RULES
AND REGULATIONS ON
INVENTIONS
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
inventions are hereby promulgated: chanroblesvirtualawlibrary
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 PATENTABILITY
Rule 200.
Patentable inventions. Any technical solution of a
problem
in any field of human activity which is new, involves an inventive step
and is industrially applicable shall be patentable. [Sec.
21, IP Code]
Rule 201.
Statutory classes of invention. An invention may be, or may
relate
to:
a) a useful
machine;
b) a
product;
c) or
process or
an improvement of any of the foregoing;
d)
microorganism;
and
e)
non-biological
and microbiological processes.[Sec. 21, IP
Code]
Rule 202.
Non-patentable
inventions. The following shall be excluded from patent
protection:
(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. [Sec. 22,
IP
Code]
Rule
203.
Novelty. An invention shall not be considered new if
it forms
part of a prior art. [Sec. 23, IP Code]
Rule 204.
Prior art. Prior art shall consist of:
(a)
Everything
made available to the public by means of a written or oral disclosure,
by use, or in any other way, before the filing date or the priority
date
of the application claiming the invention. Prior use which is not
present in the Philippines, even if widespread in a foreign country,
cannot
form part of the prior art if such prior use is not disclosed in
printed
documents or in any tangible form.
(b) The
whole contents
of an application for a patent, utility model, or industrial design
registration,
published under Sec. 44 of 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 application: Provided, That the application which has
validly claimed the filing date of an earlier application under Section
31 of IP Code, shall be prior art with effect as of the filing date of
such earlier application: Provided further, That the applicant or the
inventor
identified in both applications are not one and the same. [Sec.
24, IP Code]
Where two or more
applications are independently filed with respect to the same
invention,
and the later applications are filed before the first application or
earlier
application is published, the whole contents of the first or earliest
filed
application published in accordance with Sec. 44, IP Code on or
after
the filing date or priority date of the later filed application shall
be
novelty destroying with respect to the later filed application.
Rule 205. Non-prejudicial
disclosure. The disclosure of information contained in the
application
during the twelve (12) months preceding the filing date or the priority
date of the application shall not prejudice the applicant on the ground
of lack of novelty if such disclosure was made by:
(a) The
inventor;
(b) A
foreign patent
office, the Bureau or the Office, and the information was contained (a)
in another application filed by the inventor and should not have been
disclosed
by the office, or (b) in an application filed without the knowledge or
consent of the inventor by a third party which obtained the information
directly or indirectly from the inventor; or
(c) A
third party
which obtained the information directly or indirectly from the
inventor.
For purposes of subsection
(a), “inventor” also means any person who, at the filing date of
application,
had the right to the patent. [Sec. 25, IP
Code]
Rule
206.
Inventive step. (a) An invention
involves
an inventive step if, having regard to prior art, it is not obvious to
a “person skilled in the art” at the time of the filing date or
priority
date of the application claiming the invention.
[Sec. 26, IP Code]
(b) Only prior art
made available to the public before the filing date or priority date
shall
be considered in assessing inventive step.
Rule 207. Person
skilled in the art. The person skilled in the art is
presumed
to be an ordinary practitioner aware of what was common general
knowledge
in the art at the relevant date. He is presumed to have knowledge
of all references that are sufficiently related to one another and to
the
pertinent art and to have knowledge of all arts reasonably pertinent to
the particular problems with which the inventor was involved. He
is presumed also to have had at his disposal the normal means and
capacity
for routine work and experimentation.
Rule 208.
Industrial applicability. An invention which can
be produced and used in any industry shall be industrially applicable.
[Sec. 27, IP Code] chanroblesvirtualawlibrary
PART
3 RIGHT
TO A PATENT
Rule 300. Right
to a patent. The right to a patent belongs to the
inventor,
his heirs, or assigns. When two (2) or more persons have jointly
made an invention, the right to a patent shall belong to them jointly.
[Sec. 28, IP Code]
Rule 301. Who
may be named in an application as an applicant. The
application
may be filed by the actual inventor(s) or in the name of his heirs,
legal
representative or assigns.
Rule 302.
Inventions created pursuant to a commission. The person who
commissions
the work shall own the patent, unless otherwise provided in the
contract.
[Sec. 30.1, IP Code]
Rule 303.
Inventions made in the course of employment. In case the
employee
made the invention in the course of his employment contract, the patent
shall belong to:
(a)
The employee,
if the inventive 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 invention is the result of the performance of his
regularly-assigned
duties, unless there is an agreement, express or implied, to the
contrary.
[Sec. 30.2, IP Code]
Rule 304. First
to file rule. If two (2) or more persons have made the same
invention
separately and independently of each other, the right to the patent
shall
belong to the person who filed an application for such invention, or
where
two or more applications are filed for the same invention, to the
applicant
who has the earliest filing date or, the earliest priority date.
[Sec. 29, IP Code]
Where two or more
applications for the same invention made separately and independently
of
each other have the same filing date, on priority-date the patent will
be issued jointly to the applicants of all such applications.
Rule 305. Right
of priority. An application for patent filed by any person
who
has previously applied for the same invention 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 of 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. [Sec.
31,
IP Code]
This six (6) month-period
may be extended by the Director for a maximum of six (6) months upon
showing
of good cause or in compliance with treaties to which the Philippines
is
or may become a member.
Rule
306.1.
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
306.2.
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
306.3.
If certain elements of the invention 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
306.4.
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 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 307. Certified
copy of the foreign applications. The certified copy of
foreign
applications mentioned in Rule 302 shall be the copy of the priority
application(s)
as duly certified to be a true or faithful reproduction thereof by the
Industrial Property Office which received it or any other office which
has official custody of the foreign application.
PART
4 THE
PATENT APPLICATION
Rule 400. The
patent application. - An application for a patent shall be in
Filipino
or English and shall be filed in writing either directly to the Bureau
or by post and must be addressed to the Director. The application shall
contain the following:
(a) A
request for
the grant of a patent;
(b) A
description
of the invention;
(c)
Drawing(s) necessary
for the understanding of the invention;
(d) One
or more claims;
and
(e) An
abstract.
Rule 401.
Payment
of fees. An application shall be subject to the payment
of the filing fee, the search fee and publication fee (1st publication)
within one (1) month after the filing date of the application.
The application shall
be deemed forfeited for non-payment of these fees.
Rule
402.
Marking of documents; acknowledgment. The
Bureau
shall mark the documents making up
the application with the date of the receipt. After receipt of
the
full payment of the required fees, the Bureau may issue an
acknowledgment
stating the application number, name of applicant and title of the
invention.
Rule
403. Form of request; office application form. The
request
shall be made on a form drawn up by the Office. For the
convenience
of applicants, the Office shall draw up and make available a standard
application
form which may be reproduced at will by applicants and other persons at
their own cost.
