PART
3 INDUSTRIAL
DESIGNS
Rule 300.
Definition of industrial design. An industrial
design
is any composition of lines or colors or any three-dimensional
form,
whether or not associated with lines or colors: Provided
that,
such composition or form should give a special appearance
to
and can serve as pattern for an industrial product or handicraft that
are
new or original.
Rule
301.
Requisites for registrability of industrial design.
In order
to be registrable, an industrial design must be any new or original
creation
relating to the ornamental features of shape, configuration, form, or
combination
thereof, of an article of manufacture, whether or not associated with
lines,
patterns or colors, which imparts an aesthetic and pleasing appearance
to the article. The design which is embodied in any composition of
lines,
patterns or colors must be inseparable from the article and cannot
exist
alone merely as a scheme of surface ornamentation.
An article of manufacture
is defined as anything which belong to the useful or practical art or
any
part including thereof which can be made and sold separately.
Industrial designs
that are dictated essentially by technical or functional considerations
to obtain a technical result or those that are contrary to public
order,
health or morals, are not registrable.
Rule
301.1.
Requisites for registrability explained. The
object
of the statute is to encourage the decorative arts and a
design,
which merely pleases the eye, is a proper
subject
matter for a design registration. That is to say, a
registrable
design must not only be new or original, but ornamental as
well.
Ornamentation implies beauty, the giving of a pleasing appearance
to an object or article. Registrable design must therefore show a
variance
which enhances the aesthetic beauty and attractive appearance of the
article
and which significantly differs from known design features or
combination
of known design features.
Rule
302.
Degree of novelty required. The standard of novelty
established
by Sections 23 (Novelty) and 25 (Non-prejudicial disclosure) of the IP
Code applies to industrial designs: provided that the
period of twelve (12) months specified in Section 25 shall be six (6)
months
in the case of designs.
An industrial design
shall not be considered new if it differs from prior designs only in
minor
respects that it can be mistaken as such prior designs by an
ordinary
observer.
Rule
303.
Filing date of industrial design application. The Bureau
shall accord
as the filing date of an application for industrial design registration
the date on which the Bureau received the following elements :
(a)
Indications
allowing the identity of the applicant to be established; and
(b)
A
representation of the article embodying the industrial design or a
pictorial
representation thereof.
If these requirements
are not received by the Bureau upon the filing of the application, it
shall
nevertheless accept the application and accord as the filing date the
date
on which all the formal requirements for registration are filed or the
mistakes are corrected in accordance with these Regulations.
Rule
304.
First to file rule. If two or more persons have made the same
design separately and independently of each other, the right to the
design
registration shall belong to the person who filed an application for
such
design, or where two or more applications are filed for the same design
to the applicant who has the earliest filing date or the earliest
priority
date.
Rule 305.
Right of priority for design. An application for design filed
by any person who has previously applied for the same design 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 six (6) months from the
earliest
filing date of the corresponding foreign application; 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 306.
Registration of industrial design. If the application
meets
the requirements of the IP Code and these regulations, the Bureau
shall effect the registration of the industrial design: Provided
that all the fees are paid on time. Furthermore, in order to help the
applicant
consider his options under the IP Code and these Regulations, the
application
shall be classified and a search conducted to determine prior art.
Rule 307.
Formality examination of industrial design application. The
industrial
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
308.
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, or,
(3)
upon payment of the required fee, request for a registrability
report.
Rule
308.1.
Voluntary withdrawal. The application shall be
deemed withdrawn
and all files expunged from the records of the Bureau upon receipt of
the
applicant’s voluntary withdrawal.
Rule
308.2.
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, or, (2)
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
308.3.
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
industrial
design shall be deemed registered upon the expiration of two (2) months
from the mailing date of the search report.
Rule
308.4.
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
308.5.
Registrability report. This 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 parties concerned in the
determination
of the validity of the industrial design claim 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 309.
The Application. An application for industrial design
registration
and other correspondences shall be in Filipino or English and must be
addressed
to the Director of the Bureau.
The application shall
contain the following:
(c) Drawings
of
the different views of the design showing the complete appearance
thereof
including the signature of the applicant or representative. The Bureau
may also accept photographs or other adequate graphic representation of
the design provided the same comply with the requirements of these
Regulations
regarding drawings of industrial designs.
Rule 310.
Fees. An application for an industrial design
registration
shall be subject to the payment of the filing fee and a publication fee
within one (1) month from the date that the application was received by
the Office.
Rule
311.
