Règles des Philippines sur les demandes PCT, Philippines

PHILIPPINE RULES ON PCT APPLICATIONS

PART 1

GENERAL PROVISIONS

Rule 1. Title.- These rules shall be known as the Philippine Rules on PCT Applications

or “PRo-PCT”.

Rule 2. Definitions. - Unless otherwise specified, the following terms and acronyms

shall be understood as follows:

(a) “Administrative Instructions” means that body of instructions for operating under the

Patent Cooperation Treaty referred to in PCT Rule 89;

(b) “designated Office” means a national patent office or intergovernmental organization of

or acting for the State designated by the applicant under Chapter I of the Treaty;

(c) “designated State” refers to the State in which protection for the invention is desired

on the basis of the international application and which is designated under Chapter I of

the Treaty;

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

Philippines;

(e) “elected Office” means a national patent office or intergovernmental organization of or

acting for the State elected by the applicant under Chapter II of the Treaty;

(f) “elected State” refers to the State in which protection for the invention is desired on the

basis of the international application and which has been elected under Chapter II of

the Treaty;

(g) “IB” and “International Bureau” mean the International Bureau of the World Intellectual

Property Organization as referred to in PCT Article 2(xix);

(h) “International Application” and “PCT Application” mean an application filed under the

Treaty;

(i) “International Searching Authority” or “ISA” and “International Preliminary Examining

Authority” or “IPEA” mean a national patent office or intergovernmental organization as

appointed under the Treaty which processes international applications as prescribed

by the Treaty and PCT Regulations;

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

Code of the Philippines;

(k) “IPO” or “Office” means the Intellectual Property Office of the Philippines;

(l) “IPO Fee Structure” means the rules and regulations establishing the fees and charges

of the Intellectual Property Office of the Philippines;

(m) “PCT” and “Treaty” mean the Patent Cooperation Treaty;

(n) “PCT-EASY” means the software made available by the International Bureau for

facilitating the preparation of the request part of an international application, and

printing thereof, for filing together with a computer diskette prepared using that

software, containing a copy in electronic form of the data contained in the request and

of the abstract;

(o) “PCT Regulations” means the set of rules, referred to in PCT Article 58 and annexed to

the Treaty referred to as the Regulations Under the PCT;

(p) “Priority Date” for the purposes of computing time limits under the PCT is defined in

PCT Article 2(xi) as follows:

(i) where the international application contains a priority claim under PCT

Article 8, the filing date of the application whose priority is so claimed;

(ii) where the international application contains several priority claims

under PCT Article 8, the filing date of the earliest application whose priority

is so claimed;

(iii) where the international application does not contain any priority claim

under PCT Article 8, the international filing date of such application;

(q) “receiving Office” means a national patent office or intergovernmental organization with

which the international application has been filed;

Other terms and expressions not defined in this rule are to be taken in the sense

of the Treaty and PCT Regulations.

Rule 3. Application of the PCT and PCT Regulations. – In all matters not specifically

provided for under these Rules, the provisions of the Treaty, PCT Regulations and PCT

Administrative Instructions shall apply in the processing of an international application during

the international phase of the application. In the event of conflict between these rules and

those of the PCT, the provisions of the latter shall apply.

The international phase covers the period from the filing of the application in

accordance with the PCT until the application enters the national phase.

Rule 4. Effect of an International Application. - 4.1. An international application,

which has been accorded an international filing date in accordance with the Treaty and

PCT regulations, shall have the effect of a national application for a patent or utility model,

respectively, regularly filed with the Intellectual Property Office as of the international filing

date, which date shall be considered to be the actual filing date in the Philippines. (PCT Article

11(3))

4.2. Subject to Review by the IPO under Rule 36, an international application that is

withdrawn or considered withdrawn under the Treaty and PCT Regulations, before the

applicant has entered the national phase in the Philippines as provided in Part 3 of these

rules, that international application is likewise withdrawn or considered withdrawn in the

Philippines. (PCT Article 24)

Rule 5. Seeking Two (2) Kinds of Protection; Prohibition Against Filing of Parallel

Applications. - In respect of the Philippines as a designated or elected State, an applicant

cannot seek two (2) kinds of protection for the same subject, one for utility model

registration and the other for the grant of a patent whether simultaneously or consecutively.

