IPOPHL MEMORANDUM CIRCULAR NO. 17 - 002 Series of 2017
Subject: Amendments to IPOPHL Memorandum Circular No. 16 012 (IPOPHL REVISED FEE STRUCTURE OF 2017)
WHEREAS, IPOPHL promulgated IPOPHL Memorandum Circular No. 16-012 establishing the IPOPHL Revised Fee Structure of 2017 and which became effective on 01 January 2017;
WHEREAS, there are corrections, clarifications, and additional fees that are needed to be incorporated in the Revised Fee Structure;
WHEREAS, there are fees that are corrected and clarified, and there are additional fees were included during the public consultation;
WHEREAS, the Secretary of Trade and Industry has approved the corrections, clarifications and additional fees;
NOW THEREFORE, the IPOPHL Revised Fee Structure of 2017 is hereby amended, as follows:
"MEMORANDUM CIRCULAR NO. 16-012 Series of 2016
Subject: IPOPHL REVISED FEE STRUCTURE OF 2017
WHEREAS, Sec. 7 of Rep. Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code") conferred upon the Director General the power of managing and directing all functions and activities of the Office, including the "establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or a mark or a collective mark, geographic indication and other marks of ownership, and for all other services performed and materials furnished by the Office".;
WHEREAS, the existing schedule of fees was implemented way back in January 2004;
WHEREAS, the IPOPHL is rationalizing and streamlining its fee structure there being urgency for IPOPHL to make adjustments in order to : first , address inflation and rising operational costs and expenses, second, support additional mandates and services, and other developmental programs/projects and advocacies; and third, reduce or abolish redundant > fees ; ~
Republic of the Philippines INTELLECTUAL PROPERTY OFFICE
Intellectual Property Center #28 Upper McKinley Rood, McKinley Hill town Center. Fort Bonifacio. Taguig City 1634 Philippines. www.ipophil.gov.ph
T: +632-2386300. F: + 632-5539480 • mail@ipophil.gov.ph
WHEREAS, in rationalizing its fees , the IPOPHL complied with all the requirements, including public consultations , set forth in DOF-DBM-NEDA Joint Circular No. 1-2013, also known as the "Implementing Rules and Regulations of Administrative Order No. 31 s. 2012, on the Rationalization of Rates of Fees and Charges, Increase in Existing Rates and Imposition of New Fees and Charges";
WHEREAS, the Secretary of the Department of Trade and Industry has approved the IPOPHL Revised Fee Structure;
NOW, THEREFORE, the IPOPHL Revised Fee Structure of 2017 is hereby promulgated:
PART I GENERAL PROVISIONS
Section 1. Title. - These Rules shall be known and referred to as the "IPOPHL Revised Fee Structure".
Section 2. Definition of terms and acronyms. - Unless otherwise specified, the following terms and acronyms shall mean or refer to :
(a) "Big entity" is any natural or juridical person whose assets are worth more than One Hundred Million Pesos (PIOOM) ; or any natural or juridical person which do not fall under the category of a "s m al l entity" as defined below.
(b) "Bureau" refers to the pertinent or concerned bureau of lPOPHL namely: the Bureau of Legal Affairs ("BLA"), Bureau of Patents ("BOP"), Bureau of Trademarks ("BOT"), Documentation, Information and Technology Transfer Bureau ("DIITB"), Bureau of Copyright and Other Related Rights ("BCORR"), Management Information Systems Bureau ("MISB"), and the Financial Management and Administrative Services Bureau ("FMAS Bureau");
(c) "Director" refers to any or all of the Directors or Officer-in-Charge of the bureaus of the IPOPHL
(d) "Director General" refers to the Director General of the IPOPHL (e) "Examiner" refers to an Intellectual Property Rights Specialist in the
Bureau of Patents or Bureau of Trademarks; (f) "Fe es" refer to costs imposed on direct recipients of public goods and
services provided and performed by the IPOPHL in the exercise of its functions; they also include charges and other costs;
(g) "IP Code" means Republic Act No. 8293 or the Intellectual Property Code of the Philippines, as amended;
(h) "IPOPHL" or "Office" refers to the Intellectual Property Office of the Philippines created by the IP Code;
(i) "IPOPHL Gazette" refers to the IPOPHL's own publication where all the matters required to be published under the IP Code shall be published and , unless otherwise specified, shall include any form thereof including electronic form or "e-Gazette";
Ul "IRR" refers to rules and regulations (including any and all amendments) promulgated by the IPOPHL;
(k) "Publication fee" refers to publication in the IPOPHL Gazette; (1) "S mall entity" refers to any natural or juridical person whose assets are
worth not more than One Hundred Million Pesos (PIOOM) ; or any entity, agency, office , bureau or unit of the Philippine government including government-owned or controlled corporations, state universities and colleges and government-owned or government-run schools;
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(m) "Youth filer" is any natural person who has not reached his or her twenty second (22 nd ) birthday at the time of filing his or her application; or, a group of natural persons all of whom have not reached their twenty second (22 nd) birthday at the time of filing their application.
