Règles et règlements sur les inventions (tels que modifiés par l'arrêté de l'Office n° 121 de 2008), Philippines

PHILIPPINES

RULES & REGULATIONS ON INVENTIONS

as amended by Office Order No.121 S.2008

TABLE OF CONTENTS

PART 1 DEFINITIONS

Rule 100 Definitions

PART 2 PATENTABILITY

Rule 200 Patentable Inventions

Rule 201 Statutory Classes of Invention

Rule 202 Non-patentable Inventions

Rule 203 Novelty

Rule 204 Prior Art

Rule 205 Non-prejudicial Disclosure

Rule 206 Inventive Step

Rule 207 Person Skilled in the Art

Rule 208 Industrial Applicability

PART 3 RIGHT TO A PATENT

Rule 300 Right to a Patent

Rule 301 Who may be Named in an Application as an Applicant

Rule 302 Inventions Created Pursuant to a Commission

Rule 303 Inventions Made in the Course of Employment

Rule 304 First-to-File Rule

Rule 305 Right of Priority

Rule 306.1 Multiple Priorities

Rule 306.2

Rule 306.3

Rule 306.4

Rule 307 Certified Copy of the Foreign Applications

PART 4 THE PATENT APPLICATION

Rule 400 The Patent Application

Rule 401 Payment of Fees

Rule 402 Marking of Documents; Acknowledgment

Rule 403 Form of Request; Office Application Form

Rule 404 The Request

Rule 405 Disclosure and Description of the Invention

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Rule 406 Test for enabling Disclosure

Rule 407 Content of the Description

Rule 408 Requirements of Applications Relating to Biological Materials

and Microorganisms

Rule 409 Requirements of Application Relating to Biological Materials

and Microorganisms before Allowance

Rule 410 Title of the Invention

Rule 411 Abstract

Rule 412 Prohibited Matter

Rule 413

Rule 414.1 Uniform Standard of Excellence Suited to Photolithographic

Process, Required of Drawings

Rule 414.2 Paper and Ink

Rule 414.3 Size of Drawing Sheet; Imaginary Line

Rule 414.4 Character and Color Lines

Rule 414.5 The Fewest Possible Number of Lines and Little or No Shading

to be Used

Rule 414.6 Scale to which Drawing is Made to be Large Enough

Rule 414.7 Letters and Figures of Reference

Rule 414.8 Signature, Where to be Placed

Rule 414.9 Title of the Drawing

Rule 414.10 Position on Drawing Sheets of Large Views

Rule 414.11 Flow Sheets and Diagrams

Rule 414.12 Requisites for the Figure of the IPO Gazette

Rule 414.13 Reference Signs

Rule 414.14 Photographs

Rule 414.15 Matters not Permitted to Appear on the Drawings

Rule 414.16 Drawings not Conforming to Foregoing Rules to be Accepted

Only Conditionally

Rule 415 Claim

Rule 416 Form and Content of the Claims

Rule 417 Claims Incurring Fee

Rule 418 Presentation of the Application Documents

Rule 419 Models, when Required

Rule 419.1 Requisites for the Model

Rule 419.2 Material Required for the Model; Working Models

Rule 419.3 Models, when Returned to Applicant

Rule 419.4 Models Filed as Exhibits in Contested Cases

Rule 420 Employment of Attorney-at-Law or Agent Recommended

Rule 421 Appointment of Resident Agent or Representative

Rule 422 Decorum and Courtesy Required in the Conduct of Business

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PART 5 WHO MAY APPLY FOR A PATENT

Rule 500 Who may Apply for a Patent

Rule 501 When the Applicant Dies, Becomes Insane

Rule 502 Assigned Invention and Patents

Rule 503 Juridical Person -- Definition

Rule 504 Proof of Authority

Rule 505 Forms of Signatures

PART 6 FILING DATE AND FORMALITY EXAMINATION

Rule 600 Filing Date Requirements

Rule 600.1 Incomplete application

Rule 600.2

Rule 601 According a Filing Date

Rule 602 Late-filed or Missing Drawings

Rule 603 Formality Examination

Rule 604 Unity of Invention

Rule 604.1

Rule 605 Requirements for Unity of Invention

Rule 606 Reconsideration for Requirement

Rule 607 Appeal from requirement for Division

Rule 608 Subsequent Presentation of Claims for Different Invention

Rule 609 Election of Species

Rule 610 Separate Application for Invention Not Elected

Rule 611 Divisional Application

Rule 612 Information Concerning Corresponding Foreign Application for

Patents

Rule 612.1

Rule 612.2 Non-compliance

PART 7 CLASSIFICATION AND SEARCH

Rule 700 Classification and Search

Rule 701

Rule 701.1 Content of the Intellectual Property Search Report

PART 8 PUBLICATION AND REQUEST FOR EXAMINATION

Rule 800 Publication of Application

Rule 801 Confidentiality before Publication

Rule 802 Observation of Third Parties

Rule 803 Request for Substantive Examination

Rule 803.1

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Rule 804 Rights Conferred by an Application after Publication

Rule 805 Citation and references

PART 9 THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN THE

EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL CONSIDERATIONS

Rule 900 Applications Prosecuted Ex Parte

Rule 901 Proceedings, a Contest between the Examiner and the Applicant

Rule 902 Applicant supposed to Look after His Interest

Rule 903 Preliminary Adverse Actions of the Examiner Valuable to Applicant

Rule 904 A Preliminary Rejection should Not be Taken Literally; Examiner

is Only Trying to be Helpful

Rule 905 The Examiners shall Have Original Jurisdiction over All

Applications; Appeal to the Director

Rule 906 Order of Examination

Rule 907 Nature of Examination, Examiner’s Action

Rule 908 Completeness of Examiner’s action

Rule 909 Rejection of Claims

Rule 910 Unpublished, Withdrawn and Forfeited Applications Not Cited

Rule 911 Reply by applicant

Rule 912 Re-examination and Reconsideration

Rule 913 Final Rejection or Action

Rule 914 Conversion of Patent Applications or Applications for Utility

Model

Rule 915 Prohibition against Filing of Parallel Applications

AMENDMENTS BY THE APPLICANT

Rule 916 Amendment by the Applicant

Rule 917 Amendments after final action of the Examiner

Rule 918 Amendment and Revision Required

Rule 919 Amendment of Disclosure

Rule 920 Amendment of claims

Rule 921 Manner of Making Amendments

Rule 922 Entry and Consideration of Amendments

Rule 923 Amendments to the Drawing

Rule 924 Amendment of Amendments

Rule 925 Substitute specification

Rule 926 Numbering of Claims

Rule 927 Petition from Refusal to Admit Amendment

Rule 928 Interviews with the Examiners: when No Interview is Permitted

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TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION

Rule 929 Withdrawal of Application for Failure to Respond within Time

Limit

Rule 930 Revival of Application

Rule 931 Express Withdrawal of Application

PART 10 GRANT OF PATENT

Rule 1000 Grant of Patent

Rule 1001 Contents of Patent

Rule 1002 Publication upon Grant of Patent

Rule 1003

Rule 1004 Term of Patent

PART 11 Annual Fees

Rule 1100 Annual Fees

Rule 1101 Date Application is Published

Rule 1102 Non-payment of Annual Fees;Grace period

PART 12 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT

CHAPTER 1 RECORDING OF ASSIGNMENT OF LETTERS PATENT, AND OF OTHER

INSTRUMENTS AFFECTING TITLE TO PATENTS, INCLUDING LICENSES

Rule 1200 Form of Assignment of a Patent or of an Application for a Patent

Rule 1201 Form of Other Instruments Affecting the Title to a Patent or

Application, Including Licenses

Rule 1202 Assignment and Other Instruments to be Submitted in Duplicate

Rule 1203 Date of Recording of Assignment or Other Instrument or License

Considered Its Date of Filing

Rule 1204 Letters patent may be Issued to the Assignee in Place of the

Applicant

Rule 1205 Action may be taken by assignee of record in any proceeding

in the Office

CHAPTER 2 SURRENDER, CORRECTION AND AMENDMENT OF PATENT

Rule 1206 Surrender of Patent

Rule 1207 Correction of Mistakes of the Office

Rule 1208 Correction of Mistake in the Application

Rule 1209 Changes in Patent

Rule 1210 Form and Publication of Amendment or Corrections

Rule 1212 Assignment of Inventions

Rule 1213 Rights of Joint Owners

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PART 13 PETITIONS AND APPEAL

Rule 1300 Nature of the Function of Examiners

Rule 1301 Petition to the Director to Question the Correctness of the

Action of an Examiner on a Matter Not Subject to Appeal

Rule 1302 Appeals to the Director

Rule 1303 Effect of a Final Decision of an Examiner which is Not Appealed

Rule 1304 Time and Manner of Appeal

Rule 1305 Appellant’s Brief Required

Rule 1306 The Examiner’s Answer

Rule 1307 Appellant’s Reply

Rule 1308 Appeal to the Director General

Rule 1310 Director’s Comment

Rule 1311 Appeal to the Court of Appeals

FINAL PROVISIONS

Section 1 Correspondence

Section 2 Fees and charges to be prepaid; Fees and charges payable in

advance

Section 3 Implementation

Section 4 Repeals

Section 5 Separability

Section 6 Furnishing of Certified Copies

Section 7 Effectivity

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II. RULES & REGULATIONS ON INVENTIONS

PART 1 DEFINITIONS

Rule 100 Definitions

Unless otherwise specified, the following terms shall have the meaning

provided in this Rule:

(a) “Bureau” means the Bureau of Patents of the Office;

(b) “Director” means the Director of the Bureau of Patents;

(c) “Director General” means the Head of the Intellectual Property Office;

(d) “Examiner” means any officer or employee of the Bureau of Patents

authorized to examine applications. The title or official designation

of such officer or employee may change as the structure of the Office

may be set;

(e) “IP Code” means Republic Act No. 8293 otherwise known as the

Intellectual Property Code of the Philippines;

(f) “IPO Gazette” means the Intellectual Property Office’s own

publication, including the e-Gazette accessible to the public via the

IP Philippines website address http://www.ipophil.gov.ph, where all

matters required to be published under the IP Code shall be published;

(g) “Office” means the Intellectual Property Office; and

(h) “Regulations” means this set of rules and regulations and such Rules

of Practice as may be formulated by the Director of Patents and approved

by the Director General.

