State recognizes that an effective industrial property system is vital
to the development of domestic creativity, facilitates transfer of
attracts foreign investments and ensures market access for our
WHEREAS, it is the
policy of the State to streamline administrative procedures in granting
patents and enhance the enforcement of intellectual property rights in
NOW, THEREFORE, pursuant
to the provisions of Republic Act No. 8293, otherwise known as the
Property Code of the Philippines, the following rules and regulations
inventions are hereby promulgated: chanroblesvirtualawlibrary
Definitions. Unless otherwise specified, the following
have the meaning provided in this Rule:
(a) “Bureau” means
the Bureau of Patents of the Office;
means the Director of the Bureau of Patents;
General” means the Head of the Intellectual Property Office;
means any officer or employee of the Bureau of Patents
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
Code of the Philippines;
(f) “IPO Gazette”
means the Intellectual Property Office’s own publication where all
required to be published under the IP Code shall be published;
(g) “Office” means
the Intellectual Property Office; and
means this set of rules and regulations and such Rules of Practice as
be formulated by the Director of Patents and approved by the Director
Patentable inventions. Any technical solution of a
in any field of human activity which is new, involves an inventive step
and is industrially applicable shall be patentable.
21, IP Code]
Statutory classes of invention. An invention may be, or may
a) a useful
an improvement of any of the foregoing;
and microbiological processes.
[Sec. 21, IP
inventions. The following shall be excluded from patent
scientific theories and mathematical method;
and methods of performing mental acts, playing games or doing business,
and programs for computers;
Methods for treatment
of the human or animal body by surgery or therapy and diagnostic
practiced on the human or animal body. This provision shall not apply
products and compositions for use in any of these methods;
or animal breeds or essentially biological process for the production
plants or animals. This provision shall not apply to microorganisms and
non-biological and microbiological processes;
is contrary to public order or morality.
Novelty. An invention shall not be considered new if
part of a prior art.
[Sec. 23, IP Code]
Prior art. Prior art shall consist of:
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
of the application claiming the invention. Prior use which is not
present in the Philippines, even if widespread in a foreign country,
form part of the prior art if such prior use is not disclosed in
documents or in any tangible form.
of an application for a patent, utility model, or industrial design
published under Sec. 44 of IP Code, filed or effective in the
with a filing or priority date that is earlier than the filing or
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
identified in both applications are not one and the same.
24, IP Code]
Where two or more
applications are independently filed with respect to the same
and the later applications are filed before the first application or
application is published, the whole contents of the first or earliest
application published in accordance with Sec. 44, IP Code on or
the filing date or priority date of the later filed application shall
novelty destroying with respect to the later filed application.
Rule 205. Non-prejudicial
disclosure. The disclosure of information contained in the
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:
office, the Bureau or the Office, and the information was contained (a)
in another application filed by the inventor and should not have been
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
which obtained the information directly or indirectly from the
For purposes of subsection
(a), “inventor” also means any person who, at the filing date of
had the right to the patent.
[Sec. 25, IP
Inventive step. (a) An invention
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
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
be considered in assessing inventive step.
Rule 207. Person
skilled in the art. The person skilled in the art is
to be an ordinary practitioner aware of what was common general
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
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
for routine work and experimentation.
Industrial applicability. An invention which can
be produced and used in any industry shall be industrially applicable.
[Sec. 27, IP Code]
TO A PATENT
Rule 300. Right
to a patent. The right to a patent belongs to the
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
may be filed by the actual inventor(s) or in the name of his heirs,
representative or assigns.
Inventions created pursuant to a commission. The person who
the work shall own the patent, unless otherwise provided in the
[Sec. 30.1, IP Code]
Inventions made in the course of employment. In case the
made the invention in the course of his employment contract, the patent
shall belong to:
if the inventive activity is not a part of his regular duties even if
employee uses the time, facilities and materials of the employer
if the invention is the result of the performance of his
duties, unless there is an agreement, express or implied, to the
[Sec. 30.2, IP Code]
Rule 304. First
to file rule. If two (2) or more persons have made the same
separately and independently of each other, the right to the patent
belong to the person who filed an application for such invention, or
two or more applications are filed for the same invention, to the
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
each other have the same filing date, on 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
has previously applied for the same invention in another country which
by treaty, convention, or law affords similar privileges to Filipino
shall be considered as filed as of the date of filing of the foreign
Provided, That: (a) the local application expressly claims priority;
it is filed within twelve (12) months from the date the earliest
application was filed and (c) a certified copy of the foreign
together with an English translation is filed within six (6) months
the date of filing in the Philippines.
This six (6) month-period
may be extended by the Director for a maximum of six (6) months upon
of good cause or in compliance with treaties to which the Philippines
or may become a member.
Multiple priorities. An application can claim more
priority even from different countries. If more than one patent
is claimed, time limits computed from the priority date will be based
the earliest priority date.
If one or more priorities are claimed, the right of priority shall
only those elements of the application which are included in the
or applications whose priority is claimed.
If certain elements of the invention for which priority is claimed do
appear among the claims formulated in the previous application,
may nonetheless be granted, provided that the previous application as a
whole specifically disclose such elements.
Where an application could have claimed the priority of an earlier
but when filed, did not contain such priority, the applicant shall be
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
of the applicant stating that the delay in submitting the priority
Rule 307. Certified
copy of the foreign applications. The certified copy of
applications mentioned in Rule 302 shall be the copy of the priority
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.
Rule 400. The
patent application. - An application for a patent shall be in
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:
the grant of a patent;
of the invention;
for the understanding of the invention;
or more claims;
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.
Marking of documents; acknowledgment. The
shall mark the documents making up
the application with the date of the receipt. After receipt of
full payment of the required fees, the Bureau may issue an
stating the application number, name of applicant and title of the
403. Form of request; office application form. The
shall be made on a form drawn up by the Office. For the
of applicants, the Office shall draw up and make available a standard
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:
the grant of a patent;
name and address;
(c) Title of
for convention priority, it shall contain the file number, country of
and the date of filing in the said country where the application was
of the resident agent/representative (if any); and
of the applicant or resident agent/representative.
and description of the invention. The application shall
the invention in a manner sufficiently clear and complete for it to be
carried out by a person skilled in the art.
for enabling disclosure. The test for enabling disclosure is
whether the persons to whom it is addressed could, by following the
therein, put the invention into practice.
