WHEREAS,
the State recognizes that an effective industrial property system is
vital
to the development of domestic creativity, facilitates transfer of
technology,
attracts foreign investments and ensures market access for our products;
WHEREAS,
it is the policy of the State to streamline administrative procedures
in
granting patents and enhance the enforcement of intellectual property
rights
in the Philippines;chanrobles virtuallaw libraryred
WHEREAS,
Senate Resolution No. 74 dated 05 February 2001 was passed whereby the
Philippines ratified the Patent Cooperation Treaty (PCT);
WHEREAS,
since 1978, the PCT system has offered investors and industry an
advantageous
route for obtaining patent protection internationally; aims to
facilitate
procedures for obtaining legal protection for inventions and
disseminate
technical information; seeks to simplify and to render more effective
and
more economical – in the interest of the applicants and the patent
offices
– previously established means of applying in several countries for
patent
protection for invention; would substantially benefit Philippine patent
agents and industry from the filing in the Philippines of international
applications under the PCT;
WHEREAS,
in accordance with Article 63 of the PCT, the Treaty shall enter into
force
with respect to the Philippines, three (3) months after the date on
which
it has deposited its Instrument of Accession with the Director General
of the World Intellectual Property Organization (WIPO);chanrobles virtuallaw libraryred
WHEREAS, the
Philippines
deposited its Instrument of Accession with the Director General of the
WIPO on 17 May 2001; and, therefore, the PCT entered into effect with
respect
to the Philippines on 17 August 2001;
WHEREAS,
there is a need to guide applicants, patent attorneys/agents, and other
interested parties in the Philippines on the PCT and its rules and
regulations;chanrobles virtuallaw libraryred
NOW,
THEREFORE, pursuant to Senate Resolution No. 74 dated 05 February 2001,
the provisions of the Patent Cooperation Treaty and the Regulations
thereunder,
Republic Act No. 8293 also known as the Intellectual Property Code of
the
Philippines, the following rules on PCT applications are hereby
promulgated:chanroblesvirtuallawlibrary
PART I.
GENERAL
PROVISIONS
Rule 1. Title.
- These rules shall be known as the Philippine Rules on PCT
Applications
or “PRo-PCT”.cralaw:red
Rule 2. Definitions.
- Unless otherwise specified, the following terms and acronyms shall be
understood as follows:chanrobles virtual law library
(a)
“Administrative Instructions” means that body of instructions for
operating
under the Patent Cooperation Treaty referred to in PCT Rule 89;
(b)
“designated Office” means a national patent office or intergovernmental
organization of or acting for the State designated by the applicant
under
Chapter I of the Treaty;chanrobles virtuallaw libraryred
(c)
“designated State” refers to the State in which protection for the
invention
is desired on the basis of the international application and which is
designated
under Chapter I of the Treaty;
(d)
“Director General” means the Head of the Intellectual Property Office
of
the Philippines;
(e)
“elected Office” means a national patent office or intergovernmental
organization
of or acting for the State elected by the applicant under Chapter II of
the Treaty;chanrobles virtuallaw libraryred
(f)
“elected State” refers to the State in which protection for the
invention
is desired on the basis of the international application and which has
been elected under Chapter II of the Treaty;chanrobles virtuallaw libraryred
(g)
“IB” and “International Bureau” mean the International Bureau of the
World
Intellectual Property Organization as referred to in PCT Article 2(xix);
(h)
“International Application” and “PCT Application” mean an application
filed
under the Treaty;
(i)
“International Searching Authority” or “ISA” and “International
Preliminary
Examining Authority” or “IPEA” mean a national patent office or
intergovernmental
organization as appointed under the Treaty which processes
international
applications as prescribed by the Treaty and PCT Regulations;chanrobles virtuallaw libraryred
(j)
“IP Code” means
Republic
Act No. 8293 otherwise known as the Intellectual Property Code of the
Philippines;
(k)
“IPO” or “Office” means the Intellectual Property Office of the
Philippines;
(l)
“IPO Fee Structure” means the rules and regulations establishing the
fees
and charges of the Intellectual Property Office of the Philippines;
(m)
“PCT” and “Treaty” mean the Patent Cooperation Treaty;
(n)
“PCT-EASY” means the software made available by the International
Bureau
for facilitating the preparation of the request part of an
international
application, and printing thereof, for filing together with a computer
diskette prepared using that software, containing a copy in electronic
form of the data contained in the request and of the abstract;
(o)
“PCT Regulations” means the set of rules, referred to in PCT Article 58
and annexed to the Treaty referred to as the Regulations Under the PCT;chanrobles virtuallaw libraryred
(p)
“Priority Date” for the purposes of computing time limits under the PCT
is defined in PCT Article 2(xi) as follows:chanrobles virtual law library
(i)
where the international application contains a priority claim under PCT
Article 8, the filing date of the application whose priority is so
claimed;(ii)
where the international application contains several priority claims
under
PCT Article 8, the filing date of the earliest application whose
priority
is so claimed;(iii)
where the international application does not contain any priority claim
under PCT Article 8, the international filing date of such application; (q)
“receiving Office” means a national patent office or intergovernmental
organization with which the international application has been filed;
Other
terms and expressions not defined in this rule are to be taken in the
sense
of the Treaty and PCT Regulations.
