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. Contents 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.
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 (2) 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
than one hundred fifty (150) 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
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
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.
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.
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.
(b) The application
may contain one (1) 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 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. (a) Any application comprising more
than five
(5) 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 (5) incurs payment of a claims fee.
The
claims fee shall be payable within one (1) 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 (1) 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 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 formula may be placed
sideways
on the sheet if they cannot be presented satisfactorily in an upright
position
thereon; sheets on which tables or chemicals 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.
Leftside
: 2.5 cm.
- 4 cm.
Rightside
: 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.
(i) The documents
making up the application except the request for grant shall be filed
in
four (4) 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
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 (2) 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. (a) Decorum
and courtesy required in the conduct of business.
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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