Section 3. Fees payable in advance. - All fees shall be collected in advance of any service to be rendered or materials to be furnished. The Office may not act on any pending transaction or request unless the prescribed fee is paid in full and on or before the due date.
Section 4. Due date for fees . - Fees shall be paid on or before the due date prescribed in the IP Code or IRRs. Where no due date is specified, the fees shall be due upon submission or filing of the request for the service or material incurring the fee.
Section 5. Payment offees. - 5 .1 Fees shall be paid in cash, money order, bank drafts , cheques in Philippine currency, and other modes of payment as may be provided or prescribed by the IPOPHL. Payment of fees for on-line transactions shall be in the fonn prescribed by the applicable IRRs.
5 .2 Where the schedule of fees provides for rates under the "BIG" and "SMALL" columns, a big entity shall pay the fee a t the rate under the "BIG" column while a small entity shall pay the fee at the rate listed under the "SMALL" column. Where the schedule provides for a single rate, that rate shall apply to both big and small entities.
5.3 Any natural or juridical person is presumed to be a big entity unless a written statement to the contrary is submitted by such natural person or duly authorized representative of such juridical person. A small entity may claim to pay the rate listed under the "SMALL" column at the time of filing the application or case by submitting the aforementioned written statement. Said written statement shall be submitted only once for each application or case.
The change in status or any assignment or other transfer from big entity to small entity shall not result in any refund whatsoever of any payment made prior to the submission of the written statement. A change in status, assignment or other transfer from small entity to big en ti ty shall not result in any increase of fees paid prior to the recordal of the change, assignment or other transfer.
5.4 An applicant or party paying as small entity may be required to submit proof or evidence confirming such status at any time prior to the grant, registration, finality of decision, or release of documents if the request is not subject of a patent, utility model, industrial design, trademark or case filed before the Office. Failing so, the IPOPHL shall assess the party and no document shall be released without the party paying the assessed amount.
5.5 A youth filer shall pay fees at the rate listed under the column "SMALL". When the schedule provides for a single rate, the youth filer shall pay only fifty percent (50%) of the prescribed fee. This applies to all the fees in connection with the application and, if registered, the maintenance, extension or renewal of registration and all the fees in connection with any case before the Office or any Bureau where the application, or if already registered, the registered intellectual property is directly involved; Provided that ownership of the application or registration remains with the youth filer ; Provided, Further, that in case of any assignment, transfer or any other change in the owner of the application or registration, the age requirement specified above is met by all the subsequent assignees, transferees, or additional applicants or registrants.
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Subject to the conditions under Section 5.4, a youth filer may claim to pay the rates as provided above at the time of filing the application by submitting a statement that he or she has not reached his or her twenty-second (22 nd) birthday. If the youth filer is a group, all of them shall, individually or together, submit the statement.
Section 6. Date of Payment. - Fees shall be considered to have been paid as follows:
(a) In case of cash payment: The date of receipt in cash of the amount due in full.
(b) In case of money order, cheque or bank draft payment: the date of receipt of the money order, cheque or bank draft provided that the same is honored upon first presentment and provided that the payment covers the amount due in full.
(c) Payment in the form prescribed for on-line transaction and other modes of payment: the date specified in the applicable IRRs.
Section 7. Time and place of payment. - Payment transactions shall be made during regular working days and business hours from Monday to Friday 8 :00 a.m. to 5:00 p.m. to the IPOPHL cashier. Where any official response, pleading or other document or paper is to be submitted for which a fee is required, the payment shall be made not later than 4:30 pm and submission shall nevertheless be made not later than 5:00 p.m. The filing of documents and payments for on-line transactions and other modes as may be allowed or prescribed by the IPOPHL shall be made in accordance with the applicable IRRs.
Section 8. Non-payment or Insufficiency of the amount paid. - Subject to the IP Code or the applicable IRR, the Office may give the person making the payment the opportunity to fully pay the fee or any notice. Failure to pay the full amount shall not result in any refund whatsoever of any amount already paid. On-line transactions shall be paid in full in accordance with the pertinent IRRs.