Rule 404. The
request. The request shall contain the following:
(a) Petition
for
the grant of a patent;
(b)
Applicant’s
name and address;
(c) Title of
the
invention;
(d)
Inventor’s name;
(e) If
with claim
for convention priority, it shall contain the file number, country of
origin
and the date of filing in the said country where the application was
first
filed;
(f) Name
and address
of the resident agent/representative (if any); and
(g)
Signature
of the applicant or resident agent/representative.
Rule 405.
Disclosure
and description of the invention. The application shall
disclose
the invention in a manner sufficiently clear and complete for it to be
carried out by a person skilled in the art.
Rule 406.
Test
for enabling disclosure. The test for enabling disclosure is
whether the persons to whom it is addressed could, by following the
directions
therein, put the invention into practice.
Rule
407. Contents of the Description.
(1) The description
shall:
(a) Specify
the
technical field to which the invention relates;
(b)
Indicate the
background art which, as far as known to the applicant, can be regarded
as useful for understanding the invention, for drawing up the search
report
and for the examination, and, preferably, cite the documents reflecting
such art;
(c)
Disclose the
invention, as claimed, in such terms that the technical problem (even
if
not expressly stated as such) and its solution can be understood, and
state
any advantageous effects of the invention with reference to the
background
art;
(d)
Briefly describe
the figures in the drawings, if any;
(e) When
there are
drawings, there shall be a brief description of the several views of
the
drawings and the detailed description of the invention shall refer to
its
different parts, as shown in the views, by use of reference letters or
numerals (preferably the latter);
(f)
Describe in detail
at least one way of carrying out the invention claimed using examples
where
appropriate and referring to the drawings, if any; and
(g)
Indicate explicitly,
when it is not obvious from the description or nature of the invention,
the way in which the invention is capable of exploitation in
industry.
(2) The description
shall be presented in the manner and order specified in paragraph 1,
unless
because of the nature of the invention, a different manner or a
different
order would afford a better understanding and a more economic
presentation.
Rule
408.
Requirements of applications relating to biological materials and
microorganisms.
Where the application concerns a microbiological process or
the product
thereof and involves the use of a microorganism which cannot be
sufficiently
disclosed in the application in such a way as to enable the invention
to
be carried out by a person skilled in the art, and such material is not
available to the public, the invention shall only be regarded as being
disclosed if:
(a) A
culture of
the microorganism has been deposited in a depositary institution before
filing the application;
(b) The
depositary
institution and the file number of the culture deposit are stated in
the
application. If this information is not yet available at the time
of filing the application, the said information shall be submitted
within
two (2) months from request of the Examiner. Publication of
the application under Section 44, IP Code shall be held pending
submission
of said information; and
(c) The
application
as filed gives relevant information as is available
to the
applicant
on the characteristics of the microorganism.
Rule
409.
Requirements of application relating to biological materials
and microorganisms
before allowance. An application which concerns a
microbiological
process or the product thereof and involves the use of any novel strain
of microorganism shall be allowed only when the following conditions
are
met:
(a) A
deposit was
made in a recognized international depositary authority;
(b) Proof
of such
deposit together with the proper identification or deposit number
assigned
by the depositary is submitted; and
(c) That
the depositary
should be under the contractual obligation to place the culture in
permanent
collection, and to provide access to persons who shall have interest
therein
in regard to matters relating to the patent application as
published.
Rule 410. Title
of the invention. The title of the invention should be as
short
and specific as possible, and should appear as a heading on the first
page
of the specification. All fancy names are not permissible in the
title.
Rule 411. Abstract.
The abstract written in a separate sheet with a heading “Abstract”
shall consist of a concise summary of the disclosure of the invention
as
contained in the description, claims and drawings in preferably not
more
than one hundred fifty (150) words. It must be drafted in a way
which
allows the clear understanding of the technical problem, the gist of
the
solution of that problem through the invention, and the principal use
or
uses of the invention. The abstract shall merely serve for
technical
information. Each main technical feature mentioned in the
abstract
and illustrated by a drawing in the application shall be followed by a
reference sign placed between parentheses.
Rule
412.
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 application, indicating the place and
number of words or drawing omitted.
Rule 413. (a)
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 invention covered by the claims, and the figures should be
consecutively
numbered.
(b) Drawing
for an Improvement. - When the invention consists of an improvement of
an old machine, the drawing must exhibit, in one or more views, the
invention
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
invention therewith.
Rule 414.1. Uniform
standard of excellence suited to photolithographic process, required of
drawings. - 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, 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 examination of an
application.
Rule
414.2.
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
414.3.
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
414.4.
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
414.5.
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
414.6.
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 414.7. 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 an invention 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
414.8.
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
414.9.
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
414.10.
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 invention, 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
414.11.
Flow sheets and diagrams. Flow Sheets and diagrams
are considered
drawings.
Rule
414.12.
Requisites for the figure of the IPO Gazette. As a
rule, only
one view of each invention can be shown in the IPO Gazette
illustrations.
The selection of that portion of a drawing best calculated to explain
the
nature of the invention 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 in 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 invention 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
414.13.
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
414.14.
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 invention 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 414.15.
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
414.16.
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 examination if it sufficiently illustrates the
invention,
but in such case, the drawing must be corrected or a new one furnished
before the application will be allowed.
Applicants are advised
to employ competent draftsman to make their drawings.
Rule 415. Claim.
(a) The specification must conclude with a claim particularly pointing
out and distinctly claiming the part, improvement, or combination which
the applicant regards as his invention.
(b) The application
may contain one (1) or more independent claims in the same category,
(product,
process, apparatus or use) where it is not appropriate, having regard
to
the subject matter of the application, to cover this subject matter by
a single claim which shall define the matter for which
protection
is sought. Each claim shall be clear and concise, and shall be
supported
by the description.
(c) One or more claims
may be presented in dependent form, referring back and further limiting
another claim or claims in the same application. Any dependent
claim
which refers to more than one other claim (“multiple dependent claim”)
shall refer to such other claims in the alternative only. A
multiple
dependent claim shall not serve as a basis for any other multiple
dependent
claim. For fee calculation purpose a multiple dependent claim
will
be considered to be that number of claims to which direct reference is
made therein. Furthermore, any claim depending on a multiple
dependent
claim will be considered to be that number of claims to which direct
reference
is made in that multiple dependent claims. In addition to the
other
filing fees, any original application which is filed with, or is
amended
to include, multiple dependent claims must have to pay the
prescribed
additional fees. Claims in dependent form shall be construed to
include
all the limitations of the claims incorporated by reference into the
dependent
claim. A multiple dependent claim shall be construed to
incorporate
by reference all the limitations of each of the particular claims in
relation
to which it is being considered.
(d) The claim
or claims must conform to the invention as set forth in the
description
made in the specification, and the terms and phrases used in the claims
must find clear support or antecedent basis in the said description, so
that the meaning of the terms in the claims may be ascertainable by
reference
to the description. Claims shall not, except where absolutely
necessary,
rely in respect of the technical features of the invention, on
references
to the description or drawings. In particular, they shall not
rely
on such references as: “as described in part xxx of the
description”
or, “as illustrated in figure xxx of the drawings”.