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PART 2 PATENTABILITY

Rule 200 Patentable Inventions

Any technical solution of a problem in any field of human activity which

is new, involves an inventive step and is industrially applicable shall

be patentable. (Sec. 21, IP CODE)

Rule 201 Statutory Classes of Invention

An invention may be, or may relate to;

(a) A useful machine;

(b) A product;

(c) Process or an improvement of any of the foregoing;

(d) Microorganism; and

(e) Non-biological and microbiological processes. (Sec. 21, IP CODE)

Rule 202 Non-patentable Inventions

The following shall be excluded from patent protections:

(a) Discoveries, scientific theories and mathematical method;

(b) Schemes, rules and methods of performing mental acts, playing games

or doing business, and programs for computers;

(c) Methods for treatment of the human or animal body by surgery or therapy

and diagnostic methods practiced on the human or animal body. This

provision shall not apply to products and compositions for use in any

of these methods;

(d) Plant varieties or animal breeds or essentially biological process

for the production of plants or animals. This provision shall not apply

to microorganisms and non-biological and microbiological processes;

(e) Aesthetic creations; and

(f) Anything which is contrary to public order or morality. (Sec. 22,

IP CODE)

Rule 203 Novelty

An invention shall not be considered new if it forms part of a prior art.

(Sec. 23, IP CODE)

Rule 204 Prior Art

Prior art shall consist of:

(a) Everything made available to the public by means of a written or oral

disclosure, by use, or in any other way, before the filing date or the

priority date of the application claiming the invention. Prior use which

is not present in the Philippines, even if widespread in a foreign country,

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cannot form part of the prior art if such prior use is not disclosed in

printed documents or in any tangible form.

(b) The whole contents of an application for a patent, utility model,

or industrial design registration, published under Sec. 44 of IP CODE,

filed or effective in the Philippines, with a filing or priority date

that is earlier than the filing or priority date of the application:

Provided, That the application which has validly claimed the filing date

of an earlier application under Section 31 of IP CODE, shall be prior

art with effect as of the filing date of such earlier application: Provided

further, That the applicant or the inventor identified in both

applications are not one and the same, (Sec. 24, IP CODE):

Where two or more applications are independently filed with respect to

the same invention, and the later applications are filed before the first

application or earlier application is published, the whole contents of

the first or earliest filed application published in accordance with Sec.

44, IP CODE on or after the filing date or priority date of the later

filed application shall be novelty destroying with respect to the later

filed application.

Rule 205 Non-prejudicial Disclosure

The disclosure of information contained in the application during the

twelve months preceding the filing date or the priority date of the

application shall not prejudice the applicant on the ground of lack of

novelty if such disclosure was made by:

(a) The Inventor;

(b) A foreign patent office, the Bureau or the Office, and the information

was contained (a) in another application filed by the inventor and should

not have been disclosed by the office, or (b) in an application filed

without the knowledge or consent of the inventor by a third party which

obtained the information directly or indirectly from the inventor; or

(c) A third party which obtained the information directly or indirectly

from the inventor.

For the purposes of subsection (a) “inventor” also means any person who,

at the filing date of application, had the right to the patent. (Sec.

25, IP CODE)

Rule 206 Inventive Step

(a) An invention involves an inventive step if, having regard to prior

art, it is not obvious to a “person skilled in the art” at the time of

the filing date or priority date of the application claiming the invention.

(Sec. 26, IP CODE)

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(b) Only prior art made available to the public before the filing date

or priority date shall be considered in assessing inventive step.

Rule 207 Person Skilled in the Art

The person skilled in the art is presumed to be an ordinary practitioner

aware of what was common general knowledge in the art at the relevant

date. He is presumed to have knowledge of all references that are

sufficiently related to one another and to the pertinent art and to have

knowledge of all arts reasonably pertinent to the particular problems

with which the inventor was involved. He is presumed also to have had

at his disposal the normal means and capacity for routine work and

experimentation.

Rule 208 Industrial Applicability

An invention which can be produced and used in any industry shall be

industrially applicable. (Sec. 27, IP CODE)

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PART 3 RIGHT TO A PATENT

Rule 300 Right to a Patent

The right to a patent belongs to the inventor, his heirs, or assigns.

When two or more persons have jointly made an invention, the right to

a patent shall belong to them jointly (Sec. 28, IP CODE).

Rule 301 Who may be Named in an Application as an Applicant

The application may be filed by the actual inventor(s) or in the name

of his heirs, legal representative or assigns.

Rule 302 Inventions Created Pursuant to a Commission

The person who commissions the work shall own the patent, unless otherwise

provided in the contract. (Sec. 30.1, IP CODE)

Rule 303 Inventions Made in the Course of Employment

In case the employee made the invention in the course of his employment

contract, the patent shall belong to:

(a) The employee, if the inventive activity is not a part of his regular

duties even if the employee uses the time, facilities and materials of

the employer;

(b) The employer, if the invention is the result of the performance of

his regularly-assigned duties, unless there is an agreement, express or

implied, to the contrary. (Sec. 30.2, IP CODE)

Rule 304 First-to-File Rule

If two or more persons have made the same invention separately and

independently of each other, the right to the patent shall belong to the

person who filed an application for such invention, or where two or more

applications are filed for the same invention, to the applicant who has

the earliest filing date or, the earliest priority date (Sec. 29, IP CODE).

Where two or more applications for the same invention made separately

and independently of each other have the same filing date, or

priority-date the patent will be issued jointly to the applicants of all

such applications.

Rule 305 Right of Priority

An application for patent filed by any person who has previously applied

for the same invention in another country which by treaty, convention,

or law affords similar privileges to Filipino citizens, shall be

considered as filed as of the date of filing of the foreign application:

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Provided, That:

(a) the local application expressly claims priority;

(b) it is filed within twelve months from the date the earliest foreign

application was filed and

(c) a certified copy of the foreign application together with an English

translation is filed within six months from the date of filing in the

Philippines (Sec. 31, IP CODE).

This six-month period may be extended by the Director for a maximum of

six months upon showing of good cause or in compliance with treaties to

which the Philippines is or may become a member.

Rule 306.1 Multiple Priorities

An application can claim more than one priority even from different

countries. If more than one patent priority is claimed, time limits

computed from the priority date will be based upon the earliest priority

date.

Rule 306.2

If one or more priorities are claimed, the right of priority shall cover

only those elements of the application which are included in the

application or applications whose priority is claimed.

Rule 306.3

If certain elements of the invention for which priority is claimed do

not appear among the claims formulated in the previous application,

priority may nonetheless be granted, provided that the previous

application as a whole specifically disclose such elements.

Rule 306.4

Where an application could have claimed the priority of an earlier

application, but when filed, did not contain such priority, the applicant

shall be given two months from the filing date to submit priority claim.

Submission of priority claim after the filing of the application shall

be accompanied by a declaration of the applicant stating that the delay

in submitting the priority claim was unintentional.

Rule 307 Certified Copy of the Foreign Applications

The certified copy of foreign applications mentioned in Rule 305 shall

be the copy of the priority application(s) as duly certified to be a true

or faithful reproduction thereof by the Industrial Property Office which

received it or any other office which has official custody of the foreign

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application.

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PART 4 THE PATENT APPLICATION

Rule 400 The Patent Application

An application for a patent shall be in Filipino or English and shall

be filed in writing either directly to the Bureau or by post and must

be addressed to the Director. The application shall contain the following:

(a) A request for the grant of a patent;

(b) A description of the invention;

(c) Drawing(s) necessary for the understanding of the invention;

(d) One or more claims; and

(e) An abstract.

Rule 401 Payment of Fees

An application shall be subject to the payment of the filing fee, the

search fee and publication fee (1st publication) within one month after

the filing date of the application.

The application shall be deemed forfeited for non-payment of these fees.

Rule 402 Marking of Documents; Acknowledgment

The Bureau shall mark the documents making up the application with the

date of the receipt. After receipt of the full payment of the required

fees, the Bureau may issue an acknowledgment stating the application

number, name of applicant and title of the invention.

Rule 403 Form of Request; Office Application Form

The request shall be made on a form drawn up by the Office. For the

convenience of applicants, the Office shall draw up and make available

a standard application form which may be reproduced at will by applicants

and other persons at their own cost.

Rule 404 The Request

The request shall contain the following:

(a) Petition for the grant of a patent;

(b) Applicant’s name and address;

(c) Title of the invention;

(d) Inventor’s name;

(e) If with claim for convention priority it shall contain the file number,

country of origin and the date of filing in the said country where the

application was first filed;

(f) Name and address of the resident agent/representative (if any); and

(g) Signature of the applicant or resident agent/representative.

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Rule 405 Disclosure and Description of the Invention

The application shall disclose the invention in a manner sufficiently

clear and complete for it to be carried out by a person skilled in the

art.

Rule 406 Test for enabling Disclosure

The test for enabling disclosure is whether the persons to whom it is

addressed could, by following the directions therein, put the invention

into practice.

Rule 407 Content of the Description

(1) The description shall:

(a) Specify the technical field to which the invention relates;

(b) Indicate the background art which, as far as known to the applicant,

can be regarded as useful for understanding the invention, for drawing

up the search report and for the examination, and, preferably, cite the

documents reflecting such art;

(c) Disclose the invention, as claimed, in such terms that the technical

problem (even if not expressly stated as such) and its solution can be

understood, and state any advantageous effects of the invention with

reference to the background art;

(d) Briefly describe the figures in the drawings, if any;

(e) When there are drawings, there shall be a brief description of the

several views of the drawings and the detailed description of the

invention shall refer to its different parts, as shown in the views, by

use of reference letters or numerals (preferably the latter);

(f) Describe in detail at least one way of carrying out the invention

claimed using examples where appropriate and referring to the drawings,

if any; and

(g) Indicate explicitly, when it is not obvious from the description or

nature of the invention, the way in which the invention is capable of

exploitation in industry.

(2) The description shall be presented in the manner and order specified

in paragraph 1, unless because of the nature of the invention, a different

manner or a different order would afford a better understanding and a

more economic presentation.

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Rule 408 Requirements of Applications Relating to Biological Materials

and Microorganisms

Where the application concerns a microbiological process or the product

thereof and involves the use of a microorganism which cannot be

sufficiently disclosed in the application in such a way as to enable the

invention to be carried out by a person skilled in the art, and such

material is not available to the public, the invention shall only be

regarded as being disclosed if:

(a) A culture of the microorganism has been deposited in a depositary

institution before filing the application;

(b) The depositary institution and the file number of the culture deposit

are stated in the application. If this information is not yet available

at the time of filing the application, the said information shall be

submitted within two months from request of the Examiner. Publication

of the application under Section 44, IP CODE shall be held pending

submission of said information; and

(c) The application as filed gives relevant information as is available

to the applicant on the characteristics of the microorganism.