Rule
3. Application of the PCT and PCT
Regulations.
–
In all matters not
specifically
provided for under these Rules, the provisions of the Treaty,
PCT
Regulations and PCT Administrative Instructions
shall
apply in the processing of an international application during the
international
phase of the application. In the event of conflict between these Rules
and those of the PCT, the provisions of the latter shall apply.
The
international phase covers the period from the filing of the
application
in accordance with the PCT until the application enters the national
phase.
Rule 4. Effect
of an International Application. - 4.1.
An international application designating the Philippines for the
purposes
of obtaining a national patent or a utility model, which has been
accorded
an international filing date in accordance with the Treaty and PCT
regulations,
shall have the effect of a national application for a patent or utility
model, respectively, regularly filed with the Intellectual Property
Office
as of the international filing date, which date shall be considered to
be the actual filing date in the Philippines. (PCT Article 11(3))
4.2.
Subject to Review by the IPO under Rule 37, an international
application
designating the Philippines that is withdrawn or considered withdrawn
under
the Treaty and PCT Regulations, before the applicant has entered the
national
phase in the Philippines as provided in Part 3 of these Rules, that
international
application is likewise withdrawn or considered withdrawn in the
Philippines.
(PCT Article 24)
Rule
5. Seeking Two (2) Kinds of Protection; Prohibition Against Filing of
Parallel
Applications. - In respect of the Philippines as a designated or
elected
State, an applicant cannot
seek two (2) kinds of protection for
the same subject, one for utility model registration and the other for
the grant of a patent whether simultaneously or consecutively.
(PCT Article 43, IP
Code Section 111)
Rule
6. Delivery Service. – Where the applicant sends a document or letter
through
mail and that document or letter is lost or reaches the IPO after the
expiration
of the applicable time limit under the Treaty and PCT Regulations and
these
Rules, PCT Rules 82.1(a) to (c) shall apply provided that the delivery
service used is registered mail by a postal authority.chanrobles virtuallaw libraryred
Rule
7. Appointment of Resident
Agent or Representative. – (a) An applicant who is not a resident of
the
Philippines shall appoint and maintain an agent or representative
residing
in the Philippines upon whom notices or processes for judicial or
administrative
procedure may be served relating to the international application filed
with the IPO as a receiving, designated or elected Office. An applicant
who is a resident of the Philippines may likewise appoint and maintain
an agent or representative residing in the Philippines for the same
purpose.
The list of registered resident agents or representatives is available
in the IPO website.
(b)
Where the international application is filed with the IPO as a
receiving
Office, the appointment of an agent must be effected in the Request
form,
signed by all applicants, or in a separate power of attorney submitted
to the IPO where the Request form is signed by the appointed agent in
accordance
with PCT Rule 90.4. The separate
power of attorney does not require legalization or notarization.
(c)
For purposes of the procedure before the IPO as a designated or elected
Office, the manner of appointing an agent or representative shall
comply
with the requirements prescribed in the implementing rules and
regulations
of the IP Code.cralaw:red PART II.
INTERNATIONAL
PHASE
Rule
8. The IPO as a Receiving Office.
– 8.1. The IPO shall act as a Receiving Office only for applicants who
are residents or nationals of the Philippines. (PCT Article 2 (xii) and
(xv), PCT Article 10, PCT Rule 19)chanrobles virtuallaw libraryred
8.2.
The IPO, when acting as a Receiving Office, will be identified by the
full
title “Philippine Receiving Office” or by the abbreviation “RO/PH.”
(Section
107(b) of the PCT Administrative Instructions)
8.3.
Without prejudice to the national security and interests of the
Republic
of the Philippines, the IPO shall perform all acts connected with the
discharge
of duties of a Receiving Office under the Treaty and PCT Regulations.
