| 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 the IP Code
shall be published;
(g)
“Office” means the Intellectual Property Office; and
(h) “Regulations” means this set of rules and
regulations and such Rules of Practice as may be formulated by the
Director of Patents and approved by the Director General.
PART 2
PATENTABILITY
Rule
200. Patentable Inventions. – Any technical
solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable shall be
patentable. (Sec. 21, IP CODE)
Rule
201. Statutory Classes of Invention. –
An invention may be, or may relate to;
a)
a useful machine;
b) a product;
c) or process or an improvement of any of the foregoing;
d) microorganism; and
e) non-biological and microbiological processes. (Sec. 21, IP CODE)
Rule
202. Non-Patentable Inventions. –
The following shall be excluded from patent 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)
Rule
203. Novelty. – An invention shall not be
considered new if it forms part of a prior art. (Sec. 23, IP CODE)
Rule 204. Prior
Art. – Prior art shall consist of: (a) Everything made
available to the public by means of a written or oral disclosure, by use,
or in any other way, before the filing date or the priority date of the
application claiming the invention. Prior use which is not present
in the Philippines, even if widespread in a foreign country, cannot form
part of the prior art if such prior use is not disclosed in printed
documents or in any tangible form.
(b)
The whole contents of an application for a patent, utility model, or
industrial design registration, published under Sec. 44 of IP CODE, filed
or effective in the Philippines, with a filing or priority date that is
earlier than the filing or priority date of the application:
Provided, That the application which has validly claimed the filing date
of an earlier application under Section 31 of IP CODE, shall be prior art
with effect as of the filing date of such earlier application: Provided
further, That the applicant or the inventor identified in both
applications are not one and the same, (Sec. 24, IP CODE):
Where two or more applications are
independently filed with respect to the same invention, and the later
applications are filed before the first application or earlier application
is published, the whole contents of the first or earliest filed
application published in accordance with Sec. 44, IP CODE on or
after the filing date or priority date of the later filed application
shall be novelty destroying with respect to the later filed
application.
Rule 205. Non-Prejudicial Disclosure. - The disclosure
of information contained in the application during the twelve (12) months
preceding the filing date or the priority date of the application shall
not prejudice the applicant on the ground of lack of novelty if such
disclosure was made by:
(a)
The Inventor;
(b) A foreign patent office, the Bureau or the
Office, and the information was contained (a) in another application filed
by the inventor and should not have been disclosed by the office, or (b)
in an application filed without the knowledge or consent of the inventor
by a third party which obtained the information directly or indirectly
from the inventor; or
(c)
A third party which obtained the information directly or indirectly from
the inventor.
For 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 all references that are sufficiently
related to one another and to the pertinent art and to have knowledge of
all arts reasonably pertinent to the particular problems with which the
inventor was involved. He is presumed also to have had at his
disposal the normal means and capacity for routine work and
experimentation.
Rule 208. Industrial
Applicability. - An invention which can be produced and used in
any industry shall be industrially applicable. (Sec. 27, IP CODE)
PART
3
RIGHT TO A PATENT
Rule
300. Right to a Patent. –
The right to a patent belongs to the inventor, his heirs, or assigns.
When two (2) or more persons have jointly made an invention, the right to
a patent shall belong to them jointly (Sec. 28, IP CODE).
Rule 301. Who may be Named in an Application as an
Applicant. - The application may be filed by the actual
inventor(s) or in the name of his heirs, legal representative or assigns.
Rule 302. Inventions Created Pursuant to a
Commission. - The person who commissions the work shall own the
patent, unless otherwise provided in the contract. (Sec. 30.1, IP
CODE)
Rule 303. Inventions made in the course of
employment. In case the employee made the invention in the
course of his employment contract, the patent shall belong to:
(a)
The employee, if the inventive activity is not a part of his regular
duties even if the employee uses the time, facilities and materials of the
employer
(b) The employer, if the invention is the result of
the performance of his regularly-assigned duties, unless there is an
agreement, express or implied, to the contrary. (Sec. 30.2, IP CODE)
Rule 304. First to File Rule. – If two (2) or more
persons have made the same invention separately and independently of each
other, the right to the patent shall belong to the person who filed an
application for such invention, or where two or more applications are
filed for the same invention, to the applicant who has the earliest filing
date or, the earliest priority date (Sec. 29, IP CODE).
Where two or more applications for the same
invention made separately and independently of each other have the same
filing date, 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 foreign application together with an English
translation is filed within six (6) months from the date of filing in the
Philippines (Sec. 31, IP CODE).
This
six (6) month-period may be extended by the Director for a maximum of six
(6) months upon showing of good cause or in compliance with treaties to
which the Philippines is or may become a member.
Rule 306.1. Multiple Priorities. - An
application can claim more than one priority even from different
countries. If more than one patent priority is claimed, time limits
computed from the priority date will be based upon the earliest priority
date.
Rule
306.2. If one or more priorities are claimed, the right of priority
shall cover only those elements of the application which are included in
the application or applications whose priority is claimed.
Rule
306.3. If certain elements of the invention for which priority is
claimed do not appear among the claims formulated in the previous
application, priority may nonetheless be granted, provided that the
previous application as a whole specifically disclose such elements.
Rule
306.4. Where an application could have claimed the priority of an
earlier application, but when filed, did not contain such priority, the
applicant shall be given two (2) months from the filing date to submit
priority claim.
Submission of priority claim after the filing of the
application shall be accompanied by a declaration of the applicant stating
that the delay in submitting the priority claim was unintentional.
Rule 307. Certified Copy of the Foreign Applications. - The
certified copy of foreign applications mentioned in Rule 302 shall be the
copy of the priority application(s) as duly certified to be a true or
faithful reproduction thereof by the Industrial Property Office which
received it or any other office which has official custody of the foreign
application.
PART
4
THE PATENT APPLICATION
Rule
400. The Patent Application. - An application for a
patent shall be in Filipino or English and shall be filed in writing
either directly to the Bureau or by post and must be addressed to
the Director. The application shall contain the following:
(a)
A request for the grant of a patent;
(b) A description
of the invention;
(c) Drawing(s)
necessary for the understanding of the invention;
(d) One or more claims; and
(e) An abstract.
Rule 401. Payment of Fees. - An
application shall be subject to the payment of the filing fee, the search
fee and publication fee (1st publication) within one (1) month after the
filing date of the application.
The
application shall be deemed forfeited for non-payment of these fees.
Rule 402.
Marking of documents; acknowledgment. The Bureau
shall mark the documents making up the
application with the date of the receipt. After receipt of the full
payment of the required fees, the Bureau may issue an acknowledgment
stating the application number, name of applicant and title of the
invention.