407. Contents of the Description.
(1) The description
technical field to which the invention relates;
background art which, as far as known to the applicant, can be regarded
as useful for understanding the invention, for drawing up the search
and for the examination, and, preferably, cite the documents reflecting
invention, as claimed, in such terms that the technical problem (even
not expressly stated as such) and its solution can be understood, and
any advantageous effects of the invention with reference to the
the figures in the drawings, if any;
drawings, there shall be a brief description of the several views of
drawings and the detailed description of the invention shall refer to
different parts, as shown in the views, by use of reference letters or
numerals (preferably the latter);
Describe in detail
at least one way of carrying out the invention claimed using examples
appropriate and referring to the drawings, if any; and
when it is not obvious from the description or nature of the invention,
the way in which the invention is capable of exploitation in
(2) The description
shall be presented in the manner and order specified in paragraph 1,
because of the nature of the invention, a different manner or a
order would afford a better understanding and a more economic
Requirements of applications relating to biological materials and
Where the application concerns a microbiological process or
thereof and involves the use of a microorganism which cannot be
disclosed in the application in such a way as to enable the invention
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
the microorganism has been deposited in a depositary institution before
filing the application;
institution and the file number of the culture deposit are stated in
application. If this information is not yet available at the time
of filing the application, the said information shall be submitted
two (2) months from request of the Examiner. Publication of
the application under Section 44, IP Code shall be held pending
of said information; and
as filed gives relevant information as is available
on the characteristics of the microorganism.
Requirements of application relating to biological materials
before allowance. An application which concerns a
process or the product thereof and involves the use of any novel strain
of microorganism shall be allowed only when the following conditions
made in a recognized international depositary authority;
deposit together with the proper identification or deposit number
by the depositary is submitted; and
should be under the contractual obligation to place the culture in
collection, and to provide access to persons who shall have interest
in regard to matters relating to the patent application as
Rule 410. Title
of the invention. The title of the invention should be as
and specific as possible, and should appear as a heading on the first
of the specification. All fancy names are not permissible in the
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
contained in the description, claims and drawings in preferably not
than one hundred fifty (150) words. It must be drafted in a way
allows the clear understanding of the technical problem, the gist of
solution of that problem through the invention, and the principal use
uses of the invention. The abstract shall merely serve for
information. Each main technical feature mentioned in the
and illustrated by a drawing in the application shall be followed by a
reference sign placed between parentheses.
Prohibited matter. (a) The application shall not
or other matter contrary to “public order” or morality;
the products or processes of any particular person or other than the
or the merits or validity of applications or patents of any such
Mere comparison with the prior art shall not be considered disparaging
or other matter obviously irrelevant or unnecessary under the
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
by the applicant or the name of the applicant may be signed on the
by his attorney or agent. The drawing must show every feature of
the invention covered by the claims, and the figures should be
for an Improvement. - When the invention consists of an improvement of
an old machine, the drawing must exhibit, in one or more views, the
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
Rule 414.1. Uniform
standard of excellence suited to photolithographic process, required of
drawings. - The printing of the drawings in the IPO Gazette
done by the photolithographic process, and therefore the character of
original drawing must be brought as nearly as possible to a uniform
of excellence suited to the requirements of the process, to give the
results, in the interests of the inventors, of the Office, and of the
The following rules will therefore be strictly enforced, and any
from them will be certain to cause delay in the examination of an
Paper and ink. Drawings must be made upon paper that
strong, white, smooth, non-shiny and durable. Two ply or three
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
for pen drawings to secure perfectly black solid lines. The use
white pigments to cover lines is not permissible.
Size of drawing sheet; imaginary line. The size of a
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
top 2.5 cm; left side 2.5 cm; right side 1.5 cm; bottom 1 cm.
this imaginary margin all work and signatures must be included.
of the shorter sides of the sheet is regarded as its top, and,
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.
Character and color lines. All drawings must be made
the pen or by a photolithographic process which will give them
reproduction characteristics. Every line and letter (signatures
must be absolutely black. This direction applies to all lines,
fine, to shading and to lines representing cut surfaces in sectional
All lines must be clean, sharp, and solid, and they must not be too
or crowded. Surface shading, when used, should be open.
shading should be made by oblique parallel lines, which may be about
cm apart. Solid black should not be used for sectional or surface
shading. Freehand work should be avoided whenever possible.
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
work after reduction will be much increased. Shading (except on
views) should be used sparingly, and may even be dispensed with if the
drawing be otherwise well executed. The plane upon which a
view is taken should be indicated on the general view by a broken or
line, which should be designated by numerals corresponding to the
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
upper left hand corner of an angle of 45 degrees.
Scale to which drawing is made to be large enough. The
to which a drawing is made ought to be large enough to show the
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
never be more than what is absolutely necessary.
Rule 414.7. Letters
and figures of reference. The different views should be
numbered. Letters and figures of reference must be carefully
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
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,
should be placed at a little distance where there is available space,
connected by lines with the parts to which they refer. They
not be placed upon shaded surfaces, but when it is difficult to avoid
blank space must be left in the shading where the letter occurs, so
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
it must always be represented by the same character, and the same
must never be used to designate different parts.
Signature; where to be placed. The signature of the
should be placed at the lower right-hand corner within the imaginary
of each sheet, but in no instance should they trespass upon the
Title of the drawing. The title should be written
on the back of the sheet. The permanent name and title
the heading will be applied subsequently by the Bureau of Patents in
Position on drawing sheets of large views. All views
same sheet must stand in the same direction and must, if possible,
so that they can be read with the sheet held in an upright
If views longer than the width of the sheet are necessary for the
illustration of the invention, the sheet may be turned on its
The space for heading must then be reserved at the right and the
placed at the left, occupying the same space and position as in the
views and being horizontal when the sheet is held in an upright
One figure must not be placed upon another or within the outline of
Flow sheets and diagrams. Flow Sheets and diagrams
Requisites for the figure of the IPO Gazette. As a
one view of each invention can be shown in the IPO Gazette
The selection of that portion of a drawing best calculated to explain
nature of the invention or its specific improvement would be
and the final result improved by judicious execution of a figure with
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
the figure may be a plan, elevation, section, or perspective view,
to the judgment of the draftsman. All its parts should be
open and distinct, with very little or no shading, and it must
only the invention claimed, to the exclusion of all other details. When
well executed, it will be used without curtailment or change, but any
fineness or crowding or unnecessary elaborateness of detail will
its exclusion from the IPO Gazette.
