| (as
amended by Order No. 61 series 2001 and Office Order No. 09 series of
2000)
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 utility models and industrial designs are hereby
promulgated:
PART 1
RULE 10. These
regulations shall be known as the Utility Model and Design
Regulations. [As amended by Office Order No.
09 (2000)]
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
Utility
Models
RULE
200. Registrable Utility Models.
Any technical solution of a problem in any field of human activity
which is new and industrially applicable shall be registrable.
RULE
200. 1
Non-Registrable
Utility Models. The following shall be excluded from protection as
utility models:
(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.
RULE
200.2
Industrial Applicability.
A utility model which can be produced and used in any industry shall
be industrially applicable.
RULE
201. Statutory Classes of Utility
Models. A utility model may be, or may relate to
(a)
a useful machine;
(b)
an implement or tool;
(c)
a product or composition;
(d)
a method or process; or
(e)
an improvement of any of the foregoing.
[As amended by Office Order No. 09 (2000)]
RULE
202. First
to File Rule. If two or more persons have made the same utility
model separately and independently of each other, the right to the utility
model registration shall belong to the person who filed an application for
such utility model, or where two or more applications are filed for the
same utility model to the applicant who has the earliest filing date or
the earliest priority date.
RULE
203. Filing Date of Utility Model
Application. The filing date of a utility model application shall
be the date on which the Office received the following requirements:
(a)
A property filled-out request form
for registration as prescribed by the Bureau;
(b)
A description of the Utility Model;
(c)
Claim or claims; and
(d)
Drawings or a pictorial representation disclosing completely the
utility model, if there is/are any.
Without
need of any notice from the office, the filing fee shall be paid within
one (1) month from the date of application was received by the office,
otherwise, the application
shall be deemed forfeited. [As
amended by Office Order No.
09 (2000)]
RULE
204. Right of Priority for Utility
Model. An application for utility model filed by any person who
has previously applied for the same utility model 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 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.
RULE
205.
Registration of Utility Model.
A utility model application shall be registered without substantive
examination provided all fees such as filing, excess claims and
publication fees are paid on time and all formal requirements set forth in
these Regulations are filed without prejudice to a determination as
regards its novelty, industrial applicability and whether or not it is one
of the non-registrable utility models. [As
amended by Office Order No.
61 (2001)]
RULE
206.
Formality Examination of
Utility Model Application. The utility model application shall be
classified and examined as to the completeness of the formal requirements
prescribed in these Regulations, and a report thereon shall be transmitted
to the applicant. The formality examination shall take into account the
parts of these Regulations on: (a) the right to a utility model
registration, (b) who may apply for a utility model registration, (c)
filing date requirements and (d) other formality requirements. [As amended by Office Order No. 09( 2000)]
RULE
207.
Applicant's Action on the
Formality Examination Report. Within two (2) months from the
mailing date of the formality examination report, the applicant may: (1)
voluntarily withdraw the application, (2) amend the application, (3)
convert the application to an application for an invention patent, or (4)
upon payment of the required fee, request for a registrability report. [As amended by Office Order No. 09 (2000)]
RULE
207.1.
Voluntary Withdrawal.
The application shall be deemed withdrawn and all files expunged from the
record of the Bureau upon receipt of the applicant's voluntary withdrawal.
RULE
207.2.
Amended Applications.
The amended application shall be classified and subjected to formality
examination. Report thereon shall be submitted to the applicant within two
(2) months from receipt of the amended application. Within two (2) months
from mailing date of the formality examination report on the amended
application, the applicant may: (1) withdraw the application, (2) convert
the same to an application for an invention patent, or (3) upon payment of
the required fee, request for a registrability report. [As amended by Office Order No. 09 (2000)]
RULE
207.3.
Application Converted to an
Application for Inventions Patent. The application or amended
application which is converted into an application for an invention patent
shall be processed as an invention patent application upon receipt of
notice from the applicant.
RULE
207.4. No
Action on the Part of Applicant Where Formal Requirements are Complete.
Where the application meets all the formal requirements for
registrability and the Bureau fails to receive any action from the
applicant, the utility model shall be published upon the expiration of two
(2) months from the mailing date of the formality examination report,
provided the issuance, publication and all required fees have been fully
paid. [As amended by Office Order
No. 16 (2001)]
RULE
207.5. No
Action on the Part of Applicant Where Formal Requirements are not Complete.
Where the application fails to meet any of the formal requirements for
registration and the Bureau fails to receive any action from the
applicant, the application shall be deemed withdrawn and all files thereon
shall be expunged from the records of the Bureau upon the expiration of
two (2) months from the mailing date of the formality examination report.