Rule 403. Form of
Request; Office Application Form. – The request shall be made on a
form drawn up by the Office. For the convenience of applicants, the
Office shall draw up and make available a standard application form which
may be reproduced at will by applicants and other persons at their own
cost.
Rule
404. The Request. - The request shall contain the
following:
(a)
Petition for the grant of a patent;
(b) Applicant’s name and address;
(c) Title of the invention;
(d) Inventor’s name;
(e) If with claim for convention priority it shall contain the file
number, country of origin and the date of filing in the said country where
the application was first filed;
(f) Name and address of the resident agent/representative (if any); and
(g) Signature of the applicant or resident agent/representative.
Rule 405. Disclosure and Description of the
Invention. – The application shall disclose the invention in a
manner sufficiently clear and complete for it to be carried out by a
person skilled in the art.
Rule
406. Test for enabling Disclosure. -
The test for enabling disclosure is whether the persons to whom it is
addressed could, by following the directions therein, put the invention
into practice.
Rule 407. 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 for the examination, and, preferably, cite the
documents reflecting such art;
(c) Disclose the invention, as claimed, in such terms that the technical
problem (even if not expressly stated as such) and its solution can be
understood, and state any advantageous effects of the invention with
reference to the background art;
(d) Briefly describe the figures in the drawings, if any;
(e) When there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to its different parts, as shown in the views, by
use of reference letters or numerals (preferably the latter);
(f) Describe in detail at least one way of carrying out the invention
claimed using examples where appropriate and referring to the drawings, if
any; and
(g) Indicate explicitly, when it is not obvious from the description or
nature of the invention, the way in which the invention is capable of
exploitation in industry.
(2) The description shall be presented in the manner
and order specified in paragraph 1, unless because of the nature of the
invention, a different manner or a different order would afford a better
understanding and a more economic presentation.
Rule 408. Requirements of Applications Relating to
Biological Materials and Microorganisms. – Where the application
concerns a microbiological process or the product thereof and involves the
use of a microorganism which cannot be sufficiently disclosed in the
application in such a way as to enable the invention to be carried out by
a person skilled in the art, and such material is not available to the
public, the invention shall only be regarded as being disclosed if:
(a)
A culture of the microorganism has been deposited in a depositary
institution before filing the application;
(b) The depositary institution and the file number
of the culture deposit are stated in the application. If this
information is not yet available at the time of filing the application,
the said information shall be submitted within two (2) months from request
of the Examiner. Publication of the application under Section
44, IP CODE shall be held pending submission of said information; and
(c) The application as filed gives relevant
information as is available
to the applicant on the characteristics of the microorganism.
Rule 409. Requirements
of Application Relating to Biological Materials and Microorganisms before
Allowance. - An application which concerns a microbiological process
or the product thereof and involves the use of any novel strain of
microorganism shall be allowed only when the following conditions are met:
(a)
A deposit was made in a recognized international depositary authority;
(b) Proof of such deposit together with the proper identification or
deposit number assigned by the depositary is submitted; and
(c) That the depositary should be under the contractual obligation to
place the culture in permanent collection, and to provide access to
persons who shall have interest therein in regard to matters relating to
the patent application as published.
Rule 410. Title of the Invention. – The title of the
invention should be as short and specific as possible, and should appear
as a heading on the first page of the specification. All fancy names
are not permissible in the title.
Rule 411. Abstract. -
The abstract written in a separate sheet with a heading “Abstract”
shall consist of a concise summary of the disclosure of the invention as
contained in the description, claims and drawings in preferably not more
than one hundred fifty (150) words. It must be drafted in a way
which allows the clear understanding of the technical problem, the gist of
the solution of that problem through the invention, and the principal use
or uses of the invention. The abstract shall merely serve for
technical information. Each main technical feature mentioned in the
abstract and illustrated by a drawing in the application shall be followed
by a reference sign placed between parentheses.
Rule 412. Prohibited Matter – (a) The
application shall not contain:
(i) a statement or other matter contrary to “public order” or
morality;
(ii) statement disparaging the products or processes of any particular
person or other than the applicant, or the merits or validity of
applications or patents of any such person. Mere comparison with the prior
art shall not be considered disparaging per se;
(iii) any statement or other matter obviously irrelevant or unnecessary
under the circumstances.
b)
If an application contains prohibited matter within the meaning of this
Rule, the Bureau shall omit it when publishing the application, indicating
the place and number of words or drawing omitted.
Rule
413. (a) General Requisites for the Drawing. –
The drawing must be signed by the applicant or the name of the applicant
may be signed on the drawing by his attorney or agent. The drawing
must show every feature of the invention covered by the claims, and the
figures should be consecutively numbered.
(b) Drawing for an Improvement. - When the
invention consists of an improvement of an old machine, the drawing must
exhibit, in one or more views, the invention itself, isolated from the old
structure, and also, in another view, so much only the old structure as
will suffice to show the relation of the invention therewith.
Rule 414.1. Uniform Standard of
Excellence Suited to Photolithographic Process, Required of Drawings.
- The printing of the drawings in the IPO Gazette is done by the
photolithographic process, and therefore the character of each original
drawing must be brought as nearly as possible to a uniform standard of
excellence suited to the requirements of the process, to give the best
results, in the interests of the inventors, of the Office, and of the
public. The following rules will therefore be strictly enforced, and
any departure from them will be certain to cause delay in the examination
of an application.
Rule 414.2.
Paper and Ink. – Drawings must be made upon paper that is flexible,
strong, white, smooth, non-shiny and durable. Two ply or three ply
Bristol board is preferred. The surface of the paper should be
calendered and of a quality which will permit erasure and correction with
India ink. India ink, or its equivalent in quality, is preferred for
pen drawings to secure perfectly black solid lines. The use of white
pigments to cover lines is not permissible.
Rule 414.3. Size of Drawing Sheet;
Imaginary Line. – The size of a sheet on which a drawing is made
must be exactly 29.7 cm x 21 cm or the size of an A4 paper. The
minimum imaginary margins shall be as follows: top 2.5 cm; left side 2.5
cm; right side 1.5 cm; bottom 1 cm. Within this imaginary margin all
work and signatures must be included. One of the shorter sides of
the sheet is regarded as its top, and, measuring downwardly from the
imaginary line, a space of not less than 3 cm is to be left blank for the
heading of title, name, number, and date.
Rule 414.4. Character and Color
Lines. – All drawings must be made with the pen or by a
photolithographic process which will give them satisfactory reproduction
characteristics. Every line and letter (signatures included) must be
absolutely black. This direction applies to all lines, however fine,
to shading and to lines representing cut surfaces in sectional views.
All lines must be clean, sharp, and solid, and they must not be too fine
or crowded. Surface shading, when used, should be open.
Sectional shading should be made by oblique parallel lines, which may be
about 0.3 cm apart. Solid black should not be used for sectional or
surface shading. Freehand work should be avoided whenever possible.
