RULES
AND REGULATIONS ON
UTILITY MODELS
AND INDUSTRIAL DESIGNS
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;
NOW, THEREFORE, pursuant
to the provisions of Republic Act No. 8293, otherwise known as the
Intellectual
Property Code of the Philippines, the following rules and regulations
on
utility models and industrial designs are hereby promulgated:
PART
1 DEFINITIONS
Rule 100.
Definitions. Unless otherwise specified, the
following terms
shall have the meaning provided in this Rule:
(a) “Bureau”
means the Bureau of Patents of the Office;
(b) “Director”
means the Director of the Bureau of Patents;
(c) “Director
General” means the head of the Intellectual Property Office;
(d) “Examiner”
means any officer or employee of the Bureau of Patents authorized to
examine
applications. The title or official designation of such officer or
employee
may change as the structure of the Office may be set;
(e) “IP Code”
means Republic Act No. 8293 otherwise known as the Intellectual
Property
Code of the Philippines;
(f) “IPO Gazette”
means the Intellectual Property Office’s own publication where all
matters
required to be published under the IP Code shall be published;
(g) “Office” means
the Intellectual Property Office; and
(h) “Regulations”
means this set of rules and regulations and such Rules of
Practice
as may be formulated by the Director of Patents and approved by the
Director
General.
PART
2 UTILITY
MODELS
Rule 200.
Registrable utility models. Any technical solution of a
problem in any field of human activity which is new and industrially
applicable
shall be registrable.
Rule 200.1. Non-registrable
utility models. The following shall be excluded from
protection
as utility models:
(a)
Discoveries,
scientific theories and mathematical method;
(b)
Schemes, rules
and methods of performing mental acts, playing games or
doing
business,
and programs for computers;
(c)
Methods for treatment
of the human or animal body by surgery or therapy and diagnostic
methods
practiced on the human or animal body. This provision shall not apply
to
products and compositions for use in any of these methods;
(d) Plant
varieties
or animal breeds or essentially biological process for the production
of
plants or animals. This provision shall not apply to microorganisms and
non-biological and microbiological processes;
(e)
Aesthetic creations;
and
(f)
Anything which
is contrary to public order or morality.
Rule
200.2.
Industrial applicability. A utility
model which
can be produced and used in any industry shall be industrially
applicable.
Rule
201.
Statutory classes of utility models. A utility model
may be,
or may relate to:
(a) a useful
machine;
(b) an
implement
or tool ;
(c) a
product or
composition; or
(d) an
improvement
of any of the foregoing.
Rule
202.
First to file rule. If two or more persons
have made
the same utility model separately and independently of each other, the
right to the utility model registration shall belong to the person who
filed an application for such utility model, or where two or more
applications
are filed for the same utility model to the applicant who has the
earliest
filing date or the earliest priority date.
Rule
203.
Filing Date of Utility Model Application -
The filing
date of a utility model application shall be the date on which the
Office
received the following requirements:
a) A
properly filled-out
request for registration as prescribed by the Bureau;
b) A
description
of the utility model;
c) Claim
or Claims;
d)
Drawings or a
pictorial representation disclosing completely the utility model, if
there
is/are any; and
e)
Payment for the
filing fee
If the application does
not meet these requirements, the Bureau may receive the incomplete
utility
model application; provided it contains at least a filled-out request,
a disclosure and the prescribed filing fee. The Bureau shall
accord
as filing date the that date when all the elements specified in this
Rule
are filed or the mistakes corrected.
Rule
204.
Right of priority for utility model. An application for utility
model
filed by any person who has previously applied for the same utility
model
in another country which by treaty, convention, or law affords similar
privileges to Filipino citizens, shall be considered as filed as of the
date of filing the foreign application: Provided, That: (a) the local
application
expressly claims priority; (b) it is filed within twelve (12) months
from
the date the earliest foreign application was filed; and (c) a
certified
copy of the foreign application together with an English translation is
filed within six (6) months from the date of filing in the
Philippines.
