PART
6 FILING
DATE
AND FORMALITY EXAMINATION
Rule 600. Filing
date requirements. The filing date of a patent
application
shall be the date on which the Office received the following elements
in
English or Filipino:
(a) An
express or
implicit indication that a Philippine patent is sought;
(b)
Information identifying
the applicant; and
(c)
Description of
the invention and one (1) or more claims.
Rule
600.1.
Incomplete application. Where the application refers
to a
drawing or drawings, it shall not be considered complete if the drawing
or drawings are not included in the application.
Rule
600.2.
For purposes of obtaining a filing date, the Bureau may accept a copy
of
the application received by the resident agent by telefax, subject to
submission
of the original copy within two (2) months from the filing date.
Rule
601.
According a filing date. The Office
shall examine
whether the patent application satisfies the requirements for the grant
of filing date as provided in these Regulations. If the filing
date
cannot be accorded, the applicant shall be given an opportunity to
correct
the deficiencies. If the application does not contain all the
elements
indicated in these regulations, the filing date should be that date
when
all the elements are received. If the deficiencies are not
remedied
within two (2) months from the date on which the application was
initially
presented to the Office, the application shall be considered
withdrawn.
[Sec. 41, IP Code]
Rule
602.
Late-filed or missing drawings. (a) If the formality
examination
reveals that the drawings were filed after the filing date of the
application, the Bureau shall send a notice to the applicant that the
drawings
and the references to the drawings in the application shall be
deemed
deleted unless the applicant requests within two (2) months that the
application
be granted a new filing date which is the date on which the drawings
were
filed.
(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
applicant
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
Bureau
and the applicant.
Rule
603.
Formality examination. If a patent application has
been accorded
a filing date and the required fee has been paid within one (1) month,
compliance with other requirements will be checked. Such other
requirements
may relate to the following:
(a) Contents
of
the request for grant of a Philippine patent;
(b)
Priority documents
if with claim of convention priority (i.e., file number, date of
filing and country of the priority applications);
(c) Proof
of authority,
if the applicant is not the inventor;
(d) Deed
of assignment;
(e)
Payment of all
fees, (e.g., excess claims)
(f)
Signatures of
the applicants;
(g)
Identification
of the inventor; and
(h)
Formal drawings.
Rule 604. Unity
of invention. (a) The application shall relate to one
invention
only or to a group of inventions forming a single general inventive
concept.
[Sec. 38.1, IP Code]
(b) If several
independent inventions which do not form a single general inventive
concept
are claimed in one application, the Director may require that the
application
be restricted to a single invention. A later application filed
for
an invention divided out shall be considered as having been filed on
the
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,
as
may be granted. Provided further , That each divisional application
shall
not go beyond the disclosure in the initial application.
[Sec. 38.2, IP Code]
Rule 604.1.
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
shall
be fulfilled only when there is a technical relationship among those
inventions
involving one or more of the same or corresponding special technical
features.
The expression “special technical features” shall mean those technical
features that define a contribution which each of the claimed
inventions,
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
inventions
are claimed in separate claims or as alternative within a single
claim.
(c) A plurality of
independent claims in different categories may constitute a group of
inventions
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
permissible
in any one application are the following:
(1) in
addition
to an independent claim for a given product, an independent claim for a
process specially adopted for the manufacture of the product, and an
independent
claim for a use of the product; or
(2) in
addition to
an independent claim for a given process, an independent claim for an
apparatus
or means specifically designed for carrying out the process; or
(3) in
addition to
an independent claim for a given product, an independent claim for a
process
specially adapted for the manufacture of the product, and an
independent
claim for apparatus or means specifically designed for carrying out the
process.
Rule 606.
Reconsideration
for requirement. (a) If the applicant disagrees
with
the requirement of division, he may request reconsideration and
withdrawal
or modification of the requirement, giving the reasons therefor.
In requesting reconsideration, the applicant must indicate a
provisional
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
requirement
is repeated and made final, the principal Examiner will, at the same
time,
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
prosecution
on claims of the elected invention may be continued during such
appeal.
Appeal may be deferred until after final action on or allowance of the
claims of the invention elected. Appeal may not be allowed if
reconsideration
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
directed
to an invention divisible from the invention previously claimed, such
claims,
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
one
species embraced thereby, the Examiner, if of the opinion, after a
complete
search on the generic claim presented is allowable, shall require
the applicant in his response to that action to elect the species of
his
invention to which his claim shall be restricted, if no generic claim
is
finally held allowable.
Claims directed neither
to the species nor to the genus of the disclosed invention maybe
allowed.
Markush type claims, i.e., claims which enumerate in
alternative
manner, members or variations which are properly claimable as species
claims
may likewise be allowed, provided that the amount of the fees payable
by
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
which
are not elected after a requirement for division may be the subject of
separate applications which will be examined in the same manner as
original
applications. However, if such an application is filed before the
original application is patented or withdrawn, and if it is identical
and
the papers constituting an exact copy of the original papers which were
signed and executed by the applicant, signing and execution of the
applicant
may be omitted; such application may consist of the filing fee, a copy
of the drawings complying with rules relating to drawings and filed,
together
with a proposed amendment canceling the irrelevant claims or other
matters.
Rule 611.
Divisional
application. (a) The applicant may file a divisional application on
a pending application before the parent application is withdrawn,
abandoned
or patented, provided that the subject matter shall not extend beyond
the
content of the parent application.
The divisional application
shall be accorded the same filing date as the parent application, and
shall
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
date
and number of any application for a patent filed by him abroad,
hereafter
referred to as the “foreign application”, relating to the same or
essentially
the same invention as that claimed in the application filed with the
Office
and other documents relating to the foreign application. [Sec.
39, IP Code]
Rule 612.1.
Other documents relating to the foreign application may consist of the
following:
(a) A copy
of the
search reports in English on the corresponding or related foreign
application
prepared by the European, Japanese or United States Patent Offices,
searching
authorities under the Patent Cooperation Treaty or by the office where
the first patent application was filed.
(b)
Photocopy of
the relevant documents cited in the search report;
(c) Copy
of the patent
granted to the corresponding or related application;
(d) Copy
of the examination
report or decision on the corresponding or foreign related application;
and
(e) Other
documents
which could facilitate adjudication of the application.
Rule 612.2.
Non-compliance. The application is considered withdrawn if
the
applicant fails to comply with the requirement to furnish information
concerning
the corresponding foreign application, within the specified period.
|