Rule 414.5. The Fewest Possible
Number of Lines and Little or No Shading to be Used. – Drawings
should be made with the fewest lines possible consistent with clearness.
By the observance of this rule the effectiveness of the work after
reduction will be much increased. Shading (except on sectional
views) should be used sparingly, and may even be dispensed with if the
drawing be otherwise well executed. The plane upon which a sectional
view is taken should be indicated on the general view by a broken or
dotted line, which should be designated by numerals corresponding to the
number of the sectional view. Heavy lines on the shade sides of
objects should be used, except where they tend to thicken the work and
obscure letter of reference. The light is always supposed to come
from the upper left hand corner of an angle of 45 degrees.
Rule 414.6. Scale to which Drawing
is Made to be Large Enough. – The scale to which a drawing is made
ought to be large enough to show the mechanism without crowding, and two
or more sheets should be used if one does not give sufficient room to
accomplish this end; but the number of sheets must never be more than what
is absolutely necessary.
Rule 414.7. Letters and Figures of
Reference. – The different views should be consecutively numbered.
Letters and figures of reference must be carefully formed. They
should, if possible, measure at least 32 millimeters in height, so that
they may bear reduction to 10.6 millimeters; and they may be much larger
when there is sufficient room. They must be so placed in the close
and complex parts of drawings as not to interfere with a thorough
comprehension of the same, and therefore should rarely cross or mingle
with the lines. When necessarily grouped around a certain part, they
should be placed at a little distance where there is available space, and
connected by lines with the parts to which they refer. They should
not be placed upon shaded surfaces, but when it is difficult to avoid
this, blank space must be left in the shading where the letter occurs, so
that it shall appear perfectly distinct and separate from the work.
If the same part of an invention appears in more than one view of the
drawing, it must always be represented by the same character, and the same
character must never be used to designate different parts.
Rule 414.8. Signature, Where
to be Placed. – The signature of the applicant should be placed at
the lower right-hand corner within the imaginary margins of each sheet,
but in no instance should they trespass upon the drawings.
Rule 414.9. Title of the Drawing.
– The title should be written with pencil on the back of the sheet.
The permanent name and title constituting the heading will be applied
subsequently by the Bureau of Patents in uniform style.
Rule
414.10. Position on Drawing Sheets of Large Views.
– All views on the same sheet must stand in the same direction and must,
if possible, stand so that they can be read with the sheet held in an
upright position. If views longer than the width of the sheet are
necessary for the proper illustration of the invention, the sheet may be
turned on its side. The space for heading must then be reserved at
the right and the signatures placed at the left, occupying the same space
and position as in the upright views and being horizontal when the
sheet is held in an upright position. One figure must not be placed
upon another or within the outline of another.
Rule
414.11. Flow Sheets and Diagrams. - Flow
Sheets and diagrams are considered drawings.
Rule
414.12. Requisites for the Figure of the IPO Gazette.
– As a rule, only one view of each invention can be shown in the IPO
Gazette illustrations. The selection of that portion of a drawing
best calculated to explain the nature of the invention or its specific
improvement would be facilitated and the final result improved by
judicious execution of a figure with express reference to the IPO Gazette,
but which must at the same time serve as one of the figures referred to in
the specification. For this purpose the figure may be a plan,
elevation, section, or perspective view, according to the judgment of the
draftsman. All its parts should be especially open and distinct,
with very little or no shading, and it must illustrate only the invention
claimed, to the exclusion of all other details. When well executed, it
will be used without curtailment or change, but any excessive fineness or
crowding or unnecessary elaborateness of detail will necessitate its
exclusion from the IPO Gazette.
Rule 414.13. Reference Signs.
– Reference signs not mentioned in the description and claims shall not
appear in the drawings and vice versa. The same features, when
denoted by reference signs, shall throughout the application, be denoted
by the same signs.
Rule 414.14. Photographs.
– (a)Photographs are not normally considered to be proper drawings.
Photographs are acceptable for obtaining a filing date and generally
considered to be informal drawings. Photographs are only acceptable
where they come within the special categories as set forth in the
paragraph below. Photolitographs of photographs are never
acceptable.
(b) The Office is willing to accept black and white
photographs or photomicrographs (not photolitographs or other reproduction
of photographs made by using screens) printed on sensitized paper in lieu
of India ink drawings, to illustrate the inventions which are incapable of
being accurately or adequately depicted by India ink drawings restricted
to the following categories: crystalline structures, metallurgical
microstructures, textile fabrics, grain structures and ornamental effects.
The photographs or photomicrographs must show the invention more clearly
than they can be done by the India ink drawings and otherwise comply with
the rules concerning such drawings.
(c) Such photographs to be acceptable must be made
on photographic paper having the following characteristics which are
generally recognized in the photographic trade: paper with a surface
described as smooth, tint, white, or be photographs mounted on a proper
sized Bristol board.
Rule 414.15. Matters not Permitted
to Appear on the Drawings. – An agent’s or attorney’s stamp, or
advertisement or written address shall not be permitted on the drawings.
Rule 414.16. Drawings not
Conforming to Foregoing Rules to be Accepted Only Conditionally. – A
drawing not executed in conformity to the foregoing rules may be admitted
for purposes of examination if it sufficiently illustrates the invention,
but in such case, the drawing must be corrected or a new one furnished
before the application will be allowed.
Applicants
are advised to employ competent draftsman to make their drawings.
Rule 415. Claim. – (a) The specification must
conclude with a claim particularly pointing out and distinctly claiming
the part, improvement, or combination which the applicant regards as his
invention.
(b)
The application may contain one (1) or more independent claims in the same
category, (product, process, apparatus or use) where it is not
appropriate, having regard to the subject matter of the application, to
cover this subject matter by a single claim which shall define
the matter for which protection is sought. Each claim shall be clear and
concise, and shall be supported by the description.
(c)
One or more claims may be presented in dependent form, referring back and
further limiting another claim or claims in the same application.
Any dependent claim which refers to more than one other claim (“multiple
dependent claim”) shall refer to such other claims in the alternative
only. A multiple dependent claim shall not serve as a basis for any
other multiple dependent claim. For fee calculation purpose a
multiple dependent claim will be considered to be that number of claims to
which direct reference is made therein. Furthermore, any claim
depending on a multiple dependent claim will be considered to be that
number of claims to which direct reference is made in that multiple
dependent claims. In addition to the other filing fees, any original
application which is filed with, or is amended to include, multiple
dependent claims must have to pay the prescribed additional fees.
Claims in dependent form shall be construed to include all the limitations
of the claims incorporated by reference into the dependent claim. A
multiple dependent claim shall be construed to incorporate by reference
all the limitations of each of the particular claims in relation to which
it is being considered.