The Bureau may return to the applicant all the files expunged from its
records.
RULE
207.6.
Registrability Report.
The report shall contain citations of relevant prior art documents
with appropriate indications as to their degree of relevance which will
serve as an aid to the applicant or to third parties including judicial
and quasi-judicial bodies, in the determination of the validity of the
utility model claim(s) in respect to newness. [As amended by Office Order No.
16 (2001)]
The
registrability report shall be given within two (2) months from receipt of
the request and upon payment of fees. If the applicant has requested for a
registrabilty report prior to the publication of the utility model
appliation, the registrabily report shall be included in the publication
of utility model application. [As
amended by Office Order No. 16 (2001)]
RULE
207.7 Non-Payment
of Issuance and Publication Fees. Where the application meets all
the formal requirements for registrability and the applicant fails to pay
the issuance and publication fees within the prescribed period, the
utility model application shall be deemed withdrawn.
[As amended by Office Order No. 09 (2000)]
RULE
207.8 Final
Action. Where the applicant fails to file a complete response to
the formality examination report, any subsequent formality examination
report submitted to the applicant shall be a final action which may be
appealed to the Director of Patents in a manner provided for in these
Regulations. [As amended by Office Order No. 09 (2000)]
RULE
208.
Requirements for Applications
for Utility Model. An application for Utility Model Registration
and other correspondences shall be in Filipino or English and must be
addressed to the Director of the Bureau of Patents.
The
application shall contain the following:
a)
A duly accomplished request for registration as prescribed by the
Bureau,
b)
Description containing the following:
1.
title
2.
technical field
3.
background of the Utility Model
4.
brief description of the several views of the drawings, if any
5.
detailed description
c)
Claim or claims
d)
Drawings, if any
e)
Abstract of the Disclosure
[As amended by Office Order No. 9, (2000),]
RULE
208.1. Title.
The title should be as short and specific as possible, and should
appear as heading on the first page of the specification. Fancy names are
not permissible in the title.
[As amended by Office Order No.09 ( 2000).]
RULE
208.2.
Technical Field. A
statement of the technical field of the art to which the utility pertains.
The statement should be directed to the subject matter of the claimed
utility model.
RULE
208.3.
Background of the Utility
Model. It is a description which indicates the so-called
"background art" constituting the related prior art or state of
the art or known technology for the utility model sought to be registered,
including references to specific documents where appropriate. Where
applicable, the problems involved in the information which may be solved
by the applicant's utility model should be indicated.
RULE
208.4. Brief
Description of the Several Views of the Drawings, if there be any.
Every view of the drawings should be briefly described, and indicated with
corresponding figure numbers.
RULE
208.5.
Detailed Description.
The detailed description must specifically include a complete description
of the manner or making and using the utility model. It must set forth the
precise or exact utility model for which registration is sought, in such
manner as to distinguish the utility model from the prior art it pertains
to and the technical problem solved by the utility model should be
indicated.
RULE
208.6. Claim
or Claims.
a)
The claim(s) must define the subject matter of the utility model
for which registration is sought. Such claim(s) should be clear and
concise and fully supported by the description.
b)
If the utility model application relates to an improvement, the
claim(s) should specifically point out and distinctly claim the
improvement in combination with a preamble statement indicating the prior
art features which are necessary for the definition of the claimed subject
matter.
RULE
209. Unity
of Utility Model. Only one independent genus or generic claim is
permissible in a utility model application. However, specific variations
of the utility model may be claimed in a reasonable number of dependent
claims in a single application, provided such variations fall under a
single statutory class provided in these Regulations and are embodied
under a single general innovative concept. Such specific variations of the
claimed utility model must fall within the scope of the generic claim.
RULE
209.1. Claims Incurring Fee. (a) Any
utility model 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
210.
Requirement for Restriction;
Division. A restriction or division of multiple embodiments in a
utility model application may be deemed proper if such embodiments are
independent and distinct, or can not be considered as specific variations
specified in these Regulations. A divisional application covering the
restricted embodiment(s), if filed during the pendency of the utility
model application, shall be entitled to the benefit of the filing date of
such parent application.
RULE
211. Publication of the Utility Model Application. An application
which meets the formal requirements shall be published in the form of
bibliographic data and representative drawing, if any, in the IPO Gazette.