Reference signs. Reference signs not mentioned in the
and claims shall not appear in the drawings and vice versa. The
features, when denoted by reference signs, shall throughout the
be denoted by the same signs.
Photographs. (a)Photographs are not normally considered to be
proper drawings. Photographs are acceptable for obtaining a
date and generally considered to be informal drawings.
are only acceptable where they come within the special categories as
forth in the paragraph below. Photolitographs of photographs are
(b) The Office is
willing to accept black and white photographs or photomicrographs (not
photolitographs or other reproduction of photographs made by using
printed on sensitized paper in lieu of India ink drawings, to
the inventions which are incapable of being accurately or adequately
by India ink drawings restricted to the following categories:
structures, metallurgical microstructures, textile fabrics, grain
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
(c) Such photographs
to be acceptable must be made on photographic paper having the
characteristics which are generally recognized in the photographic
paper with a surface described as smooth, tint, white, or be
mounted on a proper sized Bristol board.
Matters not permitted to appear on the drawings. An agent’s
attorney’s stamp, or advertisement or written address shall not be
on the drawings.
Drawings not conforming to foregoing rules to be accepted only
A drawing not executed in conformity to the foregoing rules may be
for purposes of examination if it sufficiently illustrates the
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,
process, apparatus or use) where it is not appropriate, having regard
the subject matter of the application, to cover this subject matter by
a single claim which shall define the matter for which
is sought. Each claim shall be clear and concise, and shall be
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
which refers to more than one other claim (“multiple dependent claim”)
shall refer to such other claims in the alternative only. A
dependent claim shall not serve as a basis for any other multiple
claim. For fee calculation purpose a multiple dependent claim
be considered to be that number of claims to which direct reference is
made therein. Furthermore, any claim depending on a multiple
claim will be considered to be that number of claims to which direct
is made in that multiple dependent claims. In addition to the
filing fees, any original application which is filed with, or is
to include, multiple dependent claims must have to pay the
additional fees. Claims in dependent form shall be construed to
all the limitations of the claims incorporated by reference into the
claim. A multiple dependent claim shall be construed to
by reference all the limitations of each of the particular claims in
to which it is being considered.
(d) The claim
or claims must conform to the invention as set forth in the
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
to the description. Claims shall not, except where absolutely
rely in respect of the technical features of the invention, on
to the description or drawings. In particular, they shall not
on such references as: “as described in part xxx of the
or, “as illustrated in figure xxx of the drawings”.
Form and content of the claims. The claims shall
matter for which protection is sought in terms of the technical
of the invention. Wherever appropriate the claims shall contain:
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
portion preceded by the expression “characterized in that”
or “characterized by” – stating the technical features which,
combination with the features stated in sub-paragraph (a), it is
to protect; and
application contains drawings, the technical features mentioned in the
claims shall preferably, if the intelligibility of the claim can
be increased, be followed by reference signs relating to these features
and placed between parentheses. These reference signs shall not be
as limiting the claim.
Claims incurring fee. (a) Any application comprising more
(5) claims, independent and/or multiple/alternative dependent
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.
claims fee shall be payable within one (1) month after the filing of
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
pointing out the failure to observe the time limit. If the claims fee
not paid within the time limit and the grace period referred to in this
Rule, the claim or claims concerned shall be deemed deleted.
Presentation of the application documents. (a) All
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
of the sheet. If necessary, only graphic symbols and characters and
or mathematical formulas may be written by hand or drawn. The typing
be 1 ½ spaced. All text matter shall be in characters, the
letters of which are not less than 0.21 cm. high, and shall be in dark,
(b) The documents
making up the application shall be on a 29.7 cm x 21 cm paper or the
of an A4 paper which shall be pliable, strong, white, smooth, matt and
(c) The specification
and claims of an invention patent must be written with the lines
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
The description and the abstract may contain tables. The claims may
tables only if their subject-matter makes the use of tables desirable.
Tables and chemical or mathematical formula may be placed
on the sheet if they cannot be presented satisfactorily in an upright
thereon; sheets on which tables or chemicals or mathematical formulas
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,
appropriate in terms of the metric system using system international
units. Any data not meeting this requirement must also be expressed in
the units recognized in international practice. For mathematical
the symbols in general use shall be employed. For chemical formula, the
symbols, atomic weights and molecular formula in general use shall be
In general, use should be made of the technical terms, signs and
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,
and abstract) shall commence on a separate sheet. The separate
shall be filed in such a way that they can easily be turned over, and
The margins of the
documents shall be within the following ranges:
Top : 2 cm.
: 2.5 cm.
- 4 cm.
: 2 cm.
- 3 cm.
2 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
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
four (4) copies.
Rule 419. Models;
when required. A model may be required when the invention
to be patented cannot be sufficiently described in the application. The
Examiner shall notify the applicant of such requirement, which will
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.
Requisites for the model. The model, when
must clearly exhibit every feature of the machine which form the
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
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
the precise operation of the machine.
Models; when returned to applicant. In all
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
upon demand and at his expense; and the model in any pending case may
returned to the applicant upon the filing of a formal abandonment of
application signed by the applicant in person and any assignee.
to patented cases shall not be taken from the Office without the
by the Director.
Models filed as exhibits in contested cases. Models
as exhibits in contested cases may be returned to the parties at their
expense. If not claimed within a reasonable time, they may be
of at the discretion of the Director.
Rule 420. Employment
of attorney-at-law or agent recommended. An applicant or an
of the entire interest may prosecute his own case, but he is advised,
familiar with such matters, to employ a competent attorney-at-law or
as the value of patents depends largely upon the skillful preparation
the specification and claims. The Office cannot aid in the
of an attorney-at-law or agent.
Rule 421. Appointment
of resident agent or representative. An applicant who
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
patent or the patent may be served.