(d)
The claim or claims must conform to the invention as set forth in
the description made in the specification, and the terms and phrases used
in the claims must find clear support or antecedent basis in the said
description, so that the meaning of the terms in the claims may be
ascertainable by reference to the description. Claims shall not,
except where absolutely necessary, rely in respect of the technical
features of the invention, on references to the description or drawings.
In particular, they shall not rely on such references as: “as described
in part xxx of the description” or, “as illustrated in figure
xxx of the drawings”.
Rule 416. Form and content of the claims. – The
claims shall define the matter for which protection is sought in terms of
the technical features of the invention. Wherever appropriate the claims
shall contain:
(a)
a statement indicating the designation of the subject matter of the
invention and those technical features which are necessary for the
definition of the claimed subject matter but which, in combination, are
part of the prior art;
(b) a characterizing portion preceded by the expression “characterized
in that” or “characterized by” – stating the technical
features which, in combination with the features stated in sub-paragraph
(a), it is desired to protect; and
(c)
If the application contains drawings, the technical features mentioned in
the claims shall preferably, if the intelligibility of the claim can
thereby be increased, be followed by reference signs relating to these
features and placed between parentheses. These reference signs shall not
be construed as limiting the claim.
Rule 417. Claims incurring fee – (a) Any
application comprising more than five (5) claims, independent and/or
multiple/alternative dependent claims at the time of filing, or
added claims after the filing date in respect of each claim over and above
five (5) incurs payment of a claims fee. The claims fee shall be payable
within one (1) month after the filing of the application. If the claim
fees have not been paid in due time, they may still be validly paid within
a grace period of one (1) month from notice pointing out the failure to
observe the time limit. If the claims fee is not paid within the time
limit and the grace period referred to in this Rule, the claim or claims
concerned shall be deemed deleted.
Rule 418. Presentation of the Application
Documents. – (a) All papers for an application for an invention
patent which are to become part of the permanent records of the Office
must be the original copy only, and legibly written, typewritten, or
printed in permanent ink only on one side of the sheet. If necessary, only
graphic symbols and characters and chemical or mathematical formulas may
be written by hand or drawn. The typing shall be 1 ½ spaced. All text
matter shall be in characters, the capital letters of which are not less
than 0.21 cm. high, and shall be in dark, indelible color.
(b)
The documents making up the application shall be on a 29.7 cm x 21 cm
paper or the size of an A4 paper which shall be pliable, strong, white,
smooth, matt and durable.
(c)
The specification and claims of an invention patent must be written with
the lines numbered in sets of five and the number appearing on the left
side margin.
(d)
The description, the claims and the abstract may contain chemical or
mathematical formulas. The description and the abstract may contain
tables. The claims may contain tables only if their subject-matter makes
the use of tables desirable. Tables and chemical or mathematical formula
may be placed sideways on the sheet if they cannot be presented
satisfactorily in an upright position thereon; sheets on which tables or
chemicals or mathematical formulas are presented sideways shall be so
presented that the tops of the tables or formula are at the left side of
the sheet.
(e)
Physical values shall be expressed in the units recognized in
international practice, wherever appropriate in terms of the metric system
using system international (SI) units. Any data not meeting this
requirement must also be expressed in the units recognized in
international practice. For mathematical formula, the symbols in general
use shall be employed. For chemical formula the symbols, atomic weights
and molecular formula in general use shall be employed. In general, use
should be made of the technical terms, signs and symbols generally
accepted in the field in question.
(f)
The terminology and the signs shall be consistent throughout the
application.
(g)
Each of the documents making up the application (request for grant,
specification, claims, drawings and abstract) shall commence on a separate
sheet. The separate sheets shall be filed in such a way that they
can easily be turned over, and joined together again.
(h)
Margins
The
margins of the documents shall be within the following ranges:
Top
: 2 cm. - 4 cm.
Leftside : 2.5 cm. - 4 cm.
Rightside : 2 cm. - 3 cm.
Bottom : 2 cm. - 3 cm.
The
margins of the documents making up the application must be completely
blank.
All
the sheets making up the documents shall have their pages numbered
consecutively using Arabic numeral. The page numbers shall appear in
the central portions of either the top or bottom margins.
(i)
The documents making up the application except the request for grant shall
be filed in four (4) copies.
Rule 419. Models,
when Required. - A model may be required when the invention sought to
be patented cannot be sufficiently described in the application. The
Examiner shall notify the applicant of such requirement, which will
constitute an official action in the case. When a model has been
received in compliance with the official requirement, the date of its
filing shall be entered on the file wrapper. Models not required nor
admitted will be returned to the applicants. When a model is
required, the examination may be suspended until it shall have been filed.
Rule
419.1. Requisites for the Model. - The model, when required,
must clearly exhibit every feature of the machine which form the subject
of a claim of invention, but should not include other matter than that
covered by the actual invention or improvement, unless it be necessary to
the exhibition of the invention in a working model.
Rule
419.2. Material Required for the Model; Working Models. – The model must
be neatly and substantially made of durable material, but when the
material forms an essential feature of the invention, the model should be
constructed of that material.
A
working model may be required if necessary to enable the office to fully
and readily understand the precise operation of the machine.
Rule
419.3. Models, when Returned to Applicant. – In
all applications which have been rejected or become abandoned, the model,
unless it be deemed necessary that it be preserved in the Office, may be
returned to the applicant upon demand and at his expense; and the model in
any pending case may be returned to the applicant upon the filing of a
formal abandonment of the application signed by the applicant in person
and any assignee.
Models
belonging to patented cases shall not be taken from the Office without the
authorization by the Director.
Rule
419.4. Models filed as exhibits in contested cases. – Models
filed as exhibits in contested cases may be returned to the parties at
their expense. If not claimed within a reasonable time, they may be
disposed of at the discretion of the Director.
Rule 420. Employment of Attorney-at-Law or Agent
Recommended. – An applicant or an assignee of the entire interest
may prosecute his own case, but he is advised, unless familiar with such
matters, to employ a competent attorney-at-law or agent, as the value of
patents depends largely upon the skillful preparation of the specification
and claims. The Office cannot aid in the selection of an
attorney-at-law or agent.
Rule
421. Appointment of Resident Agent or Representative. -
An applicant who is not a resident of the Philippines must appoint and
maintain a resident agent or representative in the Philippines upon whom
notice or process for judicial or administrative procedure relating to the
application for patent or the patent may be served.
(a)
If there are two (2) or more agents appointed by the applicant, the Office
shall forward all actions to the last agent appointed. A substitute
or associate attorney may be appointed by an attorney only upon the
written authorization of his principal; but a third attorney appointed by
the second will not be recognized.