Rule
205.
Registration of utility model. A utility
model
application shall be registered without substantive examination
provided
all fees such as filing, excess claims and publication fees are paid on
time and all formal requirements set forth in these Regulations are
filed.
Furthermore, in order to help the applicant consider his options under
the IP Code and these Regulations, the application shall likewise be
classified
and a search conducted to determine prior art.
Rule 206.
Formality examination of utility model application. The
utility
model application shall be examined as to the completeness of the
formal
requirements prescribed in these Regulations. The formality
examination
report shall be submitted to the applicant together with the search
report
within two (2) months from filing date. The formality examination
shall take into account the parts of these Regulations on:
(a)
the right to a patent, (b) who may apply for a patent, (c)
filing date requirements and (d) formality examination.
Rule
207.
Applicant’s action on the formality examination report and the
search
report. Within two (2) months from the mailing date of the
formality
examination report and the search report, the applicant may:
(1)
voluntarily withdraw the application, (2) amend the application, (3)
convert
the application to an application for an invention patent, or,
(4)
upon payment of the required fee, request for a registrability
report.
Rule
207.1.
Voluntary withdrawal. The application shall be
deemed withdrawn
and all files expunged from the record of the Bureau upon receipt of
the
applicant’s voluntary withdrawal.
Rule
207.2.
Amended applications. The amended application shall
be subjected
to formality examination, search and classification. Report
thereon
shall be submitted to the applicant within two (2) months from receipt
of the amended application. Within two (2) months from mailing
date
of the formality examination report and the search report on the
amended
application, the applicant may: (1) withdraw the application,
(2)
convert the same to an application for an invention patent, or
(3)
upon payment of the required fee, request for a registrability
report.
The application shall be deemed withdrawn and all files expunged from
the
records of the Bureau upon receipt of the applicant’s withdrawal.
Rule
207.3.
Application converted to an application for invention patent.
The application or amended application which is converted into an
application
for an invention patent shall be processed as an invention patent
application
upon receipt of notice from the applicant.
Rule 207.4.
No action on the part of applicant where formal requirements are
complete.
Where the application meets all the formal requirements for
registrability
and the Bureau fails to receive any action from the applicant, the
utility
model shall be deemed registered upon the expiration of two (2) months
from the mailing date of the search report.
Rule
207.5.
No action on the part of applicant where formal requirements
are not
complete. Where the application fails to meet any of the
formal
requirements for registration and the Bureau fails to receive any
action
from the applicant, the application shall be deemed withdrawn and all
files
thereon shall be expunged from the records of the Bureau upon the
expiration
of two (2) months from the mailing date of the formality examination
report.
The Bureau may return to the applicant all the files expunged from its
records.
Rule
207.6.
Registrability Report. The report shall contain
citations
of relevant prior art documents with appropriate indications as to
their
degree of relevance which will serve as an aid to the applicant in the
determination of the validity of the utility model claim(s) in respect
to newness.
The registrability
report shall be given to the applicant within two (2) months from
receipt
of the request from the applicant. It shall be included in the
publication
of the registered utility model.
Rule 208.
Requirements for Applications for Utility Model. An
application
for Utility Model registration and other correspondences shall be in
Filipino
or English and must be addressed to the Director of the Bureau of
Patents
of the Intellectual Property Office (IPO).
The application shall
contain the following:
Rule
208.1.
Title. The title should be as short and specific as
possible, and
should appear as heading on the first page of the specification.
All fancy names are not permissible in the title.
Rule
208.2.
Technical field. A statement of the technical field of the
art to
which the utility pertains. The statement should be directed to
the
subject matter of the claimed utility model.
Rule
208.3.
Background of the utility model. It is a description
which indicates
the so-called “background art” constituting the related prior art or
state
of the art or known technology for the utility model sought to be
registered,
including references to specific documents where appropriate. Where
applicable,
the problems involved in the information which may be
solved
by the applicant’s utility model should be indicated.
