ChanRobles Virtual law Library

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 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.  

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.  (a) 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  

(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 (2) 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 amendments 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] 
 

CHAPTER 3.  ASSIGNMENT AND TRANSMISSION OF RIGHTS 

Rule 1211.    Assignment and transmission of rights.  Patents or applications for patent and the inventions to which they relate shall be protected in the same way as the rights of other property under the Civil Code.  Inventions and any right, title or interest in and to patents and inventions covered thereby may be assigned, or transmitted by inheritance or bequest or may be the subject of a license contract. [Sec. 103, 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]