Rule 409 Requirements of Application Relating to Biological Materials

and Microorganisms before Allowance

An application which concerns a microbiological process or the product

thereof and involves the use of any novel strain of microorganism shall

be allowed only when the following conditions are met:

(a) A deposit was made in a recognized international depositary authority;

(b) Proof of such deposit together with the proper identification or

deposit number assigned by the depositary is submitted; and

(c) That the depositary should be under the contractual obligation to

place the culture in permanent collection, and to provide access to

persons who shall have interest therein in regard to matters relating

to the patent application as published.

Rule 410 Title of the Invention

The title of the invention should be as short and specific as possible,

and should appear as a heading on the first page of the specification.

All fancy names are not permissible in the title.

Rule 411 Abstract

The abstract written in a separate sheet with a heading “Abstract” shall

consist of a concise summary of the disclosure of the invention as

contained in the description, claims and drawings in preferably not more

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than one hundred fifty words. It must be drafted in a way which allows

the clear understanding of the technical problem, the gist of the solution

of that problem through the invention, and the principal use or uses of

the invention. The abstract shall merely serve for technical information.

Each main technical feature mentioned in the abstract and illustrated

by a drawing in the application shall be followed by a reference sign

placed between parentheses.

Rule 412 Prohibited Matter

(a) The application shall not contain:

(i) A statement or other matter contrary to “public order” or morality;

(ii) Statement disparaging the products or processes of any particular

person or other than the applicant, or the merits or validity of

applications or patents of any such person. Mere comparison with the prior

art shall not be considered disparaging per se;

(iii) Any statement or other matter obviously irrelevant or unnecessary

under the circumstances.

(b) If an application contains prohibited matter within the meaning of

this Rule, the Bureau shall omit it when publishing the application,

indicating the place and number of words or drawing omitted.

Rule 413

(a) General Requisites for the Drawing.-- The drawing must be signed by

the applicant or the name of the applicant may be signed on the drawing

by his attorney or agent. The drawing must show every feature of the

invention covered by the claims, and the figures should be consecutively

numbered.

(b) Drawing for an Improvement. -- When the invention consists of an

improvement of an old machine, the drawing must exhibit, in one or more

views, the invention itself, isolated from the old structure, and also,

in another view, so much only the old structure as will suffice to show

the relation of the invention therewith.

Rule 414.1 Uniform Standard of Excellence Suited to Photolithographic

Process, Required of Drawings

The printing of the drawings in the IPO Gazette is done by the

photolithographic process, and therefore the character of each original

drawing must be brought as nearly as possible to a uniform standard of

excellence suited to the requirements of the process, to give the best

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results, in the interests of the inventors, of the Office, and of the

public. The following rules will therefore be strictly enforced, and any

departure from them will be certain to cause delay in the examination

of an application.

Rule 414.2 Paper and Ink

Drawings must be made upon paper that is flexible, strong, white, smooth,

non-shiny and durable. Two ply or three ply Bristol board is preferred.

The surface of the paper should be calendered and of a quality which will

permit erasure and correction with India ink. India ink, or its equivalent

in quality, is preferred for pen drawings to secure perfectly black solid

lines. The use of white pigments to cover lines is not permissible.

Rule 414.3 Size of Drawing Sheet; Imaginary Line

The size of a sheet on which a drawing is made must be exactly 29.7 cm

x 21 cm or the size of an A4 paper. The minimum imaginary margins shall

be as follows:

Top 2.5 cm;

Left side 2.5 cm;

Right side 1.5 cm;

Bottom 1 cm.

Within this imaginary margin all work and signatures must be included.

One of the shorter sides of the sheet is regarded as its top, and, measuring

downwardly from the imaginary line, a space of not less than 3 cm is to

be left blank for the heading of title, name, number, and date.

Rule 414.4 Character and Color Lines

All drawings must be made with the pen or by a photolithographic process

which will give them satisfactory reproduction characteristics. Every

line and letter (signatures included) must be absolutely black. This

direction applies to all lines, however fine, to shading and to lines

representing cut surfaces in sectional views. All lines must be clean,

sharp, and solid, and they must not be too fine or crowded. Surface shading,

when used, should be open. Sectional shading should be made by oblique

parallel lines, which may be about 0.3 cm apart. Solid black should not

be used for sectional or surface shading. Freehand work should be avoided

whenever possible.

Rule 414.5 The Fewest Possible Number of Lines and Little or No Shading

to be Used

Drawings should be made with the fewest lines possible consistent with

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clearness. By the observance of this rule the effectiveness of the work

after reduction will be much increased. Shading (except on sectional

views) should be used sparingly, and may even be dispensed with if the

drawing be otherwise well executed. The plane upon which a sectional view

is taken should be indicated on the general view by a broken or dotted

line, which should be designated by numerals corresponding to the number

of the sectional view. Heavy lines on the shade sides of objects should

be used, except where they tend to thicken the work and obscure letter

of reference. The light is always supposed to come from the upper left

hand corner of an angle of 45 degrees.

Rule 414.6 Scale to which Drawing is Made to be Large Enough

The scale to which a drawing is made ought to be large enough to show

the mechanism without crowding, and two or more sheets should be used

if one does not give sufficient room to accomplish this end; but the number

of sheets must never be more than what is absolutely necessary.

Rule 414.7 Letters and Figures of Reference

The different views should be consecutively numbered. Letters and figures

of reference must be carefully formed. They should, if possible, measure

at least 32 millimeters in height, so that they may bear reduction to

10.6 millimeters; and they may be much larger when there is sufficient

room. They must be so placed in the close and complex parts of drawings

as not to interfere with a thorough comprehension of the same, and

therefore should rarely cross or mingle with the lines. When necessarily

grouped around a certain part, they should be placed at a little distance

where there is available space, and connected by lines with the parts

to which they refer. They should not be placed upon shaded surfaces, but

when it is difficult to avoid this, blank space must be left in the shading

where the letter occurs, so that it shall appear perfectly distinct and

separate from the work. If the same part of an invention appears in more

than one view of the drawing, it must always be represented by the same

character, and the same character must never be used to designate

different parts.

Rule 414.8 Signature, Where to be Placed

The signature of the applicant should be placed at the lower right-hand

corner within the imaginary margins of each sheet, but in no instance

should they trespass upon the drawings.

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Rule 414.9 Title of the Drawing

The title should be written with pencil on the back of the sheet. The

permanent name and title constituting the heading will be applied

subsequently by the Bureau of Patents in uniform style.

Rule 414.10 Position on Drawing Sheets of Large Views

All views on the same sheet must stand in the same direction and must,

if possible, stand so that they can be read with the sheet held in an

upright position. If views longer than the width of the sheet are necessary

for the proper illustration of the invention, the sheet may be turned

on its side. The space for heading must then be reserved at the right

and the signatures placed at the left, occupying the same space and

position as in the upright views and being horizontal when the sheet is

held in an upright position. One figure must not be placed upon another

or within the outline of another.

Rule 414.11 Flow Sheets and Diagrams

Flow Sheets and diagrams are considered drawings.

Rule 414.12 Requisites for the Figure of the IPO Gazette

As a rule, only one view of each invention can be shown in the IPO Gazette

illustrations. The selection of that portion of a drawing best calculated

to explain the nature of the invention or its specific improvement would

be facilitated and the final result improved by judicious execution of

a figure with express reference to the IPO Gazette, but which must at

the same time serve as one of the figures referred to in the specification.

For this purpose the figure may be a plan, elevation, section, or

perspective view, according to the judgment of the draftsman. All its

parts should be especially open and distinct, with very little or no

shading, and it must illustrate only the invention claimed, to the

exclusion of all other details. When well executed, it will be used without

curtailment or change, but any excessive fineness or crowding or

unnecessary elaborateness of detail will necessitate its exclusion from

the IPO Gazette.

Rule 414.13 Reference Signs

Reference signs not mentioned in the description and claims shall not

appear in the drawings and vice versa. The same features, when denoted

by reference signs, shall throughout the application, be denoted by the

same signs.

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Rule 414.14 Photographs

(a) Photographs are not normally considered to be proper drawings.

Photographs are acceptable for obtaining a filing date and generally

considered to be informal drawings. Photographs are only acceptable where

they come within the special categories as set forth in the paragraph

below. Photolitographs of photographs are never acceptable.

(b) The Office is willing to accept black and white photographs or

photomicrographs (not photolitographs or other reproduction of

photographs made by using screens) printed on sensitized paper in lieu

of India ink drawings, to illustrate the inventions which are incapable

of being accurately or adequately depicted by India ink drawings

restricted to the following categories: crystalline structures,

metallurgical microstructures, textile fabrics, grain structures and

ornamental effects. The photographs or photomicrographs must show the

invention more clearly than they can be done by the India ink drawings

and otherwise comply with the rules concerning such drawings.

(c) Such photographs to be acceptable must be made on photographic paper

having the following characteristics which are generally recognized in

the photographic trade: paper with a surface described as smooth, tint,

white, or be photographs mounted on a proper sized Bristol board.

Rule 414.15 Matters not Permitted to Appear on the Drawings

An agent’s or attorney’s stamp, or advertisement or written address shall

not be permitted on the drawings.

Rule 414.16 Drawings not Conforming to Foregoing Rules to be Accepted

Only Conditionally

A drawing not executed in conformity to the foregoing rules may be admitted

for purposes of examination if it sufficiently illustrates the invention,

but in such case, the drawing must be corrected or a new one furnished

before the application will be allowed.

Applicants are advised to employ competent draftsman to make their

drawings.

Rule 415 Claim

(a) The specification must conclude with a claim particularly pointing

out and distinctly claiming the part, improvement, or combination which

the applicant regards as his invention.

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(b) The application may contain one or more independent claims in the

same category, (product, process, apparatus or use) where it is not

appropriate, having regard to the subject matter of the application, to

cover this subject matter by a single claim which shall define the matter

for which protection is sought. Each claim shall be clear and concise,

and shall be supported by the description.

(c) One or more claims may be presented in dependent form, referring back

and further limiting another claim or claims in the same application.

Any dependent claim which refers to more than one other claim (“multiple

dependent claim”) shall refer to such other claims in the alternative

only. A multiple dependent claim shall not serve as a basis for any other

multiple dependent claim. For fee calculation purpose a multiple

dependent claim will be considered to be that number of claims to which

direct reference is made therein. Furthermore, any claim depending on

a multiple dependent claim will be considered to be that number of claims

to which direct reference is made in that multiple dependent claims. In

addition to the other filing fees, any original application which is filed

with, or is amended to include, multiple dependent claims must have to

pay the prescribed additional fees. Claims in dependent form shall be

construed to include all the limitations of the claims incorporated by

reference into the dependent claim. A multiple dependent claim shall be

construed to incorporate by reference all the limitations of each of the

particular claims in relation to which it is being considered.