The
functions of the IPO as a Receiving Office include:chanroblesvirtuallawlibrary
(1) According
of international filing dates to international applications fulfilling
the requirements of PCT Article 11(1) and in particular, PCT Rule 20;(2) Checking
that international applications meet the standards for format and
content
of PCT Article 14(1) and in particular, PCT Rules 9, 26, 29.1, 37, 38,
91, and portions of PCT Rules 3 through 11; (3)
Assessing, collecting, and transmitting fees due for processing
international
applications (PCT Rules 14, 15, 16, 16bis); (4)
Transmitting the record and search copies to the IB and ISA,
respectively
(PCT Rules 22 and 23); and
(5)
Transmitting the international application to the IB for processing,
where
the IPO is not the competent Receiving Office as defined under PCT Rule
19. (PCT Rule 19.4)chanrobles virtuallaw libraryred
Rule
9. International Search and International Searching Authority. – 9.1.
An
international application shall be the subject of an international
search,
which shall be carried out by an ISA. The objective of the
international
search is to discover relevant prior art. (PCT Article 15 (1) and (2))
9.2.
The Director General shall specify one or more competent ISAs for
international
applications filed with the IPO and, subject to any required acceptance
or compliance with applicable requirements, the IPO shall publish in
its
website a list of those competent ISAs. (PCT Article 16(2), PCT Rules
35.1
and 35.2)
9.3.
The applicant shall, in his Request Form, indicate his choice of the
competent
ISA. (PCT Rule 4.14bis)
Rule
10. International Preliminary Examination and International Preliminary
Examining Authority. - 10.1.
An international application may be the subject of an international
preliminary
examination which shall be carried out by an IPEA. (PCT Article 32(1))chanrobles virtuallaw libraryred
10.2.
The objective of the international preliminary examination is to
formulate
a preliminary and non-binding opinion on the questions whether the
claimed
invention appears to
be novel, to involve an inventive
step (to be non-obvious) and to be industrially applicable. (PCT
Article
33(1))
10.3.
The Director General shall specify one or more competent IPEAs for
international
applications filed with the IPO and, subject to any required acceptance
or compliance with applicable requirements, the IPO shall publish in
its
website a list of those competent IPEAs. (PCT Rule 59.1(a))
10.4
Where there are two or more competent IPEAs for applications filed with
the IPO, the applicant shall, in his Demand Form, indicate his choice
of
the competent IPEA.cralaw:red
Rule
11. Language Prescribed by the Receiving Office. – The language
accepted
by the Philippines receiving Office for the filing of international
application
is Filipino or English, provided that it is sufficient that the
description
and claims be in Filipino or English for the purposes of according an
international
filing date under PCT Article 11(1). [PCT Rules 12.1, 20.4(c) and
48.3(a)]
Rule12.
Translation for the Purposes of International Search. - (a) Where the
international
application is filed in Filipino, the applicant shall, within one (1)
month
from the date of receipt of the international application by the IPO,
furnish
to the Office a translation of the international application into
English
in accordance with PCT Rule 12.3 (a) and (b).cralaw:red
(b)
If the Engish translation is not furnished within the time limit under
paragraph
(a), the Office shall invite the applicant to furnish it within one (1)
month from the date of invitation or two (2) months from the date of
receipt
of the international application by the IPO, whichever expires
later.
(PCT Rule 12.3(c))
(c)
If the applicant does not furnish the English translation within the
applicable
time limit under paragraph (b), the international application shall be
considered withdrawn and the IPO as a receiving Office shall so declare
in accordance with PCT Rule 12.3(d).cralaw:red
(d)
The IPO shall promptly furnish the IB and the ISA a copy of the English
translation.chanrobles virtuallaw libraryred
Rule
13. Documents and Correspondence. – (a) Any paper submitted by the
applicant,
other than the international application itself, must, if not itself in
the form of a letter, be accompanied by a letter identifying the
international
application to which it relates and must be signed by the applicant.
(PCT
Rule 92.1(a))
(b) Correspondence intended for the applicant shall be sent to the
agent
appointed under Rule 7. (PCT Rules 90.1(a) and 90.3(a) and Section 108
of the PCT Administrative Instructions)
Rule
14. Keeping of Records and Files. - The IPO shall keep the records
relating
to the international application or purported international application
for at least (ten) 10 years from the international filing date or,
where
no international filing date is accorded, from the date of receipt of
the
purported application. (PCT Rule 93.1)
Rule
15. The International Application. - An international application shall
contain a request, a description, one or more claims, one or more
drawings
(where required), and an abstract. (PCT Article 3(2))
Rule
16. The Request. - The request shall be made in accordance with PCT
Rules
3 and 4. Copies of the Request form are available at the IPO.cralaw:red
The
Request Form may be made using PCT-EASY software made available by the
IB, in which case, the applicant is required to submit the Request as a
computer print-out together with a computer diskette containing a copy
of the electronic form of the data contained in the Request and of the
abstract prepared using that software. (PCT Rule 89ter and Section
102bis
of the PCT Administrative Instructions)chanrobles virtuallaw libraryred
Rule
17. The Description. – The description shall disclose the
invention
in a manner sufficiently clear and complete for the invention to be
carried
out by a person skilled in the art. (PCT Article 5, PCT Rule 5.1(a)(v))
The
requirements as to the format and content of the description are set
forth,
in particular, in PCT Rules 5, 9, 10, and 11, and Section 204 of the
PCT
Administrative Instructions.cralaw:red
Rule
18. The Claims. - The claim or claims shall define the matter for which
protection is sought. Claims shall be clear and concise. They shall be
fully supported by the description. (PCT Article 6, PCT Rule 6)
The
requirements as to the format and content of claims are set forth, in
particular,
in PCT Rules 6, 9, 10, and 11.cralaw:red
Rule
19. The Drawings. - Drawings which are necessary for the understanding
of the invention must be part of the international application as
originally
filed in order to maintain the international filing date during the
national
stage. If drawings are referred to in the international application but
they are missing upon filing, the IPO shall give the applicant thirty
(30)
days from the date of receipt of the international application to
submit
the drawings. If the missing drawings are received within the
thirty-day
period, the international filing date shall be the date on which such
drawings
are received. If such drawings are not timely received, all references
to drawings in the international application shall be considered
non-existent.