(PCT Article 43, IP Code Section 111)

Rule 6. Delivery Service. – Where the applicant sends a document or letter through

mail and that document or letter is lost or reaches the IPO after the expiration of the

applicable time limit under the Treaty and PCT Regulations and these Rules, PCT Rules

82.1(a) to (c) shall apply provided that the delivery service used is registered mail by a postal

authority.

Rule 7. Appointment of Resident Agent or Representative. – (a) An applicant who is

not a resident of the Philippines shall appoint and maintain an agent or representative

residing in the Philippines upon whom notices or processes for judicial or administrative

procedure may be served relating to the international application filed with the IPO as a

receiving, designated or elected Office. An applicant who is a resident of the Philippines may

likewise appoint and maintain an agent or representative residing in the Philippines for the

same purpose. The list of registered resident agents or representatives is available in the IPO

website.

(b) Where the international application is filed with the IPO as a receiving Office, the

appointment of an agent must be effected in the Request form, signed by all applicants, or in

a separate power of attorney submitted to the IPO where the Request form is signed by the

appointed agent in accordance with PCT Rule 90.4. The separate power of attorney does not

require legalization or notarization.

(c) For purposes of the procedure before the IPO as a designated or elected Office, the

manner of appointing an agent or representative shall comply with the requirements

prescribed in the implementing rules and regulations of the IP Code.

PART 2

INTERNATIONAL PHASE

Rule 8. The IPO as a Receiving Office. – 8.1. The IPO shall act as a Receiving

Office only for applicants who are residents or nationals of the Philippines. (PCT Article

2 (xii) and (xv), PCT Article 10, PCT Rule 19)

8.2. The IPO, when acting as a Receiving Office, will be identified by the full

title “Philippine Receiving Office” or by the abbreviation “RO/PH.” (Section 107(b) of the

PCT Administrative Instructions)

8.3. Without prejudice to the national security and interests of the Republic of the

Philippines, the IPO shall perform all acts connected with the discharge of duties of a

Receiving Office under the Treaty and PCT Regulations. The functions of the IPO as a

Receiving Office include:

(1) According of international filing dates to international applications fulfilling the

requirements of PCT Article 11(1) and in particular, PCT Rule 20;

(2) Checking that international applications meet the standards for format and

content of PCT Article 14(1) and in particular, PCT Rules 9, 26, 29.1, 37, 38, 91,

and portions of PCT Rules 3 through 11;

(3) Assessing, collecting, and transmitting fees due for processing international

applications (PCT Rules 14, 15, 16, 16bis);

(4) Transmitting the record and search copies to the IB and ISA, respectively (PCT

Rules 22 and 23); and

(5) Transmitting the international application to the IB for processing, where the

IPO is not the competent Receiving Office as defined under PCT Rule 19. (PCT

Rule 19.4)

Rule 9. International Search and International Searching Authority. – 9.1. An

international application shall be the subject of an international search, which shall be carried

out by an ISA. The objective of the international search is to discover relevant prior art. (PCT

Article 15 (1) and (2))

9.2. The Director General shall specify one or more competent ISAs for international

applications filed with the IPO and, subject to any required acceptance or compliance with

applicable requirements, the IPO shall publish in its website a list of those competent ISAs.

(PCT Article 16(2), PCT Rules 35.1 and 35.2)

9.3. The applicant shall, in his Request Form, indicate his choice of the competent ISA.

(PCT Rule 4.14bis)

Rule 10. International Preliminary Examination and International Preliminary

Examining Authority. - 10.1. An international application may be the subject of an

international preliminary examination which shall be carried out by an IPEA. (PCT Article

32(1))

10.2. The objective of the international preliminary examination is to formulate a

preliminary and non-binding opinion on the questions whether the claimed invention appears

to be novel, to involve an inventive step (to be non-obvious) and to be industrially applicable.