(d) The claim or claims must conform to the invention as set forth in

the description made in the specification, and the terms and phrases used

in the claims must find clear support or antecedent basis in the said

description, so that the meaning of the terms in the claims may be

ascertainable by reference to the description. Claims shall not, except

where absolutely necessary, rely in respect of the technical features

of the invention, on references to the description or drawings. In

particular, they shall not rely on such references as: “as described in

part xxx of the description” or, “as illustrated in figure xxx of the

drawings”.

Rule 416 Form and Content of the Claims

The claims shall define the matter for which protection is sought in terms

of the technical features of the invention. Wherever appropriate the

claims shall contain:

(a) a statement indicating the designation of the subject matter of the

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invention and those technical features which are necessary for the

definition of the claimed subject matter but which, in combination, are

part of the prior art;

(b) a characterizing portion preceded by the expression “characterized

in that” or “characterized by” -- stating the technical features which,

in combination with the features stated in sub-paragraph (a), it is

desired to protect; and

(c) If the application contains drawings, the technical features

mentioned in the claims shall preferably, if the intelligibility of the

claim can thereby be increased, be followed by reference signs relating

to these features and placed between parentheses. These reference signs

shall not be construed as limiting the claim.

Rule 417 Claims Incurring Fee

Any application comprising more than five claims, independent and/or

multiple/alternative dependent claims at the time of filing, or added

claims after the filing date in respect of each claim over and above five

incurs payment of a claims fee. The claims fee shall be payable within

one month after the filing of the application. If the claim fees have

not been paid in due time, they may still be validly paid within a grace

period of one month from notice pointing out the failure to observe the

time limit. If the claims fee is not paid within the time limit and the

grace period referred to in this Rule, the claim or claims concerned shall

be deemed deleted.

Rule 418 Presentation of the Application Documents

(a) All papers for an application for an invention patent which are to

become part of the permanent records of the Office must be the original

copy only, and legibly written, typewritten, or printed in permanent ink

only on one side of the sheet. If necessary, only graphic symbols and

characters and chemical or mathematical formulas may be written by hand

or drawn. The typing shall be 1 ½ spaced. All text matter shall be in

characters, the capital letters of which are not less than 0.21 cm. high,

and shall be in dark, indelible color.

(b) The documents making up the application shall be on a 29.7 cm x 21

cm paper or the size of an A4 paper which shall be pliable, strong, white,

smooth, matt and durable.

(c) The specification and claims of an invention patent must be written

with the lines numbered in sets of five and the number appearing on the

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left side margin.

(d) The description, the claims and the abstract may contain chemical

or mathematical formulas. The description and the abstract may contain

tables. The claims may contain tables only if their subject-matter makes

the use of tables desirable. Tables and chemical or mathematical formulas

may be placed sideways on the sheet if they cannot be presented

satisfactorily in an upright position thereon; sheets on which tables

or chemical or mathematical formulas are presented sideways shall be so

presented that the tops of the tables or formula are at the left side

of the sheet.

(e) Physical values shall be expressed in the units recognized in

international practice, wherever appropriate in terms of the metric

system using system international (SI) units. Any data not meeting this

requirement must also be expressed in the units recognized in

international practice. For mathematical formula, the symbols in general

use shall be employed. For chemical formula the symbols, atomic weights

and molecular formula in general use shall be employed. In general, use

should be made of the technical terms, signs and symbols generally

accepted in the field in question.

(f) The terminology and the signs shall be consistent throughout the

application.

(g) Each of the documents making up the application (request for grant,

specification, claims, drawings and abstract) shall commence on a

separate sheet. The separate sheets shall be filed in such a way that

they can easily be turned over, and joined together again.

(h) Margins

The margins of the documents shall be within the following ranges:

Top: 2 cm - 4 cm

Left side: 2.5 cm - 4 cm

Right side: 2 cm - 3 cm

Bottom: 2 cm - 3 cm

The margins of the documents making up the application must be completely

blank.

All the sheets making up the documents shall have their pages numbered

consecutively using Arabic numeral. The page numbers shall appear in the

central portions of either the top or bottom margins.

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(i) The documents making up the application except the request for grant

shall be filed in four copies.

Rule 419 Models, when Required

A model may be required when the invention sought to be patented cannot

be sufficiently described in the application. The Examiner shall notify

the applicant of such requirement, which will constitute an official

action in the case. When a model has been received in compliance with

the official requirement, the date of its filing shall be entered on the

file wrapper. Models not required nor admitted will be returned to the

applicants. When a model is required, the examination may be suspended

until it shall have been filed.

Rule 419.1 Requisites for the Model

The model, when required, must clearly exhibit every feature of the

machine which form the subject of a claim of invention, but should not

include other matter than that covered by the actual invention or

improvement, unless it be necessary to the exhibition of the invention

in a working model.

Rule 419.2 Material Required for the Model; Working Models

The model must be neatly and substantially made of durable material, but

when the material forms an essential feature of the invention, the model

should be constructed of that material.

A working model may be required if necessary to enable the office to fully

and readily understand the precise operation of the machine.

Rule 419.3 Models, when Returned to Applicant

In all applications which have been rejected or become abandoned, the

model, unless it be deemed necessary that it be preserved in the Office,

may be returned to the applicant upon demand and at his expense; and the

model in any pending case may be returned to the applicant upon the filing

of a formal abandonment of the application signed by the applicant in

person and any assignee.

Models belonging to patented cases shall not be taken from the Office

without the authorization by the Director.

Rule 419.4 Models Filed as Exhibits in Contested Cases

Models filed as exhibits in contested cases may be returned to the parties

at their expense. If not claimed within a reasonable time, they may be

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disposed of at the discretion of the Director.

Rule 420 Employment of Attorney-at-Law or Agent Recommended

An applicant or an assignee of the entire interest may prosecute his own

case, but he is advised, unless familiar with such matters, to employ

a competent attorney-at-law or agent, as the value of patents depends

largely upon the skillful preparation of the specification and claims.

The Office cannot aid in the selection of an attorney-at-law or agent.

Rule 421 Appointment of Resident Agent or Representative

An applicant who is not a resident of the Philippines must appoint and

maintain a resident agent or representative in the Philippines upon whom

notice or process for judicial or administrative procedure relating to

the application for patent or the patent may be served.

(a) If there are two or more agents appointed by the applicant, the Office

shall forward all actions to the last agent appointed. A substitute or

associate attorney may be appointed by an attorney only upon the written

authorization of his principal; but a third attorney appointed by the

second will not be recognized.

(b) Revocation of Power of Attorney. -- A power of attorney or

authorization may be revoked at any stage in the proceedings of a case

upon proper notification to the Director General, and, when revoked, the

Office will notify the attorney or agent of such revocation and shall

communicate directly with the applicant or with such other attorney or

agent as he may later appoint.

Rule 422 Decorum and Courtesy Required in the Conduct of Business

(a) Applicants, their attorneys or agents are required to conduct their

business with the Office with politeness, decorum, and courtesy.

Applicants who act or persist in acting in violation of this rule, shall

be required to be represented by attorney, and papers presented containing

matter in violation of this rule will be submitted to the Director and

returned to the sender, by his direct order.

(b) Complaints against Examiners to be on Separate Paper. -- Complaints

against Examiners and other officers must be made in a communication

separate from other papers, and will be promptly investigated by or at

the instance of the Director.

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PART 5 WHO MAY APPLY FOR A PATENT

Rule 500 Who may Apply for a Patent

Any person, natural or juridical, may apply for a patent. If the applicant

is not the inventor, the Office may require him to submit proof of his

authority to apply for a patent.

Rule 501 When the Applicant Dies, Becomes Insane

In case the applicant dies, becomes insane or incapacitated, the legally

appointed administrator, executor, guardian, conservator, or

representative of the applicant, may sign the application papers and other

documents, and apply for and obtain the patent in the name of the applicant,

his heirs or assignee.

Rule 502 Assigned Invention and Patents

In case the whole interest in the invention is assigned, the application

may be filed by or in the name of the assignee who may sign the application.

In case the assignee is a juridical person, any officer thereof may sign

the application in behalf of the said person. In case of an aliquot portion

or undivided interest, any of the joint owners will sign the application.

Rule 503 Juridical Person -- Definition

A juridical person is a body of persons, a corporation, a partnership,

or other legal entity that is recognized by law which grants a juridical

personality separate and distinct from that of a share holder, partner

or member.

Rule 504 Proof of Authority

If the person who signs the application in behalf of a juridical person

is an officer of the corporation, no proof of authority to file the said

application will be required. However, if any other person signs for and

in behalf of a juridical person, the Bureau shall require him to submit

proof of authority to sign the application.

If the applicant appoints a representative to prosecute and sign the

application, the Bureau shall require proof of such authority.

Rule 505 Forms of Signatures

Where a signature is required, the Office may accept:

(a) A hand-written signature; or

(b) The use of other forms of signature, such as a printed or stamped

signature, or the use of a seal, or thumbmarks, instead of a hand-written

27

signature. Provided, that where a seal or a thumbmark is used, it should

be accompanied by an indication in letters of the name of the signatory.

No attestation, notarization, legalization or other certification of any

signature or other means of self-identification referred to in the

preceding paragraphs, will be required, except, where the signature

concerns the surrender of a letters patent.

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PART 6 FILING DATE AND FORMALITY EXAMINATION

Rule 600 Filing Date Requirements

The filing date of a patent application shall be the date on which the

Office received the following elements in English or Filipino:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and,

(c) Description of the invention and one or more claims.

Rule 600.1 Incomplete application

Where the application refers to a drawing or drawings, it shall not be

considered complete if the drawing or drawings are not included in the

application.

Rule 600.2

For purposes of obtaining a filing date, the Bureau may accept a copy

of the application received by the resident agent by telefax, subject

to submission of the original copy within two months from the filing date.

Rule 601 According a Filing Date

The Office shall examine whether the patent application satisfies the

requirements for the grant of filing date as provided in these Regulations.

If the filing date cannot be accorded, the applicant shall be given an

opportunity to correct the deficiencies. If the application does not

contain all the elements indicated in these regulations, the filing date

should be that date when all the elements are received. If the deficiencies

are not remedied within two months from the date on which the application

was initially presented to the Office, the application shall be considered

withdrawn (Sec. 41, IP CODE).

Rule 602 Late-filed or Missing Drawings

(1) If the formality examination reveals that the drawings were filed

after the filing date of the application, the Bureau shall send a notice

to the applicant that the drawings and the references to the drawings

in the application shall be deemed deleted unless the applicant requests

within two months that the application be granted a new filing date which

is the date on which the drawings were filed.

(2) If the formality examination reveals that the drawings were not filed,

the Bureau shall require applicant to file them within two months and

inform the applicant that the application will be given a new filing date

29

which is the date on which the drawings are filed, or, if they are not

filed in due time, any reference to them in the application shall be deemed

deleted.