Section 9. Time and place for submission of documents. - Any official response, pleading or other document or paper, whether or not a fee is due, shall be submitted to the Office during regular working days and business hours from Monday to Friday, at 8:00 a.m. to 5:00 P.M. Where a fee is due, the same must be paid not later than 4:00 pm and submission shall nevertheless be made not later than 5:00 p.m.
Section 10. Legal Research Fund (LRF). - All fees and charges, except charges for domestic photocopy and sequence listings for invention patent applications in excess of 4,000 pages, shall be subject to the payment of the LRF required by Republic Act 3870 as amended by Presidential Decrees Nos. 200 and 1856, at the rate of one percent (1 %) of the fee paid but not less than Ten Pesos (Php10.00). In this regard, the IPOPHL shall furnish the University of the Philippines Law Center reports on its collection and remittance of the LRF.
Section 11 . Error or Mistake in Payment. - All fees or excess amounts paid without fault on the part of the IPOPHL shall be deemed as donation to the Office. If fees or excess amounts are paid due to error on the part of the IPOPHL, the applicant or party may file with the Financial Management and Administrative Services Bureau the request for refund within 30 days from the date of payment of the fees or excess amounts. If no request is filed within the aforementioned period or if the request is found to be not meritorious, the fees and excess amounts shall inure to the benefit of, and shall be deemed as donation to, the Office.
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PART II SCHEDULE OF FEESl
Section 12. Schedule of General Fees. - The general fees prescribed in this section are applicable to the service and materials furnished by all the Bureaus and offices of the IPOPHL.
GENERAL AND OTHER FEES
Type ofFee Small Entity Big Entity
IPOPHL Publications At cost At cost Document Retrieval Fee (2-3 days) 207.00jbox 207.00jbox Document Retrieval Fee (express 1 d ay) 560.00jbox 560.00jbox Request for Reconstitution of Records 900.00 900.00 Certification 370.00 370.00 Certified True copy 500.00 500,00 Computer print-out (per printed sheet) 20.00 20.00 IPOPHL Box (annual) 3,000.00 3,000.00 Photocopy (dom es tic) (per printed sheetle Note: Prevailing rate will be determined and 3 .50 3.50 announced from time to time 12 -month subscription to E-Gazette 12 ,600.00 12 ,600.00 Appeal to the Bureau Director from refusal, rejection, examiner's action, final orders or 3 ,300.00 3,300.00 decisions Motion for reconsideration of the decision of the Bureau Director 3,300.00 3,300.00
Appeal to the Director General from the decision of the Bureau Director
5,500.00 5,500.00
Other motions 300.00 700.00 Request for Deferment of Publication 1,000.00 2,000.00
Enforcement Action
Filing of Verified Enforcement Complaint by the IPR Holder
2,000.00 2,000.00
Section 13 . Schedule of Invention Patent-related fees. - The fees provided in this Section shall apply to invention patents.
SCHEDULE OF FEES ON PATENTS
Typ e ofFee Small Entity Big Entity
Pre-Examination
Filing fee-' - Invention 2 ,000.00 4,320.00 For each sheet in excess of thirty (30) 18.00 36.00 Sequence listings for INV in excess of 4000 pages 0.60 2.40 For each claim in excess of five (5) 180.00 360.00 Request for right of priority per priority claim 1,000.00 2,160 .00 Request for extension of time to file priority 740.00 1,560.00 documents
1 Fees exclusive of Legal Research Fee as set forth in Sec. 10 herein. 2 Excluded from LRF (Sec. 10\ 3 The Filing Fee includes the first five (5) claims.
