PART
4 COMMON
PROVISIONS
CHAPTER 1.
REGISTRABILITY
Rule 400.
Novelty. An industrial design or utility model shall not be
considered
new if it forms part of a prior art.
Rule 401.
Prior art. Prior art shall consist of:
(a)
Everything
made available to the public anywhere in the world before the filing
date
or the priority date of the application provided that the disclosure is
contained in printed documents or in any tangible form.
(b) The
whole contents
of an application for a patent for invention, utility model or
industrial
design published under Sec. 44 of the IP CODE, filed or effective in
the
Philippines, with a filing or priority date that is earlier than the
filing
or priority date of the industrial design or utility model
application:
Provided, That the application which has validly claimed priority
shall be prior art with effect as of the said priority date, Provided
Further,
That the applicant identified in both applications are not one and the
same.
Where two or more applications
are independently filed with respect to the same industrial design or
utility
model, and the later applications are filed before the publication of
the
first application or earliest application, the whole contents of such
first
or earliest application shall be novelty with respect to the
later
application or applications.
Rule 402. Non-prejudicial
disclosure. The disclosure of information contained in the
industrial
design application during the six (6) months preceding the filing date
or the priority date of the application or during the twelve (12)
months
preceding the filing date or priority date in the case of utility model
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by the:
(a)
Maker/Designer;
(b) A
patent office
and the information was contained (i) in another application filed by
the
maker/designer and should have not been disclosed by the patent office,
or (ii) in an application filed without the knowledge or consent of the
designer by a third party which obtained the information directly or
indirectly
from the maker/designer; or
(c) A
third party
which obtained the information directly or indirectly from the
maker/designer.
For the purposes of
subsection (a) “designer” also means any person who, at the filing date
of application, had the right to the industrial design.
CHAPTER
2.
RIGHT TO A REGISTRATION
Rule
403.
Right to a registration. The right to a registration
belongs
to the maker or designer, his heirs, or assigns. When two (2) or
more persons have jointly made a utility model or industrial design,
the
right shall belong to them jointly.
Rule
404.
Who may be named in an application as an applicant.
The application may be filed by the actual maker(s) or designer(s) or
in
the name of his heirs, legal representative or assigns.
Rule
405.
Utility models and industrial designs created pursuant to a
commission.
The person who commissions the work shall own the registration, unless
otherwise provided in the contract.
In case the employee
made the invention in the course of his employment contract, the
registration
shall belong to:
(a)
The employee,
if the activity is not a part of his regular duties even if the
employee
uses the time, facilities and materials of the employer
(b) The
employer,
if the utility model or industrial design is the result of the
performance
of his regularly-assigned duties, unless there is an agreement, express
or implied, to the contrary.
Rule
406.
Multiple priorities. An application can claim more
than one
priority even from different countries. If more than one patent
priority
is claimed, time limits computed from the priority date will be based
upon
the earliest priority date.
Rule 406.1.
If one or more priorities are claimed, the right of priority shall
cover
only those elements of the application which are included in the
application
or applications whose priority is claimed.
Rule 406.2.
If certain elements of the utility model or industrial design for which
priority is claimed do not appear among the claims formulated in the
previous
application, priority may nonetheless be granted, provided that the
previous
application as a whole specifically disclose such elements.
Rule 406.3.
Where an application could have claimed the priority of an earlier
application,
but when filed, did not contain such priority, the applicant shall be
given
two (2) months from the filing date to submit the priority claim.
Submission of priority
claim after the filing of the application shall be accompanied by a
declaration
of the applicant stating that the delay in submitting the priority
claim
was unintentional.
Rule 407. Certified
copy of the foreign applications. The certified copy of
foreign
applications on which the priority claim is based shall be the copy of
the application(s) as duly certified to be a true and faithful
reproduction
thereof by the Industrial Property Office which received it or any
other
office which has official custody of the foreign application(s).
CHAPTER
3.
THE APPLICATION
Rule
408.
