FREQUENTLY ASKED QUESTIONS ON PCT NATIONAL PHASE ENTRY
What are the types of protection available in the Philippines for PCT applications?
(b) Utility Model
What is the time limit or deadline for entry into the national phase in the Philippines?
Entry into the national phase in the Philippines must be made within thirty (30) months from the earliest priority date or international filing date (if the international application has no priority claim) of the international application. Subject to the payment of an extension fee for late entry equal to 50% of the filing fee prescribed in the Intellectual Property Office (IPO) Fee Structure, the entry into the national phase may be extended by one (1) month.
What are the special requirements of the Intellectual Property Office of the Philippines (IPO) for entry into the national phase?
(a) Appointment of an agent or representative if the applicant is not a resident of the Philippines
(b) Document evidencing a change of the name or person of the applicant if the change occurred after the international filing date and has not been reflected in the PCT pamphlet or in a notification from the International Bureau (Form PCT/IB/306)
(c) Furnishing, where applicable, of a nucleotide and/or amino sequence listing in electronic form and if not already complied with, the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.
What are the important time limits to be observed?
(a) Within six (6) months from the date of entry into the national phase:
i. Priority Document – The priority document of a claimed earlier application must be submitted to the International Bureau within sixteen (16) months from the priority date. If it has not been submitted to the International Bureau within the said time period, it must be submitted to the IPO, together with the payment of fee for extension of time to submit priority document plus surcharge provided for in the IPO Fee Structure, within six (6) months from the date of entry into the national phase without need of notice. Failure of the applicant to comply shall be ground to disregard the priority claim
ii. Request for substantive examination – The application shall be deemed withdrawn if the request for substantive examination is not made and the substantive examination fee is not paid within six (6) months from the date of entry into the national phase.
(b) Four (4) years from the date of international publication and each subsequent anniversary date:
i. Annual Fee – The annual fee of a patent application or patent shall be due and payable on the expiration of four (4) years from the date of the international publication, and on each subsequent anniversary of such date. Payment of the annual fee 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. The annual fee of a divisional patent application or divisional patent shall be due and payable on the expiration of four (4) years from the date of the international publication of the parent application, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. In all cases, the obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.
Is a PCT National Phase application subject to publication in the IPO E-Gazette?
Yes. Where the international publication was effected in a language other than English, the application is required to be published in the IPO Gazette following the format used in publishing national applications.
If an office action is issued, can the deadline for the required response be extended?
The time for reply may be extended only for good and sufficient cause, and for 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 the mailing date of the official action requiring such response.
Can amendments to the application be made?
During the national phase, and at any time before a patent is granted or refused on the international application, the applicant may present amendments to the specification, claims and drawings in accordance with the IP Code and its implementing rules and regulations.
When should annual fees be paid for national phase applications?
The first annual fee must be paid on the expiration of four (4) years from the date of publication of the international application regardless of the language of publication. Subsequent annual fees shall be due on each subsequent anniversary of such date.
What is the term of patent in the Philippines?
The term of the patent shall be twenty (20) years from the international filing date of the application.
What is the term of registration of utility model in the Philippines?
A utility model registration shall expire without any possibility of renewal, at the end of the seventh year after the date of the filing of the application.
What are the PCT Regulations that do not apply in the Philippines?
The regulations on the restoration of right of priority under Rules 26bis.3(j), 49ter.1 (g) and 49ter.2 (h) and reinstatement of rights after failure to perform acts referred to in Article 22 (national phase entry) under Rule 49.6(f) do not apply to the Philippines.