- PART 1 DEFINITIONS
- PART 2 PATENTABILITY
- 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.
- 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. (a) General Requisites for the Drawing.
- 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. (a) Decorum and Courtesy Required in the Conduct of Business.
- PART 5 WHO MAY APPLY FOR A PATENT
- 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
- PART 8 PUBLICATION AND REQUEST FOR EXAMINATION
- 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 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
- TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION
- PART 10 GRANT OF PATENT
- PART 11 TERM OF PATENT
- 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
- Chapter 1. Recording of Assignment of Letters Patent, and of other Instruments Affecting Title to Patents, Including Licenses
- 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. Appelant’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
PART 1
DEFINITIONS
Rule 100. Definitions. Unless otherwise specified, the following terms shall have the meaning provided in this Rule:
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) or 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, 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 (12) 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)
(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)
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 (2) 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 (2) 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: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) 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 (6) months from the date of filing in the Philippines (Sec. 31, IP CODE).
This six (6) month-period may be extended by the Director for a maximum of six (6) 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 (2) 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 302 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 application.
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 (1) 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.
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.