Rule
208.4.
Brief description of the several views of the drawings, if
there be
any. Every view of the drawings should be briefly described, and
indicated
with corresponding figure numbers.
Rule 208.5. Detailed
description. The detailed description must specifically include a
complete
description of the manner of making and using the utility model. It
must
set forth the precise or exact utility model for which registration is
sought, in such manner as to distinguish the utility model from the
prior
art it pertains to and the technical problem solved by the
utility
model should be indicated.
Rule
208.6.
Claim or claims.
a) The claim(s) must
define the subject matter of the utility model for which registration
is
sought. Such claim(s) should be clear and concise and fully supported
by
the description.
b) If the utility
model application relates to an improvement, the claim(s) should
specifically
point out and distinctly claim the improvement in combination with a
preamble
statement indicating the prior art features which are necessary for the
definition of the claimed subject matter.
Rule
209.
Unity of utility model. Only one independent genus
or generic
claim is permissible in a utility model application. However,
specific
variations of the utility model may be claimed in a reasonable number
of
dependent claims in a single application, provided such variations fall
under a single statutory class provided in these Regulations and are
embodied
under a single general innovative concept. Such specific
variations
of the claimed utility model must fall within the scope of the generic
claim.
Rule
209.1.
Claims incurring fee. (a) Any utility model application
comprising
more than five (5) claims, independent and/or multiple/alternative
dependent
claims at the time of filing, or added claims after the filing
date
in respect of each claim over and above five (5) incurs payment of a
claims
fee. The claims fee shall be payable within one (1) month after the
filing
of the application. If the claim fees have not been paid in due time,
they
may still be validly paid within a grace period of one (1) month from
notice
pointing out the failure to observe the time limit. If the claims fee
is
not paid within the time limit and the grace period referred to in this
Rule, the claim or claims concerned shall be deemed deleted.
Rule
210.
Requirement for restriction; division. A
restriction or division
of multiple embodiments in a utility model application may be deemed
proper
if such embodiments are independent and distinct, or can not be
considered
as specific variations specified in these Regulations. A
divisional
application covering the restricted embodiment(s), if filed during the
pendency of the utility model application, shall be entitled to the
benefit
of the filing date of such parent application.
Rule 211. Publication
upon registration of the utility model. Registration
of
utility model shall be published in the form of bibliographic data and
representative drawing, if any, in the IPO Gazette within six (6)
months after registration.
Rule
212.
Term of registration of utility model. A
utility
model registration shall expire, without any possibility of renewal, at
the end of seventh year after the date of the filing of the
application.
However, taking into
account the first-to-file rule, the volume of pending applications as
of
the effectivity of the IP Code and the time that has lapsed between the
effectivity of the IP Code and the effectivity of these
Regulations:
(a) The
registration
of Utility model applications pending at the effective date of, and
proceeded
with in accordance with, the IP Code shall expire, without possibility
of renewal, at the end of seven (7) years from effectivity of these
Regulations;
(b)
The registration
of utility model application filed after the effectivity of the IP Code
and pending upon effectivity of these Regulations shall expire, without
possibility of renewal, at the end of seven (7) years from effectivity
of these Regulations.
Rule
213.
Cancellation of the utility model registration. The
utility
model registration shall be cancelled on the following grounds:
(a) That the
utility
model does not qualify for registration as a utility model and does not
meet the requirements of novelty and industrial applicability or
it is among non-registrable utility models;
(b) That
the description
and the claims do not comply with the prescribed requirements;
(c) That
any drawing
which is necessary for the understanding of the utility model has not
been
furnished;
(d) That
the owner
of the utility model registration is not the maker or his successor in
title.
Rule
214. Conversion of invention patent application to an application
for
utility model registration. At any time before the grant or
refusal
of a patent for an invention, an applicant for a patent for an
invention
may, upon payment of the prescribed fee, convert his application into
an
application for registration of a utility model, which shall be
accorded
the filing date of the application. An application may be
converted
only once.