Presentation of the application documents. (a) All
papers
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
side
of the sheet. If necessary, only graphic symbols and characters and
chemical
or mathematical formulas may be written by hand or drawn. The typing
shall
be 1 ½ spaced. All text matter shall be in characters, the
capital
letters of which are not less than 0.21 cm. high, and shall be in dark,
indelible color.
(b) The documents
making up the application shall be on an 29.7 cm x 21 cm paper or the
size
of an A4 paper which shall be pliable, strong, white, smooth, matt and
durable.
(c) The specification
and claim(s) of the application must be written with the lines numbered
in sets of five and the number appearing on the left side margin.
(d) The description
and the claims may contain chemical or mathematical formulas. The
description
may contain tables. The claims may contain tables only if their
subject-matter
makes the use of tables desirable. Tables and chemical or mathematical
formula may be placed sideways on the sheet if they cannot be presented
satisfactorily in an upright position thereon; sheets on which tables
or
chemicals or mathematical formulas are 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,
wherever
appropriate in terms of the metric system using system international
(SI)
units. Any data not meeting this requirement must also be expressed in
the units recognized in international practice. For mathematical
formula,
the symbols in general use shall be employed. For chemical formula the
symbols, atomic weights and molecular formula in general use shall be
employed.
In general, use should be made of the technical terms, signs and
symbols
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 registration, description,
claims,
drawings and abstract) shall commence on a separate sheet. The
separate
sheets shall be filed in such a way that they can easily be turned
over,
and joined together again.
(h) Margins
The margins of the
documents shall be within the following ranges:
Top : 2 cm.
- 4
cm.
Leftside
: 2.5 cm.
- 4 cm.
Rightside
: 2 cm.
- 3 cm.
Bottom :
2 cm. -
3 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
Arabic
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
in
four (4) copies.
Rule
409.
Prohibited matter. (a) The application shall not
contain:
(i) a statement or
other matter contrary to “public order” or morality;
(ii) statement disparaging
the products or processes of any particular person or other than the
applicant,
or the merits or validity of applications or patents of any such
person.
Mere comparison with the prior art shall not be considered disparaging
per se;
(iii) any statement
or other matter obviously irrelevant or unnecessary under the
circumstances.
b) If an application
contains prohibited matter within the meaning of this Rule, the Bureau
shall omit it when publishing the registration, indicating the place
and
number of words or drawing omitted.
Rule 410. Information
concerning corresponding foreign application. The
applicant
shall, at the request of the Director, furnish him with the date and
number
of any application filed by him abroad, hereafter referred to as the
“foreign
application”, relating to the same or essentially the same utility
model
or industrial design as that claimed in the application filed with the
Office and other documents relating to the foreign application.
Rule
411.
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 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 registration.
Rule
412.
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.
CHAPTER
4.
DRAWINGS
Rule
413.
General requisites for the drawing. The drawing must
be signed
by the applicant or the name of the applicant may be signed on the
drawing
by his attorney or agent. The drawing must show every feature of
the utility model or industrial design covered by the claim(s), and the
figures should be consecutively numbered.
Rule
414. Drawing for an Improvement. When the
utility
model consists of an improvement of an old machine, the drawing must
exhibit,
in one or more views, the utility model 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 utility model therewith.
Rule
415.
Uniform standard of excellence suited to photolithographic
process,
required of drawings. Unless and until otherwise
notified,
the printing of the drawings in the IPO Gazette is done by the
photolithographic
process, and therefore the character of each original drawing must be
brought
as nearly as possible to a uniform standard of excellence suited to the
requirements of the process, to give the best results, in the interests
of the inventors, makers and designers, of the Office, and of the
public.
The following rules will therefore be strictly enforced, and any
departure
from them will be certain to cause delay in the registration of an
application.
Rule
416.
Paper and Ink. Drawings must be made upon paper that is
flexible,
strong, white, smooth, non-shiny and durable. Two ply or three
ply
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
preferred
for pen drawings to secure perfectly black solid lines. The use
of
white pigments to cover lines is not permissible.