Specimen. The Bureau of Patents may require that the
application
be accompanied by a “specimen” of the article embodying the industrial
design which requirement shall be subject to the payment of the
prescribed
fee within one (1) month from submission of such specimen.
The specimen is defined
as a sample or unit of the industrial product that is
deliberately
selected for examination, display or study and chosen as typical of its
kind.
Rule
312.
Special form of specification for application for registration of
industrial
design. The application for registration of industrial
design shall include a specification containing the following
matters,
arranged in the order hereunder shown:
(a) Title of
the
design;
(b)
Detailed description
of the several views or figures of the formal drawings;
(c)
Statement of
the characteristic features of the design, if required; and
(d)
Claim.
Rule
312.1.
Title. The title of the design must technically designate
the particular
article embodying the design.
Rule
312.2.
Brief description of the several views of the drawings.
Every
view of the drawing should be briefly described, i.e.,
perspective,
front, side, top, bottom and/or back, and indicated with corresponding
figure numbers.
Rule
312.3.
Characteristic-feature description. A characteristic
-feature statement
describing the particular novel and ornamental features of the claimed
design which are considered to be dominant.
Rule
312.4.
Claim. The claim shall be in formal terms to the
ornamental
design for the article (specifying name) substantially as shown and
described.
More than one claim is neither required nor permitted.
Rule
312.5.
Special requirements for the drawing of an industrial
design.
In addition to the drawings being made in conformity with the common
rules
laid down for drawings for utility models and industrial
designs,
the drawings for an industrial design must comprise
sufficient
number of views to constitute a complete disclosure
of
the appearance of the article. Appropriate surface shadings must
be used to show the character or contour of the surfaces
represented.
In case of a color
claim, a cross-sectional view of the design may be required in lieu of
surface shading, and the color coding based on the color chart as
prescribed by the Bureau should be applied.
Rule
312.6.
Requirements for graphic representation of industrial designs.
Graphic
representation of Industrial design such as computer aided drawing
(CAD)
in lieu of the India Ink Drawing could be accepted provided that such
should
be made in conformity with these Regulations particularly with request
to the special requirements for drawing of an industrial design.
Rule
313.
Several industrial design in one application. More
than one
embodiment of an industrial design in one application may be
permissible
in a proper case. A number of articles presented should not be
patently
distinct from each other, and they should be of substantially similar
dominant
design features that are embodied in a single design concept.
They
must relate to the same subclass of the International Classification or
to the same set or composition of articles. A “set of
articles” which is customarily sold or used together as a set may be
made
a proper subject matter in one application for design registration
provided
that each article is of, or has, the same design or a
substantially
similar design.
Rule 313.1. Restriction;
division. A restriction or division of multiple design embodiments
may be deemed proper if two or more independent or distinct designs are
presented in one design application for registration.
Rule
314.
Publication upon registration of industrial design.
Registration
of industrial design shall be published in the form of bibliographic
data
and representative drawing in the IPO Gazette within six (6) months
after
registration. The publication shall include the registrability
report
if one was requested.
Rule
315.
Term of industrial design registration. The term
shall be
five (5) years from the filing date of the application and may be
renewed
for not more than two (2) consecutive periods of five (5) years each,
by
paying the renewal fee. [Secs. 118.1 and 118.2, R.
A.
8293].
However, taking into
account the first-to-file rule, the volume of applications pending upon
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
first term
of the industrial registrations filed prior to the effectivity of, and
processed under, the IP Code shall end five (5) years from the
effectivity
of these Regulations.
(b) The
first term
of the industrial registrations filed under the IP Code and pending
upon
the effectivity of these Regulations shall end five (5) years from the
effectivity of these Regulations.
Rule
316.
The renewal fee. The renewal fee shall be paid
within twelve
(12) months preceding the expiration of the period of
registration.
A grace period of six (6) months shall be granted for payment of the
fees
after such expiration, upon payment of a surcharge.
Rule
317.
Cancellation of design registration. At any time during
the term
of the industrial design registration, any person upon payment of the
required
fee, may petition the Director of Legal Affairs to cancel the
industrial
design on any of the following grounds:
(a) If the
subject
matter of the industrial design is not registrable within the terms of
Sections 112 and 113 of the IP Code;
(b) If
the subject
matter is not new; or
(c) If
the subject
matter of the industrial design extends beyond the content of the
application
as originally filed.
Rule
317.1.
Where the grounds for cancellation relate to a part of the
industrial
design, cancellation may be effected to such extent only. The
restriction
may be effected in the form of an alteration of the effected features
of
the design.
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