Rule
215. Conversion of an application for utility model
registration
to a patent application. At any time before the grant or
refusal
of a utility model registration, an applicant for a utility model
registration
may, upon payment of the prescribed fee, convert his application into a
patent application, which shall be accorded the filing date of the
utility
model application.
Rule
216. Prohibition against filing of parallel applications.
An applicant may not file two (2) applications for the same subject,
one
for utility model registration and the other for the grant of a patent
for an invention whether simultaneously or consecutively.
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.
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.
PART
5 THE
CERTIFICATE
OF REGISTRATION
Rule 500.
Contents of certificate of registration. The Certificate of
Registration
shall be issued in the name of the Republic of the Philippines under
the
seal of the Office and shall be signed by the Director, and registered
together with the description, claims, and drawings, if any, in books
and
records of the Office.
Rule
501.
Any interested party may inspect the complete description, claims, and
drawings on file with the Office.
PART
6 OTHER
PROCEEDINGS AFFECTING THE APPLICATION OR THE REGISTRATION
CHAPTER 1.
ASSIGNMENT
Rule 600.
Form of assignment. To be acceptable for recording, the
assignment:
(a) must be
in writing
and if in a language other than English or Filipino, the document must
be accompanied by an English translation;
(b) must
be acknowledged
before a notary public or other officer authorized to administer oaths
and perform other notarial acts, and be certified under the hand and
official
seal of the said notary or other officer;
(c) must
be accompanied
by an appointment of a resident agent, if the assignee is not domiciled
in the Philippines;
(d) must
identify
the registration involved by number and date, giving the name of the
registrant
and the title of the utility model or industrial design as set forth in
the certificate; in the case of an application for registration, the
application
number and filing date of the application should be stated, giving also
the name of the applicant, and the title of the utility model or
industrial
design, set forth in the application, but if an assignment is executed
concurrently with or subsequent to the execution of the application but
before the application is filed, it should adequately identify the
application,
by its date of execution and name of the applicant, and the title of
the
utility model or industrial design; so that there can be no mistake as
to the utility model or industrial design or application intended;
and
(e) must
be accompanied
by the required recording and publication fees.
Rule
601.
Form of other instrument affecting the title to a registration
or application,
including licenses. In order to be acceptable for recording,
the form of such other instrument, including licenses, must conform
with
the requirements of the preceding rule.
Rule 602. Assignment
and other instruments to be submitted in duplicate. The
original
document of assignment, together with a signed duplicate thereof, shall
be submitted; but if the original is not available, two certified
copies
thereof may be submitted instead. After recording, the Office
shall
retain the signed duplicate or one of the certified copies, as the case
may be, and return the original or the other certified copy to the
party
filing the assignment, with a notation of the fact of recording.
Rule
603.
Date of receipt of assignment or other instrument or license
considered
its date of recording. The date of recording of an assignment
or other instruments is the date of its receipt at the Office in proper
form and accompanied by the full recording fee.
Rule
604.
Certificates may be issued to the assignee in place of the
applicant.
In the case of the assignment of a pending application for
registration,
the certificate may be issued to the assignee of the applicant,
provided
the assignment has been recorded in the Office before the actual issue
of the certificate.
Rule
605.
Action may be taken by assignee of record in any proceeding in
the Office.
Any action in any proceeding in the Office which may or must be taken
by
a patentee or applicant may be taken by the assignee, provided the
assignment
has been recorded.
CHAPTER
2.
SURRENDER, CORRECTION AND AMENDMENT OF CERTIFICATE
Rule
606.
Surrender of certificate. (a) The owner of the
registration, with
the written and verified consent of all persons having grants or
licenses
or other right, title or interest in and to the registration and the
utility
model or industrial design covered thereby, which have been recorded in
the Office, may surrender his registration, any claim or claims forming
part thereof to the Office for cancellation. The petition for
cancellation
shall be in writing, duly verified by the petitioner and if executed
abroad
shall be authenticated.
