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Manual for Substantive Examination Procedure

Art.4, 4bis
Paris Convention

The Philippines being a signatory state of the Paris Convention,  Art.4 and Art.4b thereof do also apply in the Philippines

Sec.40

1. The Right to Priority           

1.1     A Philippine patent application is accorded as its date of filing the date on which it satisfies the requirements of Sec.40 and Rule 600. This date remains unchanged except in the special circumstances referred to in Sec.41 and Rules 600.1 to 602.

The date of filing may be the only effective date of the application. It will be of importance for fixing the expiry of certain time limits, for determining the state of the art relevant to the novelty or obviousness of the subject-matter of the application, and for determining, in accordance with Sec.29 and R.304, which of two or more Philippine applications from independent persons for the same invention is to proceed to grant.

Sec.31
R.305

1.2     However, in many cases, a Philippine application will claim the right of priority of the date of filing of an earlier application. In such cases, it is the priority date (i.e. the date of filing of the earlier application) which becomes the effective date for the purposes mentioned in the preceding paragraph, except for the fixing of certain time limits.

Sec.31
R.305

1.3    For a valid claim to priority, the earlier application whose priority has been claimed must have been made by the applicant, it must have been made in (or for) another country which by treaty, convention or law affords similar privileges to Filipino citizens (e.g. a signatory state of the Paris Convention), 

and the following conditions must also be satisfied:  

(a)    the local application must expressly claim priority, 

(b)    it must be 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 must be filed within six (6) months from the date of filing in the Philippines. 

Pursuant to Rule 305, the six months period may be extended by the Director for a maximum of six months upon showing of good cause or in compliance with treaties to which the Philippines are or may become a member. 

The words "in (or for) another country which…“ mean that priority may be claimed of an earlier national regional or international application. The earlier application may be for a patent or for the registration of a utility model or for a utility certificate or for an inventor's certificate. As long as the contents of the earlier application were sufficient to establish a regular filing date, it can be used to create a priority date, no matter what the outcome of the application may later be; for example, it may subsequently be abandoned or refused.

Art.4C(2)
Paris Convention

1.4     Normally (except as explained in V, 1.4a here below) the filing date of the "first application" must be claimed as a priority, i.e. the application disclosing for the first time any or all of the subject-matter of the Philippines application. If it is found that the application to which the priority claim is directed is in fact not the first application in the above sense, but some or all of the subject-matter was disclosed in a still earlier application in or for the same country and originating from the same inventor, the priority claim is invalid as far as the subject-matter was already disclosed in the still earlier application.

Sec.24.1
Sec.24.2

To the extent the priority claim is invalid, the effective filing date of the local application under examination is the date of its filing in the Philippines. The previously disclosed subject-matter of the local application is not novel, if the still earlier application referred to above was published prior to the effective filing date of the local application (Sec.24.1) or if the still earlier application is also a Philippines application which was published on or after the effective filing date of the local application in question (Sec.24.2), provided the inventor or applicant identified in both the applications are not one and the same.

1.4a     A subsequent application for the same subject-matter and filed in or for the same state shall be considered as the first application for priority purposes if, at the date this subsequent application was filed, the first application had been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and had not served as a basis for claiming priority. The Office will not consider this question unless there is evidence of the existence of an earlier application as, for example, in the case of a United States continuation-in-part application. Where it is clear that an earlier application for the same subject-matter exists, and where the priority right is important because of intervening prior art (See V, 2.1 here below), the applicant should be required to establish by evidence from an appropriate authority (normally a national patent office) that there were no rights outstanding of the in the earlier application in respect of the subject-matter of the application being examined. If the earlier application has been published, or it has been used for priority purposes in another application, there are clearly rights outstanding.

1.5     Multiple priorities from different countries may be claimed - i.e. a Philippines application may claim rights of priority based on more than one earlier application. The earlier application may have been filed in or for the same or different states, but in all cases the earliest application must have been filed not more than 12 months before the date of filing of the Philippines application.

If more than one priority is claimed, time limits will be computed from the priority date will be based on the earliest priority date.

An element of a Philippines application will be accorded the priority date of the earliest priority application which discloses it. If, for instance, the Philippines application describes and claims two embodiments (A and B) of an invention, A being disclosed in a French application and B in a German application, both filed within the preceding 12 months, the priority dates of both the French and German applications may be claimed for the appropriate parts of the Philippines application; embodiment A will have the French priority date, and embodiment B the German priority date, as effective filing dates. If embodiments A and B are claimed as alternatives in one claim, these alternatives will likewise have the different priority dates as effective dates. If, on the other hand, a Philippines application is based on one earlier application disclosing a feature C and a second earlier application disclosing a feature D, neither disclosing the combination of C and D, a claim to that combination will be entitled only to the date of filing of the Philippine application under examination itself. In other words, it is not permitted to mosaic priority documents. An exception might arise where one priority document contains a reference to the other and explicitly states that features from the two documents can be combined in a particular manner.  

