PART
2 UTILITY
MODELS
Rule 200.
Registrable utility models. Any technical solution of a
problem in any field of human activity which is new and industrially
applicable
shall be registrable.
Rule 200.1. Non-registrable
utility models. The following shall be excluded from
protection
as utility models:
(a)
Discoveries,
scientific theories and mathematical method;
(b)
Schemes, rules
and methods of performing mental acts, playing games or
doing
business,
and programs for computers;
(c)
Methods for treatment
of the human or animal body by surgery or therapy and diagnostic
methods
practiced on the human or animal body. This provision shall not apply
to
products and compositions for use in any of these methods;
(d) Plant
varieties
or animal breeds or essentially biological process for the production
of
plants or animals. This provision shall not apply to microorganisms and
non-biological and microbiological processes;
(e)
Aesthetic creations;
and
(f)
Anything which
is contrary to public order or morality.
Rule
200.2.
Industrial applicability. A utility
model which
can be produced and used in any industry shall be industrially
applicable.
Rule
201.
Statutory classes of utility models. A utility model
may be,
or may relate to:
(a) a useful
machine;
(b) an
implement
or tool ;
(c) a
product or
composition; or
(d) an
improvement
of any of the foregoing.
Rule
202.
First to file rule. If two or more persons
have made
the same utility model separately and independently of each other, the
right to the utility model registration shall belong to the person who
filed an application for such utility model, or where two or more
applications
are filed for the same utility model to the applicant who has the
earliest
filing date or the earliest priority date.
Rule
203.
Filing Date of Utility Model Application -
The filing
date of a utility model application shall be the date on which the
Office
received the following requirements:
a) A
properly filled-out
request for registration as prescribed by the Bureau;
b) A
description
of the utility model;
c) Claim
or Claims;
d)
Drawings or a
pictorial representation disclosing completely the utility model, if
there
is/are any; and
e)
Payment for the
filing fee
If the application does
not meet these requirements, the Bureau may receive the incomplete
utility
model application; provided it contains at least a filled-out request,
a disclosure and the prescribed filing fee. The Bureau shall
accord
as filing date the that date when all the elements specified in this
Rule
are filed or the mistakes corrected.
Rule
204.
Right of priority for utility model. An application for utility
model
filed by any person who has previously applied for the same utility
model
in another country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as of the
date of filing the foreign application: Provided, That: (a) the local
application
expressly claims priority; (b) it is filed within twelve (12) months
from
the date the earliest foreign application was filed; and (c) a
certified
copy of the foreign application together with an English translation is
filed within six (6) months from the date of filing in the
Philippines.
Rule
205.
Registration of utility model. A utility
model
application shall be registered without substantive examination
provided
all fees such as filing, excess claims and publication fees are paid on
time and all formal requirements set forth in these Regulations are
filed.
Furthermore, in order to help the applicant consider his options under
the IP Code and these Regulations, the application shall likewise be
classified
and a search conducted to determine prior art.
Rule 206.
Formality examination of utility model application. The
utility
model application shall be examined as to the completeness of the
formal
requirements prescribed in these Regulations. The formality
examination
report shall be submitted to the applicant together with the search
report
within two (2) months from filing date. The formality examination
shall take into account the parts of these Regulations on:
(a)
the right to a patent, (b) who may apply for a patent, (c)
filing date requirements and (d) formality examination.
Rule
207.
Applicant’s action on the formality examination report and the
search
report. Within two (2) months from the mailing date of the
formality
examination report and the search report, the applicant may:
(1)
voluntarily withdraw the application, (2) amend the application, (3)
convert
the application to an application for an invention patent, or,
(4)
upon payment of the required fee, request for a registrability
report.
Rule
207.1.
Voluntary withdrawal. The application shall be
deemed withdrawn
and all files expunged from the record of the Bureau upon receipt of
the
applicant’s voluntary withdrawal.
Rule
207.2.
Amended applications. The amended application shall
be subjected
to formality examination, search and classification. Report
thereon
shall be submitted to the applicant within two (2) months from receipt
of the amended application. Within two (2) months from mailing
date
of the formality examination report and the search report on the
amended
application, the applicant may: (1) withdraw the application,
(2)
convert the same to an application for an invention patent, or
(3)
upon payment of the required fee, request for a registrability
report.
The application shall be deemed withdrawn and all files expunged from
the
records of the Bureau upon receipt of the applicant’s withdrawal.
Rule
207.3.
Application converted to an application for invention patent.
The application or amended application which is converted into an
application
for an invention patent shall be processed as an invention patent
application
upon receipt of notice from the applicant.
Rule 207.4.
No action on the part of applicant where formal requirements are
complete.
Where the application meets all the formal requirements for
registrability
and the Bureau fails to receive any action from the applicant, the
utility
model shall be deemed registered upon the expiration of two (2) months
from the mailing date of the search report.
Rule
207.5.
No action on the part of applicant where formal requirements
are not
complete. Where the application fails to meet any of the
formal
requirements for registration and the Bureau fails to receive any
action
from the applicant, the application shall be deemed withdrawn and all
files
thereon shall be expunged from the records of the Bureau upon the
expiration
of two (2) months from the mailing date of the formality examination
report.