(a) If there
two (2) or more agents appointed by the applicant, the Office shall
all actions to the last agent appointed. A substitute or
attorney may be appointed by an attorney only upon the written
of his principal; but a third attorney appointed by the second will not
of Power of Attorney. A power of attorney or
may be revoked at any stage in the proceedings of a case upon proper
to the Director General, and, when revoked, the Office will notify the
attorney or agent of such revocation and shall communicate directly
the applicant or with such other attorney or agent as he may later
Rule 422. (a) Decorum
and courtesy required in the conduct of business.
their attorneys or agents are required to conduct their business with
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
of this rule will be submitted to the Director and returned to the
by his direct order.
against Examiners to be on separate paper.
against Examiners and other officers must be made in a communication
from other papers, and will be promptly investigated by or at the
of the Director. chanroblesvirtualawlibrary
FOR A PATENT
Who may apply for a patent. Any person, natural or
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
When the applicant dies; becomes insane.
the applicant dies, becomes insane or incapacitated, the legally
administrator, executor, guardian, conservator, or representative of
applicant, may sign the application papers and other documents, and
for and obtain the patent in the name of the applicant, his heirs or
Assigned invention and patent. In case the whole
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
interest, any of the joint owners will sign the application.
Juridical person; definition. A
is a body of persons, a corporation, a partnership, or other legal
that is recognized by law which grants a juridical personality separate
and distinct from that of a share holder, partner or member.
Proof of authority. If the person who signs the
in behalf of a juridical person is an officer of the corporation, no
of authority to file the said application will be required.
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
If the applicant
appoints a representative to prosecute and sign the application, the
shall require proof of such authority.
Forms of signatures. Where a signature is
the Office may accept:
No attestation, notarization,
legalization or other certification of any signature or other means of
self-identification referred to in the preceding paragraphs, will be
except, where the signature concerns the surrender of a letters
use of other
forms of signature, such as a printed or stamped signature, or the use
of a seal, or thumb marks, instead of a handwritten signature:
That where a seal or a thumbmark is used, it should be accompanied by
indication in letters of the name of the signatory.
AND FORMALITY EXAMINATION
Rule 600. Filing
date requirements. The filing date of a patent
shall be the date on which the Office received the following elements
English or Filipino:
implicit indication that a Philippine patent is sought;
the applicant; and
the invention and one (1) or more claims.
Incomplete application. Where the application refers
drawing or drawings, it shall not be considered complete if the drawing
or drawings are not included in the application.
For purposes of obtaining a filing date, the Bureau may accept a copy
the application received by the resident agent by telefax, subject to
of the original copy within two (2) months from the filing date.
According a filing date. The Office
whether the patent application satisfies the requirements for the grant
of filing date as provided in these Regulations. If the filing
cannot be accorded, the applicant shall be given an opportunity to
the deficiencies. If the application does not contain all the
indicated in these regulations, the filing date should be that date
all the elements are received. If the deficiencies are not
within two (2) months from the date on which the application was
presented to the Office, the application shall be considered
[Sec. 41, IP Code]
Late-filed or missing drawings. (a) If the formality
reveals that the drawings were filed after the filing date of the
application, the Bureau shall send a notice to the applicant that the
and the references to the drawings in the application shall be
deleted unless the applicant requests within two (2) months that the
be granted a new filing date which is the date on which the drawings
(2) If the formality
examination reveals that the drawings were not filed, the Bureau shall
require applicant to file them within two (2) months and inform the
that the application will be given a new filing date 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
and the applicant.
Formality examination. If a patent application has
a filing date and the required fee has been paid within one (1) month,
compliance with other requirements will be checked. Such other
may relate to the following:
the request for grant of a Philippine patent;
if with claim of convention priority (i.e., file number, date of
filing and country of the priority applications);
if the applicant is not the inventor;
Payment of all
fees, (e.g., excess claims)
of the inventor; and
Rule 604. Unity
of invention. (a) The application shall relate to one
only or to a group of inventions forming a single general inventive
[Sec. 38.1, IP Code]
(b) If several
independent inventions which do not form a single general inventive
are claimed in one application, the Director may require that the
be restricted to a single invention. A later application filed
an invention divided out shall be considered as having been filed on
same day as the first application: Provided that the later application
is filed within four (4) months after the requirement to divide becomes
final, or within such additional time, not exceeding four (4) months,
may be granted. Provided further , That each divisional application
not go beyond the disclosure in the initial application.
[Sec. 38.2, IP Code]
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]
Rule 605. Requirements
for unity of invention. (a) The requirement of unity of invention
be fulfilled only when there is a technical relationship among those
involving one or more of the same or corresponding special technical
The expression “special technical features” shall mean those technical
features that define a contribution which each of the claimed
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
are claimed in separate claims or as alternative within a single
(c) A plurality of
independent claims in different categories may constitute a group of
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
in any one application are the following:
to an independent claim for a given product, an independent claim for a
process specially adopted for the manufacture of the product, and an
claim for a use of the product; or
an independent claim for a given process, an independent claim for an
or means specifically designed for carrying out the process; or
an independent claim for a given product, an independent claim for a
specially adapted for the manufacture of the product, and an
claim for apparatus or means specifically designed for carrying out the
for requirement. (a) If the applicant disagrees
the requirement of division, he may request reconsideration and
or modification of the requirement, giving the reasons therefor.
In requesting reconsideration, the applicant must indicate a
election of one invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final.
(b) The requirement
for division will be reconsidered on such a request. If the
is repeated and made final, the principal Examiner will, at the same
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
on claims of the elected invention may be continued during such
Appeal may be deferred until after final action on or allowance of the
claims of the invention elected. Appeal may not be allowed if
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
to an invention divisible from the invention previously claimed, such
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
species embraced thereby, the Examiner, if of the opinion, after a
search on the generic claim presented is allowable, shall require
the applicant in his response to that action to elect the species of
invention to which his claim shall be restricted, if no generic claim
finally held allowable.
Claims directed neither
to the species nor to the genus of the disclosed invention maybe
Markush type claims, i.e., claims which enumerate in
manner, members or variations which are properly claimable as species
may likewise be allowed, provided that the amount of the fees payable
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
are not elected after a requirement for division may be the subject of
separate applications which will be examined in the same manner as
applications. However, if such an application is filed before the
original application is patented or withdrawn, and if it is identical
the papers constituting an exact copy of the original papers which were
signed and executed by the applicant, signing and execution of the
may be omitted; such application may consist of the filing fee, a copy
of the drawings complying with rules relating to drawings and filed,
with a proposed amendment canceling the irrelevant claims or other
application. (a) The applicant may file a divisional application on
a pending application before the parent application is withdrawn,
or patented, provided that the subject matter shall not extend beyond
content of the parent application.
The divisional application
shall be accorded the same filing date as the parent application, and
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
and number of any application for a patent filed by him abroad,
referred to as the “foreign application”, relating to the same or
the same invention as that claimed in the application filed with the
and other documents relating to the foreign application.