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Divisional application (for each division) 2,000.00 4,320.00 Conversion from Utility Model to Invention 690.00 1,440.00 Early Publication: Request for Publication before the expiration of 18 months from filing date or 6,600.00 6,600.00 priority date Publication Fee 920.00 960.00
Examination
Request for extension of time to file Response first 360.00 720.00
Request for extension of time to file Response second 390.00 780.00
Substantive Examination 2,010.00 4,200.00 Early Substantive Examination 2,500.00 5,000.00 Revival Fee 570.00 1,200.00 Revival Fee for Non-Payment of the Request for Substantive Examination Fee 920.00 960.00
Request for Accelerated Substantive Examination" 500.00 1,000.00 Accelerated Substantive Examination Fee 6,600.00 13,320.00
Post-Examination
Issuance of Letters Patent certificate (Invention) 600.00 1,200 Amendment or correction in the Certificate of Patent
300.00 600.00
Any amendment or any correction of mistake in the Certificate of Patent of formal and clerical 360.00 720.00 nature without fault of Office Any amendment or any correction in the Certificate of Patent of substantive nature
860.00 1,800.00
1st Assignment of application from small to big 5,500.00 plus publication fee
entity 1st Assignment of issued patent from small to big
7,200.00 plus publication fee entity
350.00 plus 700.00 plus Any other Assignment or document affecting title publication publication
fee fee 2nd Publication Fee 920.00 960.00
Annuities> under RA 8293
5th vr 1,550.00 3,240.00 6th yr 2,000.00 4,320.00 7th yr 2,580.00 5,400.00 8th vr 3,100.00 6,480.00 9th vr 4,140.00 8,640.00 10th yr 5,170.00 10 ,800.00 11 th yr 6,670.00 13,920.00 12th vr 8,280.00 17,280.00 13th yr 9,770.00 20,400.00 14th yr 11 ,900.00 24,480.00 15th yr 13,970.00 29,160.00 16th yr 15,980.00 33,360.00 17th vr 37,680.00 18th yr
18,050.00 21,670.00 45,240.00
19th yr 26,040.00 54,360.00
-Accelerated Substantive Examination process shall be covered by separate Guidelines. 5Annu ity Fee increases due to commercialization or exploitation of the patent.
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20th yr 31.222.00 65,160.00 Excess Claims from 5 th until the 20th Anniversary I 210.00 420.00 Surcharge for late payment of annual fee 50% of the total Annual Fee Notice and publication of non-payment of annual
360.00 360.00fee Late entry fee - PCT7 1,030.00 2,160.00 Transmittal Fee (PCT Rule 14) 4,200.00 Priority Document Fee (PCT Rule 17.1 (b)) 2,700.00 Late Payment Fee (PCT Rule 16 bs.2 (a) (ii)) 4,200.00 Certified True Copy of the International
600.00 Application Fee (PCT Rule 21.2) Transmittal Fee (PCT Rule 19.4) 4,200.00 Surcharge for late payment of fees where
50% of the required fee applicable
Section 14. Schedule ofFees on Utility Model and Industrial Design Patents. - The fees provided in this Section shall apply to utility model and industrial design patents.
SCHEDULE OF FEES ON UTILITY MODEL AND INDUSTRIAL DESIGN
Type ofFee Small Entity Big Entity
Pre-Examination
Filing fee 1,720.00 3 ,600.00 For each sheet in excess of 30 claims UM 18.00 36.00 Sequence listings for UM in excess of 4000 pagess I 0 .60 2.40 For each claim in excess of five (5) - UM I 120.00 240.00 For each embodiment in excess of one (1) Industrial Design
860.00 1,800.00
Request for right of priority (per priority claim) 860.00 1,800.00 Divisional application (for each division) 1,720.00 3,600.00 Conversion from Invention to Utility Model 330.00 660.00
Examination
Request for extension of time to file Response first
360.00 720.00
Request for extension of time to file Response second
390.00 780.00
Registrability Report 630.00 1,320.00 Revival 570.00 1,200.00 Preparation of amended pagers) of the master copy of the specifications and/ or claims
84.00 84.00
Request for Deferred Publication 500.00 1,000.00
Post-Examination
Issuance of Certificate of Registration for Utility Model/Industrial Design
600.00 1,200.00
Amendment or correction in Certificate 300.00 600.00 Any amendment or any correction of mistake in a cer tifica te of formal and clerical nature without 300.00 600.00 fault of Office
6Claim s in excess of five (5) shall be paid. "Late en try fee is 50% of the filing fee. 8 Excluded from LRF (Sec. 101
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Any amendment or any correction in a rellistration of substantive nature 460.00 960.00
Extension of Term (only for Industrial Design)
Petition for Extension of Term first Petition for Extension of Term second 1st Assignment of application from small to big entity 1st Assignment of issued patent from small to big entity
Any other Assignment or document affecting title
1,030.00 2 ,160.00 2,000.00 4 ,320.00
3,000.00 plus publication fee
4,000.00 plus publication fee
200.00 plus 400.00 plus publication publication
fee fee
Section 15. Schedule of Patent-related Fees for applications under Republic Act No. 165. - The rates provided in this Section shall apply to applications filed and/or granted under Republic Act No. 165. The rate of other applicable fees which are not found in this Section shall be based on rates provided in Part III, Se ctions 1, 2 and 3 of these Rules. In determining the due date of the Annual Fees (Reference Code Nos. 420 through 433), the date issuance of the patent is the same as the date when the Director of Patents a pproved and signed the allowance .
