
• Prepare human resources for surge of filings/queues when complying with
requirements after the lockdown
Matters for offline compliance/physical filing
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Marks vulnerable to cancellation for non-use
• no express exception yet provided for the period of lockdown or under the “new
normal”
• Online use of the mark, if applicable, may be suggested to IP owner
• Shift to online markets/transactions facilitated by Covid-19 situation
- A must to monitor online markets for bad actors: infringements and bad faith applicants
Online Use of Trademarks
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
Post Covid-19 IP trends
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Online market preference
• PPE, medical/health devices and pharmaceutical products
• Challenges for non-Covid-19 essential brands
Post Covid-19 IP trends
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Both IP owners and infringers will intensify marketing online and use of
online markets
• Online monitoring and enforcement will become more crucial
- To remove ads/links/websites for counterfeit products
- To redirect traffic to legitimate distribution channels
• IP owners/representatives to heavily use notice and takedown systems of
online platforms
Online market preference
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• PPE, medical/health devices and pharmaceutical products are currently in
high demand; demand is likely to be sustained in the coming months
• Projected increase in counterfeiting of such products
- IPOPHL reported that in the middle of the lockdown, there are complaints filed against
sellers of counterfeit PPEs, including face masks and N95 respirators (https://www.ipophil.gov.ph/news/ncipr-calls-on-whole-of-society-vigilance-on-counterfeiting-piracy-amid-covid/)
• Many brand owners will venture into producing Covid-19 essential products
• Opportunity for SMEs
Increased demand for PPE, medical/health devices and pharmaceutical products
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Sample of ad for products marketed to address Covid-19 situation
Increased demand for PPE, medical/health devices and pharmaceutical products
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Sample of ad for products marketed to address Covid-19 situation with
unauthorized use of a mark
Increased demand for PPE, medical/health devices and pharmaceutical products
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Enforcement actions done during the lockdown in Metro Manila show the
priorities of local enforcement agencies which may extend after the lockdown
Increased demand for PPE, medical/health devices and pharmaceutical products
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• IP protection/compliance with regulations (e.g., FDA) for Covid-19 essential
products
- File patent applications for Covid-19 essential products
▪ If no patent here, part of public domain so can manufacture locally
▪ If drug/medicine is patented, can do parallel importation which is allowed under the Cheaper
Medicines Act
- Licensing opportunities for Covid-19 essential products- List of Covid-19 related technologies and classifications to facilitate research on technologies addressing Covid-19:
https://patentscope.wipo.int/search/en/covid19.jsf
- Comply with FDA regulations
▪ Guidelines for the Registration of Drug Products under Emergency Use (DEU) for the
Coronavirus Disease 2019 (Covid-2019)
▪ Off-label/unapproved use
Increased demand for PPE, medical/health devices and pharmaceutical products
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
• Non-Covid-19 essential brands will face challenges as consumers reduce
spending
• Many brands for food, household, hygienic and cosmetic products are likely
to recover/sustain their current market
- Must monitor infringers that attract buyers through lower price offers
• Luxury and hospitality industry brands are hard hit and may consider
abandonment of certain portfolios.
- May be taken advantage of by bad faith applicants
• Price gouging should be monitored as reputation of brands may be affected
Likely challenges for other brands
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
Thanks for your attention
Questions?
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.
An initiative of the
Thank you for your attention!
Stay connected!
South-East Asia IPR SME Helpdesk
@ iprSEAsia South-East Asia IPR SME Helpdesk
www.yourIPinsider.eu Channel: http://
www.ipr-hub.eu/desk TV
www.ipr-hub.eu
© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.