INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

IP Academy : "Beyond IP"

via Zoom

Introduction to the Panel:

Practicing IP in the Philippine Context:
Opportunities and Challenges

Emma Cariño Francisco

October 23, 2020
 Outline

1. What are the fields of practice

2. Who may practice IP
3. Who needs you
4. How do you reach them
5. What you know : expand?
specialize?
6. How much will you make?
What are the fields of practice
1. Licensing / Franchising
2. Copyright
3. Trademarks and Design
4. Trade Secrets
5. Patents
Who may practice IP ?

1. Lawyers

2. Non-Lawyers
 Who may practice IP - Lawyers
"practice of law"
G.R. No. L-12426 February 16, 1959
PHILIPPINE LAWYER'S ASSOCIATION,
petitioner,
vs.
CELEDONIO AGRAVA, in his capacity as
Director of the Philippines Patent Office,
respondent.
 Who may practice IP - Lawyers
"practice of law" (Agrava case)
"under the present law, members of the Philippine Bar
authorized by this Tribunal to practice law, and in good standing,
may practice their profession before the Patent Office, for the
reason that much of the business in said office involves the
interpretation and determination of the scope and application of
the Patent Law and other laws applicable, as well as the
presentation of evidence to establish facts involved; that part of
the functions of the Patent director are judicial or quasi-judicial,
so much so that appeals from his orders and decisions are,
under the law, taken to the Supreme Court.
For the foregoing reasons, ... the respondent Director is hereby
prohibited from requiring members of the Philippine Bar to
submit to an examination or tests and pass the same before
being permitted to appear and practice before the Patent
Office.”
 Who may practice IP - Lawyers
"practice of law"
G.R. No. 100113 September 3, 1991
RENATO CAYETANO, petitioner,
vs.
CHRISTIAN MONSOD, HON. JOVITO R.
SALONGA, COMMISSION ON APPOINTMENT,
and HON. GUILLERMO CARAGUE, in his
capacity as Secretary of Budget and
Management, respondents.
 Who may practice IP - Lawyers
"practice of law" (Monsod case)
what constitutes practice of law as a legal qualification to an
appointive office

Atty. Christian Monsod is a member of the Philippine Bar.. has

been a dues paying member of the Integrated Bar of the
Philippines ... paying his professional license fees as lawyer for
more than ten years. xxxx
Atty. Monsod's past work experiences as a lawyer-economist, a
lawyer-manager, a lawyer-entrepreneur of industry, a lawyer-
negotiator of contracts, and a lawyer-legislator of both the rich
and the poor — verily more than satisfy the constitutional
requirement — that he has been engaged in the practice of law
for at least ten years.
Dissenting : Justices Padilla, Cruz, Gutierrez Jr.
Who may practice IP - Lawyers
"practice of law"

how about a
"lawyer-IP practitioner" ?
"lawyer-patents practitioner" ?
 Who may practice IP - Lawyers
authorized to practice on patents matters
USPTO : legal, scientific, and technical qualifications, as well as
good moral character and reputation.
Must pass the USPTO examination

EU : graduate degree STEM (science, technology, engineering or

mathematics) + 5 years training + EQE (European Qualifying
Examination) : knowledge of relevant intellectual property laws,
the ability to draft and amend patent applications, and the
ability to assess the validity of a patent and the infringement
risks it presents
 Who may practice IP –
Non-Lawyers
SEC. 64. Committee of Three. - In cases involving
highly technical issues, on motion of any party,
the Director of Legal Affairs may order that the
petition be heard and decided by a committee
composed of the Director of Legal Affairs as
chairman and two (2) members who have the
experience or expertise in the field of
technology to which the patent sought to be
cancelled relates. The decision of the committee
shall be appealable to the Director General. (n)
Who may practice IP –
Non-Lawyers

Sales & marketing

Science & technology – medicine!

Research & development

Technology managers
 Who needs you

1. IP practitioners (both here and abroad)

2. IP owners (knowingly and unknowingly)
3. Business associates, Family, Friends, your
own company or organization
4. The Government, including the IPOPHIL
 How do you reach them
1. Membership in organizations e.g. IPAP,
ASEAN IPA, APAA, AIPPI, FICPI, INTA
2. Philippines and ASEAN : MSME, ASEAN
integration
3. Always educate the people around you
At the workplace : set up IP policy, conduct IP
audit, set up negotiation rules and
procedures including the signing of NDAs
(non-disclose agreements)
What you know – expand?
specialize?
Niche
IP prosecution, enforcement,
maintenance
Micro enterprise, SME, Large, MNC
Trainings
IP Academy, paid and free
WIPO free online and paid online
distance education
MCLE
 How much will you
make?Salaries... pro bono?
Patent Legal Specialist php 40k-52k
monthly

Trademark and Design Specialist Php

40k-60k monthly

IPOPHIL Patent Examiner Php

33,674.30

IPRSI Php 37,227.00

THANK
YOU