SCHEDULE OF PATENT-RELATED FEES UNDER REPUBLIC ACT NO. 165
Type ofFee Small Entity Big Entity
Examination
For each claim in excess of five (5) in Invention 75.00 150.00 For each embodiment in excess of one (1) in Ind.
600.00 1,200.00 Design Claim of convention priority - invention 750.00 1,500.00 Claim of convention priority - utility model/
600.00 1,200.00industrial design Re-issue application of an invention patent 750.00 1,500.00 Divisional Application - invention 1,500.00 3,000.00 Divisional Application - utility model/ industrial
900.00 1,800.00 design Divisional Application - Conversion From 250.00 500.00 Invention to Utility Model Request for suspension of action - invention 480.00 960.00 Request for suspension of action - utility 360.00 720.00 model/Industrial design Motion to shift burden of proof in an interference 540.00 1,080.00 proceeding-invention Motion to shift burden of proof in an interference
420.00 840.00 proceeding-utility model/industrial design Extension of time to file appeal briefs in ex-parte
360.00 720.00 cases-invention Extension of time to file appeal briefs in ex-parte 480.00240.00 cases- utility model/industrial design
Post-Examination
570.00 1,200.00 Issuance of Certificate of Letters Patent - utility Issuance of Certificate of Letters Patent - invention
420.00 840.00 model/industrial design Reinstatement of lapsed invention patent 4 ,800.002,300.00
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Extension ofTenn (Utility Model and Industrial Design)
1st extension of term 1,030.00 2,160.00 2nd extension of term 2,000.00 4,320.00
Annual Fees Under RA 165
5th yr 1,550.00 3,240.00 6th yr 2,000.00 4,320.00 7th yr 2,580.00 5,400.00 8th yr 3,100.00 6,480.00 9th yr 4,140.00 8,640.00 10th yr 5 ,170.00 10,800.00 11th yr 6,670.00 13,920.00 12th yr 8,280.00 17,280.00 13th yr 9,770.00 20,400.00 14th yr 11,900.00 24,840.00 15th yr 13,970.00 29,160.00 16th vr 15,980.00 33,360.00 17th yr 18,050.00 37,680.00 Excess Claim from 5 th until 17 th Anniversary 210.00 420.00
Section 16. Schedule of Trademark-related Fees. - The fees provided in this section shall apply to trademarks, service marks, trade names and marked or stamped containers.
SCHEDULE OF TRADEMARK-RELATED FEES
Type ofFee Small Entity Big Entity
Filing fee (per class) 1,200.00 2,592.00 Claim for Convention Priority (per class) 860.00 1,800.00 Claim of color, claim distinctiveness (per class) 280.00 600.00 Request for Priority Examination 2,990.00 6,240.00
Examination
Extension of time to me response? 340.00 720.00 Divisional application 10 280 .00 600.00 Revival of Abandoned Application 570.00 1,200.00 Suspension of examination by examiner 460.00 960.00 Suspension of examination by Director (1st) 570.00 1,200.00 Extension of Time to Submit Copy of Home Reg. (National)
570.00 1,200.00
Suspension of examination by Director (2n d) 1,800.00 3,840.00 Amendment Feel! 400.00 840.00 Extension to me an appeal to the Director 1,800.00 1,800.00 Voluntary Surrender/Abandonment 280.00 600.00 Allowance / Publication for Opposition 900.00 960.00 Revival - unpaid 1st Publication 570.00 1,200.00 Revival - unpaid 2nd Publication 570.00 1,200.00 Reconstitution of records 860.00 900.00 Recordal Fee l 2 400.00 840.00
9Inclu des extension to file response to office actions on Declaration of Actual Use (DAU), Recorda! and Examination IOPer request, regardless of number of classes to be divided llTo amend formalities , i.e. to delete portion of the mark or description of goods l2Includes recorda! of assignment, change of name/address, merger
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Recordal Licensing Agreement and other documents not required by the office (No 340.00 720.00 Publication) Additional Class13 1,200.00 2,592.00 Recordal - Publication Fee (For registered marks) 900.00 960.00
Registration
Issuance of Certificate of Registration (COR)l 4 570.00 1,200.00 Publication of Registration (2nd Publication) 900.00 960.00 1st Assignment of application from small to big 3,000.00 plus publication entity fee 1st Assignment of registered mark from small to 5 ,500.00 plus publication big entity fee Correction (Without fault of Office) 15 570.00 1,200.00 Voluntary Cancellation 280.00 600.00 Voluntary Disclaimer 280 .00 600.00 Division of Registration 570.00 1,200.00
Renewal of Registration
Renewal of Registration (per class) 3,100.00 6,600.00 Renewal surcharge (per class) 1,500.00 3,300.00
Filing of Declaration of Actual Use (DAU)
3rd year DAU (per class) 900.00 1,920.00 5th year DAU (per class) 1,100.00 2,400.00 Renewal DAU (per class) 1,100.00 2,400.00 Mid-Renewal DAU (per class) 1,100.00 2,400.00 Single Extension to File 3rd year DAU 1,800.00 3,840.00 Declaration of Non-use 3rd year. ner class 900.00 1,920.00 Declaration of Non-use 5th year. ner class 1,100 .00 2,400.00
