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 If the required fees for grant and printing are not paid in due time, the application shall be deemed withdrawn (Sec. 50, IP CODE)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)
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 The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.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 If any annual fee is not paid within the prescribed time, the application shall be deemed withdrawn or the patent considered as lapsed from the day following the expiration of the period within which the annual fees were due. A notice that the application is deemed withdrawn or the lapse of a patent for non-payment of any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the appropriate register of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)
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 amendment 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)
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)
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. Appelant’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 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.
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) Letters 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.
EMMA C. FRANCISCO