39, IP Code]
Other documents relating to the foreign application may consist of the
(a) A copy
search reports in English on the corresponding or related foreign
prepared by the European, Japanese or United States Patent Offices,
authorities under the Patent Cooperation Treaty or by the office where
the first patent application was filed.
Non-compliance. The application is considered withdrawn if
applicant fails to comply with the requirement to furnish information
the corresponding foreign application, within the specified period. chanroblesvirtualawlibrary
the relevant documents cited in the search report;
of the patent
granted to the corresponding or related application;
of the examination
report or decision on the corresponding or foreign related application;
which could facilitate adjudication of the application.
Classification and search. An
has complied with the formal requirements shall be classified and a
shall be conducted to determine the prior art.
The Office shall use the International Patent Classification.
Content of the Intellectual Property Search Report. The
Intellectual Property Search Report is drawn up on the basis of the
description, and the drawings, if there is any:
(a) The search report
shall mention those documents, available at the Office at the
of drawing up the report, which may be taken into consideration in
novelty and inventive step of the invention.
(d) The search report
may include documents cited in a search established in the
foreign application. chanroblesvirtualawlibrary
(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
in accordance with the International Patent Classification.
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
art, after the expiration of eighteen (18) months from the filing date
or priority date.
(b) The application
will not be published if it has been finally refused or withdrawn or
to be withdrawn before the termination of the technical preparation for
(c) The application
to be published shall contain the bibliographic data, any drawing as
and the abstract.
(d) The Office shall
communicate to the applicant the date and other information regarding
publication of the application and draw his attention to the period
which the request for substantive examination must be filed.
publication of a patent application, any interested party may inspect
application documents filed with the Office.
(f) The Director
General, subject to the approval of the Secretary of Trade and
may prohibit or restrict the publication of an application, if in his
to do so would be prejudicial to the national security and interests of
the Republic of the Philippines.
[Sec. 44, IP
Confidentiality before publication. An application,
has not yet been published, and all related documents, shall not be
available for inspection without the consent of the applicant.
45, IP Code]
Rule 802. Observation
of third parties. Following the publication of the
any person may present observations in writing concerning the
of the invention. Such observations shall be communicated to the
applicant who may comment on them. The Office shall acknowledge
put such observations and comment in the file of the application to
[Sec. 47, IP Code]
Request for substantive examination. The
shall be deemed withdrawn unless within six (6) 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
the refund of any fee.
[Sec. 48, IP Code]
conferred by an application after publication. The
shall have all the rights of a patentee under Sec. 76, of the IP Code
any person who, without his authorization, exercised any of the rights
conferred under Section 71 of said law in relation to the invention
in the published application, as if a patent has been granted for that
invention: Provided, That the said person had:
that the invention that he was using was the subject matter of a
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
grant of a patent on the published application and within four (4)
from the commission of the acts complained of.
46, IP Code]
Rule 805. Citation
and references. Should domestic patents be cited, their
and dates, the names of the patentees, and the classes of inventions
be stated. Should foreign patents be cited, their nationality or
country, numbers and dates and the names of the patentees must be
and such other data must be furnished as may be necessary to enable the
applicant to identify the patents cited. In citing foreign
in case part of the patent be involved, the particular pages and sheets
containing the parts relied upon must be identified. Should
publications be cited, the author (if any), title, date, relevant pages
or plates, and place of publication, or place where a copy can be
shall be given.
OF THE APPLICATION;
IN THE EXAMINATION
FOR A PATENT;
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
Proceedings a contest between the Examiner and the applicant.
An ex parte proceeding in the Bureau is a law contest between
Examiner, representing the public and trying to give the inventor the
possible monopoly in return for his disclosure, and the applicant or
attorney trying to get as much monopoly as possible.
Applicant supposed to look after his interest. The
represented by the Examiner, is not supposed to look after the
of an applicant. The Examiners are charged with the
of the interest of the public, and hence must be vigilant to see that
patent issues for subject matter which is not patentable, and is
disclosed in prior inventions and accessible to the public at
Rule 903. Preliminary
adverse actions of the Examiner valuable to applicant.
The positive value of preliminary adverse actions of the Examiner
be fully appreciated by the applicant and his attorney. A
application will produce a patent much more likely to stand in court
a patent which has slid through the Bureau easily. This is so for
two reasons: first, the rejections have given the applicant or his
suggestions of strengthening amendments so that his claims have been
infinitely less vulnerable than would be otherwise possible;
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
in court. The Office is empowered by law to pass upon
for patents and, because of the authority vested in it, its decisions
respect to the granting of an application or on any point connected
it will be presumed to be correct by the courts.
Rule 904. A
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
may not be actually rejecting his invention. The Examiner may in
fact be quite prepared to admit the invention over the references to
prior art. He may be merely rejecting the applicant’s claims,
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
in a litigation, when it may be too late to make the explanation.
Rule 905. The
Examiners shall have original jurisdiction over all applications;
to the Director. The examination of all
for the grant of invention patents shall be under the original
of the several Examiners; their decisions, when final, shall be
to petition, or appeal to the Director within four (4) months from the
mailing date of the notice of the decision. As regards
on any specific technical or scientific matter pending final action by
the Bureau, the applicant may, upon payment of a fee, request in
for a conference with the Examiner specifying the query he would want
propound to the Examiner but in respect of which the Examiner has the
to grant the request or choose to reply to the query in writing.
Rule 906. Order
of examination. Applications filed in the Bureau and
as complete applications are assigned for examination to the respective
Examiners handling the classes of invention to which the applications
Applications shall be taken up for examination by the Examiner in the
in which they have been filed.