(PCT Article 7, 14(2), PCT Rule 26.2)
The
physical requirements for drawings are set forth in PCT Rule 11.3.cralaw:red
Rule
20. The Abstract. - The abstract shall merely serve for technical
information.
Lack of an abstract upon filing of an international application will
not
affect the granting of a filing date. If the abstract is missing, the
IPO
shall invite the applicant to submit the same within one (1) month from
the date of the invitation and the IPO shall notify the ISA
accordingly.
(PCT Article 3(3), 14(b), PCT Rule 26.1, 26.2, 38)
The
requirements as to the format and content of the abstract are set forth
in PCT Rule 8.cralaw:red
Rule
21. Priority Claim. – Any declaration referred to in Article 8(1)
(“priority
claim”) shall be indicated in the Request Form as set forth in PCT Rule
4.10.chanrobles virtuallaw libraryred
Any
correction or addition on the priority claim shall be made in
accordance
with PCT Rule 26bis.cralaw:red
Rule
22. Physical Requirements. – 22.1. An international application and
each
of the documents that may be referred to in the checklist of the
Request
Form shall be filed in one (1) copy only. (PCT Rule 11.1)
Rule
23. Who May File An International Application. - A resident or national
of the Philippines may file an international application. If there are
two or more applicants, the right to file an international application
shall exist if at least one of them is a resident or national of the
Philippines.
(PCT Article 9(1), PCT Rule 19.2(i))
Rule
24. Where to File an International Application. – 24.1. A resident or
national
of the Philippines may file an international application with the IPO
or
the IB. (PCT Rule 19.1)
24.2.
An international application may be filed directly with the IPO or
through
registered mail by postal authority.cralaw:red
Rule
25. According of International
Filing Date and its Effect. – 25.1. The IPO, as the competent receiving
Office, shall accord as the international filing date the date of
receipt
of the international application, provided that, at the time of receipt:chanrobles virtual law library
(1) at
least one applicant is a resident or national of the Philippines;chanrobles virtuallaw libraryred
(2) the
international application is in the Filipino or English language; andchanrobles virtuallaw libraryred
(3) the
international application contains at least the following elements:chanrobles virtuallaw libraryred
(i)
an
indication that it is intended as an international application;(ii) the
designation of at least one Contracting State;(iii) the
name of the applicant;(iv) a
part which on the face of it appears to be a description; and(v) a
part which on the face of it appears to be a claim or claims. (PCT
Article
11(1))
25.2.
If the IPO finds that the applicant or not one of the applicants is a
resident
or national of the Philippines or that the language is neither Filipino
nor English, the international application shall be treated and
transmitted
to the IB in accordance with PCT Rule 19.4, subject to payment of the
transmittal
fee under PCT Rule 14.
25.3.
If the IPO finds that the international application did not, at the
time
of receipt, contain the elements listed in Rule 25.1 item (3), it shall
invite the applicant to file the required correction within thirty (30)
days from the date of the invitation. If the applicant complies with
the
invitation, the IPO shall accord as the international filing date the
date
of receipt of the required correction. If the applicant does not comply
with the invitation, the IPO shall promptly in accordance with PCT Rule
20.7(i) notify the applicant that his application is not and will not
be
treated as an international application and shall indicate the reasons
therefor.
(PCT Article
11(2)(a) and (b))
chanrobles virtuallaw libraryred
Rule
26. Transmittal of the International Application. – 26.1. The IPO shall
transmit the “record copy” of the international application to the IB
in
accordance with PCT Rule 22.
26.2.
The IPO shall transmit the “search copy” of the international
application
to the competent ISA after payment of the search fee by the applicant
in
accordance with PCT Rule 23. (PCT Article 12(1))
26.3.