(PCT Article 33(1))

10.3. The Director General shall specify one or more competent IPEAs for international

applications filed with the IPO and, subject to any required acceptance or compliance with

applicable requirements, the IPO shall publish in its website a list of those competent IPEAs..

(PCT Rule 59.1(a))

10.4 Where there are two or more competent IPEAs for applications filed with the IPO,

the applicant shall, in his Demand Form, indicate his choice of the competent IPEA.

Rule 11.. Language Prescribed by the Receiving Office. – The language accepted by

the Philippines receiving Office for the filing of international application is Filipino or English,

provided that it is sufficient that the description and claims be in Filipino or English for the

purposes of according an international filing date under PCT Article 11(1). (PCT Rules 12.1,

20.4(c) and 48.3(a))

Rule 12. Translation for the Purposes of International Search. - (a) Where the

international application is filed in Filipino, the applicant shall, within one (1) month from the

date of receipt of the international application by the IPO, furnish to the Office a translation of

the international application into English in accordance with PCT Rule 12.3 (a) and (b).

(b) If the English translation is not furnished within the time limit under paragraph (a),

the Office shall invite the applicant to furnish it within one (1) month from the date of invitation

or two (2) months from the date of receipt of the international application by the IPO,

whichever expires later. (PCT Rule 12.3(c))

(c) If the applicant does not furnish the English translation within the applicable time

limit under paragraph (b), the international application shall be considered withdrawn and the

IPO as a receiving Office shall so declare in accordance with PCT Rule 12.3(d).

(d) The IPO shall promptly furnish the IB and the ISA a copy of the English translation.

Rule 13. Documents and Correspondence. – (a) Any paper submitted by the applicant,

other than the international application itself, must, if not itself in the form of a letter, be

accompanied by a letter identifying the international application to which it relates and must

be signed by the applicant. (PCT Rule 92.1(a))

(b) Correspondence intended for the applicant shall be sent to the agent appointed

under Rule 7. (PCT Rules 90.1(a) and 90.3(a) and Section 108 of the PCT Administrative

Instructions)

Rule 14. Keeping of Records and Files. - The IPO shall keep the records relating to the

international application or purported international application for at least (ten) 10 years from

the international filing date or, where no international filing date is accorded, from the date of

receipt of the purported application. (PCT Rule 93.1)

Rule 15. The International Application. - An international application shall contain a

request, a description, one or more claims, one or more drawings (where required), and

an abstract. (PCT Article 3(2))

Rule 16. The Request. - The request shall be made in accordance with PCT Rules 3

and 4. Copies of the Request form are available at the IPO.

The Request Form may be made using PCT-EASY software made available by the IB,

in which case, the applicant is required to submit the Request as a computer print-out

together with a computer diskette containing a copy of the electronic form of the data

contained in the Request and of the abstract prepared using that software. (PCT Rule 89ter and

Section 102bis of the PCT Administrative Instructions)

Rule 17. The Description. – The description shall disclose the invention in a

manner sufficiently clear and complete for the invention to be carried out by a person

skilled in the art. (PCT Article 5, PCT Rule 5.1(a)(v))

The requirements as to the format and content of the description are set forth, in

particular, in PCT Rules 5, 9, 10, and 11, and Section 204 of the PCT Administrative

Instructions.

Rule 18. The Claims. - The claim or claims shall define the matter for

which protection is sought. Claims shall be clear and concise. They shall be fully supported

by the description. (PCT Article 6, PCT Rule 6)

The requirements as to the format and content of claims are set forth, in

particular, in PCT Rules 6, 9, 10, and 11.

Rule 19. The Drawings. - Drawings which are necessary for the understanding of the

invention must be part of the international application as originally filed in order to maintain

the international filing date during the national stage. If drawings are referred to in the

international application but they are missing upon filing, the IPO shall give the applicant

thirty (30) days from the date of receipt of the international application to submit the drawings.