(b) Any
person may give notice to the Office of his opposition to the surrender
of a registration, and if he does so, the Bureau shall notify the
proprietor
of the registration and determine the question.
(c) If the
Office is satisfied that the registration may properly be surrendered,
it may accept the offer and, as from the day when notice of his
acceptance
is published in the IPO Gazette, the registration shall cease to have
effect,
but no action for infringement shall lie and no right compensation
shall
accrue for any use of the registered utility model or industrial design
before that day for the services of the government.
Rule
607.
Correction of mistakes of the Office. Upon written
petition,
in duplicate, of the patentee or assignee of record, and upon tender to
the Office of the copy of the registration issued to the patentee, the
Director shall have the power to correct without fee any
mistake
in a registration incurred through the fault of the Office when clearly
disclosed by the records thereof, to make the registration conform to
the
records.
Rule
608.
Correction of mistake in the application. On request
of any
interested person and payment of the prescribed fee, the Director is
authorized
to correct any mistake in the registration of a formal and clerical
nature,
not incurred through the fault of the Office.
Rule
609.
Changes in registration. (a) The owner of the
registration
shall have the right to request the Bureau to make changes in the
Certificate in order to:
(a) Limit
the extent
of the protection conferred by it;
(b)
Correct obvious
mistakes or to correct clerical errors; and
(c)
Correct
mistakes or errors, other than those referred to in letter (b), made in
good faith; Provided, That were the change would result in broadening
of
the extent of the protection conferred by the registration, no request
may be made after the expiration of two (2) years from the grant of a
registration
and the change shall not affect the rights of any third party which has
relied on the registration, as published.
Rule
610.
Form and publication of amendment or corrections. An
amendment
or correction of a registration shall be accomplished by a certificate
of such amendment or correction, authenticated by the seal of the
Office
and signed by the Director, which certificate shall be attached to the
registration. Notice of such amendment or correction shall be
published
in the IPO Gazette and copies of the registration furnished by the
Office
shall include a copy of the certificate of the amendment or
correction.
CHAPTER
3.
RECORDAL; TRANSMISSION OF RIGHTS
Rule 611. Transmission
of rights. Registration and applications for utility
models
and industrial designs shall be protected in the same way as the rights
of other property under the Civil Code. Utility models and industrial
designs
and any right, title or interest in and to registration and utility
models
and industrial designs covered thereby may be assigned, or transmitted
by inheritance or bequest or may be the subject of a license
contract.
Rule
612.
Assignment. An assignment may be of the entire
right, title
or interest in and to the registration and application for utility
models
and industrial designs covered thereby, or of an undivided share of the
entire registration and utility models and industrial designs in which
event the parties become joint owners thereof. An assignment may
be limited to a specified territory.
Rule
613.
Recording. The Office shall record assignments, licenses and
other instruments relating to the transmission of any right, title or
interest
in and to certificates of registration or application for utility
models
and industrial designs, which are presented in due form to the Office
for
registration, in books and records kept for the purpose. The
original
document together with a signed duplicate thereof shall be filed and
the
contents thereof should be kept confidential. If the original is not
available,
certified copy thereof in duplicate may be filed. Upon recording,
the Office shall retain the duplicate, and return the original or the
certified
copy to the party who filed the same and notice of the recording shall
be published in the IPO Gazette.
Such instruments
shall be void as against any subsequent purchaser or mortgagee for a
valuable
consideration and without notice unless it is recorded in the Office
within
three (3) months from the date thereof, or prior to the subsequent
purchase
or mortgage.
Rule
614.