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
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
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the invention sought to be
The examination shall be complete with respect both to compliance of
application with the statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form,
(b) The applicant
will be notified of the Examiner’s action. The reasons for any
action or any objection or requirement will be stated and such
or references will be given as may be useful in aiding the applicant to
judge the propriety of continuing the prosecution of his
of Examiner’s action. The Examiner’s action will
be complete as to all matters, except that in appropriate
such as restriction requirement, fundamental defects in the
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.
of claims. (a) If the invention is not considered patentable,
in any manner, all the claims will be rejected by the Examiner.
the invention is considered patentable as claimed in certain of
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
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
is complex or shows or describes inventions other than that claimed by
the applicant, the particular part relied on must be designated as
as practicable. The pertinence of each reference, if not obvious,
must be clearly explained and each rejected claim specified.
may be rejected for non-compliance with Sec. 35.1 and Sec. 36.1, IP
Rule 910. Unpublished,
withdrawn and forfeited applications not cited. Unpublished,
withdrawn and forfeited applications as such will not be cited as
Rule 911. Reply
by applicant. (a) After the action of the Examiner, if the
be adverse in any respect, the applicant, if he persists in his
for a patent, must reply thereto and may request re-examination or
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
respond to every ground of objection and rejection in the prior
action (except that request may be made that objections or requirements
as to form, not necessary to further consideration of the claims, be
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
final action. The mere allegation that the Examiner has erred will not
be received as a proper reason for such reexamination or
(c) In amending an
application in response to a rejection, the applicant must clearly
out the patentable inventiveness and novelty which he thinks the claims
present, in view of the state of the art disclosed by the references
or the objections made. He must also show how the amendments
such references or objections.
Rule 912. Re-examination
and reconsideration. After response by applicant, the
will be re-examined and reconsidered, and the applicant will be
if claims are rejected, or objections or requirements made, in the same
manner as after the first examination. Applicant may respond to such
action, in the same manner provided in these Regulations, with or
amendment, but any amendments after the second Examiner’s action must
be restricted to the rejection or to the objections or requirements
and the application will be again considered.
Rule 913. Final
rejection or action. (a) On the second or any subsequent
or consideration, the rejection or other action may be made final,
upon applicant’s response is limited to appeal, in the case of
of any claim or to amendment as specified in these Regulations.
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
Response to a final rejection or action must include cancellation of,
appeal from the rejection of, each claim so rejected; and, if any claim
stands allowable, compliance with any requirement or objection as to
(b) In making such
final rejection, the Examiner shall repeat all grounds of
then considered applicable to the claims in the case, clearly stating
reasons therefor. The Examiner may not cite grounds that have not been
raised in the earlier communications to the applicant.
Conversion of patent applications or applications for utility
(a) At any time before the grant or refusal of a patent, an
for a patent, may, upon payment of the prescribed fee convert his
into an application for registration of a utility model, which shall be
accorded the filing date of the initial application. An
may be converted only once.
[Sec. 110, IP
(b) At any
time before the grant or refusal of a utility model registration, an
for a utility model registration may, upon payment of the prescribed
convert his application into a patent application, which shall be
the filing date of the initial application.
110, IP Code]
Prohibition against filing of parallel
An applicant may not file two (2) applications for the same subject,
for utility model registration and the other for the grant of a patent
whether simultaneously or consecutively.
Amendment by the applicant. An applicant may amend
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
requirement of form which has been made, and amendments presenting
claims in better form for consideration on appeal may be admitted; but
any proceedings relative thereto, shall not operate to relieve the
from its condition as subject to appeal or to save it from being
(b) Should amendments
touching the merits of the application be presented after final
or after appeal has been taken, or when such amendment might not
be proper, they may be admitted upon a showing of good and sufficient
why they are necessary and were not earlier presented.
Amendment and revision required. The
claims and drawing must be amended and revised when required, to
inaccuracies of description and definition or unnecessary prolixity,
to secure correspondence between the claims, the specification and the
Amendment of disclosure. No deletion or addition
shall broaden the disclosure of an application to include new matter
the filing date of the application. All amendments to the
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
from or an addition to the original disclosure, cannot be added to the
application even though supported by a supplemental oath, and can be
or claimed only in a separate application.
Amendment of claims. The claims may be amended by canceling
claims, by presenting new claims or by amending the language of
new claims (such amended claims being in effect new claims). In
new or amended claims, the applicant must point out how they avoid any
reference or ground of rejection of record which may be pertinent.
in order to facilitate the processing of the examination of the
, the applicant shall indicate in his response which form part in the
disclosure constitutes the basis of the amendments.
Manner of making amendments. Erasures, additions,
or alterations of the papers and records must not be made by the
Amendments by the applicant are made by filing a paper in accordance
these Regulations, directing or requesting that specified amendments be
made. The exact word or words to be stricken out or inserted in
application must be specified and the precise point indicated where the
deletion or insertion is to be made. The basis of the proposed
in the original application as filed shall be indicated.
Entry and consideration of amendments. (a)
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
(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
comply with this rule may not be accepted. Untimely amendatory
may be refused entry and consideration in whole or in part.
Amendments to the drawing. (a) No
in the drawing may be made except by permission of the Bureau.
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
with the search request. The paper requesting amendments to the
should be separate from other papers. The drawing may not be
from the Bureau except for signature. Substitute drawings will not
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
no interlineations or deletions shall appear in the clause as finally
Matter cancelled by amendment can be reinstated only by a subsequent
presenting the cancelled matter as a new insertion.
Substitute specification. If the number or nature of
shall render it difficult to consider the case, or to arrange the
for printing or copying, the Examiner may require the entire
or claims, or any part thereof, to be rewritten. A substitute
will ordinarily not be accepted unless it has been required by the
A substitute specification may be required within two (2) months
from grant of the patent prior to publication of the patent in the IPO
Numbering of claims. The original numbering of the
must be preserved through the prosecution. When claims are
the remaining claims must not be renumbered. When claims are
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
When the application is ready for allowance, the Examiner, if
will renumber the claims consecutively in the order in which they
or in such order as may have been requested by applicant.
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.
with the Examiner concerning an application pending before the Bureau
be held only upon written request specifying the query the applicant
want to propound and after payment of the required fee, but in respect
of which the Examiner has the jurisdiction to grant interview or
reply to the query in writing. The interview shall take place within
premises of the Bureau and during regular office hours as specified by
the Examiner. All interviews or conferences with Examiners shall be
to writing and signed by the Examiner and the applicant immediately
the conference. Such writing shall form part of the records of the
Interviews for the discussion of pending applications shall not be held
prior to the first official action thereon.
Withdrawal of application for failure to respond within time
(a) If an
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
time specified. Any request for such extension must be filed on
before the day on which action by the applicant is due. The Examiner
grant a maximum of two (2) extensions, provided that the
period granted inclusive of the initial period allowed to file the
shall not exceed six (6) months from mailing date of the official
requiring such response.
(c) Prosecution of
an application to save it from withdrawal must include such complete
proper action as the condition of the case may require. Any
not responsive to the last official action shall not operate to save
application from being deemed withdrawn.