Rule
417.
Size of drawing sheet; imaginary line. The size of a sheet
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
follows:
top 2.5 cm; left side 2.5 cm; right side 1.5 cm; bottom 1 cm.
Within
this imaginary margin all work and signatures must be included.
One
of the shorter sides of the sheet is regarded as its top, and,
measuring
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.
Rule
418.
Character and color lines. All drawings must be made
with
the pen or by a photolithographic process which will give them
satisfactory
reproduction characteristics. Every line and letter (signatures
included)
must be absolutely black. This direction applies to all lines,
however
fine, to shading and to lines representing cut surfaces in sectional
views.
All lines must be clean, sharp, and solid, and they must not be too
fine
or crowded. Surface shading, when used, should be open.
Sectional
shading should be made by oblique parallel lines, which may be about
0.3
cm apart. Solid black should not be used for sectional or surface
shading. Freehand work should be avoided whenever possible.
Rule
419.
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
the
work after reduction will be much increased. Shading (except on
sectional
views) should be used sparingly, and may even be dispensed with if the
drawing be otherwise well executed. The plane upon which a
sectional
view is taken should be indicated on the general view by a broken or
dotted
line, which should be designated by numerals corresponding to the
number
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
the
upper left hand corner of an angle of 45 degrees.
Rule
420.
Scale to which drawing is made to be large enough.
The scale
to which a drawing is made ought to be large enough to show the
mechanism
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
must
never be more than what is absolutely necessary.
Rule 421.
Letters and figures of reference. The different views should
be consecutively numbered. Letters and figures of reference must
be carefully formed. 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 the 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, they should be placed at a little distance where there is
available space, and connected by lines with the parts to which they
refer.
They should not be placed upon shaded surfaces, but when it is
difficult
to avoid this, blank space must be left in the shading where the letter
occurs, so that it shall appear perfectly distinct and separate from
the
work. If the same part of utility model or industrial design
appears
in more than one view of the drawing, it must always be represented by
the same character, and the same character must never be used to
designate
different parts.
Rule
422.
Signature, where to be placed. The signature of the
applicant
should be placed at the lower right-hand corner within the imaginary
margins
of each sheet, but in no instance should they trespass upon the
drawings.
Rule 423.
Title of the drawing. The title should be written with pencil
on the back of the sheet. The permanent name and title
constituting
the heading will be applied subsequently by the Bureau of Patents in
uniform
style.
Rule
424.
Position on drawing sheets of large views. All views on the
same
sheet must stand in the same direction and must, if possible, stand so
that they can be read with the sheet held in an upright position.
If views longer than the width of the sheet are necessary for the
proper
illustration of the utility model or industrial design, the sheet may
be
turned on its side. The space for heading must then be reserved
at
the right and the signatures placed at the left, occupying the same
space
and position as in the upright views and being horizontal when
the
sheet is held in an upright position. One figure must not be
placed
upon another or within the outline of another.
Rule
425.
Flow sheets and diagrams. Flow Sheets and diagrams
are considered
drawings.
Rule
426.
Requisites for the figure of the IPO Gazette. As a
rule, only
one view of each utility model or industrial design can be shown in the
IPO Gazette illustrations. The selection of that portion of a
drawing
best calculated to explain the nature of the utility model or
industrial
design or its specific improvement would be facilitated and the final
result
improved by judicious execution of a figure with express reference to
the
IPO Gazette, but which must at the same time serve as one of the
figures
referred to the specification. For this purpose the figure may be
a plan, elevation, section, or perspective view, according to the
judgment
of the draftsman. All its parts should be especially open and
distinct,
with very little or no shading, and it must illustrate only the utility
model or industrial design claimed, to the exclusion of all other
details.
When well executed, it will be used without curtailment or change, but
any excessive fineness or crowding or unnecessary elaborateness of
detail
will necessitate its exclusion from the IPO Gazette.