Rights of joint owners. If two or more persons
jointly own
a registration and the utility model or industrial design covered
thereby
either by the issuance of the registration in their joint favor or by
reason
of the assignment of an undivided share in the registration and utility
model or industrial design or by reason of the succession in title to
such
share, each joint owner shall be entitled to personally make, use, sell
or import the utility model or industrial design for his own profit:
Provided,
however, That neither of the joint owners shall be entitled to grant
licenses
or to assign his right, title or interest or part thereof without the
consent
of the other owner or owners, or without proportionately dividing the
proceeds
with the other owner or owners.
CHAPTER
4.
REQUEST FOR REGISTRABILITY REPORT.
Rule
615.
Who may request for a registrability report. Any
person may,
upon payment of the required fee, request for a registrability report
concerning
registered utility model or industrial design.
Rule
616.
Contents of registrability report. The
registrability report
concerning a registered utility model or industrial design shall
contain
citations of relevant prior art documents with appropriate indications
as to their degree of relevance which may serve as an aid to the
requesting
party in the determination of the validity of the utility model
claim(s)
or the industrial design claim in respect to newness.
Where a registrability
report has been issued prior to registration, and published after
registration,
of the utility model or industrial design in accordance with these
Regulations,
the registrability report issued hereunder shall be limited to the
published
registrability report; Provided, however, That the person requesting
for
the registrability report of the registered utility model or industrial
design may expressly request that the registrability report include
such
other information or documents that may have arisen after the
registration
of the utility model or industrial design.
Rule
617.
Time within which to issue report. The
registrability report
shall be given to the party requesting within two (2) months from
receipt
of the request together with full payment of the required fee.
PART
7 PETITIONS
AND
APPEALS
Rule 700.
Petition to the Director to question the correctness of the
action of
an Examiner on matters of form. Petition may be filed
with
the Director from any repeated action or requirement of the Examiner on
matters of form and in other appropriate circumstances. Such
petition,
and any other petition which may be filed, must contain a statement of
the facts involved and the point or points to be reviewed. Briefs
or memoranda, if any, in support thereof should accompany or be
embodied
in the petition. The Examiner, as the case may be, may be
directed
by the Director to furnish a written statement setting forth the
reasons
for his decision upon the matter averred in the petition, supplying a
copy
thereof to the petitioner.
Rule
701.
Appeals to the Director. Every applicant may, upon
the final
refusal of the Examiner to register, appeal the matter to the
Director.
Rule
702.
Complaints against Examiners to be on separate paper.
Complaints against Examiners and other officers must be made in a
communication
separate from other papers, and will be promptly investigated.
Rule
703.
Effect of a final decision of an Examiner which is not
appealed.
A final decision of an Examiner which is not appealed to the Director
within
the time permitted, or, if appealed, the appeal is not prosecuted,
shall
be considered as final to all intents and purposes, and shall have the
effect of res judicata in respect of any subsequent action on
the
same subject matter.
Rule
704.
Time and manner of appeal. Any petition or appeal
must be
taken by filing the petition in duplicate and payment of the required
fee
within two (2) months from the mailing date of the action appealed
from,
must specify the various grounds upon which the appeal is taken, and
must
be signed by the petitioner or appellant or by his attorney of
record.
The petition shall include a brief of the authorities and arguments on
which he relies to maintain his appeal. A third copy of the
petition
shall be furnished the Examiner. On failure to file the brief
within
the time allowed, the appeal shall stand dismissed.
Rule
705.
The Examiner’s answer. The Examiner shall furnish a
written
statement in answer to the petition or appellant’s brief, as the case
may
be, within two (2) months from the order of the Director directing him
to submit such statement. Copy of such statement shall be served
on the petitioner or appellant by the Examiner.
Rule 706.
Appellant’s reply. In case of an appeal, the appellant may
file
a reply brief directed only to such new points as may be raised in the
Examiner’s answer, within one (1) month from the date copy of such
answer
is received by him.
Rule
707.
Appeal to the Director-General. The decision or
order of the
Director shall become final and executory fifteen (15) days after
receipt
of a copy thereof by the appellant unless within the said period, a
motion
for reconsideration is filed with the Director or an appeal to the
Director-General
has been perfected by filing a notice of appeal and payment of the
required
fee.