The Director General may prohibit or restrict the transmittal of an
application,
if in his opinion, to do so would be prejudicial to the national
security
and interests of the Republic of the Philippines. The Director General
may apply other measures, as provided under PCT Article 27(8), that
will
not prevent the transmittal of the record copy and search copy but will
restrict the contents of the transmittals. (PCT
Rule 22.1, PCT Article 27(8))
Rule
27. The International Publication and its Effect. – 27.1. In
accordance with PCT Article 21 and PCT Rule 48, the IB shall publish
the
international application promptly after the expiration of eighteen
(18)
months from the priority date of the application. However, the applicant
may ask the IB to
publish his international application any time before the expiration
of eighteen
(18) months from the priority date in accordance with PCT Rule 48.4.
27.2. In accordance with PCT Article 29(1), as far as the protection of
any rights of the applicant under Section 46 of the IP Code in the
Philippines
is concerned, the international publication in English of an
international
application shall have the same effect as a publication in the IPO
Gazette
under Section 44 of the IP
Code
and its
implementing rules
and regulations provided that notice of the international publication
and
copy of the international application has been transmitted by the
applicant
to the actual unauthorized user of the invention claimed in the
international
application pursuant to Sec. 46.2 of the IP
Code.
(PCT Article 29(1))
27.3. If the language in which the international publication has been
effected
is a language other than English, the protection of any right of the
applicant
under Section 46 of the IP Code
in
the Philippines shall be applicable only from such time as a
translation
into English has been published in the IPO Gazette under Section 44 of
the IP Code
and
its implementing rules and regulations, and, such translation into
English
has been transmitted by the applicant to the actual unauthorized user
of
the invention claimed in the international application pursuant to
Section
46.2 of the IP Code.
(PCT
Article 29(2))
. 27.4.
Where the international publication has been effected, on the request
of
the applicant, before the expiration of eighteen (18) months from the
priority
date, the rights provided for under Sec. 46 of the IP
Code shall be applicable only from the expiration of
eighteen
(18) months from the priority date subject to the conditions mentioned
in the preceding paragraphs. (PCT Article 29(3))
Rule
28. Demand for International Preliminary Examination. – 28.1. On filing
of a demand under PCT Article 31, the international application shall
be
the subject of an international preliminary examination.
28.2.
The demand for international preliminary examination shall be filed
directly
by the applicant with the competent IPEA prior to the expiration of the
nineteenth (19th) month from the priority date.
28.3.
The demand shall indicate the States in which the applicant
intends to
use the results of the international
preliminary examination.
28.4.
In accordance with PCT Article 31 and PCT Rules 57 and 58, the demand
shall
be subject to the payment by the applicant of the prescribed fees
directly
to the IPEA within one (1) month from the date on which the demand was
submitted. (PCT Rules 57, 58, and 58bis)
Copies
of the Demand Form are available at the IPO.chanrobles virtuallaw libraryred
Rule
29. Manner of Making Corrections. – Any correction offered to the IPO
as
a receiving Office may be stated in a letter addressed to the IPO if
the
correction is of such a nature that it can be transferred from the
letter
to the record copy without adversely affecting the clarity and the
direct
reproducibility of the sheet on to which the correction is to be
transferred;
otherwise, the applicant shall be required to submit the missing
requirement
or a replacement sheet containing the correction accompanied by a
letter
indicating the differences between the replaced sheet and the
replacement
sheet. (PCT Rule 26.4)
Rule
30. Delays in Meeting Time Limits. Delays in meeting time limits during
international processing of international applications may only be
excused
as provided in PCT Rule 82.cralaw:red
Rule
31. Recording of Changes. - Before the expiration of the time limit
referred
to in PCT Articles 22(1) and 39(1)(a), the IPO may receive from the
applicant
a request for the recording of a change in the person, name, residence,
nationality or address of the applicant or a change in the person, name
or address of the inventor, the agent or the common representative. The
IPO shall notify the IB of the request for recording a change. (PCT
Rule
92bis.1(a))
Rule
32. Withdrawals. - The IPO may receive from the applicant notice
of withdrawal of the international application, any designation, or
priority
claims in accordance with PCT Rule 90bis(1), 90bis(2), 90bis(3).cralaw:red
Withdrawal
of a demand or any election shall be made directly to the IB in
accordance
with PCT Rule 90bis.4.cralaw:red
Rule
33. Certified Copies of the International Application and Priority
Document.
- (a) The applicant may request the IPO to prepare a certified copy of
the international application as filed and of any corrections thereto
upon
payment of the appropriate fee. (PCT Rule 20.9)
(b)
Where the priority document is issued by the IPO, the applicant may,
pursuant
to PCT Rule 17.1(b), request the IPO to prepare and transmit the
priority
document to the IB. Such request shall be made not later than sixteen
(16)
months after the priority date and shall be subject to payment of a fee.chanrobles virtuallaw libraryred
.PART
III.