Rule
416.
Form and content of the claims. The claims shall
define the
matter for which protection is sought in terms of the technical
features
of the invention. Wherever appropriate the claims shall contain:
(a) a
statement
indicating the designation of the subject matter of the invention
and those technical features which are necessary for the definition of
the claimed subject matter but which, in combination, are part of the
prior
art;
(b) a
characterizing
portion preceded by the expression “characterized in that”
or “characterized by” – stating the technical features which,
in
combination with the features stated in sub-paragraph (a), it is
desired
to protect; and
(c)
If the
application contains drawings, the technical features mentioned in the
claims shall preferably, if the intelligibility of the claim can
thereby
be increased, be followed by reference signs relating to these features
and placed between parentheses. These reference signs shall not be
construed
as limiting the claim.
Rule
417.
Claims incurring fee. (a) Any 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
418.
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 a 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 claims of an invention patent must be written with the lines
numbered
in sets of five and the number appearing on the left side margin.
(d) The description,
the claims and the abstract may contain chemical or mathematical
formulas.
The description and the abstract 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 grant, specification, 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 419. Models;
when required. A model may be required when the invention
sought
to be patented cannot be sufficiently described in the application. The
Examiner shall notify the applicant of such requirement, which will
constitute
an official action in the case. When a model has been received in
compliance with the official requirement, the date of its filing shall
be entered on the file wrapper. Models not required nor admitted
will be returned to the applicants. When a model is required, the
examination may be suspended until it shall have been filed.
Rule
419.1.
Requisites for the model. The model, when
required,
must clearly exhibit every feature of the machine which form the
subject
of a claim of invention, but should not include other matter than that
covered by the actual invention or improvement, unless it be necessary
to the exhibition of the invention in a working model.
Rule 419.2. Material
required for the model; working models. The model must be
neatly
and substantially made of durable material, but when the material forms
an essential feature of the invention, the model should be constructed
of that material.
A working model may
be required if necessary to enable the office to fully and readily
understand
the precise operation of the machine.
Rule
419.3.
Models; when returned to applicant. In all
applications which
have been rejected or become abandoned, the model, unless it be deemed
necessary that it be preserved in the Office, may be returned to the
applicant
upon demand and at his expense; and the model in any pending case may
be
returned to the applicant upon the filing of a formal abandonment of
the
application signed by the applicant in person and any assignee.
Models belonging
to patented cases shall not be taken from the Office without the
authorization
by the Director.
Rule
419.4.
Models filed as exhibits in contested cases. Models
filed
as exhibits in contested cases may be returned to the parties at their
expense. If not claimed within a reasonable time, they may be
disposed
of at the discretion of the Director.
Rule 420. 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 421. 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
for
patent or the patent may be served.
(a) If there
are
two (2) or more agents appointed by the applicant, the Office shall
forward
all actions to the last 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.
(b) Revocation
of Power of Attorney. A power of attorney or
authorization
may be revoked at any stage in the proceedings of a case 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 422. (a) 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 and returned to the
sender,
by his direct order.
(b) 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 by or at the
instance
of the Director. chanroblesvirtualawlibrary
PART
5 WHO
MAY APPLY
FOR A PATENT
Rule 500.
Who may apply for a patent. Any person, natural or
juridical,
may apply for a patent. If the applicant is not the inventor, the
Office may require him to submit proof of his authority to apply for a
patent.
Rule
501.
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 patent in the name of the applicant, his heirs or
assignee.
Rule
502.
Assigned invention and patent. In case the whole
interest
in the invention 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
503.
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
504.
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
Bureau 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
Bureau
shall require proof of such authority.
Rule
505.
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 letters
patent. chanroblesvirtualawlibrary
PART
6 FILING
DATE
AND FORMALITY EXAMINATION
Rule 600. Filing
date requirements. The filing date of a patent
application
shall be the date on which the Office received the following elements
in
English or Filipino:
(a) An
express or
implicit indication that a Philippine patent is sought;
(b)
Information identifying
the applicant; and
(c)
Description of
the invention and one (1) or more claims.
Rule
600.1.
Incomplete application. Where the application refers
to a
drawing or drawings, it shall not be considered complete if the drawing
or drawings are not included in the application.
Rule
600.2.
For purposes of obtaining a filing date, the Bureau may accept a copy
of
the application received by the resident agent by telefax, subject to
submission
of the original copy within two (2) months from the filing date.
Rule
601.
According a filing date. The Office
shall examine
whether the patent application satisfies the requirements for the grant
of filing date as provided in these Regulations. If the filing
date
cannot be accorded, the applicant shall be given an opportunity to
correct
the deficiencies. If the application does not contain all the
elements
indicated in these regulations, the filing date should be that date
when
all the elements are received. If the deficiencies are not
remedied
within two (2) months from the date on which the application was
initially
presented to the Office, the application shall be considered
withdrawn.
[Sec. 41, IP Code]
Rule
602.
Late-filed or missing drawings. (a) If the formality
examination
reveals that the drawings were filed after the filing date of the
application, the Bureau shall send a notice to the applicant that the
drawings
and the references to the drawings in the application shall be
deemed
deleted unless the applicant requests within two (2) months that the
application
be granted a new filing date which is the date on which the drawings
were
filed.
(2) If the formality
examination reveals that the drawings were not filed, the Bureau shall
require applicant to file them within two (2) months and inform the
applicant
that the application will be given a new filing date which is the date
on which the drawings are filed, or, if they are not filed in due time,
any reference to them in the application shall be deemed deleted.
(3) The new filing
date shall be cited in all succeeding correspondences between the
Bureau
and the applicant.
Rule
603.
Formality examination. If a patent application has
been accorded
a filing date and the required fee has been paid within one (1) month,
compliance with other requirements will be checked. Such other
requirements
may relate to the following:
(a) Contents
of
the request for grant of a Philippine patent;
(b)
Priority documents
if with claim of convention priority (i.e., file number, date of
filing and country of the priority applications);
(c) Proof
of authority,
if the applicant is not the inventor;
(d) Deed
of assignment;
(e)
Payment of all
fees, (e.g., excess claims)
(f)
Signatures of
the applicants;
(g)
Identification
of the inventor; and
(h)
Formal drawings.
Rule 604. Unity
of invention. (a) The application shall relate to one
invention
only or to a group of inventions forming a single general inventive
concept.
[Sec. 38.1, IP Code]
(b) If several
independent inventions which do not form a single general inventive
concept
are claimed in one application, the Director may require that the
application
be restricted to a single invention. A later application filed
for
an invention divided out shall be considered as having been filed on
the
same day as the first application: Provided that the later application
is filed within four (4) months after the requirement to divide becomes
final, or within such additional time, not exceeding four (4) months,
as
may be granted. Provided further , That each divisional application
shall
not go beyond the disclosure in the initial application.