Only one motion for
reconsideration of the decision or order of the Director shall be
allowed.
Rule 708.
Appelant’s
brief required. The appellant shall, within one (1) month
from
the date of filing of the notice of appeal, file a brief of the
authorities
and arguments on which he relies to maintain his appeal. On
failure
to file the brief within the time allowed, the appeal shall stand
dismissed.
Rule 709.
Director’s comment. The Director shall submit within one (1)
month his comments on the appellant’s brief if so required by the
Director
General.
Rule
710.
Appeal to the Court of Appeals. The decision of the
Director
General shall be final and executory unless an appeal to the Court of
Appeals
is perfected in accordance with the Rules of Court applicable to
appeals
from decisions of Regional Trial Courts. No motion for
reconsideration
of the decision or order of the Director General shall be allowed.
FINAL
PROVISIONS
Section 1.
Correspondence. The following regulations shall
apply to correspondence
between registrant/applicant and the Office or the Bureau:
(a) Business
to
be transacted in writing. All business with the Office or Bureau
shall be transacted in writing. Actions will be based exclusively
on the written record. No attention will be paid to any alleged
oral
promise, stipulation, or understanding.
(b)
Personal attendance
of applicants and other persons unnecessary. Unless otherwise
provided,
the personal attendance of applicants and other persons at the Office
is
unnecessary. Their business can be transacted by
correspondence.
(c)
Correspondence
to be in the name of the Director of Patents. All Office letters
with respect to matters within the jurisdiction of the Bureau must be
sent
in the name of the Director of Patents. All letters and other
communications
intended with respect to such matters must be addressed to him and if
addressed
to any other officer, they will ordinarily be returned.
(d)
Separate letter
for each case. In every case, a separate letter shall be written
in relation to each distinct subject of inquiry.
(e)
Letter relating
to applications. When a letter concerns an application it shall
state
the name of the applicant, the title of the utility model or industrial
design, the application number and the filing date of the
application.
(f)
Letters relating
to registered utility model or industrial design . When the
letter
concerns a registered utility model or industrial design, it shall
state
the name of the patentee, the title of the utility model or industrial
design, the registration number and date of issuance.
(g)
Subjects on which
information cannot be given. The Office cannot respond to
inquiries
as to the newness of an alleged utility model or industrial design
desired
to be patented in advance of the filing of an application for a
patent.
On the propriety of
making an application for the registration of utility model
or industrial design, the applicant must judge for himself or consult
an
attorney-at-law or patent agent. The Office is open to him, and
its
records pertaining to all patents granted may be inspected either by
himself
or by any attorney or agent he may call to his aid. Further than
this the Office can render him no assistance until his application
comes
regularly before it in the manner prescribed by law and by these
Regulations.
A copy of the law, rules, or circular of information, with a section
marked,
set to the individual making an inquiry of the character referred to,
is
intended as a respectful answer by the Office.
Examiners' digests
are not open to public inspection.
The foregoing shall
not, in any way, be interpreted to prohibit the Office from undertaking
an information dissemination activity in whatever format, to increase
awareness
on the patent law.
Section
2.
Fees and charges to be prepaid; fees and charges payable in
advance.
Express charges, freight, postage, telephone, telefacsimile including
cost
of paper and other related expenses, and all other charges on any
matter
sent to the Office must be prepaid in full. Otherwise, the
Office shall not receive nor perform any action on such matters.
The filing fees and
all other fees and charges payable to the Office shall be collected by
the Office in advance of any service to be rendered.
Section 3. Formality
and search report covering pending applications. (a) With
respect
to applications for utility model or industrial design registrations
which
were filed on or before December 31, 1998 and being proceded with under
the IP Code, and, applications filed on or after the effective date of
the IP Code on January 1, 1998, the Formality Report and the Search
Report
shall be issued by the Chiefs of the Mechanical and Electrical
Examining
and the Chemical Examining Divisions of the former Bureau of Patents,
Trademarks
and Technology Transfer on or before January 31, 1999.