If the missing drawings are received within the thirty-day period, the international filing date

shall be the date on which such drawings are received. If such drawings are not timely

received, all references to drawings in the international application shall be considered nonexistent.

(PCT Article 7, 14(2), PCT Rule 26.2)

The physical requirements for drawings are set forth in PCT Rule 11.3.

Rule 20. The Abstract. - The abstract shall merely serve for technical information. Lack

of an abstract upon filing of an international application will not affect the granting of

a filing date. If the abstract is missing, the IPO shall invite the applicant to submit the same

within one (1) month from the date of the invitation and the IPO shall notify the ISA

accordingly. (PCT Article 3(3), 14(b), PCT Rule 26.1, 26.2, 38)

The requirements as to the format and content of the abstract are set forth in PCT Rule

8.

Rule 21. Priority Claim. – Any declaration referred to in Article 8(1) (“priority claim”)

shall be indicated in the Request Form as set forth in PCT Rule 4.10.

Any correction or addition on the priority claim shall be made in accordance with PCT

Rule 26bis.

Rule 22. Physical Requirements. – 22.1. An international application and each of the

documents that may be referred to in the checklist of the Request Form shall be filed in one

(1) copy only. (PCT Rule 11.1)

22.2. All sheets of the international application must be on A4 size paper (29.7 cm x 21

cm) which shall be flexible, strong, white, smooth, non-shiny, and durable. (PCT Rules 11.3,

11.5)

22.3. In order to facilitate processing of the international applications, attention of

applicants is directed to the other physical requirements for international application which are

set forth in PCT Rule 11 and Section 207 of the PCT Administrative Instructions.

Rule 23. Who May File An International Application. - A resident or national of the

Philippines may file an international application. If there are two or more applicants, the right

to file an international application shall exist if at least one of them is a resident or national of

the Philippines. (PCT Article 9(1), PCT Rule 19.2(i))

Rule 24. Where to File an International Application. – 24.1. A resident or national of

the Philippines may file an international application with the IPO or the IB. (PCT Rule 19.1)

24.2. An international application may be filed directly with the IPO or through

registered mail by postal authority.

Rule 25. According of International Filing Date and its Effect. – 25.1. The IPO, as the

competent receiving Office, shall accord as the international filing date the date of receipt of

the international application, provided that, at the time of receipt:

(1) at least one applicant is a resident or national of the Philippines;

(2) the international application is in the Filipino or English language; and

(3) the international application contains at least the following elements:

(i) an indication that it is intended as an international application;

(ii) the name of the applicant;

(iii) a part which on the face of it appears to be a description; and

(iv) a part which on the face of it appears to be a claim or claims. (PCT

Article 11(1))

25.2. If the IPO finds that the applicant or not one of the applicants is a resident or

national of the Philippines or that the language is neither Filipino nor English, the international

application shall be treated and transmitted to the IB in accordance with PCT Rule 19.4,

subject to payment of the transmittal fee under PCT Rule 14.

25.3. If the IPO finds that the international application did not, at the time of receipt,

contain the elements listed in Rule 25.1 item (3), it shall invite the applicant to file the required

correction within thirty (30) days from the date of the invitation. If the applicant complies with

the invitation, the IPO shall accord as the international filing date the date of receipt of the

required correction. If the applicant does not comply with the invitation, the IPO shall promptly

in accordance with PCT Rule 20.7(i) notify the applicant that his application is not and will not

be treated as an international application and shall indicate the reasons therefor. (PCT Article

11(2)(a) and (b))

Rule 26. Transmittal of the International Application. – 25.1. The IPO shall transmit the

“record copy” of the international application to the IB in accordance with PCT Rule 22;

26.2. The IPO shall transmit the “search copy” of the international application to the

competent ISA after payment of the search fee by the applicant in accordance with PCT Rule