(3) The new filing date shall be cited in all succeeding correspondences

between the Bureau and the applicant.

Rule 603 Formality Examination

If a patent application has been accorded a filing date and the required

fee has been paid within one month, compliance with other requirements

will be checked. Such other requirements may relate to the following:

(a) Contents of the request for grant of a Philippine patent;

(b) Priority documents if with claim of convention priority (i.e., file

number, date of filing and country of the priority applications);

(c) Proof of authority, if the applicant is not the inventor;

(d) Deed of assignment;

(e) Payment of all fees, (e.g. excess claims)

(f) Signatures of the applicants;

(g) Identification of the inventor; and

(h) Formal drawings.

Rule 604 Unity of Invention

(a) The application shall relate to one invention only or to a group of

inventions forming a single general inventive concept. (Sec. 38.1, IP

CODE)

(b) If several independent inventions which do not form a single general

inventive concept are claimed in one application, the Director may require

that the application be restricted to a single invention. A later

application filed for an invention divided out shall be considered as

having been filed on the same day as the first application: Provided that

the later application is filed within four months after the requirement

to divide becomes final, or within such additional time, not exceeding

four months, as may be granted. Provided further, That each divisional

application shall not go beyond the disclosure in the initial application.

(Sec. 38.2, IP CODE)

Rule 604.1

The fact that a patent has been granted on an application that did not

comply with the requirement of unity of invention shall not be a ground

to cancel the patent (Sec. 38.3, IP CODE).

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Rule 605 Requirements for Unity of Invention

(a) The requirement of unity of invention shall be fulfilled only when

there is a technical relationship among those inventions involving one

or more of the same or corresponding special technical features. The

expression “special technical features” shall mean those technical

features that define a contribution which each of the claimed inventions,

considered as a whole makes over the prior art.

(b) The determination whether a group of inventions is so linked as to

form a single general inventive concept shall be made without regard to

whether the inventions are claimed in separate claims or as alternative

within a single claim.

(c) A plurality of independent claims in different categories may

constitute a group of inventions linked to form a single general inventive

concept, the link being e.g. that between a product and the process which

produces it; or between a process and an apparatus for carrying out the

process.

(d) Three different specific combinations of claims in different

categories which are permissible in any one application are the following:

(1) In addition to an independent claim for a given product, an independent

claim for a process specially adopted for the manufacture of the product,

and an independent claim for a use of the product; or

(2) In addition to an independent claim for a given process, an independent

claim for an apparatus or means specifically designed for carrying out

the process; or

(3) In addition to an independent claim for a given product, an independent

claim for a process specially adapted for the manufacture of the product,

and an independent claim for apparatus or means specifically designed

for carrying out the process.

Rule 606 Reconsideration for Requirement

(a) If the applicant disagrees with the requirement of division, he may

request reconsideration and withdrawal or modification of the

requirement, giving the reasons therefor. In requesting reconsideration,

the applicant must indicate a provisional election of one invention for

prosecution, which invention shall be the one elected in the event the

requirement becomes final.

31

(b) The requirement for division will be reconsidered on such a request.

If the requirement is repeated and made final, the principal Examiner

will, at the same time, act on the claims of the invention elected.

Rule 607 Appeal from requirement for Division

After a final requirement for division, the applicant, in addition to

making any response due on the remainder of the action, may appeal from

the requirement. The prosecution on claims of the elected invention may

be continued during such appeal. Appeal may be deferred until after final

action on or allowance of the claims of the invention elected. Appeal

may not be allowed if reconsideration of the requirement was not

requested.

Rule 608 Subsequent Presentation of Claims for Different Invention

If, after an official action on an application, the applicant presents

claim directed to an invention divisible from the invention previously

claimed, such claims, if the amendment is entered, will be rejected and

the applicant will be required to limit the claims to the invention

previously claimed.

Rule 609 Election of Species

In the first action on an application containing a generic claim and claims

restricted separately to each of more than one species embraced thereby,

the Examiner, if in his opinion, after a complete search, the generic

claim presented is allowable, shall require the applicant in his response

to that action to elect the species of his invention to which his claim

shall be restricted, if no generic claim is finally held allowable.

Claims directed neither to the species nor to the genus of the disclosed

invention may be allowed. Markush type claims, i.e., claims which

enumerate in alternative manner, members or variations which are properly

claimable as species claims may likewise be allowed, provided that the

amount of the fees payable by the applicant/s shall be computed depending

on the number of members or variations enumerated in the Markush type

claims.

Rule 610 Separate Application for Invention Not Elected

The inventions which are not elected after a requirement for division

may be the subject of separate applications which will be examined in

the same manner as original applications. However, if such an application

is filed before the original application is patented or withdrawn, and

if it is identical and the papers constituting an exact copy of the

32

original papers which were signed and executed by the applicant, signing

and execution of the applicant may be omitted; such application may

consist of the filing fee, a copy of the drawings complying with rules

relating to drawings and filed, together with a proposed amendment

canceling the irrelevant claims or other matters.

Rule 611 Divisional Application

The applicant may file a divisional application on a pending application

before the parent application is withdrawn, abandoned or patented,

provided that the subject matter shall not extend beyond the content of

the parent application.

The divisional application shall be accorded the same filing date as the

parent application, and shall have the benefit of any right to priority.

Rule 612 Information Concerning Corresponding Foreign Application for

Patents

The applicant shall, at the request of the Director, furnish him with

the date and number of any application for a patent filed by him abroad,

hereafter referred to as the “foreign application”, relating to the same

or essentially the same invention as that claimed in the application filed

with the Office and other documents relating to the foreign application.

(Sec. 39, IP CODE)

Rule 612.1

Other documents relating to the foreign application may consist of the

following:

(a) A copy of the search reports in English on the corresponding or related

foreign application prepared by the European, Japanese or United States

Patent Offices, searching authorities under the Patent Cooperation

Treaty or by the office where the first patent application was filed.

(b) Photocopy of the relevant documents cited in the search report;

(c) Copy of the patent granted to the corresponding or related

application;

(d) Copy of the examination report or decision on the corresponding or

foreign related application; and

(e) Other documents which could facilitate adjudication of the

application.

Rule 612.2 Non-compliance

The application is considered withdrawn if the applicant fails to comply

with the requirement to furnish information concerning the corresponding

33

foreign application, within the specified period.

34

PART 7 CLASSIFICATION AND SEARCH

Rule 700 Classification and Search

An application that has complied with the formal requirements shall be

classified and a search shall be conducted to determine the prior art.

(Sec. 43, IP CODE).

Rule 701

The Office shall use the International Patent Classification.

Rule 701.1 Content of the Intellectual Property Search Report

The Intellectual Property Search Report is drawn up on the basis of the

claims, description, and the drawings as follows:

(a) The search report shall mention those documents, available at the

Office at the time of drawing up the report, which may be taken into

consideration in assessing novelty and inventive step of the invention.

(b) The search report shall distinguish between cited documents published

before the date of priority claimed, between such date of priority and

the date of filing, and on or after the date of filing.

(c) The search report shall contain the classification of the subject

matter of the application in accordance with the International Patent

Classification.

(d) The search report may include documents cited in a search established

in the corresponding foreign application.

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PART 8 PUBLICATION AND REQUEST FOR EXAMINATION

Rule 800 Publication of Application

(a) The application shall be published in the IPO Gazette together with

a search document established by or on behalf of the Office citing any

document or documents that reflect prior art, after the expiration of

eighteen months(18) from the filing date or priority date.

However, the applicant may request for the early publication of his

application provided that the:

1. applicant submits a written waiver of the

a) abovementioned 18-month period, and

b) establishment of a search report;

2. publication shall not be earlier than six (6) months from filing date;

and

3. required fee for early publication is paid in full.

(b) The application will not be published if it has been finally refused

or withdrawn or deemed to be withdrawn before the termination of the

technical preparation for publication.

(c) The application to be published shall contain the bibliographic data,

any drawing as filed and the abstract.

(d) The Office shall communicate to the applicant the date and other

information regarding the publication of the application and draw his

attention to the period within which the request for substantive

examination must be filed.

(e) After publication of a patent application, any interested party may

inspect the application documents filed with the Office.

(f) The Director General, subject to the approval of the Secretary of

Trade and Industry, may prohibit or restrict the publication of an

application, if in his opinion, to do so would be prejudicial to the

national security and interests of the Republic of the Philippines. (Sec.

44, IP CODE)

Rule 801 Confidentiality before Publication

An application, which has not yet been published, and all related

documents, shall not be made available for inspection without the consent

of the applicant. (Sec. 45, IP CODE).

36

Rule 802 Observation of Third Parties

Following the publication of the application, any person may present

observations in writing concerning the patentability of the invention.

Such observations shall be communicated to the applicant who may comment

on them. The Office shall acknowledge and put such observations and

comment in the file of the application to which it relates. (Sec. 47,

IP CODE)

Rule 803 Request for Substantive Examination

The application shall be deemed withdrawn unless within six months from

the date of publication under these rules, a written request to determine

whether a patent application meets the requirements of Patentability as

provided for by the IP CODE, and the fees have been paid on time.

Rule 803.1

Withdrawal of the request for examination shall be irrevocable and shall

not authorize the refund of any fee. (Sec. 48, IP CODE)

Rule 804 Rights Conferred by an Application after Publication

The applicant shall have all the rights of a patentee under Sec. 76, of

the IP CODE against any person who, without his authorization, exercised

any of the rights conferred under Section 71 of said law in relation to

the invention claimed in the published application, as if a patent has

been granted for that invention: Provided, That the said person had:

(a) Actual knowledge that the invention that he was using was the subject

matter of a published application; or

(b) Received written notice that the invention that he was using was the

subject matter of a published application being identified in the said

notice by its serial number: Provided, That the action may not be filed

until after the grant of a patent on the published application and within

four years from the commission of the acts complained of (Sec. 46, IP

CODE).

Rule 805 Citation and references

Should domestic patents be cited, their numbers and dates, the names of

the patentees, and the classes of inventions must be stated. Should

foreign patents be cited, their nationality or country, numbers and dates

and the names of the patentees must be stated, and such other data must

be furnished as may be necessary to enable the applicant to identify the

patents cited. In citing foreign patents, in case part of the patent be

37

involved, the particular pages and sheets containing the parts relied

upon must be identified. Should non-patent publications be cited, the

author (if any), title, date, relevant pages or plates, and place of

publication, or place where a copy can be found, shall be given.