Registered under RA 166 and expiring after June 3 , 2004
5th year DAU (per class) 1,100.00 2 ,400.00 10th year DAU (per class) 2 ,300.00 4,800.00
15th yea r DAU (per class) 6,600.00 Other motion/ petition/ request
3,100.00 300.00 600.00
MADRID PROTOCOL-Related Fees
Handling Fee - Madrid 16 2,592.00 Individual Fee, ner class 17
NA 5,712.00
Individual Fee for Renewal. ner class 18 NA NA 8,760.00
Individual Fee for Renewal with Surchargeyper 13,140.00NAclass-?
Transformation Fee. oer class 20 NA 2,592 .00
lJUpon examination, the specification of goods (broad terms) may be cla ssifi ed under a different class . 14lncludes replacement (on accou n t of re cordation), copy of ce rtifica te, rei ssuance (with correction/amendment and renewal of certifica tes. l5To correct error or m istake by the applicant/registrant 16Fee for every International Application filed with IPOPHL as Office of Origin. This international application will be electronically transmitted to the International Bureau (lB) of WIPO. 17Fee for International Registrations Designating the Philippines and for Designations Subsequent to th e International Registration. Takes effect 05 March 2017. pursuant to Art . 8 (7 )(b ) of the Madrid Protocol. IBFee paid to the In ternational Bureau every 10 years from the in ternational registration date. Th e renewal should be presented and paid to lB. Takes effect 05 March 20 17 , pursuant to Art. 8(7)(b) of the Madrid Protocol. 19 Takes effect 05 March 20 17 . pursuant to Art. 8(7)(b) of the Madrid Protocol. 20Fee paid for a r equest to transform or convert an International Registration into a national application. This is a remedy for th e h older when the basic mark cea ses to h av e an effect because it has been
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Replacement Fee 2 1 NA 720.00 Other Requests? NA 720.00 Extension of Time to Submit Copy of Home Reg . (Madrid)23 NA 1,200.00
Section 17. Schedule of Fees in Inter Partes Cases and Administrative C~mplain.ts for violation of laws on intellectual property rights - The fees provided in this Section shall apply to Inter Partes Cases (petition for Cancellation of a Mark patent, Utility Model, or Industrial Design; Opposition to Registration of a Mark; and Compulsory Licensing) and Administrative Complaints for violation of laws on intellectual property rights.
SCHEDULE OF FEES IN INTER-PARTES CASES AND ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF LAWS ON INTELLECTUAL PROPERTY RIGHTS
Type ofFee Small Entity Big Entity
Inter-Partes Case
Filing of Opposition to/Petition for Cancellation of Trademark Registration 10,000.00 14,600.00
Motion for Extension to File Opposition 800.00 1,700.00 Petition for Cancellation of Patent (Inventionl 12,000.00 19,200.00 Petition for Cancellation of Utility Model/Industrial Design 12,000.00 14,600.00
Petition for Compulsory Licensing (Invention) 12,000.00 19,200.00 Petition for Compulsory Licensing (Utility Model/Industrial Design) 9,000.00 12,200.00
IPR Violation (IPV) Case
Filing of IPV Complaint (Basic Fee) 15,000.00 19,200.00 1/ 10 of 1% of the damagesAdditional filing fee (Complaint, permissive
claimed in excess of counterclaim/ crossclaim)
500,000.00 Permissive Counterclaim/Cross claim contained in
1,000.00 1,560.00an Answer Application for Attachment/Injunction 2,000.00 3,120.00 Amendment of pleading 1,000.00 1,300.00
Common Fees
Motion for Extension of time to file pleadings 500.00 650.00 Motion for postponement of proceedings 1,000.00 1,500.00 Motion for holding proceedings outside IPOPHL 1,500.001,000.00premises Other motions 500.00 650.00
withdrawn, has lapsed, has been renounced or has been the subject of a final decision of rejection , revocation, cancellation or invalidation . 21Fee paid for a request to replace a national registration with an International Registration . Replacement happens when, "a mark that is the subject of a national or regional registration in the Office of a Contracting Party is , under certain conditions, deemed to be replaced by an international registration of the same mark". There exists in the IPOPHL database, the same mark filed through the national filing, under the name of the same holder and "all the goods and services listed in the national or regional registration are also listed in the international registration in respect of that Contracting Party". 22Fee paid for other Madrid-related requests not falling under any of the above fees, which may be any document for transmittal to 18. 23An International Registration, like a national application, will not be registered unless the basis of the priority claim has been registered in the foreign coun try. If the foreign a pplica tion has not yet matured into registration, the holders, through their agents may file a request for extension to submit a copy of home registration.
