South-East Asia IPR Basics Series: Semiconductor topographies in the Philippines

shuma2_163Semiconductors are the chips which function as silicon brains for modern electronics, including phones, appliances, cameras, and even automobiles. These small but powerful goods have become increasingly important as smart tech has reached into every facet of modern life.

Both as a manufacturer and an assembler, the Philippines is a major member of Europe’s semiconductor trade. In this article, we will take a look at how the Philippines categorizes and protects semiconductor IP.  As always, if you have any questions about protecting your IP, our experts are just a click away.

Semiconductor topographies in the Philippines

The Philippines: a background for SMEs

The Philippines is an emerging, newly-industrialized market with the world’s 39th-largest economy, according to the World Bank. With Q2 2015 GDP growth of 5.6% and the EU-Philippines Partnership and Cooperation Agreement signed in 2012 set to be implemented soon, the Philippines presents a number of ready business opportunities for European SMEs. Low wage inflation, consistent liberalizing reforms to the economy and regulatory efficiency, and a free banking sector contribute to the Philippines’ Ease of Doing Business score of 95. Balancing these strengths are lingering issues with corruption and an inefficient and political judiciary.The Philippines is a member of the following international conventions regulating IP matters[1]:

  • Patent Cooperation Treaty
  • Berne Convention for the Protection of Literary and Artistic Works
  • Paris Convention for the Protection of Industrial Property
  • Convention Establishing the World Intellectual Property Organization
  • WIPO Copyright Treaty
  • WIPO Performances and Phonograms Treaty
  • Madrid Agreement and Protocol
  • ASEAN Framework Agreement on Intellectual Property Cooperation
  • ASEAN Trade in Goods Agreement

 

Semiconductors in the Philippines

Leading the charge in Philippine economic growth are electronics exports, which reached $17 billion in 2013. Massive imports of electronic components are assembled in the Philippines to be shipped across the world— Philippine exports comprise roughly 10% of world semiconductor exports and many major international firms including Samsung and Texas Instruments have divisions housed there. In this process, firms in the Philippines benefits from favourable governmental policies, special economic zones in major electronics manufacturing hubs, and an active industry association in SEIPI. At the core of the Philippine electronics trade are semiconductors, the beating heart of modern technology and a foundation product for many modern industries. In Philippine law, semiconductor topographies and industrial designs are treated as similar concepts and are both governed by Republic Act No. 9150.

Definitions of semiconductor topography designs

Semiconductor topographies (referred to as integrated circuit layout-designs in Philippine law) are the designs used on integrated circuits which control the way the circuits appear and function. This IPR subject area is handled by the Bureau of Patents. The Philippines states that the only registrable semiconductor topography designs are those which:

  • ARE original and not commonplace among creators of layout designs
  • ARE NOT simply combinations of existing commonplace designs, unless the combination of those designs constitutes originality in and of itself

 

Applying for a semiconductor topography design registration

Applications for design registrations are required to contain:

  • A request for a registration of the layout-design
  • The name and other data of the applicant
  • The name and other data of the creator or, if the applicant is not the creator, a statement indicating how the applicant has rights to the design
  • One or more indications of the kind of products to which the design will be applied
  • Representations of the products or of the design as it is applied to the product. These representations must clearly show the features for which protection is claimed
  • Payment of the application fee
  • (optional) A specimen of the article embodying the layout-design
  • (if the applicant is not a resident of the Philippines) Contact information for an agent or representative in the Philippines who may be served notice or process for the application

The Philippines has a first to file system, meaning that designs are assigned to the first person to file for them, with two exceptions. First, designs created as part of a commission or in the course of an employee’s normal line of work belong to the person who commissioned them or the employer. Second, designs gain priority when the same design was earlier filed with an international convention or a in a nation with a treaty with the Philippines. For a design to gain priority, there are three requirements:

  • The local application must expressly claim priority
  • The local application must be filed within 6 months of the earliest foreign filing date
  • A certified copy of the foreign application must be provided along with an English translation within 6 months of filing in the Philippines

An application with a priority date is treated as though it was filed on that date and thus offer additional protection to companies’ IPR. For example, if Company A files a design in France, Company B may read the details of that design and try to copy that design in the Philippines. Claiming priority would allow Company A to be treated as though it had filed its Filipino design at the same time as its French design, giving it a leg up over Company B in the Philippines’ first-to-file system. An application which does not initially claim priority can still add a priority claim within two months so long as the applicant pays a fee and provides a written explanation stating that the omission was accidental.

 

Examinations and periods of protection

Applications will be inspected to ensure that the application is complete and that the subject matter of the application qualifies for protection as a semiconductor topography / layout-design. Should the examination be successful, the design will be registered and a certificate will be issued.

Layout-designs are protected for ten years with no chance of renewal. Protected periods for layout-designs begin from the date of the first commercial exploitation of the design anywhere in the world with the consent of the right holder. For protection to be extended in this way, an application for registration of the layout-design must have been filed with the Philippines within two years of the first commercial exploitation. Alternatively, if a layout-design has not been exploited commercially anywhere in the world by the time it is filed with the Philippines, then protection begins on the filing date accorded to the application.

Limitations on semiconductor topography / integrated circuit layout-design rights

Owners of layout-designs have the right to reproduce them freely wholly or in part. Others are forbidden from doing so unless they are reproducing a part of the design which by itself does not constitute an original innovation. Should someone unknowingly infringe on IPR for an integrated circuit, the registration holder has the right to claim reasonable royalties from the infringer.

 

Enforcing your Intellectual Property Rights

Before taking legal action, SMEs are encouraged to consider mediation as a cost-effective and quick way to uphold their rights. In any event, SMEs should always seek professional assistance before taking action to protect their IPR.

Applicants are entitled to take action to protection their registered designs. No damages can be recovered for acts of infringement more than four years old or for acts of infringement committed before the infringer knew or could reasonably be expected to know of the design. Additionally, any prior user of a design who did so in good faith and had undertaken “serious preparations” to use the design before the filing date or priority date of the application will have the right to continue use. The Legal Affairs Bureau of the Intellectual Property Office is the organ responsible for resolving many design IPR disputes, including:

  • Cancellation or suspension of any permits or licenses issued by the IPO
  • Administrative complaints for violations of IPR laws where total damages do not exceed 200,000 Filipino pesos
  • Issuance of cease and desist orders
  • Seizure of products and properties which are subject of IPR offenses
  • Issuance of administrative fines of up to 150,000 pesos

Anyone possessing an infringed right may also bring a civil action. The court can award damages or, if damages are inadequate or difficult to assess, the court can award damages of equal value with reasonable royalties. Awards can also exceed damages, though they are capped at 300% of total damages, and can include destruction of infringing goods.

 

Additional Information

For more information on IPR in the Philippines and how to best product your products against infringement in, check out the guides available at our Helpdesk or contact one of our experts for free, tailored advice.

Relevant links

[1]For a full list, see the WIPO website at: http://www.wipo.int/wipolex/en/profile.jsp?code=ph

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