38

PART 9 THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN THE

EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL CONSIDERATIONS

Rule 900 Applications Prosecuted Ex Parte

An application is prosecuted ex parte by the applicant; that is, the

proceedings are like a lawsuit in which there is a plaintiff, but no

defendant, the court itself acting as the adverse party.

Rule 901 Proceedings, a Contest between the Examiner and the Applicant

An ex parte proceeding in the Bureau is a law contest between the Examiner,

representing the public and trying to give the inventor the least possible

monopoly in return for his disclosure, and the applicant or his attorney

trying to get as much monopoly as possible.

Rule 902 Applicant supposed to Look after His Interest

The Bureau, represented by the Examiner, is not supposed to look after

the interests of an applicant. The Examiners are charged with the

protection of the interest of the public, and hence must be vigilant to

see that no patent issues for subject matter which is not patentable,

and is already disclosed in prior inventions and accessible to the public

at large.

Rule 903 Preliminary Adverse Actions of the Examiner Valuable to Applicant

The positive value of preliminary adverse actions of the Examiner should

be fully appreciated by the applicant and his attorney. A hard-fought

application will produce a patent much more likely to stand in court than

a patent which has slid through the Bureau easily. This is so for two

reasons: first, the rejections have given the applicant or his attorney

suggestions of strengthening amendments so that his claims have been made

infinitely less vulnerable than would be otherwise possible; secondly,

every point raised by the Examiner and finally decided by the Bureau in

favor of the applicant will give him a prima facie standing on that point

in court. The Office is empowered by law to pass upon applications for

patents and, because of the authority vested in it, its decisions with

respect to the granting of an application or on any point connected with

it will be presumed to be correct by the courts.

Rule 904 A Preliminary Rejection should Not be Taken Literally; Examiner

is Only Trying to be Helpful

A rejection by the Examiner is never to be taken literally. An applicant

should remember that the Examiner may not be actually rejecting his

39

invention. The Examiner may in fact be quite prepared to admit the

invention over the references to the prior art. He may be merely rejecting

the applicant’s claims, that is, the way in which the applicant has

expressed his invention.

An Examiner will frequently make a blanket rejection on some reference

to the prior art just to be helpful to the applicant - just to give the

applicant a chance to explain away some reference and make a change in

his claims to avoid it, rather than to wait until the patent is granted

and is involved in a litigation, when it may be too late to make the

explanation.

Rule 905 The Examiners shall Have Original Jurisdiction over All

Applications; Appeal to the Director

The examination of all applications for the grant of invention patents

shall be under the original jurisdiction of the several Examiners; their

decisions, when final, shall be subject to petition, or appeal to the

Director within four months from the mailing date of the notice of the

decision. As regards information on any specific technical or scientific

matter pending final action by the Bureau, the applicant may, upon payment

of a fee, request in writing for a conference with the Examiner specifying

the query he would want to propound to the Examiner but in respect of

which the Examiner has the discretion to grant the request or choose to

reply to the query in writing.

Rule 906 Order of Examination

Applications filed in the Bureau and accepted as complete applications

are assigned for examination to the respective Examiners handling the

classes of invention to which the applications relate. Applications shall

be taken up for examination by the Examiner in the order in which they

have been filed.

Applications which have been acted upon by the Examiner, and which have

been placed by the applicant in condition for further action by the said

Examiner (amended application) shall be taken up for such action in the

order in which they have been placed in such condition (date of amendment).

Rule 907 Nature of Examination, Examiner’s Action

(a) On taking up an application for examination, the Examiner shall make

a thorough study thereof and shall make a thorough investigation of the

available prior art relating to the subject matter of the invention sought

to be patented. The examination shall be complete with respect both to

compliance of the application with the statutes and rules and to the

40

patentability of the invention as claimed, as well as with respect to

matters of form, unless otherwise indicated.

(b) The applicant will be notified of the Examiner’s action. The reasons

for any adverse action or any objection or requirement will be stated

and such information or references will be given as may be useful in aiding

the applicant to judge the propriety of continuing the prosecution of

his application.

Rule 908 Completeness of Examiner’s action

The Examiner’s action will be complete as to all matters, except that

in appropriate circumstances, such as restriction requirement,

fundamental defects in the application, and the like, the action of the

Examiner may be limited to such matters before further action is made.

However, matters of form need not be raised by the Examiner until a claim

is found allowable.

Rule 909 Rejection of Claims

(a) If the invention is not considered patentable, in any manner, all

the claims will be rejected by the Examiner. If the invention is considered

patentable as claimed in certain of the claims, but unpatentable as

claimed in other claims, the latter claims will be rejected but will not

result in the refusal to grant a patent provided it is limited only to

claims that have not been rejected.

(b) In rejecting claims for want of novelty or for want of inventive step,

the Examiner must cite the references most relevant to the invention.

When a reference is complex or shows or describes inventions other than

that claimed by the applicant, the particular part relied on must be

designated as nearly as practicable. The pertinence of each reference,

if not obvious, must be clearly explained and each rejected claim

specified.

(c) Claims may be rejected for non-compliance with Sec. 35.1 and Sec.

36.1, IP CODE.

Rule 910 Unpublished, Withdrawn and Forfeited Applications Not Cited

Unpublished, withdrawn and forfeited applications as such will not be

cited as references.

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Rule 911 Reply by applicant

(a) After the action of the Examiner, if the same be adverse in any respect,

the applicant, if he persists in his application for a patent, must reply

thereto and may request re-examination or reconsideration, with or

without amendment.

(b) In order to be entitled to re-examination or reconsideration, the

applicant must make a request therefor in writing, and he must distinctly

and specifically point out the supposed errors in the Examiner’s action;

the applicant must respond to every ground of objection and rejection

in the prior Examiner’s action (except that request may be made that

objections or requirements as to form, not necessary to further

consideration of the claims, be held in abeyance until a claim is allowed),

and the applicant’s action must appear throughout to be a bona fide attempt

to advance the case to final action. The mere allegation that the Examiner

has erred will not be received as a proper reason for such reexamination

or reconsideration.

(c) In amending an application in response to a rejection, the applicant

must clearly point out the patentable inventiveness and novelty which

he thinks the claims present, in view of the state of the art disclosed

by the references cited or the objections made. He must also show how

the amendments avoid such references or objections.

Rule 912 Re-examination and Reconsideration

After response by applicant, the application will be re-examined and

reconsidered, and the applicant will be notified if claims are rejected,

or objections or requirements made, in the same manner as after the first

examination. Applicant may respond to such Examiner’s action, in the same

manner provided in these Regulations, with or without amendment, but any

amendments after the second Examiner’s action must ordinarily be

restricted to the rejection or to the objections or requirements made,

and the application will be again considered.

Rule 913 Final Rejection or Action

(a) On the second or any subsequent examination or consideration, the

rejection or other action may be made final, where upon applicant’s

response is limited to appeal, in the case of rejection of any claim or

to amendment as specified in these Regulations. Petition may be taken

to the Director in the case of objections or requirements not involved

in the rejection of any claim as provided in these Regulations. Response

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to a final rejection or action must include cancellation of, or appeal

from the rejection of, each claim so rejected; and, if any claim stands

allowable, compliance with any requirement or objection as to form.

(b) In making such final rejection, the Examiner shall repeat all grounds

of rejection then considered applicable to the claims in the case, clearly

stating the reasons therefor. The Examiner may not cite grounds that have

not been raised in the earlier communications to the applicant.

Rule 914 Conversion of Patent Applications or Applications for Utility

Model

(a) At any time before the grant or refusal of a patent, an applicant

for a patent, may, upon payment of the prescribed fee convert his

application into an application for registration of a utility model, which

shall be accorded the filing date of the initial application. An

application may be converted only once. (Sec. 110, IP CODE)

(b) At any time before the grant or refusal of a utility model registration,

an applicant for a utility model registration may, upon payment of the

prescribed fee, convert his application into a patent application, which

shall be accorded the filing date of the initial application. (Sec. 110,

IP CODE)

Rule 915 Prohibition against Filing of Parallel Applications

An applicant may not file two applications for the same subject, one for

utility model registration and the other for the grant of a patent whether

simultaneously or consecutively. (Sec. 111, IP CODE)

AMENDMENTS BY THE APPLICANT

Rule 916 Amendment by the Applicant

An applicant may amend the patent application during examination:

Provided, That such amendment shall not include new matter outside the

scope of the disclosure contained in the application as filed. (Sec. 49,

IP CODE)

Rule 917 Amendments after final action of the Examiner

(a) After final rejection or action, amendments may be made canceling

claims or complying with any requirement of form which has been made,

and amendments presenting rejected claims in better form for

consideration on appeal may be admitted; but any proceedings relative

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thereto, shall not operate to relieve the application from its condition

as subject to appeal or to save it from being considered withdrawn.

(b) Should amendments touching the merits of the application be presented

after final rejection, or after appeal has been taken, or when such

amendment might not otherwise be proper, they may be admitted upon a

showing of good and sufficient reasons why they are necessary and were

not earlier presented.

Rule 918 Amendment and Revision Required

The specification, claims and drawing must be amended and revised when

required, to correct inaccuracies of description and definition or

unnecessary prolixity, and to secure correspondence between the claims,

the specification and the drawing.

Rule 919 Amendment of Disclosure

No deletion or addition shall broaden the disclosure of an application

to include new matter after the filing date of the application. All

amendments to the specification, claims or drawing, and all additions

thereto made after the filing date of the application must conform to

at least one of them as it was as of the filing date. Matter not found

in either, involving a departure from or an addition to the original

disclosure, cannot be added to the application even though supported by

a supplemental oath, and can be shown or claimed only in a separate

application.

Rule 920 Amendment of Claims

The claims may be amended by canceling particular claims, by presenting

new claims or by amending the language of particular new claims (such

amended claims being in effect new claims). In presenting new or amended

claims, the applicant must point out how they avoid any reference or ground

of rejection of record which may be pertinent. Furthermore, in order to

facilitate the processing of the examination of the application, the

applicant shall indicate in his response which form part in the original

disclosure constitutes the basis of the amendments.

Rule 921 Manner of Making Amendments

Erasures, additions, insertions, or alterations of the papers and records

must not be made by the applicant. Amendments by the applicant are made

by filing a paper in accordance with these Regulations, directing or

requesting that specified amendments be made. The exact word or words

44

to be stricken out or inserted in the application must be specified and

the precise point indicated where the deletion or insertion is to be made.

The basis of the proposed amendments in the original application as filed

shall be indicated.

Rule 922 Entry and Consideration of Amendments

(a) Amendments are entered by the Bureau by making the proposed deletions

by drawing a line in red ink through the word or words cancelled, and

by making the proposed substitutions or insertions in red ink, small

insertions being written in at the designated place and larger insertions

being indicated by reference.