23. (PCT Article 12(1))

26.3. The Director General may prohibit or restrict the transmittal 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. The Director General may apply other measures, as provided under PCT

Article 27(8), that will not prevent the transmittal of the record copy and search copy but will

restrict the contents of the transmittals. (PCT Rule 22.1, PCT Article 27(8))

Rule 27. The International Publication and its Effect. – 27.1. In accordance with PCT

Article 21 and PCT Rule 48, the IB shall publish the international application promptly after

the expiration of eighteen (18) months from the priority date of the application. However, the

applicant may ask the IB to publish his international application any time before the

expiration of eighteen (18) months from the priority date in accordance with PCT Rule 48.4.

27.2. In accordance with PCT Article 29(1), as far as the protection of any rights of the

applicant under Section 46 of the IP Code in the Philippines is concerned, the international

publication in English of an international application shall have the same effect as a

publication in the IPO Gazette under Section 44 of the IP Code and its implementing rules

and regulations provided that notice of the international publication and copy of the

international application has been transmitted by the applicant to the actual unauthorized user

of the invention claimed in the international application pursuant to Sec. 46.2 of the IP Code.

(PCT Article 29(1))

27.3. If the language in which the international publication has been effected is a

language other than English, the protection of any right of the applicant under Section 46 of

the IP Code in the Philippines shall be applicable only from such time as a translation into

English has been published in the IPO Gazette under Section 44 of the IP Code and its

implementing rules and regulations, and, such translation into English has been transmitted

by the applicant to the actual unauthorized user of the invention claimed in the international

application pursuant to Section 46.2 of the IP Code. (PCT Article 29(2))

27.4. Where the international publication has been effected, on the request of the

applicant, before the expiration of eighteen (18) months from the priority date, the rights

provided for under Sec. 46 of the IP Code shall be applicable only from the expiration of

eighteen (18) months from the priority date subject to the conditions mentioned in the

preceding paragraphs. (PCT Article 29(3))

Rule 28. Demand for International Preliminary Examination. – 27.1. On filing of a

demand under PCT Article 31, the international application shall be the subject of an

international preliminary examination.

28.2. The demand for international preliminary examination shall be filed directly by the

applicant with the competent IPEA prior to the expiration of whichever of the following

periods expires later:

a) 3 months from the date of transmittal to the applicant of the

international search report (or of the declaration referred to in PCT Article 17(2)(a) that

no international search report will be established) and the written opinion by the ISA;

or

b) 22 months from the priority date. (PCT Rule 54bis)

28.3. In accordance with PCT Article 31 and PCT Rules 57 and 58, the demand shall

be subject to the payment by the applicant of the prescribed fees directly to the IPEA within

one (1) month from the date on which the demand was submitted. (PCT Rules 57, 58, and 58bis)

Copies of the Demand Form are available at the IPO.

Rule 29. Manner of Making Corrections. – Any correction offered to the IPO as a

receiving Office may be stated in a letter addressed to the IPO if the correction is of such

a nature that it can be transferred from the letter to the record copy without adversely

affecting the clarity and the direct reproducibility of the sheet on to which the

correction is to be transferred; otherwise, the applicant shall be required to submit the

missing requirement or a replacement sheet containing the correction accompanied by a

letter indicating the differences between the replaced sheet and the replacement sheet. (PCT

Rule 26.4)

Rule 30. Delays in Meeting Time Limits. Delays in meeting time limits during

international processing of international applications may only be excused as provided in PCT

Rule 82.

Rule 31. Recording of Changes. - Before the expiration of the time limit referred to in

PCT Articles 22(1) and 39(1)(a), the IPO may receive from the applicant a request for the

recording of a change in the person, name, residence, nationality or address of the applicant

or a change in the person, name or address of the inventor, the agent or the common

representative. The IPO shall notify the IB of the request for recording a change. (PCT Rule

92bis.1(a))

Rule 32. Withdrawals. - The IPO may receive from the applicant notice of withdrawal

of the international application, any designation, or priority claims in accordance with PCT

Rule 90bis(1), 90bis(2), 90bis(3).