[Sec. 38.2, IP Code]
Rule 604.1.
The fact that a patent has been granted on an application that did not
comply with the requirement of unity of invention shall not be a ground
to cancel the patent. [Sec. 38.3, IP Code]
Rule 605. Requirements
for unity of invention. (a) The requirement of unity of invention
shall
be fulfilled only when there is a technical relationship among those
inventions
involving one or more of the same or corresponding special technical
features.
The expression “special technical features” shall mean those technical
features that define a contribution which each of the claimed
inventions,
considered as a whole makes over the prior art.
(b) The determination
whether a group of inventions is so linked as to form a single general
inventive concept shall be made without regard to whether the
inventions
are claimed in separate claims or as alternative within a single
claim.
(c) A plurality of
independent claims in different categories may constitute a group of
inventions
linked to form a single general inventive concept, the link being e.g.
that between a product and the process which produces it; or between a
process and an apparatus for carrying out the process.
(d) Three different
specific combinations of claims in different categories which are
permissible
in any one application are the following:
(1) in
addition
to an independent claim for a given product, an independent claim for a
process specially adopted for the manufacture of the product, and an
independent
claim for a use of the product; or
(2) in
addition to
an independent claim for a given process, an independent claim for an
apparatus
or means specifically designed for carrying out the process; or
(3) in
addition to
an independent claim for a given product, an independent claim for a
process
specially adapted for the manufacture of the product, and an
independent
claim for apparatus or means specifically designed for carrying out the
process.
Rule 606.
Reconsideration
for requirement. (a) If the applicant disagrees
with
the requirement of division, he may request reconsideration and
withdrawal
or modification of the requirement, giving the reasons therefor.
In requesting reconsideration, the applicant must indicate a
provisional
election of one invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final.
(b) The requirement
for division will be reconsidered on such a request. If the
requirement
is repeated and made final, the principal Examiner will, at the same
time,
act on the claims of the invention elected.
Rule 607. Appeal
from requirement for division. After a final requirement for
division, the applicant, in addition to making any response due on the
remainder of the action, may appeal from the requirement. The
prosecution
on claims of the elected invention may be continued during such
appeal.
Appeal may be deferred until after final action on or allowance of the
claims of the invention elected. Appeal may not be allowed if
reconsideration
of the requirement was not requested.
Rule 608. Subsequent
presentation of claims for different invention. If, after an
official action on an application, the applicant presents claim
directed
to an invention divisible from the invention previously claimed, such
claims,
if the amendment is entered, will be rejected and the applicant will be
required to limit the claims to the invention previously claimed.
Rule 609. Election
of species. In the first action on an application containing
a generic claim and claims restricted separately to each of more than
one
species embraced thereby, the Examiner, if of the opinion, after a
complete
search on the generic claim presented is allowable, shall require
the applicant in his response to that action to elect the species of
his
invention to which his claim shall be restricted, if no generic claim
is
finally held allowable.
Claims directed neither
to the species nor to the genus of the disclosed invention maybe
allowed.
Markush type claims, i.e., claims which enumerate in
alternative
manner, members or variations which are properly claimable as species
claims
may likewise be allowed, provided that the amount of the fees payable
by
the applicant/s shall be computed depending on the number of members or
variations enumerated in the Markush type claims.
Rule 610. Separate
application for invention not elected. The inventions
which
are not elected after a requirement for division may be the subject of
separate applications which will be examined in the same manner as
original
applications. However, if such an application is filed before the
original application is patented or withdrawn, and if it is identical
and
the papers constituting an exact copy of the original papers which were
signed and executed by the applicant, signing and execution of the
applicant
may be omitted; such application may consist of the filing fee, a copy
of the drawings complying with rules relating to drawings and filed,
together
with a proposed amendment canceling the irrelevant claims or other
matters.
Rule 611.
Divisional
application. (a) The applicant may file a divisional application on
a pending application before the parent application is withdrawn,
abandoned
or patented, provided that the subject matter shall not extend beyond
the
content of the parent application.
The divisional application
shall be accorded the same filing date as the parent application, and
shall
have the benefit of any right to priority.
Rule 612. Information
concerning corresponding foreign application for patents. The
applicant shall, at the request of the Director, furnish him with the
date
and number of any application for a patent filed by him abroad,
hereafter
referred to as the “foreign application”, relating to the same or
essentially
the same invention as that claimed in the application filed with the
Office
and other documents relating to the foreign application. [Sec.
39, IP Code]
Rule 612.1.
Other documents relating to the foreign application may consist of the
following:
(a) A copy
of the
search reports in English on the corresponding or related foreign
application
prepared by the European, Japanese or United States Patent Offices,
searching
authorities under the Patent Cooperation Treaty or by the office where
the first patent application was filed.
(b)
Photocopy of
the relevant documents cited in the search report;
(c) Copy
of the patent
granted to the corresponding or related application;
(d) Copy
of the examination
report or decision on the corresponding or foreign related application;
and
(e) Other
documents
which could facilitate adjudication of the application. Rule 612.2.
Non-compliance. The application is considered withdrawn if
the
applicant fails to comply with the requirement to furnish information
concerning
the corresponding foreign application, within the specified period. chanroblesvirtualawlibrary
PART
7 CLASSIFICATION
AND SEARCH
Rule 700.
Classification and search. An
application that
has complied with the formal requirements shall be classified and a
search
shall be conducted to determine the prior art. [Sec.
43,
IP Code]
Rule
701.
The Office shall use the International Patent Classification.
Rule
701.1.
Content of the Intellectual Property Search Report. The
Intellectual Property 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 and inventive step of the invention.
(b) The search report
shall distinguish between cited documents published before the date of
priority claimed, between such date of priority and the date of filing,
and on or after the date of filing.
(c) The search report
shall contain the classification of the subject matter of the
application
in accordance with the International Patent Classification.
(d) The search report
may include documents cited in a search established in the
corresponding
foreign application. chanroblesvirtualawlibrary
PART
8 PUBLICATION
AND REQUEST FOR EXAMINATION
Rule 800. Publication
of application. (a) The application shall be published
in the IPO Gazette together with a search document established by or on
behalf of the Office citing any document or documents that reflect
prior
art, after the expiration of eighteen (18) months from the filing date
or priority date.
(b) The application
will not be published if it has been finally refused or withdrawn or
deemed
to be withdrawn before the termination of the technical preparation for
publication.
(c) The application
to be published shall contain the bibliographic data, any drawing as
filed
and the abstract.
(d) The Office shall
communicate to the applicant the date and other information regarding
the
publication of the application and draw his attention to the period
within
which the request for substantive examination must be filed.
(e) After
publication of a patent application, any interested party may inspect
the
application documents filed with the Office.
(f) The Director
General, subject to the approval of the Secretary of Trade and
Industry,
may prohibit or restrict the publication of an application, if in his
opinion,
to do so would be prejudicial to the national security and interests of
the Republic of the Philippines. [Sec. 44, IP
Code]
Rule
801.