(b) Ordinarily all amendments presented in a paper filed while the

application is open to amendment are entered and considered provided that

amendments that do not comply with this rule may not be accepted. Untimely

amendatory papers may be refused entry and consideration in whole or in

part.

Rule 923 Amendments to the Drawing

No change in the drawing may be made except by permission of the Bureau.

Request for changes in the construction shown in any drawing may be made

only upon payment of the required fee. A sketch in permanent ink showing

proposed changes to become part of the record must be filed together with

the search request. The paper requesting amendments to the drawing should

be separate from other papers. The drawing may not be withdrawn from the

Bureau except for signature. Substitute drawings will not ordinarily be

admitted in any case unless required by the Bureau.

Rule 924 Amendment of Amendments

When an amendatory clause is to be amended, it should be wholly rewritten

and the original insertion cancelled, so that no interlineations or

deletions shall appear in the clause as finally presented. Matter

cancelled by amendment can be reinstated only by a subsequent amendment

presenting the cancelled matter as a new insertion.

Rule 925 Substitute specification

If the number or nature of the amendments shall render it difficult to

consider the case, or to arrange the papers for printing or copying, the

Examiner may require the entire specification or claims, or any part

thereof, to be rewritten. A substitute specification will ordinarily not

be accepted unless it has been required by the Examiner. A substitute

45

specification may be required within two months from grant of the patent

prior to publication of the patent in the IPO Gazette.

Rule 926 Numbering of Claims

The original numbering of the claims must be preserved through the

prosecution. When claims are cancelled, the remaining claims must not

be renumbered. When claims are added by amendment or substituted for

cancelled claims, they must be numbered by the applicant consecutively

beginning with the number next following the highest numbered claim

previously presented (whether entered or not). When the application is

ready for allowance, the Examiner, if necessary, will renumber the claims

consecutively in the order in which they appear or in such order as may

have been requested by applicant.

Rule 927 Petition from Refusal to Admit Amendment

From the refusal of the Examiner to admit an amendment, in whole or in

part, a petition will lie to the Director under these Regulations.

Rule 928 Interviews with the Examiners: when No Interview is Permitted

Interviews with the Examiner concerning an application pending before

the Bureau can be held only upon written request specifying the query

the applicant would want to propound and after payment of the required

fee, but in respect of which the Examiner has the jurisdiction to grant

interview or instead reply to the query in writing. The interview shall

take place within the premises of the Bureau and during regular office

hours as specified by the Examiner. All interviews or conferences with

Examiners shall be reduced to writing and signed by the Examiner and the

applicant immediately after the conference. Such writing shall form part

of the records of the Bureau. Interviews for the discussion of pending

applications shall not be held prior to the first official action thereon.

TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION

Rule 929 Withdrawal of Application for Failure to Respond within Time

Limit

(a) If an applicant fails to prosecute his application within the required

time as provided in these Regulations, the application shall be deemed

withdrawn.

(b) The time for reply may be extended only for good and sufficient cause,

and for a reasonable time specified. Any request for such extension must

46

be filed on or before the day on which action by the applicant is due.

The Examiner may grant a maximum of two extensions, provided that the

aggregate period granted inclusive of the initial period allowed to file

the response, shall not exceed six months from mailing date of the official

action requiring such response.

(c) Prosecution of an application to save it from withdrawal must include

such complete and proper action as the condition of the case may require.

Any amendment not responsive to the last official action shall not operate

to save the application from being deemed withdrawn.

(d) When action by the applicant is a bona fide attempt to advance the

case to final action, and is substantially a complete response to the

Examiner’s action, but consideration of some matter or compliance with

some requirements has been inadvertently omitted, opportunity to explain

and supply the omission may be given before the question of withdrawal

is considered.

(e) Prompt ratification or filing of a correctly signed copy may be

accepted in case of an unsigned or improperly signed paper.

Rule 930 Revival of Application

An application deemed withdrawn for failure to prosecute may be revived

as a pending application within a period of four months from the mailing

date of the notice of withdrawal if it is shown to the satisfaction of

the Director that the failure was due to fraud, accident, mistake or

excusable negligence.

A petition to revive an application deemed withdrawn must be accompanied

by(1) a showing of the cause of the failure to prosecute,(2) a complete

proposed response, and(3) the required fee.

An application not revived in accordance with this rule shall be deemed

forfeited.

Rule 931 Express Withdrawal of Application

An application may be expressly withdrawn by filing in the Bureau a written

declaration of withdrawal, signed by the applicant himself and the

assignee of record, if any, and identifying the application.

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PART 10 GRANT OF PATENT

Rule 1000 Grant of Patent

If the application meets the requirements of the IP CODE and these

Regulations, the office shall grant the patent: Provided, That all the

fees are paid on time. If the required fees for grant and printing are

not paid in due time, the application shall be deemed withdrawn (Sec.

50, IP CODE)

Rule 1001 Contents of Patent

The patent shall be issued in the name of the Republic of the Philippines

under the seal of the Office and shall be signed by the Director of Patents,

and registered together with the description, claims, and drawings, if

any, in books and records of the Office. (Sec. 53, IP CODE)

Rule 1002 Publication upon Grant of Patent

The grant of the patent together with other information shall be published

in the IPO Gazette within six months. (Sec. 52.1, IP CODE)

Rule 1003

Any interested party may inspect the complete description, claims, and

drawings of the patent on file with the Office. (Sec. 52.2, IP CODE)

Rule 1004 Term of Patent

The term shall be twenty (20) years from the filing date of the application.

However, a patent shall cease to be in force and effect if any prescribed

annual fees there for is not paid within the prescribed time or if the

patent is cancelled in accordance with the provisions of the IP CODE and

these Regulations.

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PART 11 ANNUAL FEES

Rule 1100 Annual Fees

The first annual fee on a patent shall be due and payable on the expiration

of four(4) years from the date the application is published, and on each

subsequent anniversary of such date. Payment may be made within three(3)

months before the due date. The obligation to pay the annual fees shall

terminate should the application be withdrawn, refused, or cancelled.

Rule 1101 Date Application is Published

The application is published on the date that the IPO Gazette containing

the applications is released for circulation. For example, if the IPO

Gazette containing the application is released for circulation on January

15, 1999, then the first annual fee shall be due and payable on January

15, 2003.

Rule 1102 Non-payment of Annual Fees; Grace period

If any annual fee is not paid within the prescribed time, a notice of

non-payment shall be published in the IPO Gazette. After publication,

the notice shall also be immediately mailed to the patent owner, applicant,

or the resident agent.

Within a grace period of six (6) months from the publication of the notice

of non-payment in the IPO Gazette, the annual fee plus the prescribed

surcharge for delayed payment and the publication fee must be paid in

full. Upon failure to pay the annual fees, surcharges, and the publication

fee within the grace period, a notice that the application is deemed

withdrawn or that the patent considered lapsed as of the date following

the expiration of the original period within which the annual fee was

due, shall be issued and published in the IPO Gazette and recorded in

the appropriate register of the Office.

49

PART 12 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT

CHAPTER 1 RECORDING OF ASSIGNMENT OF LETTERS PATENT, AND OF OTHER

INSTRUMENTS AFFECTING TITLE TO PATENTS, INCLUDING LICENSES

Rule 1200 Form of Assignment of a Patent or of An application for a Patent

To be acceptable for recording, the assignment:

(a) Must be in writing and if in a language other than English or Filipino,

the document must be accompanied by an English translation;

(b) Must be acknowledged before a notary public or other officer

authorized to administer oaths and perform other notarial acts, and be

certified under the hand and official seal of the said notary or other

officer;

(c) Must be accompanied by an appointment of a resident agent, if the

assignee is not domiciled in the Philippines;

(d) So that there can be no mistake as to the patent or application intended,

must identify the letters patent involved by number and date, giving the

name of the patentee and the title of the invention as set forth in the

patent; in the case of an application for patent, the application number

and filing date of the application should be stated, giving also the name

of the applicant, and the title of the invention, set forth in the

application, but if an assignment is executed concurrently with or

subsequent to the execution of the application but before the application

is filed, or before its application number is ascertained, it should

adequately identify the application, by its date of execution and name

of the applicant, and the title of the invention; and

(e) Must be accompanied by the required recordal and publication fees.

Rule 1201 Form of Other Instruments Affecting the Title to a Patent or

Application, Including Licenses

In order to be acceptable for recording, the form of such other instrument,

including licenses, must conform with the requirements of the preceding

rule.

Rule 1202 Assignment and Other Instruments to be Submitted in Duplicate

The original document together with a signed duplicate thereof, shall

be submitted. If the original is not available, an authenticated copy

thereof in duplicate may be submitted instead. After recording, the Office

shall retain the signed duplicate or one of the authenticated copies,

as the case may be, and return the original or the other authenticated

copy to the party who filed the same, with a notation of the fact of

50

recording.

Rule 1203 Date of Recording of Assignment or Other Instrument or License

Considered Its Date of Filing

The date of recording of an assignment or other instrument is the date

of its receipt at the Office in proper form and accompanied by full payment

of the required recording and publication fees.

Such instruments shall be void as against any subsequent purchaser or

mortgagee for a valuable consideration and without notice unless it is

recorded in the Office within three months from the date thereof, or prior

to the subsequent purchase or mortgage. (Sec. 106, IP CODE) Notice of

the recording shall be published in the IPO Gazette.

Rule 1204 Letters patent may be Issued to the Assignee in Place of the

Applicant

In the case of the assignment of a pending application for patent, the

letters patent may be issued to the assignee of the applicant, provided

the assignment has been recorded in the Office before the actual issue

of the patent.

Rule 1205 Action may be taken by assignee of record in any proceeding

in the Office

Any action in any proceeding in the Office which may or must be taken

by a patentee or applicant may be taken by the assignee, provided the

assignment has been recorded.

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CHAPTER 2 SURRENDER, CORRECTION AND AMENDMENT OF PATENT

Rule 1206 Surrender of Patent

(a) The owner of the patent, with the written and verified consent of

all persons having grants or licenses or other right, title or interest

in and to the patent and the invention covered thereby, which have been

recorded in the Office, may surrender his patent, any claim or claims

forming part thereof to the Office for cancellation. The petition for

cancellation shall be in writing, duly verified by the petitioner and

if executed abroad shall be authenticated. (Sec. 56, IP CODE)

(b) Any person may give notice to the Office of his opposition to the

surrender of a patent, and if he does so, the Bureau shall notify the

proprietor of the patent and determine the question.