NATIONAL PHASE
Rule
34. The IPO as a Designated or Elected Office. – 34.1. The IPO will act
as the Designated or Elected Office for international applications in
which
the Philippines has been designated or elected. (PCT Articles 2(xii),
2(xiii),
2(xiv), and IP Code
Sections 5(a), 7(b), 8.1)
34.2.
The IPO, when acting as a Designated or Elected Office during
international
processing will be identified by the full title “Philippine Designated
Office” or by abbreviation “DO/PH” and “Philippine Elected Office” or
by
abbreviation “EO/PH.” (Section 107(b) of the PCT Administrative
Instructions)
34.3. The major
functions of the IPO in respect to international applications in which
the Philippines has been designated or elected, shall include:chanroblesvirtuallawlibrary(1)
Receiving various notifications throughout the international phase; and(2)
Accepting for national phase examination international applications
which
comply with Part 3 of these Rules.
Rule
35. Entry Into National Phase. – (a) An international application
enters
the national phase when the applicant furnishes IPO a copy of the
international
application in English (unless already transmitted by the IB), or, if
the
application was filed in another language, its English translation not
later than thirty (30) months from the priority date based on PCT
Article
22 (1) and PCT Article 39 (1) (a).cralaw:red
Subject
to the payment of an extension fee for late entry equal to fifty
percent
(50%) of the filing fee prescribed in the IPO Fee Structure, the entry
into the national phase may be extended by one (1) month. chanrobles virtuallaw libraryred
(b)
The filing fee prescribed in the IPO fee structure shall be paid within
one (1) month from the date of entry into the national phase; provided
that an international application which claims the priority of an
earlier
Philippine national application shall be exempt from payment of the
filing
fee.If the applicant fails to pay
the filing fee as herein provided, the application shall be deemed
withdrawn
in the Philippines.
(c)
The translation of the international application, as filed, referred to
in paragraph (a) shall include a translation into English of:chanrobles virtual law library
(1) the
description;
(2) the
claims as filed and, where applicable, as amended under PCT Article 19;
(3) any
text matter of the drawings;
(4) the
abstract; and cralaw:red
(5) where
applicable, amendments to the description, claims or drawings under PCT
Article 34, as contained in the annexes to the international
preliminary
examination report.
If
the translation of the amendments under PCT Article 19 or PCT Article
34,
as the case may be, is not included, those amendments will be
considered
cancelled.chanrobles virtuallaw libraryred
(d)
During the national phase, and at anytime before a patent is granted or
refused on the international application, the applicant may present
amendments
to the specification, claims and drawings in accordance with the IP
Code and its implementing rules and regulations.cralaw:red
Rule 36. Entry
Into the National Phase of an International Application Claiming The
Priority
of an Earlier Philippine National Application. Within one (1) month
from
the date of entry into the national phase of an international
application
claiming the priority of an earlier Philippine national application,
the
IPO shall invite the applicant to elect only one (1) application for
further
prosecution within two (2) months from the date of the invitation, or
within
a longer period which the IPO may allow but not to exceed six (6)
months
from the date of entry into the national phase.cralaw:red
Rule
37. Review by IPO as a Designated Office. – (a) Where the receiving
Office
other than the IPO has refused to accord an international filing date
to
an international application designating the Philippines or has
declared
that the international application is considered withdrawn either
generally
or as to the Philippines, or where the IB has made a finding under PCT
Article 12(3) that the international application is considered
withdrawn
because it has not received the record copy within the prescribed time
limit, the applicant may request review of the matter by the IPO
provided
the requirements of and the time limit specified by the Treaty and PCT
regulations as well as the requirements for entry into national phase
in
these Rules are complied with.cralaw:red
(b)
Where the refusal, declaration or finding mentioned in paragraph (a)
was
the result of an error or omission on the part of the receiving Office
or that the finding was the result of an error or omission on the part
of the IB, the IPO as a designated Office may treat the international
application
as if such error or omission has not occurred. (PCT Article 25)chanrobles virtuallaw libraryred
Rule
38. Time Limit to Submit the Priority Document. – 38.1. The
priority
claim of an international application designating or electing the
Philippines
shall not be disregarded by IPO, where the priority document is
received
by the IB not later than sixteen (16) months after the priority date in
accordance with PCT Rule 17.1 (a) and (b).cralaw:red
38.2.
