Priority Rights under the Paris Convention
The Philippines is a party to the Paris Convention for the Protection of Industrial Property. Accordingly, an applicant who has previously filed an industrial design application in another member country may claim priority when filing a corresponding industrial design application in the Philippines.
To validly claim priority, the Philippine application must generally be filed within six (6) months from the earliest filing date of the corresponding foreign application.
Why Priority Matters
When priority is validly claimed, the Philippine application is treated, for priority purposes, as having been filed on the filing date of the earlier foreign application. This may be particularly important where another party files or discloses a similar design during the period between the foreign filing and the Philippine filing.
Requirements for Claiming Priority
The Philippine application should expressly state the priority claim and provide the relevant details of the earlier application, including:
- The country or intellectual property office in which the earlier application was filed
- The filing date of the earlier application
- The application number of the earlier application
- The identity of the applicant
- The design for which priority is claimed
A certified copy of the priority application must also be submitted to IPOPHL. Where the priority document is not in English, an English translation may be required.
Submission Deadline:
Under the applicable Philippine rules, the certified copy of the foreign application, together with any required English translation, must generally be filed within six (6) months from the filing date of the Philippine application.
Correspondence Between the Applications
The design disclosed in the Philippine application must correspond to the design disclosed in the earlier priority application.
Priority may not be fully recognized where the Philippine application contains material design features that were not disclosed in the earlier application. Therefore, any changes to the drawings, product indication, claimed features, or overall appearance should be carefully reviewed before filing.
In particular, attention should be given to:
- Differences between the drawings filed in the earlier application and those intended for filing in the Philippines
- Changes in the article or product to which the design is applied
- Additions or omissions of design features
- Differences in the use of solid lines, broken lines, shading, photographs, or other drawing conventions
- Whether all claimed features are supported by the earlier application
Importance of the Six-Month Deadline
The six-month priority period is calculated from the earliest filing date of the corresponding foreign application.
- Example Timeline: If an industrial design application is first filed in Japan on January 10, the corresponding Philippine application must generally be filed no later than July 10 of the same year in order to claim Paris Convention priority.
If the Philippine application is filed after the six-month period, the application may still be filed, but the applicant will generally lose the benefit of the earlier filing date.
Risks of Missing the Deadline:
Intervening publications, sales, exhibitions, or third-party filings may then affect the novelty or registrability of the design.
Applicants planning to seek design protection in the Philippines should therefore begin preparing the Philippine application well before the expiration of the six-month priority period. Sufficient time should be allowed to review the drawings, confirm the applicant’s details, prepare any necessary translation, and arrange the required priority documents.