Confidentiality before publication. An application,
which
has not yet been published, and all related documents, shall not be
made
available for inspection without the consent of the applicant. [Sec.
45, IP Code]
Rule 802. Observation
of third parties. Following the publication of the
application,
any person may present observations in writing concerning the
patentability
of the invention. Such observations shall be communicated to the
applicant who may comment on them. The Office shall acknowledge
and
put such observations and comment in the file of the application to
which
it relates. [Sec. 47, IP Code]
Rule
803.
Request for substantive examination. The
application
shall be deemed withdrawn unless within six (6) months from the date of
publication under these rules, a written request to determine whether a
patent application meets the requirements of Patentability as provided
for by the IP Code, and the fees have been paid on time.
Rule 803.1. Withdrawal
of the request for examination shall be irrevocable and shall not
authorize
the refund of any fee. [Sec. 48, IP Code]
Rule 804.
Rights
conferred by an application after publication. The
applicant
shall have all the rights of a patentee under Sec. 76, of the IP Code
against
any person who, without his authorization, exercised any of the rights
conferred under Section 71 of said law in relation to the invention
claimed
in the published application, as if a patent has been granted for that
invention: Provided, That the said person had:
(a) Actual
knowledge
that the invention that he was using was the subject matter of a
published
application; or
(b)
Received written
notice that the invention that he was using was the subject matter of a
published application being identified in the said notice by its serial
number: Provided, That the action may not be filed until after
the
grant of a patent on the published application and within four (4)
years
from the commission of the acts complained of. [Sec.
46, IP Code]
Rule 805. Citation
and references. Should domestic patents be cited, their
numbers
and dates, the names of the patentees, and the classes of inventions
must
be stated. Should foreign patents be cited, their nationality or
country, numbers and dates and the names of the patentees must be
stated,
and such other data must be furnished as may be necessary to enable the
applicant to identify the patents cited. In citing foreign
patents,
in case part of the patent be involved, the particular pages and sheets
containing the parts relied upon must be identified. Should
non-patent
publications be cited, the author (if any), title, date, relevant pages
or plates, and place of publication, or place where a copy can be
found,
shall be given.
PART
9 THE
EXAMINATION
OF THE APPLICATION; NATURE
OF PROCEEDINGS
IN THE EXAMINATION OF AN
APPLICATION
FOR A PATENT; GENERAL
CONSIDERATIONS
Rule 900. Applications
prosecuted ex parte. An application is prosecuted ex parte
by the applicant; that is, the proceedings are like a lawsuit in which
there is a plaintiff, but no defendant, the court itself acting as the
adverse party.
Rule
901.
Proceedings a contest between the Examiner and the applicant.
An ex parte proceeding in the Bureau is a law contest between
the
Examiner, representing the public and trying to give the inventor the
least
possible monopoly in return for his disclosure, and the applicant or
his
attorney trying to get as much monopoly as possible.
Rule
902.
Applicant supposed to look after his interest. The
Bureau,
represented by the Examiner, is not supposed to look after the
interests
of an applicant. The Examiners are charged with the
protection
of the interest of the public, and hence must be vigilant to see that
no
patent issues for subject matter which is not patentable, and is
already
disclosed in prior inventions and accessible to the public at
large.
Rule 903. Preliminary
adverse actions of the Examiner valuable to applicant.
The positive value of preliminary adverse actions of the Examiner
should
be fully appreciated by the applicant and his attorney. A
hard-fought
application will produce a patent much more likely to stand in court
than
a patent which has slid through the Bureau easily. This is so for
two reasons: first, the rejections have given the applicant or his
attorney
suggestions of strengthening amendments so that his claims have been
made
infinitely less vulnerable than would be otherwise possible;
secondly,
every point raised by the Examiner and finally decided by the Bureau in
favor of the applicant will give him a prima facie standing on that
point
in court. The Office is empowered by law to pass upon
applications
for patents and, because of the authority vested in it, its decisions
with
respect to the granting of an application or on any point connected
with
it will be presumed to be correct by the courts.
Rule 904. A
preliminary
rejection should not be taken literally; Examiner is only trying
to be helpful. A rejection by the Examiner is never to
be taken literally. An applicant should remember that the
Examiner
may not be actually rejecting his invention. The Examiner may in
fact be quite prepared to admit the invention over the references to
the
prior art. He may be merely rejecting the applicant’s claims,
that
is, the way in which the applicant has expressed his invention.
An Examiner will
frequently make a blanket rejection on some reference to the prior art
just to be helpful to the applicant - just to give the applicant
a chance to explain away some reference and make a change in his claims
to avoid it, rather than to wait until the patent is granted and is
involved
in a litigation, when it may be too late to make the explanation.
Rule 905. The
Examiners shall have original jurisdiction over all applications;
appeal
to the Director. The examination of all
applications
for the grant of invention patents shall be under the original
jurisdiction
of the several Examiners; their decisions, when final, shall be
subject
to petition, or appeal to the Director within four (4) months from the
mailing date of the notice of the decision. As regards
information
on any specific technical or scientific matter pending final action by
the Bureau, the applicant may, upon payment of a fee, request in
writing
for a conference with the Examiner specifying the query he would want
to
propound to the Examiner but in respect of which the Examiner has the
discretion
to grant the request or choose to reply to the query in writing.
Rule 906. Order
of examination. Applications filed in the Bureau and
accepted
as complete applications are assigned for examination to the respective
Examiners handling the classes of invention to which the applications
relate.
Applications shall be taken up for examination by the Examiner in the
order
in which they have been filed.
Applications which
have been acted upon by the Examiner, and which have been placed by the
applicant in condition for further action by the said Examiner (amended
application) shall be taken up for such action in the order in which
they
have been placed in such condition (date of amendment).
Rule 907. Nature
of examination, Examiner’s action. (a) On taking
up an application for examination, the Examiner shall make a thorough
study
thereof and shall make a thorough investigation of the available prior
art relating to the subject matter of the invention sought to be
patented.
The examination shall be complete with respect both to compliance of
the
application with the statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form,
unless
otherwise indicated.
(b) The applicant
will be notified of the Examiner’s action. The reasons for any
adverse
action or any objection or requirement will be stated and such
information
or references will be given as may be useful in aiding the applicant to
judge the propriety of continuing the prosecution of his
application.
Rule 908.
Completeness
of Examiner’s action. The Examiner’s action will
be complete as to all matters, except that in appropriate
circumstances,
such as restriction requirement, fundamental defects in the
application,
and the like, the action of the Examiner may be limited to such matters
before further action is made. However, matters of form need not
be raised by the Examiner until a claim is found allowable.
Rule 909.
Rejection
of claims. (a) If the invention is not considered patentable,
in any manner, all the claims will be rejected by the Examiner.