If the priority document is not submitted to the IB within sixteen (16)
months after the priority date in accordance with PCT Rule 17.1 (a) and
(b), the applicant may submit to the IPO a certification from the
national
Office concerned stating the following data regarding the application
the
priority of which is claimed: name of the applicant, filing date,
application
number and title of the application. The certification, and its English
translation if not in English, together with payment of the fee for
extension
of time to submit priority document and the surcharge for late payment
provided for in the IPO Fee Structure, shall be submitted within six
(6)
months from the date of entry of the international application into the
national phase without need of notice. The certification and its
English
translation if not in English do not require legalization. Failure of
the
applicant to comply with this rule shall be ground to disregard the
priority
claim.cralaw:red
38.3
Where the validity of the priority claim is relevant to the
determination
of whether the invention concerned is patentable, the applicant shall
be
required to submit the English translation of the priority document.
(PCT
Rule 17.1a, 17.1b, 51bis.1(e))
Rule
39. Procedure for Grant of Patent. - An international application that
has entered the national phase shall be governed by the applicable
provisions
under Republic Act
No.
8293 and its implementing rules and regulations and the applicable
provisions of the Treaty, PCT Regulations, and PCT Administrative
Instructions.cralaw:red
Rule
40. Application of the IPO Fee Structure. - The IPO Fee Structure shall
apply after entry into the national phase of the international
application
provided that:chanrobles virtuallaw libraryred
(a)
an international application which validly claims the priority of an
earlier
Philippine national application shall be exempt from payment of fees
that
were already paid in connection with that earlier Philippine national
application;
(b)
the due date for payment of the first annual fee shall be computed from
the date of the international publication regardless of the language of
publication; and cralaw:red
(c)
the international application shall be deemed withdrawn if the
substantive
examination fee is not paid within six (6) months from the date of
entry
into the national phase. The applicant may use a form for payment
prescribed
by IPO for this purpose.
PART
III.
FEES DURING
INTERNATIONAL PHASE
Rule
41. Fees to be Collected by the IPO. – The following fees shall be
collected
by the IPO:chanroblesvirtuallawlibrary
41.1.
Fees for the benefit of the IPO. The type and amount of fees for the
benefit
of the IPO are:chanroblesvirtuallawlibrary
Ref.
Code |
Type
of Fee |
Amount(Philippine
Peso) |
901 |
Transmittal
Fee PCT Rule 14 |
3,500.00 |
902 |
Priority
Document Fee PCT Rule 17.1(b) |
500.00 |
903 |
Fee
for Transmitting Priority Document PCT Rule 17.1(b) |
1,750.00 |
904 |
Confirmation
Fee PCT
Rules 4.9(c) and 15.5(a) |
Fifty
(50%) of the sum of designation fees under PCT Rule 15.5 in Philippine
currency at the prevailing rate of exchange at the time the payment is
due |
905 |
Late
Payment Fee PCT Rule 16bis.2(a)(ii) |
3,500.00 |
906 |
Certified
Copy of the International Application Fee PCT
Rule 20.9 |
500.00 |
907 |
Transmittal
Fee PCT Rule 19.4 |
3,500.00 |
41.2.
Fees for the benefit of the IB (International Fee)
The
amount of the basic fee referred to in PCT Rule 15.1(i), the
designation
fee referred to in PCT Rule 15.1(ii) for any designation made under PCT
Rule 4.9(a), and the designation fee referred to in PCT Rule 15.5 for
any
designation made under PCT Rule 4.9(b) and confirmed under PCT Rule
4.9(c),
are published in the PCT Gazette and are available at the IPO.
41.3.
Fee for the benefit of the ISA (Search Fee)chanrobles virtuallaw libraryred
The
amount of the search fee referred to in PCT Rule 16.1 of the competent
ISA or ISAs for the Philippines is published in the PCT Gazette.cralaw:red Rule
42. Due Dates and Extension of Time Limits for Payment of Fees
Collected
by IPO. – All fees must be paid on or before the due date prescribed in
the PCT Regulations and these Rules.
42.1.
The transmittal fee, basic fee and search fee shall be paid by the
applicant
within one (1) month from the date of receipt by the IPO of the
international
application; (PCT Rule 14.1(c), 15.4(a), 16.1(f))
42.2. The
designation
fee for any designation made under PCT Rule 4.9(a) shall be paid within
a time limit of:chanroblesvirtuallawlibrary(a)
one (1) year from the priority date, or(b)
one (1) month from the date of receipt of the international application
if that one-month period expires later than one (1) year from the
priority
date; (PCT Rule 15.4(b))chanrobles virtuallaw libraryred
42.3. Where the fees due under this rule have not been paid, or that
the
amount paid is insufficient to cover the total amount due, the IPO
shall
invite the applicant to pay the required fees together with the late
payment
fee within one (1) month without extension of time from the date of
invitation;
(PCT Rule 16bis.1(a))