(b)
Revocation of Power of Attorney. - A power of attorney or
authorization may be revoked at any stage in the proceedings of a case
upon proper notification to the Director General, and, when revoked, the
Office will notify the attorney or agent of such revocation and shall
communicate directly with the applicant or with such other attorney or
agent as he may later appoint.
Rule 422. (a) Decorum and Courtesy Required in the Conduct of
Business. - Applicants, their attorneys or agents are required
to conduct their business with the Office with politeness, decorum, and
courtesy. Applicants who act or persist in acting in violation of
this rule, shall be required to be represented by attorney, and papers
presented containing matter in violation of this rule will be submitted to
the Director and returned to the sender, by his direct order.
(b)
Complaints against Examiners to be on Separate Paper. -
Complaints against Examiners and other officers must be made in a
communication separate from other papers, and will be promptly
investigated by or at the instance of the Director.
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 law which grants
a juridical personality separate and distinct from that of a share
holder, partner or member.
Rule
504. Proof of authority. - If the person who
signs the application in behalf of a juridical person is an officer of the
corporation, no proof of authority to file the said application will be
required. However, if any other person signs for and in behalf of a
juridical person, the Bureau shall require him to submit proof of
authority to sign the application.
If
the applicant appoints a representative to prosecute and sign the
application, the Bureau shall require proof of such authority.
Rule
505. Forms of signatures. - Where a
signature is required, the Office may accept:
(a)
A 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 in English or Filipino:
(a)
An express or implicit indication that a Philippine patent is sought;
(b) Information identifying the applicant; and,
(c) Description of the invention and one (1) or more claims.
Rule
600.1. Incomplete application. – Where the application refers to a
drawing or drawings, it shall not be considered complete if the drawing or
drawings are not included in the application.
Rule
600.2. For purposes of obtaining a filing date, the Bureau may
accept a copy of the application received by the resident agent by telefax,
subject to submission of the original copy within two (2) months from the
filing date.
Rule 601. According A Filing date. -
The Office shall examine whether the patent application satisfies the
requirements for the grant of filing date as provided in these
Regulations. If the filing date cannot be accorded, the applicant
shall be given an opportunity to correct the deficiencies. If the
application does not contain all the elements indicated in these
regulations, the filing date should be that date when all the elements are
received. If the deficiencies are not remedied within two (2) months
from the date on which the application was initially presented to the
Office, the application shall be considered withdrawn (Sec. 41, IP CODE).
Rule
602. Late-filed or missing drawings. –
(a) If the formality examination reveals that the drawings were filed
after the filing date of the application, the Bureau shall send a
notice to the applicant that the drawings and the references to the
drawings in the application shall be deemed deleted unless the
applicant requests within two (2) months that the application be granted a
new filing date which is the date on which the drawings were filed.
(2)
If the formality examination reveals that the drawings were not filed, the
Bureau shall require applicant to file them within two (2) months and
inform the applicant that the application will be given a new filing date
which is the date on which the drawings are filed, or, if they are not
filed in due time, any reference to them in the application shall be
deemed deleted.
(3)
The new filing date shall be cited in all succeeding correspondences
between the Bureau and the applicant.
Rule 603. Formality Examination. - If a patent
application has been accorded a filing date and the required fee has been
paid within one (1) month, compliance with other requirements will be
checked. Such other requirements may relate to the following:
(a) contents of the request for grant of a Philippine patent;
(b) Priority documents if with claim of convention priority (i.e., file
number, date of filing and country of the priority applications);
(c) Proof of authority, if the applicant is not the inventor;
(d) Deed of assignment;
(e) Payment of all fees, (e.g. excess claims)
(f) Signatures of the applicants;
(g) Identification of the inventor; and
(h) Formal drawings.
Rule 604. Unity of Invention. – (a) The application shall
relate to one invention only or to a group of inventions forming a
single general inventive concept. (Sec. 38.1, IP CODE)
(b)
If several independent inventions which do not form a single general
inventive concept are claimed in one application, the Director may require
that the application be restricted to a single invention. A later
application filed for an invention divided out shall be considered as
having been filed on the same day as the first application: Provided that
the later application is filed within four (4) months after the
requirement to divide becomes final, or within such additional time, not
exceeding four (4) months, as may be granted. Provided further , That each
divisional application shall not go beyond the disclosure in the initial
application. (Sec. 38.2, IP CODE)
Rule
604.1. The fact that a patent has been granted on an application
that did not comply with the requirement of unity of invention shall not
be a ground to cancel the patent (Sec. 38.3, IP CODE).
Rule 605. Requirements for Unity of Invention – (a)
The requirement of unity of invention shall be fulfilled only when there
is a technical relationship among those inventions involving one or more
of the same or corresponding special technical features. The expression
“special technical features” shall mean those technical features that
define a contribution which each of the claimed inventions, considered as
a whole makes over the prior art.
(b) The determination whether a group of inventions is so linked as to
form a single general inventive concept shall be made without regard to
whether the inventions are claimed in separate claims or as alternative
within a single claim.
(c)
A plurality of independent claims in different categories may constitute a
group of inventions linked to form a single general inventive concept, the
link being e.g. that between a product and the process which produces it;
or between a process and an apparatus for carrying out the process.
(d)
Three different specific combinations of claims in different categories
which are permissible in any one application are the following:
(1)
in addition to an independent claim for a given product, an independent
claim for a process specially adopted for the manufacture of the product,
and an independent claim for a use of the product; or
(2) in addition to an independent claim for a given process, an
independent claim for an apparatus or means specifically designed for
carrying out the process; or
(3)
in addition to an independent claim for a given product, an independent
claim for a process specially adapted for the manufacture of the product,
and an independent claim for apparatus or means specifically designed for
carrying out the process.
Rule 606. Reconsideration for Requirement. -
(a) If the applicant disagrees with the requirement of division, he
may request reconsideration and withdrawal or modification of the
requirement, giving the reasons therefor. In requesting
reconsideration, the applicant must indicate a provisional election of one
invention for prosecution, which invention shall be the one elected in the
event the requirement becomes final.
(b)
The requirement for division will be reconsidered on such a request.
If the requirement is repeated and made final, the principal Examiner
will, at the same time, act on the claims of the invention elected.
Rule
607. Appeal from requirement for division. - After
a final requirement for division, the applicant, in addition to making any
response due on the remainder of the action, may appeal from the
requirement. The prosecution on claims of the elected invention may
be continued during such appeal. Appeal may be deferred until after
final action on or allowance of the claims of the invention elected.
Appeal may not be allowed if reconsideration of the requirement was not
requested.
Rule 608. Subsequent presentation of claims for different
invention. -If, after an official action on an application, the
applicant presents claim directed to an invention divisible from the
invention previously claimed, such claims, if the amendment is entered,
will be rejected and the applicant will be required to limit the claims to
the invention previously claimed.