If
the invention is considered patentable as claimed in certain of
the
claims, but unpatentable as claimed in other claims, the latter claims
will be rejected but will not result in the refusal to grant a patent
provided
it is limited only to claims that have not been rejected.
(b) In rejecting
claims for want of novelty or for want of inventive step, the Examiner
must cite the references most relevant to the invention. When a
reference
is complex or shows or describes inventions other than that claimed by
the applicant, the particular part relied on must be designated as
nearly
as practicable. The pertinence of each reference, if not obvious,
must be clearly explained and each rejected claim specified.
(c) Claims
may be rejected for non-compliance with Sec. 35.1 and Sec. 36.1, IP
Code.
Rule 910. Unpublished,
withdrawn and forfeited applications not cited. Unpublished,
withdrawn and forfeited applications as such will not be cited as
references.
Rule 911. Reply
by applicant. (a) After the action of the Examiner, if the
same
be adverse in any respect, the applicant, if he persists in his
application
for a patent, must reply thereto and may request re-examination or
reconsideration,
with or without amendment.
(b) In order to be
entitled to re-examination or reconsideration, the applicant must make
a request therefor in writing, and he must distinctly and specifically
point out the supposed errors in the Examiner’s action; the applicant
must
respond to every ground of objection and rejection in the prior
Examiner’s
action (except that request may be made that objections or requirements
as to form, not necessary to further consideration of the claims, be
held
in abeyance until a claim is allowed), and the applicant’s action must
appear throughout to be a bona fide attempt to advance the case
to
final action. The mere allegation that the Examiner has erred will not
be received as a proper reason for such reexamination or
reconsideration.
(c) In amending an
application in response to a rejection, the applicant must clearly
point
out the patentable inventiveness and novelty which he thinks the claims
present, in view of the state of the art disclosed by the references
cited
or the objections made. He must also show how the amendments
avoid
such references or objections.
Rule 912. Re-examination
and reconsideration. After response by applicant, the
application
will be re-examined and reconsidered, and the applicant will be
notified
if claims are rejected, or objections or requirements made, in the same
manner as after the first examination. Applicant may respond to such
Examiner’s
action, in the same manner provided in these Regulations, with or
without
amendment, but any amendments after the second Examiner’s action must
ordinarily
be restricted to the rejection or to the objections or requirements
made,
and the application will be again considered.
Rule 913. Final
rejection or action. (a) On the second or any subsequent
examination
or consideration, the rejection or other action may be made final,
where
upon applicant’s response is limited to appeal, in the case of
rejection
of any claim or to amendment as specified in these Regulations.
Petition
may be taken to the Director in the case of objections or requirements
not involved in the rejection of any claim as provided in these
Regulations.
Response to a final rejection or action must include cancellation of,
or
appeal from the rejection of, each claim so rejected; and, if any claim
stands allowable, compliance with any requirement or objection as to
form.
(b) In making such
final rejection, the Examiner shall repeat all grounds of
rejection
then considered applicable to the claims in the case, clearly stating
the
reasons therefor. The Examiner may not cite grounds that have not been
raised in the earlier communications to the applicant.
Rule
914.
Conversion of patent applications or applications for utility
model.
(a) At any time before the grant or refusal of a patent, an
applicant
for a patent, 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 initial application. An
application
may be converted only once. [Sec. 110, IP
Code]
(b) 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 initial application. [Sec.
110, IP Code]
Rule
915.
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
whether simultaneously or consecutively. [Sec.
111,
IP Code]
AMENDMENTS
BY
THE APPLICANT
Rule
916.
Amendment by the applicant. An applicant may amend
the patent
application during examination: Provided, That such amendment shall not
include new matter outside the scope of the disclosure contained in the
application as filed. [Sec. 49, IP Code]
Rule 917. Amendments
after final action of the Examiner. (a) After final rejection
or action, amendments may be made canceling claims or complying with
any
requirement of form which has been made, and amendments presenting
rejected
claims in better form for consideration on appeal may be admitted; but
any proceedings relative thereto, shall not operate to relieve the
application
from its condition as subject to appeal or to save it from being
considered
withdrawn.
(b) Should amendments
touching the merits of the application be presented after final
rejection,
or after appeal has been taken, or when such amendment might not
otherwise
be proper, they may be admitted upon a showing of good and sufficient
reasons
why they are necessary and were not earlier presented.
Rule
918.
Amendment and revision required. The
specification,
claims and drawing must be amended and revised when required, to
correct
inaccuracies of description and definition or unnecessary prolixity,
and
to secure correspondence between the claims, the specification and the
drawing.
Rule 919.
Amendment of disclosure. No deletion or addition
shall broaden the disclosure of an application to include new matter
after
the filing date of the application. All amendments to the
specification,
claims or drawing, and all additions thereto made after the filing date
of the application must conform to at least one of them as it was as of
the filing date. Matter not found in either, involving a
departure
from or an addition to the original disclosure, cannot be added to the
application even though supported by a supplemental oath, and can be
shown
or claimed only in a separate application.
Rule 920.
Amendment of claims. The claims may be amended by canceling
particular
claims, by presenting new claims or by amending the language of
particular
new claims (such amended claims being in effect new claims). In
presenting
new or amended claims, the applicant must point out how they avoid any
reference or ground of rejection of record which may be pertinent.
Furthermore,
in order to facilitate the processing of the examination of the
application
, the applicant shall indicate in his response which form part in the
original
disclosure constitutes the basis of the amendments.
Rule 921.
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
922.
Entry and consideration of amendments. (a)
Amendments
are entered by the Bureau 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.
(b) Ordinarily all
amendments presented in a paper filed while the application is open to
amendment are entered and considered provided that amendments that do
not
comply with this rule may not be accepted. Untimely amendatory
papers
may be refused entry and consideration in whole or in part.
Rule
923.
Amendments to the drawing. (a) No
change
in the drawing may be made except by permission of the Bureau.
Request
for changes in the construction shown in any drawing may be made
only upon payment of the required fee. A sketch in permanent ink
showing proposed changes to become part of the record must be filed
together
with the search request. The paper requesting amendments to the
drawing
should be separate from other papers. The drawing may not be
withdrawn
from the Bureau except for signature. Substitute drawings will not
ordinarily
be admitted in any case unless required by the Bureau.
Rule 924. Amendment
of amendments. When an amendatory clause is to be amended, it
should be wholly rewritten and the original insertion cancelled, so
that
no interlineations or deletions shall appear in the clause as finally
presented.
Matter cancelled by amendment can be reinstated only by a subsequent
amendment
presenting the cancelled matter as a new insertion.
Rule
925.
Substitute specification. If the number or nature of
the amendments
shall render it difficult to consider the case, or to arrange the
papers
for printing or copying, the Examiner may require the entire
specification
or claims, 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 specification may be required within two (2) months
from grant of the patent prior to publication of the patent in the IPO
Gazette.
Rule
926.