(b) With respect
to applications for utility model or industrial design registrations
which
were filed on or before December 31, 1998 and being proceded with in
accordance
with the Acts under which they were filed as elected by the applicants
pursuant to Memorandum Order No. 1040 issued on December 16, 1997 by
the
Secretary of Trade and Industry, the results of the formality
examination
as well as the search thereon will be communicated to the applicant in
accordance with the Rules of Practice in Patent Cases, as amended.
However,
in order to avoid any potential conflict between such
applications
and those filed under the IP Code, the Chiefs of the Mechanical and
Electrical
and the Chemical Examining Divisions shall issue the office actions
covering
the results of the formality and the search thereon on or before
January
31, 1999. Furthermore, said applications may still be proceded
with
in accordance with these Regulations by filing a written notice to the
Office together with an express statement of the applicant’s action in
accordance with Rule 207 or Rule 308 of these Regulations, as the case
may be.
Section 4. Duration
of utility model and industrial design registration of pending
applications.
Considering the time that has lapsed since the filing of the
applications
under the former Acts but are proceded with in accordance with these
Regulations
as well as the time that has lapsed since the effectivity of the IP
Code,
the following rules shall govern the determination of duration of
pending
applications:
(a) The
registration
of utility model applications that were filed under the IP Code prior
to
the effectivity of these Regulations and applications that were filed
under
the former Acts but proceded with in accordance with these Regulations
shall expire, without possibility of renewal, at the end of the seventh
year from the effectivity of these Regulations.
(b) The
registration
of industrial design applications that were filed under the IP Code
prior
to the effectivity of these Regulations and applications that were
filed
under the former Acts but proceded with in accordance with these
Regulations
shall be for a period of five (5) years from the effectivity of these
Regulations,
subject to renewal as provided in the IP Code and these
Regulations.
Section 5. Implementation.
In the interest of the service, until the organization of the Bureau is
completed, the functions necessary to implement these Regulations shall
be performed by the personnel of the former Bureau of Patents,
Trademarks
and Technology Transfer as may be designated by the Director General
upon
the recommendation of the Chiefs of the Chemical Examining Division and
the Mechanical and Electrical Examining Division of the Bureau of
Patents,
Trademarks and Technology Transfer, or the Director of Patents if one
has
been appointed and qualified or the Caretaker or the Officer-in-Charge
as the Director General may designate.
Section
6.
Repeals. All rules and regulations, memoranda, circulars, and
memorandum
circulars and parts thereof inconsistent with these Regulations
particularly
the Rules of Practice in Patent Cases, as amended, are
hereby
repealed and all applications for utility models or industrial design
pending
at the effective date of the IP Code on January 1, 1998 shall be
proceeded
with in accordance with the IP Code and these Regulations unless
pursuant
to Memorandum Order No. 1040 dated December 16, 1997 issued by the
Secretary
of Trade and Industry, the applicants elected, on or before June 30,
1998,
to prosecute said applications in accordance with the Acts under which
they were filed.
Section
7.
Separability. If any provision in these Regulations or
application
of such provision to any circumstance is held invalid, the
remainder
of these Regulations shall not be affected thereby.
Section
8.
Furnishing of certified copies. Mr. Eduardo Joson, Records
Officer
II, is hereby directed to immediately file three (3) certified copies
of
these Regulations with the University of the Philippines Law Center,
and,
one (1) certified copy each to the Office of the President, the Senate
of the Philippines, the House of Representatives, the Supreme Court of
the Philippines, and the National Library.
Section
9.
Effectivity. These rules and regulations shall take
effect fifteen
(15) days after publication in a newspaper of general circulation.
Done this 2nd day
of December 1998.
EMMA C.
FRANCISCO
Director General
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