Rule 609. Election of species. - In the first action
on an application containing a generic claim and claims restricted
separately to each of more than one species embraced thereby, the
Examiner, if of the opinion, after a complete search on the generic
claim presented is allowable, shall require the applicant in his response
to that action to elect the species of his invention to which his claim
shall be restricted, if no generic claim is finally held allowable.
Claims
directed neither to the species nor to the genus of the disclosed
invention maybe allowed. Markush type claims, i.e., claims which
enumerate in alternative manner, members or variations which are properly
claimable as species claims may likewise be allowed, provided that the
amount of the fees payable by the applicant/s shall be computed depending
on the number of members or variations enumerated in the Markush type
claims.
Rule 610. Separate application for invention not elected.
- The inventions which are not elected after a requirement for
division may be the subject of separate applications which will be
examined in the same manner as original applications. However, if
such an application is filed before the original application is patented
or withdrawn, and if it is identical and the papers constituting an exact
copy of the original papers which were signed and executed by the
applicant, signing and execution of the applicant may be omitted; such
application may consist of the filing fee, a copy of the drawings
complying with rules relating to drawings and filed, together with a
proposed amendment canceling the irrelevant claims or other matters.
Rule
611. Divisional Application –
(a) The applicant may file a divisional application on a pending
application before the parent application is withdrawn, abandoned or
patented, provided that the subject matter shall not extend beyond the
content of the parent application.
The
divisional application shall be accorded the same filing date as the
parent application, and shall have the benefit of any right to priority.
Rule 612. Information Concerning
Corresponding Foreign Application for Patents. - The
applicant shall, at the request of the Director, furnish him with the date
and number of any application for a patent filed by him abroad, hereafter
referred to as the “foreign application”, relating to the same or
essentially the same invention as that claimed in the application filed
with the Office and other documents relating to the foreign application.
(Sec. 39, IP CODE)
Rule
612.1. Other documents relating to the foreign application may
consist of the following:
(a)
A copy of the search reports in English on the corresponding or related
foreign application prepared by the European, Japanese or United States
Patent Offices, searching authorities under the Patent Cooperation Treaty
or by the office where the first patent application was filed.
(b) Photocopy of the relevant documents cited in the search report;
(c) Copy of the patent granted to the corresponding or related
application;
(d) Copy of the examination report or decision on the corresponding or
foreign related application; and
(e) Other documents which could facilitate adjudication of the
application.
Rule
612.2. Non-compliance. – The application is considered withdrawn
if the applicant fails to comply with the requirement to furnish
information concerning the corresponding foreign application, within the
specified period.
PART
7
CLASSIFICATION AND SEARCH
Rule
700. Classification and Search. - An
application that has complied with the formal requirements shall be
classified and a search shall be conducted to determine the prior art.
(Sec. 43, IP CODE).
Rule 701. The Office shall use the International Patent
Classification.
Rule
701.1. Content of the Intellectual Property Search Report. -
The Intellectual Property Search Report is drawn up on the basis of the
claims, description, and the drawings if there is any:
(a)
The search report shall mention those documents, available at the
Office at the time of drawing up the report, which may be taken into
consideration in assessing novelty and inventive step of the invention.
(b) The search report shall distinguish between cited documents published
before the date of priority claimed, between such date of priority and the
date of filing, and on or after the date of filing.
(c) The search report shall contain the classification of the subject
matter of the application in accordance with the International Patent
Classification.
(d) The search report may include documents cited in a search established
in the corresponding foreign application.
PART
8
PUBLICATION AND REQUEST FOR EXAMINATION
Rule
800. Publication of Application. –
(a) The application shall be published in the IPO Gazette together with a
search document established by or on behalf of the Office citing any
document or documents that reflect prior art, after the expiration of
eighteen (18) months from the filing date or priority date.
(b) The application will not be published if it has been finally
refused or withdrawn or deemed to be withdrawn before the termination of
the technical preparation for publication.
(c) The application to be published shall contain the bibliographic
data, any drawing as filed and the abstract.
(d) The Office shall communicate to the applicant the date and other
information regarding the publication of the application and draw his
attention to the period within which the request for substantive
examination must be filed.
(e) After publication of a patent application, any interested
party may inspect the application documents filed with the Office.
(f) The Director General, subject to the approval of the Secretary of
Trade and Industry, may prohibit or restrict the publication of an
application, if in his opinion, to do so would be prejudicial to the
national security and interests of the Republic of the Philippines. (Sec.
44, IP CODE)
Rule 801. Confidentiality before Publication. -
An application, which has not yet been published, and all related
documents, shall not be made available for inspection without the consent
of the applicant. (Sec. 45, IP CODE).
Rule
802. Observation of Third Parties. -
Following the publication of the application, any person may present
observations in writing concerning the patentability of the invention.
Such observations shall be communicated to the applicant who may comment
on them. The Office shall acknowledge and put such observations and
comment in the file of the application to which it relates. (Sec. 47, IP
CODE)
Rule 803. Request for Substantive Examination.
- The application shall be deemed withdrawn unless within six
(6) months from the date of publication under these rules, a written
request to determine whether a patent application meets the requirements
of Patentability as provided for by the IP CODE, and the fees have been
paid on time.
Rule
803.1. Withdrawal of the request for examination shall be irrevocable and
shall not authorize the refund of any fee. (Sec. 48, IP CODE)
Rule 804. Rights Conferred by an Application
After Publication. - The applicant shall have all the rights of
a patentee under Sec. 76, of the IP CODE against any person who,
without his authorization, exercised any of the rights conferred under
Section 71 of said law in relation to the invention claimed in the
published application, as if a patent has been granted for that invention:
Provided, That the said person had:
(a)
Actual knowledge that the invention that he was using was the
subject matter of a published application; or
(b)
Received written notice that the invention that he was using was the
subject matter of a published application being identified in the said
notice by its serial number: Provided, That the action may not be
filed until after the grant of a patent on the published application and
within four (4) years from the commission of the acts complained of (Sec.
46, IP CODE).
Rule 805. Citation and references. - Should domestic
patents be cited, their numbers and dates, the names of the patentees, and
the classes of inventions must be stated. Should foreign patents be
cited, their nationality or country, numbers and dates and the names of
the patentees must be stated, and such other data must be furnished as may
be necessary to enable the applicant to identify the patents cited.
In citing foreign patents, in case part of the patent be involved, the
particular pages and sheets containing the parts relied upon must be
identified. Should non-patent publications be cited, the author (if
any), title, date, relevant pages or plates, and place of publication, or
place where a copy can be found, shall be given.
PART
9
THE EXAMINATION OF THE APPLICATION;
NATURE OF PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR A
PATENT; GENERAL CONSIDERATIONS
Rule
900. Applications prosecuted ex parte.
– An application is prosecuted ex parte by the applicant; that is, the
proceedings are like a lawsuit in which there is a plaintiff, but no
defendant, the court itself acting as the adverse party.