(d) When action
by the applicant is a bona fide attempt to advance the case to final
and is substantially a complete response to the Examiner’s action, but
consideration of some matter or compliance with some requirements has
inadvertently omitted, opportunity to explain and supply the omission
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
or improperly signed paper.
Revival of application. An application deemed
failure to prosecute may be revived as a pending application within a
of four (4) months from the mailing date of the notice of withdrawal if
it is shown to the satisfaction of the Director that the failure was
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
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
by filing in the Bureau a written declaration of withdrawal, signed by
the applicant himself and the assignee of record, if any, and
Grant of patent. If the application meets the
of the IP CODE and these Regulations, the office shall grant the
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
[Sec. 50, IP Code]
Contents of patent. The patent shall be issued in
of the Republic of the Philippines under the seal of the Office and
be signed by the Director of Patents, and registered together with the
description, claims, and drawings, if any, in books and records of the
[Sec. 63, IP Code]
Publication upon grant of patent. The grant of the
together with other information shall be published in the IPO Gazette
six (6) months.
[Sec. 52.1, IP Code]
Any interested party may inspect the complete description, claims, and
drawings of the patent on file with the Office.
52.2, IP Code]
Term of patent. The term shall be twenty (20) years from the
filing date of the application
[Sec. 54, IP Code]
However, a patent shall cease to be in force and effect if any
annual fees therefor is not paid within the prescribed time or if the
is cancelled in accordance with the provisions of the IP Code and these
Annual fees. The first annual fee on a patent shall
and payable on the expiration of four (4) years from the date the
is published, and on each subsequent anniversary of such date.
may be made within three (3) months before the due date. The
to pay the annual fees shall terminate should the application be
refused, or cancelled.
[Sec. 55, IP
Date application is published. The application is published
the date that the IPO Gazette containing the applications is released
circulation. For example, if the IPO Gazette containing the
is released for circulation on January 15, 1999, then the first annual
fee shall be due and payable on January 15, 2003.
Non-payment of annual fees. If any annual fee is not paid
the prescribed time, the application shall be deemed withdrawn or the
considered as lapsed from the day following the expiration of the
within which the annual fees were due. A notice that the
is deemed withdrawn or the lapse of a patent for non-payment of any
fee shall be published in the IPO Gazette and the lapse shall be
in the appropriate register of the Office.
55.2, IP Code]
Grace period. A grace period of six (6) months from
date shall be granted for the payment of the annual fee, upon payment
the prescribed surcharge for delayed payment.
55.3, IP Code]
PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT
RECORDING OF ASSIGNMENT OF LETTERS PATENT AND OF OTHER INSTRUMENTS
TITLE TO PATENTS, INCLUDING LICENSES.
Form of assignment of a patent or of an application for a patent.
To be acceptable for recording, the assignment:
(a) must be
and if in a language other than English or Filipino, the document must
be accompanied by an English translation;
before a notary public or other officer authorized to administer oaths
and perform other notarial acts, and be certified under the hand and
seal of the said notary or other officer;
by an appointment of a resident agent, if the assignee is not domiciled
in the Philippines;
can be no mistake as to the patent or application intended, must
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
date of the application should be stated, giving also the name of the
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
number is ascertained, it should adequately identify the application,
its date of execution and name of the applicant, and the title of the
by the required recordal and publication fees.
Form of other instruments affecting the title to a patent or
including licenses. In order to be acceptable for recording,
the form of such other instrument, including licenses, must conform
the requirements of the preceding rule.
Rule 1202. Assignment
and other instruments to be submitted in duplicate. The
document together with a signed duplicate thereof, shall be
If the original is not available, an authenticated copy thereof in
may be submitted instead. After recording, the Office shall
the signed duplicate or one of the authenticated copies, as the case
be, and return the original or the other authenticated copy to the
who filed the same, with a notation of the fact of recording.
Date of recording of assignment or other instrument or license
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
and accompanied by full payment of the required recording and
shall be void as against any subsequent purchaser or mortgagee for a
consideration and without notice unless it is recorded in the Office
three months from the date thereof, or prior to the subsequent purchase
[Sec. 106, IP Code]
the recording shall be published in the IPO Gazette.
Letters patent may be issued to the assignee in place of the
In the case of the assignment of a pending application for
the letters patent may be issued to the assignee of the applicant,
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
a patentee or applicant may be taken by the assignee, provided the
has been recorded.
SURRENDER, CORRECTION AND AMENDMENT OF PATENT.
Surrender of patent. (a) The owner of the patent,
written and verified consent of all persons having grants or licenses
other right, title or interest in and to the patent and the invention
thereby, which have been recorded in the Office, may surrender his
any claim or claims forming part thereof to the Office for
The petition for cancellation shall be in writing, duly verified by the
petitioner and if executed abroad shall be authenticated.
56, IP Code]
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,
no action for infringement shall lie and no right compensation shall
for any use of the patented invention before that day for the services
of the government.
[Sec. 56, IP Code]
Correction of mistakes of the Office. Upon written
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
shall have the power to correct without fee any mistake in a
incurred through the fault of the Office when clearly disclosed by the
records thereof, to make the patent conform to the records.
57, IP Code]
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
and clerical nature, not incurred through the fault of the Office.
58, IP Code]
Changes in patent. (a) The owner of the patent
have the right to request the Bureau to make changes in the
in order to:
Limit the extent of the protection conferred by it;
obvious mistakes or to correct clerical errors; and
mistakes or errors, other than those referred to in letter (b), made in
good faith; Provided, That were the change would result in broadening
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
the change shall not affect the rights of any third party which has
on the patent, as published.
Form and publication of amendments or corrections.
or correction of a patent shall be accomplished by a certificate of
amendment or correction, authenticated by the seal of the Office and
by the Director, which certificate shall be attached to the
Notice of such amendment or correction shall be published in the IPO
and copies of the patent furnished by the Office shall include a copy
the certificate of the amendment or correction.
60, IP Code]
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Assignment and transmission of rights. Patents or
for patent and the inventions to which they relate shall be protected
the same way as the rights of other property under the Civil
Inventions and any right, title or interest in and to patents and
covered thereby may be assigned, or transmitted by inheritance or
or may be the subject of a license contract.
Assignment of inventions. An assignment may be of
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
may be limited to a specified territory.