2. Determining priority dates 

2.1     As a general rule, the examiner should not make any investigation as to the validity of a right to priority. However, the priority right assumes importance if prior art has to be taken into account, which has been made available to the public within the meaning of Sec.24.1, on or after the priority date claimed and before the date of the local filing (e.g. an intermediate document, See IV, 5.3, or if the content of the Philippine patent application is totally or partially identical with the content of another Philippine application from a different applicant or inventor within the meaning of Sec.24.2, such other application claiming a priority date within that period. In such cases, (i.e. cases where the art in question would be relevant if of earlier date) the examiner must investigate whether the priority date(s) claimed may be accorded to the appropriate parts of the application he is examining and should inform the applicant of the outcome and whether, in consequence, the particular prior art under consideration, e.g. the intermediate document, or the other Philippine application forms part of the state of the art within the meaning of Sec.24.  

Also, in the case of possible conflict with another Philippine application under Sec.24.2, it may be necessary in addition to allocate priority dates to the appropriate parts of that other application and to communicate this to the applicant analogously.  In the case of conflicting local applications, the examiner can only take action once the earlier local application has been published.

2.2      When the examiner needs to consider the question of priority date, he should bear in mind all the matters which are mentioned in V, 1.3 to 1.5 above. He should also remember that, to establish a priority date, it is not necessary that the elements of the invention for which priority is claimed should be found among any claims in the previous application. It is sufficient that the documents of the previous application taken as a whole "specifically disclose" such elements. The description and any claims or drawings of the previous application should, therefore, be considered as a whole in deciding this question, except that account should not be taken of subject-matter found solely in that part of the description referring to prior art, or in an explicit disclaimer.  

2.3     The requirement that the disclosure must be specific means that it is not sufficient if the elements in question are merely referred to in broad and general terms. A claim to a detailed embodiment of a certain feature would not be entitled to priority on the basis of a mere general reference to that feature in a priority document. Exact correspondence is not required, however. It is enough that, on a reasonable assessment, there is in substance a disclosure of all the elements of the claim. 

2.4     The basic test to determine whether a claim is entitled to the date of a priority document is the same as the test of whether an amendment to an application satisfies the requirement of the proviso in Sec.49 (See also VI, 5.4). That is to say for the priority date to be allowed, the subject-matter of the claim must be derivable directly and unambiguously from the disclosure of the invention in the priority document, when account is taken of any features implicit to a person skilled in the art in what is expressly mentioned in the document.

 As an example of an implicit disclosure, a claim to apparatus including "releasable fastening means" would be entitled to the priority date of a disclosure of that apparatus in which the relevant fastening element was, say, a nut and bolt, or a spring catch or a toggle-operated latch, provided the general concept of "releasable" is implicit in the disclosure of such element.  

2.5     If the tests set out in V, 2.2 to 2.4 here above are not satisfied in relation to a particular earlier application, then the effective date of the claim (or one of the embodiments claimed) will either be the filing date of the earliest application which does provide the required disclosure and of which the priority is validly claimed or, in the absence of such, will be the date of filing of the Philippine application itself (or the new date of filing if the application has been re-dated under Sec.41).  

2.6     Some examples of determining priority dates  

Note: the dates used are merely illustrative; they do not take account of the fact that filing may not be possible on weekends and public holidays.  

2.6.1    Intermediate publication of the contents of the priority application:  

P is the application from which priority is claimed by the PH application, D is the disclosure of the subject-matter of P.   

01.01.90      01.05.90         01.06.90

Sec.31
R.305
R.307

3. Claiming priority 

3.1     An applicant who wishes to claim priority must file a declaration of priority giving particulars of the previous filing, as specified in Sec.31 and Rules 305 and 307, together with a certified copy of the previous application, and if necessary a translation of it into English.

Sec.31
R.305
R.603(b)

3.2     At least the date and state of any filing from which priority is claimed must be stated at the time of filing the local application and the file number of the priority application must be indicated during formality examination. The certified copy of the priority document, together with a translation into English, if necessary, must be filed within 6 months of the priority date, which period may be extended for a maximum of 6 months under special circumstances.

Where the earlier application is an international application, the name of the state(s) for which it was filed must be stated. 

3.3 If the required translation or declaration is not filed within the time limit, the right of priority is lost for the Philippine patent application.