Rule
901. Proceedings a contest between the Examiner and the
applicant. - An ex parte proceeding in the Bureau is a law contest
between the Examiner, representing the public and trying to give the
inventor the least possible monopoly in return for his disclosure, and the
applicant or his attorney trying to get as much monopoly as possible.
Rule
902. Applicant supposed to look after his interest. -
The Bureau, represented by the Examiner, is not supposed to
look after the interests of an applicant. The Examiners are charged
with the protection of the interest of the public, and hence must be
vigilant to see that no patent issues for subject matter which is not
patentable, and is already disclosed in prior inventions and accessible to
the public at large.
Rule
903. Preliminary adverse actions of the Examiner valuable to
applicant. - The positive value of preliminary adverse
actions of the Examiner should be fully appreciated by the applicant and
his attorney. A hard-fought application will produce a patent much
more likely to stand in court than a patent which has slid through the
Bureau easily. This is so for two reasons: first, the rejections
have given the applicant or his attorney suggestions of strengthening
amendments so that his claims have been made infinitely less vulnerable
than would be otherwise possible; secondly, every point raised by
the Examiner and finally decided by the Bureau in favor of the applicant
will give him a prima facie standing on that point in court. The
Office is empowered by law to pass upon applications for patents and,
because of the authority vested in it, its decisions with respect to the
granting of an application or on any point connected with it will be
presumed to be correct by the courts.
Rule
904. A preliminary rejection should not be taken
literally; Examiner is only trying to be helpful. -
A rejection by the Examiner is never to be taken literally. An
applicant should remember that the Examiner may not be actually rejecting
his invention. The Examiner may in fact be quite prepared to admit
the invention over the references to the prior art. He may be merely
rejecting the applicant’s claims, that is, the way in which the
applicant has expressed his invention.
An Examiner will frequently make a blanket rejection on some reference to
the prior art just to be helpful to the applicant - just to give the
applicant a chance to explain away some reference and make a change in his
claims to avoid it, rather than to wait until the patent is granted and is
involved in a litigation, when it may be too late to make the explanation.
Rule
905. The Examiners shall have original jurisdiction over all
applications; appeal to the Director. -
The examination of all applications for the grant of invention patents
shall be under the original jurisdiction of the several Examiners;
their decisions, when final, shall be subject to petition, or appeal to
the Director within four (4) months from the mailing date of the notice of
the decision. As regards information on any specific technical or
scientific matter pending final action by the Bureau, the applicant may,
upon payment of a fee, request in writing for a conference with the
Examiner specifying the query he would want to propound to the Examiner
but in respect of which the Examiner has the discretion to grant the
request or choose to reply to the query in writing.
Rule
906. Order of examination. -
Applications filed in the Bureau and accepted as complete applications are
assigned for examination to the respective Examiners handling the classes
of invention to which the applications relate. Applications shall be
taken up for examination by the Examiner in the order in which they have
been filed.
Applications
which have been acted upon by the Examiner, and which have been placed by
the applicant in condition for further action by the said Examiner
(amended application) shall be taken up for such action in the order in
which they have been placed in such condition (date of amendment).
Rule
907. Nature of examination, Examiner’s action. -
(a) On taking up an application for examination, the Examiner shall
make a thorough study thereof and shall make a thorough investigation of
the available prior art relating to the subject matter of the invention
sought to be patented. The examination shall be complete with
respect both to compliance of the application with the statutes and rules
and to the patentability of the invention as claimed, as well as with
respect to matters of form, unless otherwise indicated.
(b)
The applicant will be notified of the Examiner’s action. The
reasons for any adverse action or any objection or requirement will be
stated and such information or references will be given as may be useful
in aiding the applicant to judge the propriety of continuing the
prosecution of his application.
Rule
908. Completeness of Examiner’s action.
- The Examiner’s action will be complete as to all matters, except
that in appropriate circumstances, such as restriction requirement,
fundamental defects in the application, and the like, the action of the
Examiner may be limited to such matters before further action is made.
However, matters of form need not be raised by the Examiner until a claim
is found allowable.
Rule
909. Rejection of claims. –
(a) If the invention is not considered patentable, in any manner, all the
claims will be rejected by the Examiner. If the invention is
considered patentable as claimed in certain of the claims, but
unpatentable as claimed in other claims, the latter claims will be
rejected but will not result in the refusal to grant a patent provided it
is limited only to claims that have not been rejected.
(b)
In rejecting claims for want of novelty or for want of inventive step, the
Examiner must cite the references most relevant to the invention.
When a reference is complex or shows or describes inventions other than
that claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each
reference, if not obvious, must be clearly explained and each rejected
claim specified.
(c)
Claims may be rejected for non-compliance with Sec. 35.1 and Sec. 36.1, IP
CODE.
Rule
910. Unpublished, withdrawn and forfeited applications not
cited. – Unpublished, withdrawn and forfeited applications as
such will not be cited as references.
Rule
911. Reply by applicant. – (a) After the action of
the Examiner, if the same be adverse in any respect, the applicant,
if he persists in his application for a patent, must reply thereto and may
request re-examination or reconsideration, with or without amendment.
(b)
In order to be entitled to re-examination or reconsideration, the
applicant must make a request therefor in writing, and he must distinctly
and specifically point out the supposed errors in the Examiner’s action;
the applicant must respond to every ground of objection and rejection in
the prior Examiner’s action (except that request may be made that
objections or requirements as to form, not necessary to further
consideration of the claims, be held in abeyance until a claim is
allowed), and the applicant’s action must appear throughout to be a bona
fide attempt to advance the case to final action. The mere
allegation that the Examiner has erred will not be received as a proper
reason for such reexamination or reconsideration.
(c)
In amending an application in response to a rejection, the applicant must
clearly point out the patentable inventiveness and novelty which he thinks
the claims present, in view of the state of the art disclosed by the
references cited or the objections made. He must also show how the
amendments avoid such references or objections.
Rule
912. Re-examination and reconsideration. –
After response by applicant, the application will be re-examined and
reconsidered, and the applicant will be notified if claims are rejected,
or objections or requirements made, in the same manner as after the first
examination. Applicant may respond to such Examiner’s action, in the
same manner provided in these Regulations, with or without amendment, but
any amendments after the second Examiner’s action must ordinarily be
restricted to the rejection or to the objections or requirements made, and
the application will be again considered.
Rule
913. Final rejection or action. –
(a) On the second or any subsequent examination or consideration, the
rejection or other action may be made final, where upon applicant’s
response is limited to appeal, in the case of rejection of any claim or to
amendment as specified in these Regulations. Petition may be taken
to the Director in the case of objections or requirements not involved in
the rejection of any claim as provided in these Regulations.