Withdrawal of a demand or any election shall be made directly to the IB in accordance

with PCT Rule 90bis.4.

Rule 33. Certified Copies of the International Application and Priority Document. - (a)

The applicant may request the IPO to prepare a certified copy of the international application

as filed and of any corrections thereto upon payment of the appropriate fee. (PCT Rule 20.9)

(b) Where the priority document is issued by the IPO, the applicant may, pursuant to

PCT Rule 17.1(b), request the IPO to prepare and transmit the priority document to the IB.

Such request shall be made not later than sixteen (16) months after the priority date and shall

be subject to payment of a fee.

PART 3

NATIONAL PHASE

Rule 34. The IPO as a Designated or Elected Office. – 34.1. The IPO, when acting as

a Designated or Elected Office for international processing will be identified by the full title

“Philippine Designated Office” or by abbreviation “DO/PH” and “Philippine Elected Office” or

by abbreviation “EO/PH.” (Section 107(b) of the PCT Administrative Instructions)

34.2. The major functions of the IPO in respect to international applications in which

the Philippines has been designated or elected, shall include:

(1) Receiving various notifications throughout the international phase; and

(2) Accepting for national phase examination international applications which

comply with Part 3 of these rules.

Rule 35. Entry Into National Phase. – (a) An international application enters the

national phase when the applicant furnishes IPO a copy of the international application in

English (unless already transmitted by the IB), or, if the application was filed in another

language, its English translation not later than thirty (30) months from the priority date

based on PCT Article 22 (1) and PCT Article 39 (1) (a).

Subject to the payment of an extension fee for late entry equal to fifty percent (50%) of

the filing fee prescribed in the IPO Fee Structure, the entry into the national phase may be

extended by one (1) month.

(b) The filing fee prescribed in the IPO fee structure shall be paid within one (1) month

from the date of entry into the national phase; provided that an international application which

claims the priority of an earlier Philippine national application shall be exempt from payment

of the filing fee. If the applicant fails to pay the filing fee as herein provided, the application

shall be deemed withdrawn in the Philippines.

(c) The translation of the international application, as filed, referred to in paragraph (a)

shall include a translation into English of:

(1) the description;

(2) the claims as filed and, where applicable, as amended under PCT Article 19;

(3) any text matter of the drawings;

(4) the abstract; and

(5) where applicable, amendments to the description, claims or drawings under

PCT Article 34, as contained in the annexes to the international preliminary

examination report.

If the translation of the amendments under PCT Article 19 or PCT Article 34, as the

case may be, is not included, those amendments will be considered cancelled.

(d) During the national phase, and at anytime before a patent is granted or refused on

the international application, the applicant may present amendments to the specification,

claims and drawings in accordance with the IP Code and its implementing rules and

regulations.

Rule 36. Entry Into the National Phase of an International Application Claiming The

Priority of an Earlier Philippine National Application. Within one (1) month from the date of

entry into the national phase of an international application claiming the priority of an earlier

Philippine national application, the IPO shall invite the applicant to elect only one (1)

application for further prosecution within two (2) months from the date of the invitation, or

within a longer period which the IPO may allow but not to exceed six (6) months from the date

of entry into the national phase.

Rule 37. Review by IPO as a Designated Office. – (a) Where the receiving Office other

than the IPO has refused to accord an international filing date to an international application

designating the Philippines or has declared that the international application is considered

withdrawn either generally or as to the Philippines, or where the IB has made a finding under

PCT Article 12(3) that the international application is considered withdrawn because it has not

received the record copy within the prescribed time limit, the applicant may request review of

the matter by the IPO provided the requirements of and the time limit specified by the Treaty

and PCT regulations as well as the requirements for entry into national phase in these rules

are complied with.

