WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/PHL/P/1
1 August 2001
(01-3810)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
PHILIPPINES
The present document reproduces the text1 of the Rules and Regulations on Inventions, as
notified by the Philippines under Article 63.2 of the Agreement (see document IP/N/1/PHL/2).
Conseil des aspects des droits de propriété
intellectuelle qui touchent au commerce
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
PHILIPPINES
Le présent document contient le texte1 des Règles et réglementations concernant les
inventions, notifiées par les Philippines au titre de l'article 63:2 de l'Accord (voir le
document IP/N/1/PHL/2).
Consejo de los Aspectos de los Derechos de Propiedad
Intelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
FILIPINAS
En el presente documento se reproduce el texto1 de las Normas y Reglamentos sobre
invenciones, notificado por Filipinas en virtud del párrafo 2 del artículo 63 del Acuerdo (véase el
documento IP/N/1/PHL/2).
                                                     
1 In English only./En anglais seulement./En inglés solamente.IP/N/1/PHL/P/1
Page 2
December 29, 1998
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:
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 theIP Code shall be published;
(g) “Office” means the Intellectual Property Office; andIP/N/1/PHL/P/1
Page 3
(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 protections:
(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)IP/N/1/PHL/P/1
Page 4
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 theinvention. 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 orpriority 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 theapplicant 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 tothe 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.IP/N/1/PHL/P/1
Page 5
For the 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 allreferences 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)
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 patentshall 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 employerIP/N/1/PHL/P/1
Page 6
(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 theearliest 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 or 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 foreignapplication 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 theapplication 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.IP/N/1/PHL/P/1
Page 7
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 theIndustrial 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.IP/N/1/PHL/P/1
Page 8
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 theinvention.
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 saidcountry 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 becarried 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. Content 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 forIP/N/1/PHL/P/1
Page 9
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 saidinformation 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; andIP/N/1/PHL/P/1
Page 10
(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 tomatters 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 onehundred 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 other than the applicant, or the merits orvalidity 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.IP/N/1/PHL/P/1
Page 11
(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 coveredby 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 of 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 theinterests 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 qualitywhich 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 side2.5 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 satisfactoryreproduction 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 beIP/N/1/PHL/P/1
Page 12
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 ofobjects 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 notgive 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 thereis 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 thework. 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 thatIP/N/1/PHL/P/1
Page 13
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 resultimproved 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 onlythe 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 samefeatures, 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 paragraphbelow. 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, metallurgicalmicrostructures, 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.IP/N/1/PHL/P/1
Page 14
(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, orcombination 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 whichdirect 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 shallbe 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. ClaimsIP/N/1/PHL/P/1
Page 15
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 of the description” or, “as
illustrated in figure 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 theinvention. 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 thetechnical 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 referencesigns 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 withinthe 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 permanentrecords 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.IP/N/1/PHL/P/1
Page 16
(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 onthe 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 usingsystem 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.IP/N/1/PHL/P/1
Page 17
(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 anofficial 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 ofinvention, 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 theIP/N/1/PHL/P/1
Page 18
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 anattorney 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 ofsuch revocation and shall communicate directly with the
applicant or with such other attorney or agent as he may later
appoint.IP/N/1/PHL/P/1
Page 19
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.
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 patents . — 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 lawwhich 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 authorityto sign the application.
If the applicant appoints a representative to prosecute and sign the application,
the Bureau shall require proof of such authority.IP/N/1/PHL/P/1
Page 20
RULE 505. Forms of signatures . — Where a signature is required, the Office may
accept:
(a) A hand-written 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 hand-written 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.
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 inEnglish 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 inthese 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).IP/N/1/PHL/P/1
Page 21
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 mayrelate 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 theIP/N/1/PHL/P/1
Page 22
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 technicalfeatures. 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 specificallydesigned 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.IP/N/1/PHL/P/1
Page 23
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 electedinvention 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 onespecies 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 inalternative 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 separateapplications 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 filingIP/N/1/PHL/P/1
Page 24
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.IP/N/1/PHL/P/1
Page 25
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 betaken 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 offiling.
(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.
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 theexpiration 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.IP/N/1/PHL/P/1
Page 26
(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 thepatentability 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 underthese 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 onIP/N/1/PHL/P/1
Page 27
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 sheetscontaining 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 anapplicant. 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, everypoint 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 authorityIP/N/1/PHL/P/1
Page 28
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 requestor 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.IP/N/1/PHL/P/1
Page 29
(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 asrestriction 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 theinvention 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 pointout 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 theIP/N/1/PHL/P/1
Page 30
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 willbe 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 anyclaim 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 modelIP/N/1/PHL/P/1
Page 31
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 notinclude 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 anyproceedings 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 mightnot 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 eventhough 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 orground 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.IP/N/1/PHL/P/1
Page 32
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 exactword 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 orinsertions 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 withdrawnfrom 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 amendmentpresenting 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 maybe 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 beginningIP/N/1/PHL/P/1
Page 33
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 theDirector 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 inwriting. 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 tothe 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 frommailing 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.IP/N/1/PHL/P/1
Page 34
(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.IP/N/1/PHL/P/1
Page 35
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 indue 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. 53, 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 application is released for circulation. For
example, if the IPO Gazette containing the application is released for circulation onJanuary 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 patentIP/N/1/PHL/P/1
Page 36
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)
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 numberand 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 theapplication 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; andIP/N/1/PHL/P/1
Page 37
(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.IP/N/1/PHL/P/1
Page 38
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 infringementshall 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 whenclearly 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 wouldresult 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.IP/N/1/PHL/P/1
Page 39
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)
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 anyright, 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 becomejoint 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 shallbe 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)
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 ordenied 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.IP/N/1/PHL/P/1
Page 40
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 ofpatent 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 petitionwhich 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 appealfor 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 samegrounds 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 ofany 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, andpayment 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.IP/N/1/PHL/P/1
Page 41
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 byfiling 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 withinthe 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 isperfected in accordance with the Rules of Court applicable to appeals from decisions
of Regional Trial Courts. No motion for reconsideration of the decision or order of the
Director General shall be allowed.
FINAL PROVISIONSIP/N/1/PHL/P/1
Page 42
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 bebased 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 titleof 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 isopen 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.IP/N/1/PHL/P/1
Page 43
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 theOffice 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 maydesignate.
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 thereongranted 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.IP/N/1/PHL/P/1
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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.
 (Sgd.) EMMA C. FRANCISCO
Director General
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