The Bureau may return to the applicant all the files expunged from its
records.
Rule
207.6.
Registrability Report. The report shall contain
citations
of relevant prior art documents with appropriate indications as to
their
degree of relevance which will serve as an aid to the applicant in the
determination of the validity of the utility model claim(s) in respect
to newness.
The registrability
report shall be given to the applicant within two (2) months from
receipt
of the request from the applicant. It shall be included in the
publication
of the registered utility model.
Rule 208.
Requirements for Applications for Utility Model. An
application
for Utility Model registration and other correspondences shall be in
Filipino
or English and must be addressed to the Director of the Bureau of
Patents
of the Intellectual Property Office (IPO).
The application shall
contain the following:
Rule
208.1.
Title. The title should be as short and specific as
possible, and
should appear as heading on the first page of the specification.
All fancy names are not permissible in the title.
Rule
208.2.
Technical field. A statement of the technical field of the
art to
which the utility pertains. The statement should be directed to
the
subject matter of the claimed utility model.
Rule
208.3.
Background of the utility model. It is a description
which indicates
the so-called “background art” constituting the related prior art or
state
of the art or known technology for the utility model sought to be
registered,
including references to specific documents where appropriate. Where
applicable,
the problems involved in the information which may be
solved
by the applicant’s utility model should be indicated.
Rule
208.4.
Brief description of the several views of the drawings, if
there be
any. Every view of the drawings should be briefly described, and
indicated
with corresponding figure numbers.
Rule 208.5. Detailed
description. The detailed description must specifically include a
complete
description of the manner of making and using the utility model. It
must
set forth the precise or exact utility model for which registration is
sought, in such manner as to distinguish the utility model from the
prior
art it pertains to and the technical problem solved by the
utility
model should be indicated.
Rule
208.6.
Claim or claims.
a) The claim(s) must
define the subject matter of the utility model for which registration
is
sought. Such claim(s) should be clear and concise and fully supported
by
the description.
b) If the utility
model application relates to an improvement, the claim(s) should
specifically
point out and distinctly claim the improvement in combination with a
preamble
statement indicating the prior art features which are necessary for the
definition of the claimed subject matter.
Rule
209.
Unity of utility model. Only one independent genus
or generic
claim is permissible in a utility model application. However,
specific
variations of the utility model may be claimed in a reasonable number
of
dependent claims in a single application, provided such variations fall
under a single statutory class provided in these Regulations and are
embodied
under a single general innovative concept. Such specific
variations
of the claimed utility model must fall within the scope of the generic
claim.
Rule
209.1.
Claims incurring fee. (a) Any utility model 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
210.
Requirement for restriction; division. A
restriction or division
of multiple embodiments in a utility model application may be deemed
proper
if such embodiments are independent and distinct, or can not be
considered
as specific variations specified in these Regulations. A
divisional
application covering the restricted embodiment(s), if filed during the
pendency of the utility model application, shall be entitled to the
benefit
of the filing date of such parent application.
Rule 211. Publication
upon registration of the utility model. Registration
of
utility model shall be published in the form of bibliographic data and
representative drawing, if any, in the IPO Gazette within six (6)
months after registration.
Rule
212.
Term of registration of utility model. A
utility
model registration shall expire, without any possibility of renewal, at
the end of seventh year after the date of the filing of the
application.
However, taking into
account the first-to-file rule, the volume of pending applications as
of
the effectivity of the IP Code and the time that has lapsed between the
effectivity of the IP Code and the effectivity of these
Regulations:
(a) The
registration
of Utility model applications pending at the effective date of, and
proceeded
with in accordance with, the IP Code shall expire, without possibility
of renewal, at the end of seven (7) years from effectivity of these
Regulations;
(b)
The registration
of utility model application filed after the effectivity of the IP Code
and pending upon effectivity of these Regulations shall expire, without
possibility of renewal, at the end of seven (7) years from effectivity
of these Regulations.
Rule
213.
Cancellation of the utility model registration. The
utility
model registration shall be cancelled on the following grounds:
(a) That the
utility
model does not qualify for registration as a utility model and does not
meet the requirements of novelty and industrial applicability or
it is among non-registrable utility models;
(b) That
the description
and the claims do not comply with the prescribed requirements;
(c) That
any drawing
which is necessary for the understanding of the utility model has not
been
furnished;
(d) That
the owner
of the utility model registration is not the maker or his successor in
title.
Rule
214. Conversion of invention patent application to an application
for
utility model registration. At any time before the grant or
refusal
of a patent for an invention, an applicant for a patent for an
invention
may, upon payment of the prescribed fee, convert his application into
an
application for registration of a utility model, which shall be
accorded
the filing date of the application. An application may be
converted
only once.
Rule
215. Conversion of an application for utility model
registration
to a patent application. At any time before the grant or
refusal
of a utility model registration, an applicant for a utility model
registration
may, upon payment of the prescribed fee, convert his application into a
patent application, which shall be accorded the filing date of the
utility
model application.
Rule
216. Prohibition against filing of parallel applications.
An applicant may not file two (2) applications for the same subject,
one
for utility model registration and the other for the grant of a patent
for an invention whether simultaneously or consecutively.
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