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Transcript of Stenographic Notes 24.00/page 24.00/page Arbitral award Scrutiny Fee - Trademark Cases 3,000.00 3,000.00 Arbitral award Scrutiny Fee - Industrial Designs 3,000.00 3,000.00 Arbitral award Scrutiny Fee - Utility Models 4,000.00 4,000.00 Arbitral award Scrutiny Fee Copyright 4,000.00 4 ,000 .00 Arbitral award Scrutiny Fee - Technology Transfer 5,000.00 5,000.00 Arbitral award Scrutiny Fee - Invention 5,000.00 5,000.00 Early Mediation Fee24 15,000.00 15,000.00
Section 18 . Schedule of Fees on Voluntary Licensing Intellectual Property information and Search Services and Dispute Settlement involving Technology Transfer Arrangements. - The fees provided in this Section shall apply to voluntary licensing, intellectual property information and search services, and, dispute settlement. Reduction in rate shall not apply to these fees.
SCHEDULE OF FEES ON VOLUNTARY LICENSING, INTELLECTUAL PROPERTY INFORMATION AND SEARCH SERVICES DISPUTE SETILEMENT INVOLVING
TECHNOLOGY TRANSFER ARRANGEMENTS
Type ofFee Small Entity Big Entity
VOLUNTARY LICENSING
Request for Statistical Information other than those regularly published by IPOPHL 500.00 600.00
Request for Exemption:
Filing Fee 2,500.00 3,000.00 Fee for each Paragraph Claimed in Sections 87 & 88
700.00 840.00
Extension Fee to File Requirements 650.00 780.00 Registration Fee 2,500.00 3,000.00
Request for Certificate of Compliance:
Filing Fee 2,500.00 3,000.00 Registration Fee 2,500.00 3,000.00 Clearance Prior to Recordal N/A 3,000.00 Preliminary Review-s 2,500.00 3,000.00 Amendment 26 1,000.00 1,200.00 Notation of minor changes such as:
Change in licensor/licensee , addition/deletion of products, among 1,000.00 1,200.00 others, affecting technology transfer agreements with subsisting registration
Other Requests 1,000.00 1,200.00
Dispute Settlement Involving Technology Transfer Arrangements
Filing of Complaint/Request for Mediation 12 ,500.00 15,000.00 Request for: Drafting of Compromise/Mediation Agreement 4,000.00 4,800.00
Postponement 1,500.00 1,800.00 Suspension of Proceedings Extensions of Time 1,500.00 1,800.00
"New Fee, subject to promulgation/ amendment of existing Rules. 25Any party of a technology transfer arrangement may file a request for preliminary review of a draft 'ITA -) . to determine conform ance with the Prohibited Clauses and Mandatory Provisions of the IP Cod e ~26Amen ds any of the terms and conditions of the agreement
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Holding Proceedings Outside IPOPHL Premises 1,500.00 1,800.00
SPECIAL SERVICES
State of the Art Search and Related Search
Equivalent Search and/or Compound per se 3,250.00 3,900.00Search
Comprehensive Search 14,500.00 17 ,400 .00 Patent Mapping (New Fee) 65,250.00 Complex Trademark Search
N/A 4,600.00 5,520.00
Consultation & Guided Public Search (per hour) with use of Internet Facilities and Commercial 125.00 250.00 Databases Optional Registration as Resident agent or Representative Application for Registration (Web-based listing)
Trademark Agent 5 ,000.00 5 ,000.00 Patent Agent 5 ,000.00 5,000.00 Patent and Trademark agent 5 ,000.00 5,000.00 Resident agent or Representative 5 ,000.00 5,000.00
Annual Re-Enlistment (web-based)
Trademark Agent 2,000.00 I 2,000.00 Patent Agent 2 ,000.00 2 ,000.00 Patent and Trademark agent 2 ,000.00 2,000.00 Resident agent or Representative 2,000.00 2,000.00
Section 19 . Schedule of Copyright Related Fees - The fees provided in this Section shall apply to voluntary licensing, intellectual property in form a tion and search services, and, dispute settlement. Reduction in rate shall not apply to these fees.