Rights of joint owners. If two or more persons
a patent and the invention covered thereby either by the issuance of
patent in their joint favor or by reason of the assignment of an
share in the patent and invention or by reason of the succession in
to such share, each joint owner shall be entitled to personally make,
sell or import the invention for his own profit: Provided, however,
neither of the joint owners shall be entitled to grant licenses or to
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]
Nature of the function of Examiners. The function of
whether or not an application for grant of patent should be allowed or
denied under the facts disclosed in the application and in the
consulted by the Examiner and under the applicable law (statutory and
is a quasi-judicial function and involves the exercise of judicial
Thus, with respect
to such function, the Director cannot lawfully exercise direct control,
direction and supervision over the Examiners but only general
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
decisions by petition or appeal.
Petition to the Director to question the correctness of the
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
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
setting forth the reasons for his decision upon the matter averred in
petition, supplying a copy thereof to the petitioner. The mere
of a petition will not stay the maximum period of six (6) months
from the mailing date of the Examiner’s action subject of the appeal
replying to an Examiner’s action nor act as a stay of other
Appeals to the Director. Every applicant for the
a patent may, upon the final refusal of the Examiner to grant the
appeal the matter to the Director. Appeal may also be taken to
Director from any adverse action of the Examiner in any matter over
these Regulations give original jurisdiction to the Examiner. A
adverse decision by the Examiner on the same grounds may be considered
as final by the applicant, petitioner, or patentee for purposes of
Effect of a final decision of an Examiner which is not
A final decision of an Examiner which is not appealed to the Director
the time permitted, or, if appealed, the appeal is not prosecuted,
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
If an application
is considered abandoned for failure of the applicant to respond to an
of the Examiner on the merits, the order declaring the application as
which has become final shall likewise have the effect of res
Time and manner of appeal. Any petition or appeal must be
by filing the petition in duplicate or a notice of appeal, as the case
may be, and payment of the required fee within two (2) months from the
mailing date of the action subject of the petition or appeal, must
the various grounds upon which the petition or appeal is taken,
must be signed by the petitioner or appellant or by his attorney of
The period herein provided shall, in no case, exceed the maximum period
of six (6) months from the mailing date of the action subject of the
Appellant’s brief required. In case of an appeal,
shall, within two (2) months, without extension, from the date of
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.
The Examiner’s answer. The Examiner shall furnish a written
in answer to the petition or appellant’s brief, as the case may be,
two (2) months from the order of the Director directing him to submit
statement. Copy of such statement shall be served on the
or appellant by the Examiner.
Appellant’s reply. In case of an appeal, the
file a reply brief directed only to such new points as may be raised in
the Examiner’s answer, within one (1) month from the date copy of such
answer is received by him.
Appeal to the Director General. The decision or
order of the
Director shall become final and executory fifteen (15) days after
of a copy thereof by the appellant unless within the said period, a
for reconsideration is filed with the Director or an appeal to the
General has been perfected by filing a notice of appeal and payment of
the required fee.
Only one motion for
reconsideration of the decision or order of the Director shall be
Rule 1309. Appellant’s
brief required. The appellant shall, within one (1) month
the date of filing of the notice of appeal, file a brief of the
and arguments on which he relies to maintain his appeal. On
to file the brief within the time allowed, the appeal shall stand
Director’s comment. The Director shall submit within
month his comments on the appellant’s brief if so required by the
Appeal to the Court of Appeals. The decision of the
General shall be final and executory unless an appeal to the Court of
is perfected in accordance with the Rules of Court applicable to
from decisions of Regional Trial Courts. No motion for
of the decision or order of the Director General shall be allowed. chanroblesvirtualawlibrary
1. Correspondence. The following regulations shall
to correspondence between patentee/applicants and the Office or the
to be transacted in writing. All business with the Office or
Bureau shall be transacted in writing. Actions will be based
on the written record. No attention will be paid to any alleged
promise, stipulation, or understanding.
of applicants and other persons unnecessary. Unless
provided, the personal attendance of applicants and other persons at
Office is unnecessary. Their business can be transacted by
to be in the name of the Director of Patents. All Office
with respect to matters within the jurisdiction of the Bureau must be
in the name of the Director of Patents. All letters and other
intended with respect to such matters must be addressed to him and if
to any other officer, they will ordinarily be returned.
for each case. In every case, a separate letter shall be
in relation to each distinct subject of inquiry.
to applications. When a letter concerns an application it
state the name of the applicant, the title of the invention, the
number and the filing date of the application.
to granted patents. When the letter concerns a granted
it shall state the name of the patentee, the title of the invention,
patent number and date of issuance.
which information cannot be given. The Office cannot
to inquiries as to the newness or inventive step of an alleged
desired to be patented in advance of the filing of an application for a
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
is open to him, and its records pertaining to all patents granted may
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
until his application comes regularly before it in the manner
by law and by these Regulations. A copy of the law, rules, or
of information, with a section marked, set to the individual making an
inquiry of the character referred to, is intended as a respectful
by the Office.
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
on the patent law.
Fees and charges to be prepaid; fees and charges
payable in advance.
Express charges, freight, postage, telephone, telefacsimile including
of paper and other related expenses, and all other charges on any
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.
3. Implementation. In the interest of the service, until
organization of the Bureau is completed, the functions necessary to
these Regulations shall be performed by the personnel of the former
of Patents, Trademarks and Technology Transfer as may be designated by
the Director General upon the recommendation of the Chiefs of the
Examining Division and the Mechanical and Electrical Examining Division
of the Bureau of Patents, Trademarks and Technology Transfer, or the
of Patents if one has been appointed and qualified or the Caretaker or
the Officer-in-Charge as the Director General may designate.
Repeals. All rules and regulations, memoranda,
and memorandum circulars and parts thereof inconsistent with these
particularly the Rules of Practice in Patent Cases, as
are hereby repealed; Provided that all applications for patents
in the Bureau of Patents, Trademarks and Technology Transfer shall be
with and patents thereon granted in accordance with the Acts under
said applications were filed, and said Acts are hereby continued to be
enforced, to this extent and for this purpose only.
Separability. If any provision in these Regulations
of such provision to any circumstance is held invalid, the
of these Regulations shall not be affected thereby.
Furnishing of certified copies. Mr. Eduardo Joson, Records
II, is hereby directed to immediately file three (3) certified copies
these Regulations with the University of the Philippines Law Center,
one (1) 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.
Effectivity. These rules and regulations shall take
fifteen (15) days after publication in a newspaper of general
Done this 29th day
of December 1998.