Rule
427.
Reference signs. Reference signs not mentioned in the
description
and claims shall not appear in the drawings and vice versa. The
same
features, when denoted by reference signs, shall throughout the
application,
be denoted by the same signs.
Rule
428.
Photographs. (a) Photographs are not normally considered to
be
proper drawings. Photographs are acceptable for obtaining a
filing
date and generally considered to be informal drawings.
Photographs
are only acceptable where they come within the special categories as
set
forth in the paragraph below. Photolitographs of photographs are
never acceptable.
(b) The Office is
willing to accept black and white photographs or photomicrographs (not
photolitographs or other reproduction of photographs made by using
screens)
printed on sensitized paper in lieu of India ink drawings, to
illustrate
the inventions which are incapable of being accurately or adequately
depicted
by India ink drawings restricted to the following categories:
crystalline
structures, metallurgical microstructures, textile fabrics, grain
structures
and ornamental effects. The photographs or photomicrographs must
show the utility model or industrial design more clearly than they can
be done by the India ink drawings and otherwise comply with the rules
concerning
such drawings.
(c) Such photographs
to be acceptable must be made on photographic paper having the
following
characteristics which are generally recognized in the photographic
trade:
paper with a surface described as smooth, tint, white, or be
photographs
mounted on a proper sized Bristol board.
Rule
429.
Matters not permitted to appear on the drawings. An
agent’s
or attorney’s stamp, or advertisement or written address shall not be
permitted
on the drawings.
Rule
430.
Drawings not conforming to foregoing rules to be accepted only
conditionally.
A drawing not executed in conformity to the foregoing rules may be
admitted
for purposes of according a filing date only. In such cases, the
drawing must be corrected or a new one furnished within two (2) months
from mailing date of the formality report. Otherwise, the
application
shall be deemed withdrawn.
Applicants are advised
to employ competent draftsman to make their drawings.
CHAPTER
5.
REPRESENTATION, SIGNATURES
Rule 431. Employment
of attorney-at-law or agent recommended. An applicant or an
assignee
of the entire interest may prosecute his own case, but he is advised,
unless
familiar with such matters, to employ a competent attorney-at-law or
agent,
as the value of patents depends largely upon the skillful preparation
of
the specification and claims. The Office cannot aid in the
selection
of an attorney-at-law or agent.
Rule 432. Appointment
of resident agent or representative. An applicant who
is
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 or
the registration may be served.
If there are two
(2) or more agents appointed by the applicant, the Office shall forward
all correspondence to the latest agent appointed. A substitute or
associate attorney may be appointed by an attorney only upon the
written
authorization of his principal; but a third attorney appointed by the
second
will not be recognized.
Rule
433.
Revocation of power of attorney. A power of
attorney
or authorization may be revoked upon proper notification to the
Director
General, and, when revoked, the Office will notify the attorney or
agent
of such revocation and shall communicate directly with the applicant or
with such other attorney or agent as he may later appoint.
Rule 434. Decorum
and courtesy required in the conduct of business. Applicants, their
attorneys or agents are required to conduct their business with the
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 violation of
this
rule will be submitted to the Director General and returned to the
sender,
by his direct order.
CHAPTER
6.
WHO MAY REQUEST FOR A REGISTRATION
Rule
435.
Who may request for a registration. Any person,
natural or
juridical, may request for a registration. If the applicant is
not
the maker/designer, the Office may require him to submit proof of his
authority
to apply for a registration.
Rule
436.
When the applicant dies, becomes insane.
In case
the applicant dies, becomes insane or incapacitated, the legally
appointed
administrator, executor, guardian, conservator, or representative of
the
applicant, may sign the application papers and other documents, and
apply
for and obtain the certification of registration in the name of the
applicant,
his heirs or assignee.
Rule
437.
Assigned applications. In case the whole interest in
the utility
model or industrial design 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
undivided
interest, any of the joint owners will sign the application.
Rule
438.