(b) Where the refusal, declaration or finding mentioned in paragraph (a) was the result

of an error or omission on the part of the receiving Office or that the finding was the result of

an error or omission on the part of the IB, the IPO as a designated Office may treat the

international application as if such error or omission has not occurred. (PCT Article 25)

Rule 38. Time Limit to Submit the Priority Document. – 37.1. The priority claim of an

international application designating or electing the Philippines shall not be disregarded by

IPO, where the priority document is received by the IB not later than sixteen (16) months after

the priority date in accordance with PCT Rule 17.1 (a) and (b).

38. If the priority document is not submitted to the IB within sixteen (16) months after the

priority date in accordance with PCT Rule 17.1 (a) and (b), the applicant may submit to

the IPO a certification from national Office concerned stating the following data regarding

the application the priority of which is claimed: name of the applicant, filing date,

application number and title of the application. The certification, and its English translation

if not in English, together with payment of the fee for extension of time to submit priority

document and the surcharge for late payment provided for in the IPO Fee Structure, shall

be submitted within six (6) months from the date of entry of the international application

into the national phase without need of notice. The certification and its English translation

if not in English do not require legalization. Failure of the applicant to comply with this rule

shall be ground to disregard the priority claim.

38.3 Where the validity of the priority claim is relevant to the determination of whether

the invention concerned is patentable, the applicant shall be required to submit the English

translation of the priority document. (PCT Rule 17.1a, 17.1b, 51bis.1(e))

Rule 39. Procedure for Grant of Patent. - An international application that has entered

the national phase shall be governed by the applicable provisions under Republic Act No.

8293 and its implementing rules and regulations and the applicable provisions of the Treaty,

PCT Regulations, and PCT Administrative Instructions.

Rule 40. Application of the IPO Fee Structure. - The IPO Fee Structure shall apply

after entry into the national phase of the international application provided that:

(a) an international application which validly claims the priority of an earlier Philippine

national application shall be exempt from payment of fees that were already paid in

connection with that Philippine national application;

(b) the due date for payment of the first annual fee shall be computed from the date of

the international publication regardless of the language of publication; and

(c) the international application shall be deemed withdrawn if the substantive

examination fee is not paid within six (6) months from the date of entry into the national

phase. The applicant may use a form for payment prescribed by IPO for this purpose.

PART 4

FEES DURING INTERNATIONAL PHASE

Rule 41. Fees to be Collected by the IPO. – The following fees shall be collected by

the IPO:

41.1. Fees for the benefit of the IPO. The type and amount of fees for the benefit of the

IPO are:

Ref.

Code Type of Fee Amount

(Philippine Peso)

901 Transmittal Fee PCT Rule 14 3,500.00

902 Priority Document Fee PCT Rule 17.1(b) 500.00

903

Fee for Transmitting Priority Document PCT Rule

17.1(b) 1,750.00

905 Late Payment Fee PCT Rule 16bis.2(a)(ii) 3,500.00

906

Certified Copy of the International Application Fee

PCT Rule 20.9 500.00

907 Transmittal Fee PCT Rule 19.4 3,500.00

41.2. Fees for the benefit of the IB (International Filing Fee)

The amount of the international filing fee referred to in PCT Rule 15.2 is

published in the PCT Gazette and is available at the IPO.

41.3. Fee for the benefit of the ISA (Search Fee)

The amount of the search fee referred to in PCT Rule 16.1 of the competent ISA or

ISAs for the Philippines is published in the PCT Gazette.

Rule 42. Due Dates and Extension of Time Limits for Payment of Fees Collected by

IPO. – All fees must be paid on or before the due date prescribed in the PCT Regulations

and these Rules.

