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
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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.
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(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.
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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
43
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
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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
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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.