Juridical person; definition. A juridical person is
a body
of persons, a corporation, a partnership, or other legal entity that is
recognized by law which grants a juridical personality separate and
distinct
from that of a share holder, partner or member.
Rule
439.
Proof of authority. If the person who signs the
application
in behalf of a juridical person is an officer of the corporation, no
proof
of authority to file the said application will be required.
However,
if any other person signs for and in behalf of a juridical person, the
Office shall require him to submit proof of authority to sign the
application.
If the applicant
appoints a representative to prosecute and sign the application, the
Office
shall require proof of such authority.
Rule
440. Forms of signatures. Where a signature
is
required, the Office may accept:
(a) A handwritten
signature; or
(b) The 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.
Provided,
That where a seal or a thumbmark is used, it should be accompanied by
an
indication in letters of the name of the signatory.
No attestation, notarization,
legalization or other certification of any signature or other means of
self-identification referred to in the preceding paragraphs, will be
required,
except, where the signature concerns the surrender of a Certificate of
Registration.
CHAPTER
7.
CLASSIFICATION AND SEARCH
Rule
441.
Classification and search. An application for
utility
model or an industrial design shall be classified and a search
conducted
to determine the prior art. The Search Report shall be submitted to the
applicant together with the Formality Examination Report within two (2)
months from the filing date.
Rule
442.
Content of the search report. The Search
Report is drawn
up on the basis of the claims, description, and the drawings if there
is
any:
(a) The search report
shall mention those documents, available at the Office at the
time
of drawing up the report, which may be taken into consideration in
assessing
novelty.
(b) The search report
shall contain the classification of the subject matter of the
application
in accordance with the International Classification.
(c) The search report
may include documents cited in a search established in the
corresponding
foreign application.
Rule
443.
Confidentiality before publication. A registration,
which
has not yet been published, and all related documents, shall not be
made
available for inspection without the consent of the registrant.
Rule 444. Unpublished,
withdrawn and forfeited applications not cited.
Unpublished
Withdrawn and forfeited applications as such will not be cited as
references.
CHAPTER
8.
AMENDMENTS; WITHDRAWAL BY THE APPLICANT
Rule 445.
Amendment by the applicant. An applicant may amend the
application
prior to registration: Provided, That such amendment shall not include
new matter outside the scope of the disclosure contained in the
application
as filed.
Rule
446.
Amendment and revision required. The
description,
claim(s) and drawing(s) must be amended and revised when required, to
correct
inaccuracies of disclosure and definition or unnecessary prolixity, and
to secure correspondence between the claim(s), the description and the
drawing(s).
Rule
447.
Manner of making amendments. Erasures,
additions, insertions,
or alterations of the papers and records must not be made by the
applicant.
Amendments by the applicant are made by filing a paper in accordance
with
these Regulations, directing or requesting that specified amendments be
made. The exact word or words to be stricken out or inserted in
the
application must be specified and the precise point indicated where the
deletion or insertion is to be made. The basis of the proposed
amendments
in the original application as filed shall be indicated.
Rule
448.
Entry and consideration of amendments.
(a) Amendments
are entered by the Office 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
indicated
by reference.
Rule
449.
Amendments to the drawing. The paper requesting amendments to the
drawing
should be separate from other papers. The drawing may not be
withdrawn
from the Office except for signature. Substitute drawings will not
ordinarily
be admitted in any case unless required by the Office.
Rule 450.
Substitute specification. If the number or nature of the
amendments
shall render it difficult to arrange the papers for printing or
copying,
the Examiner may require the entire description or claim(s), or any
part
thereof, to be rewritten. A substitute specification will
ordinarily
not be accepted unless it has been required by the Examiner. A
substitute
specifications may be required within two (2) months from
registration
prior to publication of the registration in the IPO Gazette.
Rule
451.
Express withdrawal of application. An application
may be expressly
withdrawn by filing in the Office a written declaration of withdrawal,
signed by the applicant himself and the assignee of record, if any, and
identifying the application.
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