SCHEDULE OF COPYRIGHT-RELATED FEES
10 ,000.00
Type ofFee Small Entity Big Entity
Copyright Deposit (NCR) 450.00 625.00 Copyright Deposit (Region) 550.00 750.00 Copyright Deposit (Bulk), per certificate 200.00 200 .00 Amendment/Correction - Certificate (NCR) 200.00 625.00 Amendment/ Correction - Certificate (Region) I 300.00 I 750.00 Amendment/Correction - Certificate (Bulk) 100.00 200.00 Dispute Resolution (Author's Rights) 2 ,000.00 6 ,500.00 Certified true copy of Certificate No fee 500.00 Application for the accred itation of Collective Management Organization (CMO) Amendment of Certificate of CMO accreditation 1,000.00 Renewal of accreditation of CMO 5,000.00 Request for postponement of proceedings 1,000.00 Request for holding proceedings outside IPOPHL
No fee
1,000.00No fee premises
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PART III FINAL PROVISIONS
Section 20. Periodic Review of Fees. - The IPOPHL Revised Fee Structure shall be reviewed whenever necessary and as may be required by law, executive order, regulation or other issuance.
Section 21. Effectivity. - The IPOPHL Fee Structure shall take effect on 01 January 2017 following its publication in a newspaper of general circulation and posting in the IPOPHL website.
Section 22. Payment of Fees Due Prior to the Effectivity of the IPOPHL Revised Fee Structure. - Any type of fee the payment of which is due prior to the effectivity of the IPOPHL Revised Fee Structure shall be based on the old rates. The old rates apply if an extension to pay has been granted prior to 01 January 2017 and the due date falls on or after 01 January 2017; or, if the payment is due prior to 01 January 2017, but the due date falls on a Sunday, Saturday, holiday or a non working day, and the next working day falls on or after 01 January 2017.
However, the new rates apply if an applicant or party is assessed due to failure to file proof or evidence confirming status as small entity or youth filer under Sections 5.4 and 5.5, notwithstanding the fact that the prior payment was made or an extension to pay was granted before 01 January 2017 .
Section 23. Repeals. - All rules and regulations, memoranda, circulars, and memorandum circulars and parts thereof inconsistent with these Rules, particularly the fees and charges prescribed under the "IPO Fee Structure Office Order No. 128, s. 2003" dated 17 December 2003 are hereby repealed except for purposes of Sec. 22.
Section 24. Separability. - If any provision in these Rules or application of any provision to any circumstance is held invalid, the remainder of these Rules shall not be affected and shall not be an excuse for non-payment of any fee prescribed by the law or applicable IRRs.
Section 25. Furnishing of Certified copies. - The Financial Management and Administrative Services Bureau is hereby directed to immediately file three (3) certified copies of these Rules with the University of the Philippines Law Center, and, one (1) certified copy each to the Office of the President, the Senate of the Philippines, the House of Representatives, the Supreme Court of the Philippines, and the National Library, not later than 05 December 2016.
The Management Information Services Bureau is hereby directed to post this Memorandum Circular in the IPOPHL website not later than 02 December 2016."
The amendments shall take effect fifteen (15) days after publication of this IPOPHL Memorandum Circular in a newspaper of general circulation. The IPOPHL Memorandum Circular shall be posted in the IPOPHL website.
All rules and regulations, memoranda, circulars, and memorandum circulars and parts thereof inconsistent with these amendments are hereby repealed. The Financial Management and Administrative Services Bureau is hereby directed to immediately file three (3) certified copies of these IPOPHL Memorandum Circular with
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the University of the Philippines Law Center, and, one (1) certified copy each to the Office of the President, the Senate of the Philippines, the House of Representatives, the Supreme Court of the Philippines, and the National Library, not later than 20 February 2017.
03 February 2017, Taguig City.
ATTY. JOSEP INE R. SA:t::LL.M. irector General
is