Response to a final rejection or action must include cancellation of, or
appeal from the rejection of, each claim so rejected; and, if any claim
stands allowable, compliance with any requirement or objection as to form.
(b)
In making such final rejection, the Examiner shall repeat all
grounds of rejection then considered applicable to the claims in the case,
clearly stating the reasons therefor. The Examiner may not cite grounds
that have not been raised in the earlier communications to the applicant.
Rule
914. Conversion of Patent Applications or Applications for
Utility Model. - (a) At any time before the grant or
refusal of a patent, an applicant for a patent, may, upon payment of the
prescribed fee convert his application into an application for
registration of a utility model, which shall be accorded the filing date
of the initial application. An application may be converted only
once. (Sec. 110, IP CODE)
(b)
At any time before the grant or refusal of a utility model registration,
an applicant for a utility model registration may, upon payment of the
prescribed fee, convert his application into a patent application, which
shall be accorded the filing date of the initial application. (Sec.
110, IP CODE)
Rule
915. Prohibition against Filing of Parallel Applications. - An applicant may not file two (2) applications for the
same subject, one for utility model registration and the other for the
grant of a patent whether simultaneously or consecutively. (Sec.
111, IP CODE)
AMENDMENTS BY THE APPLICANT
Rule
916. Amendment by the applicant. - An
applicant may amend the patent application during examination: Provided,
That such amendment shall not include new matter outside the scope of the
disclosure contained in the application as filed. (Sec. 49, IP CODE)
Rule
917. Amendments after final action of the Examiner. -
(a) After final rejection or action, amendments may be made canceling
claims or complying with any requirement of form which has been made, and
amendments presenting rejected claims in better form for consideration on
appeal may be admitted; but any proceedings relative thereto, shall not
operate to relieve the application from its condition as subject to appeal
or to save it from being considered withdrawn.
(b)
Should amendments touching the merits of the application be presented
after final rejection, or after appeal has been taken, or when such
amendment might not otherwise be proper, they may be admitted upon a
showing of good and sufficient reasons why they are necessary and were not
earlier presented.
Rule
918. Amendment and revision required. -
The specification, claims and drawing must be amended and revised when
required, to correct inaccuracies of description and definition or
unnecessary prolixity, and to secure correspondence between the claims,
the specification and the drawing.
Rule
919. Amendment of disclosure. -
No deletion or addition shall broaden the disclosure of an application to
include new matter after the filing date of the application. All
amendments to the specification, claims or drawing, and all additions
thereto made after the filing date of the application must conform to at
least one of them as it was as of the filing date. Matter not found
in either, involving a departure from or an addition to the original
disclosure, cannot be added to the application even though supported by a
supplemental oath, and can be shown or claimed only in a separate
application.
Rule
920. Amendment of claims. - The claims may be amended
by canceling particular claims, by presenting new claims or by amending
the language of particular new claims (such amended claims being in effect
new claims). In presenting new or amended claims, the applicant must
point out how they avoid any reference or ground of rejection of record
which may be pertinent. Furthermore, in order to facilitate the processing
of the examination of the application , the applicant shall indicate in
his response which form part in the original disclosure constitutes the
basis of the amendments.
Rule
921. Manner of making amendments. -
Erasures, additions, insertions, or alterations of the papers and records
must not be made by the applicant. Amendments by the applicant are
made by filing a paper in accordance with these Regulations, directing or
requesting that specified amendments be made. The exact word or
words to be stricken out or inserted in the application must be specified
and the precise point indicated where the deletion or insertion is to be
made. The basis of the proposed amendments in the original application as
filed shall be indicated.
Rule
922. Entry and consideration of amendments. -
(a) Amendments are entered by the Bureau by making the proposed
deletions by drawing a line in red ink through the word or words
cancelled, and by making the proposed substitutions or insertions in red
ink, small insertions being written in at the designated place and larger
insertions being indicated by reference.
(b)
Ordinarily all amendments presented in a paper filed while the application
is open to amendment are entered and considered provided that amendments
that do not comply with this rule may not be accepted. Untimely
amendatory papers may be refused entry and consideration in whole or in
part.
Rule
923. Amendments to the drawing. -
(a) No change in the drawing may be made except by permission of the
Bureau. Request for changes in the construction shown in any
drawing may be made only upon payment of the required fee. A sketch
in permanent ink showing proposed changes to become part of the record
must be filed together with the search request. The paper requesting
amendments to the drawing should be separate from other papers. The
drawing may not be withdrawn from the Bureau except for signature.
Substitute drawings will not ordinarily be admitted in any case unless
required by the Bureau.
Rule
924. Amendment of amendments. -
When an amendatory clause is to be amended, it should be wholly rewritten
and the original insertion cancelled, so that no interlineations or
deletions shall appear in the clause as finally presented. Matter
cancelled by amendment can be reinstated only by a subsequent amendment
presenting the cancelled matter as a new insertion.
Rule
925. Substitute specification. -
If the number or nature of the amendments shall render it difficult to
consider the case, or to arrange the papers for printing or copying, the
Examiner may require the entire specification or claims, or any part
thereof, to be rewritten. A substitute specification will ordinarily
not be accepted unless it has been required by the Examiner. A
substitute specification may be required within two (2) months from
grant of the patent prior to publication of the patent in the IPO Gazette.
Rule
926. Numbering of claims. - The original numbering of
the claims must be preserved through the prosecution. When claims
are cancelled, the remaining claims must not be renumbered. When
claims are added by amendment or substituted for cancelled claims, they
must be numbered by the applicant consecutively beginning with the number
next following the highest numbered claim previously presented (whether
entered or not). When the application is ready for allowance, the
Examiner, if necessary, will renumber the claims consecutively in the
order in which they appear or in such order as may have been requested by
applicant.
Rule
927. Petition from refusal to admit amendment. -
From the refusal of the Examiner to admit an amendment, in
whole or in part, a petition will lie to the Director under these
Regulations.
Rule
928. Interviews with the Examiners: when no interview is
permitted - Interviews with the Examiner concerning an
application pending before the Bureau can be held only upon written
request specifying the query the applicant would want to propound and
after payment of the required fee, but in respect of which the Examiner
has the jurisdiction to grant interview or instead reply to the query in
writing. The interview shall take place within the premises of the Bureau
and during regular office hours as specified by the Examiner. All
interviews or conferences with Examiners shall be reduced to writing and
signed by the Examiner and the applicant immediately after the conference.
Such writing shall form part of the records of the Bureau. Interviews for
the discussion of pending applications shall not be held prior to the
first official action thereon.
TIME FOR RESPONSE BY APPLICANT;
WITHDRAWAL OF APPLICATION
Rule
929. Withdrawal of application for failure to
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