Numbering of claims. The original numbering of the
claims
must be preserved through the prosecution. When claims are
cancelled,
the remaining claims must not be renumbered. When claims are
added
by amendment or substituted for cancelled claims, they must be numbered
by the applicant consecutively beginning with the number next following
the highest numbered claim previously presented (whether entered or
not).
When the application is ready for allowance, the Examiner, if
necessary,
will renumber the claims consecutively in the order in which they
appear
or in such order as may have been requested by applicant.
Rule
927.
Petition from refusal to admit amendment. From
the refusal of the Examiner to admit an amendment, in whole or in part,
a petition will lie to the Director under these Regulations.
Rule 928. Interviews
with the Examiners: when no interview is permitted.
Interviews
with the Examiner concerning an application pending before the Bureau
can
be held only upon written request specifying the query the applicant
would
want to propound and after payment of the required fee, but in respect
of which the Examiner has the jurisdiction to grant interview or
instead
reply to the query in writing. The interview shall take place within
the
premises of the Bureau and during regular office hours as specified by
the Examiner. All interviews or conferences with Examiners shall be
reduced
to writing and signed by the Examiner and the applicant immediately
after
the conference. Such writing shall form part of the records of the
Bureau.
Interviews for the discussion of pending applications shall not be held
prior to the first official action thereon.
TIME
FOR RESPONSE
BY APPLICANT; WITHDRAWAL
OF
APPLICATION
Rule 929.
Withdrawal of application for failure to respond within time
limit.
(a) If an
applicant
fails to prosecute his application within the required time as provided
in these Regulations, the application shall be deemed withdrawn.
(b) The time for
reply may be extended only for good and sufficient cause, and for a
reasonable
time specified. Any request for such extension must be filed on
or
before the day on which action by the applicant is due. The Examiner
may
grant a maximum of two (2) extensions, provided that the
aggregate
period granted inclusive of the initial period allowed to file the
response,
shall not exceed six (6) months from mailing date of the official
action
requiring such response.
(c) Prosecution of
an application to save it from withdrawal must include such complete
and
proper action as the condition of the case may require. Any
amendment
not responsive to the last official action shall not operate to save
the
application from being deemed withdrawn.
(d) When action
by the applicant is a bona fide attempt to advance the case to final
action,
and is substantially a complete response to the Examiner’s action, but
consideration of some matter or compliance with some requirements has
been
inadvertently omitted, opportunity to explain and supply the omission
may
be given before the question of withdrawal is considered.
(e) Prompt ratification
or filing of a correctly signed copy may be accepted in case of an
unsigned
or improperly signed paper.
Rule
930.
Revival of application. An application deemed
withdrawn for
failure to prosecute may be revived as a pending application within a
period
of four (4) months from the mailing date of the notice of withdrawal if
it is shown to the satisfaction of the Director that the failure was
due
to fraud, accident, mistake or excusable negligence.
A petition to revive
an application deemed withdrawn must be accompanied by (1) a showing of
the cause of the failure to prosecute, (2) a complete proposed
response,
and (3) the required fee.
An application not
revived in accordance with this rule shall be deemed forfeited.
Rule 931. Express
withdrawal of application. An application may be expressly
withdrawn
by filing in the Bureau a written declaration of withdrawal, signed by
the applicant himself and the assignee of record, if any, and
identifying
the application.
PART
10 GRANT
OF PATENT
Rule 1000.
Grant of patent. If the application meets the
requirements
of the IP CODE and these Regulations, the office shall grant the
patent:
Provided, That all the fees are paid on time. If the required fees for
grant and printing are not paid in due time, the application shall be
deemed
withdrawn [Sec. 50, IP Code]
Rule
1001.
Contents of patent. The patent 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 of Patents, and registered together with the
description, claims, and drawings, if any, in books and records of the
Office. [Sec. 63, IP Code]
Rule
1002.
Publication upon grant of patent. The grant of the
patent
together with other information shall be published in the IPO Gazette
within
six (6) months. [Sec. 52.1, IP Code]
Rule
1003.
Any interested party may inspect the complete description, claims, and
drawings of the patent on file with the Office. [Sec.
52.2, IP Code]
PART
11 TERM
OF PATENT
Rule 1100.
Term of patent. The term shall be twenty (20) years from the
filing date of the application [Sec. 54, IP Code].
However, a patent shall cease to be in force and effect if any
prescribed
annual fees therefor is not paid within the prescribed time or if the
patent
is cancelled in accordance with the provisions of the IP Code and these
Regulations.
Rule
1101.
Annual fees. The first annual fee on a patent shall
be due
and payable on the expiration of four (4) years from the date the
application
is published, and on each subsequent anniversary of such date.
Payment
may be made within three (3) months before the due date. The
obligation
to pay the annual fees shall terminate should the application be
withdrawn,
refused, or cancelled. [Sec. 55, IP
Code]
Rule 1102.
Date application is published. The application is published
on
the date that the IPO Gazette containing the applications is released
for
circulation. For example, if the IPO Gazette containing the
application
is released for circulation on January 15, 1999, then the first annual
fee shall be due and payable on January 15, 2003.
Rule
1103.
Non-payment of annual fees. If any annual fee is not paid
within
the prescribed time, the application shall be deemed withdrawn or the
patent
considered as lapsed from the day following the expiration of the
period
within which the annual fees were due. A notice that the
application
is deemed withdrawn or the lapse of a patent for non-payment of any
annual
fee shall be published in the IPO Gazette and the lapse shall be
recorded
in the appropriate register of the Office.
[Sec.
55.2, IP Code]
Rule
1104.
Grace period. A grace period of six (6) months from
the due
date shall be granted for the payment of the annual fee, upon payment
of
the prescribed surcharge for delayed payment. [Sec.
55.3, IP Code] chanroblesvirtualawlibrary
PART
12 OTHER
PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT
CHAPTER 1.
RECORDING OF ASSIGNMENT OF LETTERS PATENT AND OF OTHER INSTRUMENTS
AFFECTING
TITLE TO PATENTS, INCLUDING LICENSES.
Rule
1200.
Form of assignment of a patent or of an application for a patent.
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) so
that there
can be no mistake as to the patent or application intended, must
identify
the letters patent involved by number and date, giving the name of the
patentee and the title of the invention as set forth in the patent; in
the case of an application for patent, the application number and
filing
date of the application should be stated, giving also the name of the
applicant,
and the title of the invention, 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, or before its
application
number is ascertained, it should adequately identify the application,
by
its date of execution and name of the applicant, and the title of the
invention;
and
(e) must
be accompanied
by the required recordal and publication fees.
Rule
1201.
Form of other instruments affecting the title to a patent 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 1202. Assignment
and other instruments to be submitted in duplicate. The
original
document together with a signed duplicate thereof, shall be
submitted.
If the original is not available, an authenticated copy thereof in
duplicate
may be submitted instead. After recording, the Office shall
retain
the signed duplicate or one of the authenticated copies, as the case
may
be, and return the original or the other authenticated copy to the
party
who filed the same, with a notation of the fact of recording.