42.4. The designation fee under PCT Rule 15.5 for any designation made
under PCT Rule 4.9(b) and confirmed under PCT Rule 4.9(c), together
with
the confirmation fee under PCT Rule 15.5, shall be paid within fifteen
(15) months from the priority date.cralaw:red
Rule
43. Fees for the Benefit of IPO; Form, Manner and Currency of Payment.
– (a) All fees for the benefit of the IPO shall be paid in cash, money
order, bank drafts and/or checks in Philippine currency. In case of
cash
payment, the date of receipt is the date on which the full amount due
was
paid in cash. In case of money order, check or bank draft payment, the
date of receipt of the money order, check or bank draft will be the
date
of presentment provided that the same is honored upon first presentment
and provided that the payment covers the full amount due.cralaw:red
(b)
Payment shall be made to the IPO Cashier during regular working days
and
business hours from Monday to Friday, 8:00 a.m. to 12:00 noon and from
1:00 p.m. to 5:00 p.m.cralaw:red
Rule
44. Fees for the Benefit of IB and ISA; Form, Manner and Currency of
Payment.
– 44.1 All fees for the benefit of the IB and the ISA collected by IPO
as receiving Office shall be paid to IPO in the currency or any of the
currencies, if more than one, specified by the IB or the ISA as the
case
may be, in the form of cash or bank draft. In case of cash payment, the
date of receipt is the date on which the full amount due was paid in
cash.
In case of bank draft payment, the date of receipt of the bank draft
will
be the date of presentment provided that the same is honored upon first
presentment and provided further that the payment covers the full
amount
due. Payment shall be made to the IPO Cashier during regular working
days
and business hours from Monday to Friday, 8:00 a.m. to 12:00 noon and
from
1:00 p.m. to 5:00 p.m.cralaw:red
44.2.
Where the international application incurs an additional fee other than
the search fee under PCT Rule 16, the applicant shall pay directly to
the
ISA such other fees required by the ISA in the currency, form and
manner
prescribed by it.cralaw:red
44.3.
The Schedules of Fees of the IB and ISAs are published in the PCT
Gazette
and are available at the IPO.cralaw:red
Rule
45. Fees Payable to the IPEA. - The international preliminary
examination
fee and the handling fee under PCT Rule 58 shall be paid directly to
the
IPEA in the currency, form and manner prescribed by it.chanrobles virtuallaw libraryred
Other
fees due to the IPEA in accordance with the Treaty and PCT Regulations
shall be paid directly to the IPEA in the currency, form and manner
prescribed
by it.cralaw:red
The
Schedules of Fees of the IPEAs are published in the PCT Gazette and are
available at the IPO.cralaw:red
Rule
46. Refunds. – 46.1 The IPO shall refund the international fee to the
applicant
in accordance with PCT Rule 15.6:chanrobles virtual law library
(a)
if the IPO has found that the international filing date cannot be
accorded
in accordance with PCT Article 11(1);
(b)
if, before the transmittal of the record copy to the IB, the
international
application is withdrawn or considered withdrawn; or
(c)
if, due to prescriptions concerning the national security, the
international
application is not treated as such.cralaw:red
46.2.
The IPO shall refund the search fee to the applicant in accordance with
PCT Rule 16.2:chanrobles virtual law library
(a)
if the IPO has found that the international filing date cannot be
accorded
in accordance with PCT Article 11(1);
(b)
if, before the transmittal of the search copy to the ISA, the
international
application is withdrawn or considered withdrawn; or
(c)
if, due to prescriptions concerning the national security, the
international
application is not treated as such.cralaw:red
Rule
47. Reduction in Fees. – An applicant may be entitled to a
reduction
in fees provided that the requirements, as specified by the IB and
Authorities
under the Treaty granting such reduction in fees, are fully satisfied
and/or
duly complied with.cralaw:red
Rule
48. Separability Clause. - If any provision in these Rules or
application
of such provision to any circumstance is held invalid, the remainder of
these Rules shall not be affected.chanrobles virtuallaw libraryred
Rule
49. Filing of Certified Copies. – Mr. Eduardo Joson, Records Officer
II,
is hereby directed to immediately file three (3) certified copies of
these
Rules with the University of the Philippines Law Center, and, one (1)
certified
copy each with the Office of the President, the Senate of the
Philippines,
the House of Representatives, the Supreme Court of the Philippines, and
the National Library. chanrobles virtuallaw libraryred
Rule 50.
Effectivity.
- Without prejudice to the performance by the IPO of its functions as a
receiving Office, designated Office or elected Office under the Treaty,
from and as of the entering into effect of the Treaty with respect to
the
Philippines on 17 August 2001, these Rules shall take effect on October
22, 2001 after publication in a newspaper of general circulation in the
Philippines on October 4, 2001.chanrobles virtuallaw libraryred
EMMA C.
FRANCISCO
Director General
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