42.1. The transmittal fee and search fee shall be paid by the applicant within one

(1) month from the date of receipt by the IPO of the international application; (PCT Rule

14.1(c), 15.4(a), 16.1(f))

42.2. Where the fees due under this rule have not been paid, or that the amount paid is

insufficient to cover the total amount due, the IPO shall invite the applicant to pay the required

fees together with the late payment fee within one (1) month without extension of time from

the date of invitation; (PCT Rule 16bis.1(a))

Rule 43. Fees for the Benefit of IPO; Form, Manner and Currency of Payment. –

(a) All fees for the benefit of the IPO shall be paid in cash, money order, bank drafts

and/or checks in Philippine currency. In case of cash payment, the date of receipt is the date

on which the full amount due was paid in cash. In case of money order, check or bank draft

payment, the date of receipt of the money order, check or bank draft will be the date of

presentment provided that the same is honored upon first presentment and provided that the

payment covers the full amount due.

(b) Payment shall be made to the IPO Cashier during regular working days and

business hours from Monday to Friday, 8:00 a.m. to 12:00 noon and from 1:00 p.m. to 5:00

p.m.

Rule 44. Fees for the Benefit of IB and ISA; Form, Manner and Currency of Payment. –

44.1 All fees for the benefit of the IB and the ISA collected by IPO as receiving Office shall be

paid to IPO in the currency or any of the currencies, if more than one specified by the IB or

the ISA as the case may be, in the form of cash or bank draft. In case of cash payment, the

date of receipt is the date on which the full amount due was paid in cash. In case of bank

draft payment, the date of receipt of the bank draft will be the date of presentment provided

that the same is honored upon first presentment and provided further that the payment covers

the full amount due. Payment shall be made to the IPO Cashier during regular working days

and business hours from Monday to Friday, 8:00 a.m. to 12:00 noon and from 1:00 p.m. to

5:00 p.m.

44.2. Where the international application incurs an additional fee other than the search

fee under PCT Rule 16, the applicant shall pay directly to the ISA such other fees required by

the ISA in the currency, form and manner prescribed by it.

44.3. The Schedules of Fees of the IB and ISAs are published in the PCT Gazette and

are available at the IPO.

Rule 45. Fees Payable to the IPEA. - The international preliminary examination fee

and the handling fee under PCT Rule 58 shall be paid directly to the IPEA in the currency,

form and manner prescribed by it.

Other fees due to the IPEA in accordance with the Treaty and PCT Regulations shall

be paid directly to the IPEA in the currency, form and manner prescribed by it.

The Schedules of Fees of the IPEAs are published in the PCT Gazette and are

available at the IPO.

Rule 46. Refunds. – 46.1 The IPO shall refund the international fee to the applicant in

accordance with PCT Rule 15.6:

(a) if the IPO has found that the international filing date cannot be accorded in

accordance with PCT Article 11(1);

(b) if, before the transmittal of the record copy to the IB, the international application is

withdrawn or considered withdrawn; or

(c) if, due to prescriptions concerning the national security, the international application

is not treated as such.

46.2. The IPO shall refund the search fee to the applicant in accordance with PCT Rule

16.2:

(a) if the IPO has found that the international filing date cannot be accorded in

accordance with PCT Article 11(1);

(b) if, before the transmittal of the search copy to the ISA, the international application

is withdrawn or considered withdrawn; or

(c) if, due to prescriptions concerning the national security, the international application

is not treated as such.

Rule 47. Reduction in Fees. – An applicant may be entitled to a reduction in fees

provided that the requirements, as specified by the IB and Authorities under the Treaty

granting such reduction in fees, are fully satisfied and/or duly complied with.

PART 5

FINAL PROVISIONS

Rule 48. Separability Clause. - If any provision in these Rules or application of such

provision to any circumstance is held invalid, the remainder of these Rules shall not be

affected.

Rule 49. Filing of Certified Copies. – Mr. Amy D. Tabije, Records Officer I, is hereby

directed to immediately file three (3) certified copies of these Rules with the University of the

Philippines Law Center, and, one (1) certified copy each with the Office of the President, the

Senate of the Philippines, the House of Representatives, the Supreme Court of the

Philippines, and the National Library.

Rule 50. Effectivity. - These Amendments shall take effect on 01 January 2004 after

publication in the IPO website and in a newspaper of general circulation not later than 17

December 2003.