Rule
1203.
Date of recording of assignment or other instrument or license
considered
its date of filing. The date of recording of an assignment or
other instrument is the date of its receipt at the Office in proper
form
and accompanied by full payment of the required recording and
publication
fees.
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 months from the date thereof, or prior to the subsequent purchase
or mortgage. [Sec. 106, IP Code] Notice
of
the recording shall be published in the IPO Gazette.
Rule
1204.
Letters patent may be issued to the assignee in place of the
applicant.
In the case of the assignment of a pending application for
patent,
the letters patent may be issued to the assignee of the applicant,
provided
the assignment has been recorded in the Office before the actual issue
of the patent.
Rule 1205. 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 PATENT.
Rule
1206.
Surrender of patent. (a) The owner of the patent,
with the
written and verified consent of all persons having grants or licenses
or
other right, title or interest in and to the patent and the invention
covered
thereby, which have been recorded in the Office, may surrender his
patent,
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. [Sec.
56, IP Code]
(b) Any
person may give notice to the Office of his opposition to the surrender
of a patent, and if he does so, the Bureau shall notify the proprietor
of the patent and determine the question.
(c) If the
Office is satisfied that the patent 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 patent shall cease to have effect,
but
no action for infringement shall lie and no right compensation shall
accrue
for any use of the patented invention before that day for the services
of the government. [Sec. 56, IP Code]
Rule
1207.
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 patent issued to the patentee, the
Director
shall have the power to correct without fee any mistake in a
patent
incurred through the fault of the Office when clearly disclosed by the
records thereof, to make the patent conform to the records. [Sec.
57, IP Code]
Rule
1208. 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 patent of a
formal
and clerical nature, not incurred through the fault of the Office. [Sec
58, IP Code]
Rule
1209.
Changes in patent. (a) The owner of the patent
shall
have the right to request the Bureau to make changes in the
patent
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 patent, no request may be
made after the expiration of two (2) years from the grant of a patent
and
the change shall not affect the rights of any third party which has
relied
on the patent, as published.
Rule
1210.
Form and publication of amendments or corrections.
An amendment
or correction of a patent 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
patent.
Notice of such amendment or correction shall be published in the IPO
Gazette
and copies of the patent furnished by the Office shall include a copy
of
the certificate of the amendment or correction. [Sec.
60, IP Code]
CHAPTER
3.
ASSIGNMENT AND TRANSMISSION OF RIGHTS
Rule
1211.
Assignment and transmission of rights. Patents or
applications
for patent and the inventions to which they relate shall be protected
in
the same way as the rights of other property under the Civil
Code.
Inventions and any right, title or interest in and to patents and
inventions
covered thereby may be assigned, or transmitted by inheritance or
bequest
or may be the subject of a license contract. [Sec.
103,
IP Code]
Rule
1212.
Assignment of inventions. An assignment may be of
the entire
right, title or interest in and to the patent and the invention covered
thereby, or of an undivided share of the entire patent and invention in
which event the parties become joint owners thereof. An
assignment
may be limited to a specified territory. [Sec. 104,
IP
Code]
Rule
1213.
Rights of joint owners. If two or more persons
jointly own
a patent and the invention covered thereby either by the issuance of
the
patent in their joint favor or by reason of the assignment of an
undivided
share in the patent and invention 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 invention 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. [Sec. 107, IP Code] chanroblesvirtualawlibrary
PART
13 PETITIONS
AND
APPEAL
Rule 1300.
Nature of the function of Examiners. The function of
determining
whether or not an application for grant of patent should be allowed or
denied under the facts disclosed in the application and in the
references
consulted by the Examiner and under the applicable law (statutory and
decisional),
is a quasi-judicial function and involves the exercise of judicial
discretion.
Thus, with respect
to such function, the Director cannot lawfully exercise direct control,
direction and supervision over the Examiners but only general
supervision,
exercised through a review of the recommendation they may make for the
grant of patent and of other actions, and through a review of their
adverse
decisions by petition or appeal.
Rule
1301.
Petition to the Director to question the correctness of the
action of
an Examiner on a matter not subject to appeal. Petition
may be filed with the Director from any repeated action or requirement
of the Examiner which is not subject to appeal 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. The mere
filing
of a petition will not stay the maximum period of six (6) months
counted
from the mailing date of the Examiner’s action subject of the appeal
for
replying to an Examiner’s action nor act as a stay of other
proceedings.
Rule
1302.
Appeals to the Director. Every applicant for the
grant of
a patent may, upon the final refusal of the Examiner to grant the
patent,
appeal the matter to the Director. Appeal may also be taken to
the
Director from any adverse action of the Examiner in any matter over
which
these Regulations give original jurisdiction to the Examiner. A
second
adverse decision by the Examiner on the same grounds may be considered
as final by the applicant, petitioner, or patentee for purposes of
appeal.
Rule
1303.
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.
If an application
is considered abandoned for failure of the applicant to respond to an
action
of the Examiner on the merits, the order declaring the application as
withdrawn
which has become final shall likewise have the effect of res
judicata.
Rule
1304.
Time and manner of appeal. Any petition or appeal must be
taken
by filing the petition in duplicate or a notice of appeal, as the case
may be, and payment of the required fee within two (2) months from the
mailing date of the action subject of the petition or appeal, must
specify
the various grounds upon which the petition or appeal is taken,
and
must be signed by the petitioner or appellant or by his attorney of
record.
The period herein provided shall, in no case, exceed the maximum period
of six (6) months from the mailing date of the action subject of the
petition
or appeal.
Rule
1305.
Appellant’s brief required. In case of an appeal,
the appellant
shall, within two (2) months, without extension, 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
1306.
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
1307.
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
1308.
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 1309. Appellant’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
1310.
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
1311.
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. chanroblesvirtualawlibrary
FINAL
PROVISIONS
Section
1. Correspondence. The following regulations shall
apply
to correspondence between patentee/applicants 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 invention, the
application
number and the filing date of the application.
(f)
Letter relating
to granted patents. When the letter concerns a granted
patent,
it shall state the name of the patentee, the title of the invention,
the
patent number and date of issuance.
(g)
Subjects on
which information cannot be given. The Office cannot
respond
to inquiries as to the newness or inventive step of an alleged
invention
desired to be patented in advance of the filing of an application for a
patent.
On the propriety of
making an application for the grant of patent, 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. 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
4.
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; Provided that all applications for patents
pending
in the Bureau of Patents, Trademarks and Technology Transfer shall be
proceeded
with and patents thereon granted in accordance with the Acts under
which
said applications were filed, and said Acts are hereby continued to be
enforced, to this extent and for this purpose only.
Section
5.
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
6.
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
7.
Effectivity. These rules and regulations shall take
effect
fifteen (15) days after publication in a newspaper of general
circulation.
Done this 29th day
of December 1998. APPROVED:
EMMA C.
FRANCISCO
Director General
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