(c) If the Office is satisfied that the patent may properly be surrendered,

it may accept the offer and, as from the day when notice of his acceptance

is published in the IPO Gazette, the patent shall cease to have effect,

but no action for infringement shall lie and no right compensation shall

accrue for any use of the patented invention before that day for the

services of the government. (Sec. 56, IP CODE)

Rule 1207 Correction of Mistakes of the Office

Upon written petition, in duplicate, of the patentee or assignee of record,

and upon tender to the Office of the copy of the patent issued to the

patentee, the Director shall have the power to correct without fee any

mistake in a patent incurred through the fault of the Office when clearly

disclosed by the records thereof, to make the patent conform to the records.

(Sec. 57, IP CODE)

Rule 1208 Correction of Mistake in the Application

On request of any interested person and payment of the prescribed fee,

the Director is authorized to correct any mistake in the patent of a formal

and clerical nature, not incurred through the fault of the Office. (Sec

58, IP CODE)

Rule 1209 Changes in Patent

The owner of the patent shall have the right to request the Bureau to

make changes in the patent in order to:

(a) Limit the extent of the protection conferred by it;

(b) Correct obvious mistakes or to correct clerical errors; and

52

(c) Correct mistakes or errors, other than those referred to in letter

(b), made in good faith; Provided, That were the change would result in

broadening of the extent of the protection conferred by the patent, no

request may be made after the expiration of two years from the grant of

a patent and the change shall not affect the rights of any third party

which has relied on the patent, as published.

Rule 1210 Form and Publication of Amendment or Corrections

An amendment or correction of a patent shall be accomplished by a

certificate of such amendment or correction, authenticated by the seal

of the Office and signed by the Director, which certificate shall be

attached to the patent. Notice of such amendment or correction shall be

published in the IPO Gazette and copies of the patent furnished by the

Office shall include a copy of the certificate of the amendment or

correction. (Sec. 60, IP CODE)

Rule 1212 Assignment of Inventions

An assignment may be of the entire right, title or interest in and to

the patent and the invention covered thereby, or of an undivided share

of the entire patent and invention in which event the parties become joint

owners thereof. An assignment may be limited to a specified territory.

(Sec. 104, IP CODE)

Rule 1213 Rights of Joint Owners

If two or more persons jointly own a patent and the invention covered

thereby either by the issuance of the patent in their joint favor or by

reason of the assignment of an undivided share in the patent and invention

or by reason of the succession in title to such share, each joint owner

shall be entitled to personally make, use, sell or import the invention

for his own profit: Provided, however, That neither of the joint owners

shall be entitled to grant licenses or to assign his right, title or

interest or part thereof without the consent of the other owner or owners,

or without proportionately dividing the proceeds with the other owner

or owners. (Sec. 107, IP CODE)

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PART 13 PETITIONS AND APPEAL

Rule 1300 Nature of the Function of Examiners

The function of determining whether or not an application for grant of

patent should be allowed or denied under the facts disclosed in the

application and in the references consulted by the Examiner and under

the applicable law (statutory and decisional), is a quasi-judicial

function and involves the exercise of judicial discretion.

Thus, with respect to such function, the Director cannot lawfully exercise

direct control, direction and supervision over the Examiners but only

general supervision, exercised through a review of the recommendation

they may make for the grant of patent and of other actions, and through

a review of their adverse decisions by petition or appeal.

Rule 1301 Petition to the Director to Question the Correctness of the

Action of an Examiner on a Matter Not Subject to Appeal

Petition may be filed with the Director from any repeated action or

requirement of the Examiner which is not subject to appeal and in other

appropriate circumstances. Such petition, and any other petition which

may be filed, must contain a statement of the facts involved and the point

or points to be reviewed. Briefs or memoranda, if any, in support thereof

should accompany or be embodied in the petition. The Examiner, as the

case may be, may be directed by the Director to furnish a written statement

setting forth the reasons for his decision upon the matter averred in

the petition, supplying a copy thereof to the petitioner. The mere filing

of a petition will not stay the maximum period of six months counted from

the mailing date of the Examiner’s action subject of the appeal for

replying to an Examiner’s action nor act as a stay of other proceedings.

Rule 1302 Appeals to the Director

Every applicant for the grant of a patent may, upon the final refusal

of the Examiner to grant the patent, appeal the matter to the Director.

Appeal may also be taken to the Director from any adverse action of the

Examiner in any matter over which these Regulations give original

jurisdiction to the Examiner. A second adverse decision by the Examiner

on the same grounds may be considered as final by the applicant, petitioner,

or patentee for purposes of appeal.

Rule 1303 Effect of a Final Decision of an Examiner which is Not Appealed

A final decision of an Examiner which is not appealed to the Director

within the time permitted, or, if appealed, the appeal is not prosecuted,

54

shall be considered as final to all intents and purposes, and shall have

the effect of res judicata in respect of any subsequent action on the

same subject matter.

If an application is considered abandoned for failure of the applicant

to respond to an action of the Examiner on the merits, the order declaring

the application as withdrawn which has become final shall likewise have

the effect of res judicata.

Rule 1304 Time and Manner of Appeal

Any petition or appeal must be taken by filing the petition in duplicate

or a notice of appeal, as the case may be, and payment of the required

fee within two months from the mailing date of the action subject of the

petition or appeal, must specify the various grounds upon which the

petition or appeal is taken, and must be signed by the petitioner or

appellant or by his attorney of record. The period herein provided shall,

in no case, exceed the maximum period of six months from the mailing date

of the action subject of the petition or appeal.

Rule 1305 Appellant’s Brief Required

In case of an appeal, the appellant shall, within two months, without

extension, from the date of filing of the notice of appeal, file a brief

of the authorities and arguments on which he relies to maintain his appeal.

On failure to file the brief within the time allowed, the appeal shall

stand dismissed.

Rule 1306 The Examiner’s Answer

The Examiner shall furnish a written statement in answer to the petition

or appellant’s brief, as the case may be, within two months from the order

of the Director directing him to submit such statement. Copy of such

statement shall be served on the petitioner or appellant by the Examiner.

Rule 1307 Appellant’s Reply

In case of an appeal, the appellant may file a reply brief directed only

to such new points as may be raised in the Examiner’s answer, within one

month from the date copy of such answer is received by him.

Rule 1308 Appeal to the Director General

The decision or order of the Director shall become final and executory

fifteen days after receipt of a copy thereof by the appellant unless within

the said period, a motion for reconsideration is filed with the Director

or an appeal to the Director General has been perfected by filing a notice

55

of appeal and payment of the required fee.

Only one motion for reconsideration of the decision or order of the

Director shall be allowed.

Rule 1310 Director’s Comment

The Director shall submit within one month his comments on the appellant’s

brief if so required by the Director General.

Rule 1311 Appeal to the Court of Appeals

The decision of the Director General shall be final and executory unless

an appeal to the Court of Appeals is perfected in accordance with the

Rules of Court applicable to appeals from decisions of Regional Trial

Courts. No motion for reconsideration of the decision or order of the

Director General shall be allowed.

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FINAL PROVISIONS

Section 1 Correspondence

The following regulations shall apply to correspondence between

patentee/applicants and the Office or the Bureau:

(a) Business to be transacted in writing. All business with the Office

or Bureau shall be transacted in writing. Actions will be based

exclusively on the written record. No attention will be paid to any alleged

oral promise, stipulation, or understanding.

(b) Personal attendance of applicants and other persons unnecessary.

Unless otherwise provided, the personal attendance of applicants and

other persons at the Office is unnecessary. Their business can be

transacted by correspondence.

(c) Correspondence to be in the name of the Director of Patents. All Office

letters with respect to matters within the jurisdiction of the Bureau

must be sent in the name of the Director of Patents. All letters and other

communications intended with respect to such matters must be addressed

to him and if addressed to any other officer, they will ordinarily be

returned.

(d) Separate letter for each case. In every case, a separate letter shall

be written in relation to each distinct subject of inquiry.

(e) Letter relating to applications. When a letter concerns an application

it shall state the name of the applicant, the title of the invention,

the application number and the filing date of the application.

(f) Letters relating to granted patents. When the letter concerns a

granted patent, it shall state the name of the patentee, the title of

the invention, the patent number and date of issuance.

(g) Subjects on which information cannot be given. The Office cannot

respond to inquiries as to the newness or inventive step of an alleged

invention desired to be patented in advance of the filing of an application

for a patent.

On the propriety of making an application for the grant of patent, the

applicant must judge for himself or consult an attorney-at-law or patent

agent. The Office is open to him, and its records pertaining to all patents

granted may be inspected either by himself or by any attorney or agent

he may call to his aid. Further than this the Office can render him no

assistance until his application comes regularly before it in the manner

prescribed by law and by these Regulations. A copy of the law, rules,

or circular of information, with a section marked, set to the individual

making an inquiry of the character referred to, is intended as a respectful

answer by the Office.

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Examiners’ digests are not open to public inspection.

The foregoing shall not, in any way, be interpreted to prohibit the Office

from undertaking an information dissemination activity in whatever

format, to increase awareness on the patent law.

Section 2 Fees and charges to be prepaid; Fees and charges payable in

advance

Express charges, freight, postage, telephone, telefacsimile including

cost of paper and other related expenses, and all other charges on any

matter sent to the Office must be prepaid in full. Otherwise, the Office

shall not receive nor perform any action on such matters.

The filing fees and all other fees and charges payable to the Office shall

be collected by the Office in advance of any service to be rendered.

Section 3 Implementation

In the interest of the service, until the organization of the Bureau is

completed, the functions necessary to implement these Regulations shall

be performed by the personnel of the former Bureau of Patents, Trademarks

and Technology Transfer as may be designated by the Director General upon

the recommendation of the Chiefs of the Chemical Examining Division and

the Mechanical and Electrical Examining Division of the Bureau of Patents,

Trademarks and Technology Transfer, or the Director of Patents if one

has been appointed and qualified or the Caretaker or the Officer-in-Charge

as the Director General may designate.

Section 4 Repeals

All rules and regulations, memoranda, circulars, and memorandum

circulars and parts thereof inconsistent with these Regulations

particularly the Rules of Practice in Patent Cases, as amended, are hereby

repealed; Provided that all applications for patents pending in the Bureau

of Patents, Trademarks and Technology Transfer shall be proceeded with

and patents thereon granted in accordance with the Acts under which said

applications were filed, and said Acts are hereby continued to be enforced,

to this extent and for this purpose only.

Section 5 Separability

If any provision in these Regulations or application of such provision

to any circumstance is held invalid, the remainder of these Regulations

shall not be affected thereby.

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Section 6 Furnishing of Certified Copies

Mr. Eduardo Joson, Records Officer II, is hereby directed to immediately

file three certified copies of these Regulations with the University of

the Philippines Law Center, and, one 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.

Section 7 Effectivity

These rules and regulations shall take effect fifteen days after

publication in a newspaper of general circulation.