If an applicant has previously requested for a registrability report, the
publication shall include the registrability report. [As
amended by Office Order No. 61 (2001),]
RULE
211.1 Adverse Information. Effects. Within two (2) months from
publication of the utility model application, any interested party may
request the Director for a registrability report and/or furnish the
Director information, evidence or data in writing and under oath, showing
that the utility model is not new. The Director may require such third
party to submit relevant and collateral facts or data to substantiate the
information. [As amended by Office Order No.
61 (2001),]
Within
two (2) months from receipt of the request and/or adverse information, the
Director shall decide whether or not to register the utility model and
shall issue the registrability report, if one has been requested. The
Director may also issue a registrability report motu proprio within
the same two (2)-month period. [As
amended by Office Order No. 61 (2001),]
In
case the Director refuses or denies the registration of the utility model,
the applicant may appeal such decision to the Director General pursuant to
Section 7.1 (b) of the IP Code and in accordance with Part 7 of these
Regulations. [As amended by Office Order
No. 61 (2001),]
In
case the Director allows the registration of the utility model, any
interested party may file a petition for cancellation with the Bureau of
Legal Affairs in accordance with Section 109.4 of the IP Code and in
accordance with the Regulations on, Inter Partes Proceedings. [As
amended by Office Order No. 61 (2001),]
If
the Director receives no adverse information within the 2-month period, he
shall certify to that effect and direct the preparation and issuance of
the certificate of registration with effect as of the date of publication
of the utility model application. [As
amended by Office Order No. 61 (2001),]
RULE
212. Term
of Registration of Utility Model. A utility model registration
shall expire, without any possibility of renewal, at the end of seventh
year after the date of the filing of the application.
However,
taking into account the first-to-file rule, the volume of pending
applications as of the effectivity of the IP Code and the time that has
elapsed between the effectivity of the IP Code and the effectivity of
these Regulations:
(a)
The registration of Utility Model applications pending at the
effective date of, and proceeded with in accordance with, the IP Code
shall expire, without possibility of renewal, at the end of seven (7)
years from effectivity of these Regulations;
(b)
The registration of utility model applications filed after the
effectivity of the IP Code and pending upon effectivity of these
Regulations shall expire, without possibility of renewal, at the end of
seven (7) years from effectivity of these Regulations.
[As amended by Office Order No. 09 (2000)]
RULE
213.
Cancellation of the Utility
Model Registration. The utility Model registration shall be
cancelled on the following grounds:
(a)
That the utility model does not qualify for registration as a
utility model and does not meet the requirements of novelty and industrial
applicability or it is among non-registrable utility models;
(b)
That the description and the claims do not comply with the
prescribed requirements;
(c)
That any drawing which is necessary for the understanding of the
utility model has not been furnished;
(d)
That the owner of the utility model registration is not the maker
or his successor in title.
RULE
214.
Conversion of Invention
Patent Application to an Application for Utility Model Registration.
At any time before the grant or refusal of a patent for an invention,
an applicant for a patent for an invention 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 application. An application may be converted only once.
RULE
215.
Conversion of an Application
for Utility Model Registration to a Patent Application. 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 utility model application.
RULE
216.
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 for an invention whether
simultaneously or consecutively.
PART
3
Industrial
Designs
RULE
300.
Definition of Industrial
Design. An industrial design is any composition of lines or colors
or any three-dimensional form, whether or not associated with lines or
colors: Provided that, such composition or form should give a special
appearance to and can serve as pattern for an industrial product or
handicraft that are new or original.
RULE
301.
Requisites for Registrability
of Industrial Design. In order to be registrable, an industrial
design must be any new or original creation relating to the ornamental
features of shape, configuration, form, or combination thereof, of an
article of manufacture, whether or not associated with lines, patterns or
colors, which imparts an aesthetic and pleasing appearance to the article.
The design which is embodied in any composition of lines, patterns or
colors must be inseparable from the article and cannot exist alone merely
as a scheme of surface ornamentation.
An
article of manufacture is defined as anything which belongs to the useful
or practical art, or any part thereof, which can be made and sold
separately.
Industrial
designs that are dictated essentially by technical or functional
considerations to obtain a technical result or those that are contrary to
public order, health or morals, are not registrable. [As
amended by Office Order No. 09 (2000)]
RULE
301.1.
Requisites for Registrability
Explained. The object of the statute is to encourage the
decorative arts and a design, which merely pleases the eye, is a proper
subject matter for a design registration. That is to say, a registrable
design must not only be new or original, but ornamental as well.
Ornamentation implies beauty, the giving of a pleasing appearance to an
object or article. Registrable design must therefore show a variance which
enhances the aesthetic beauty and attractive appearance of the article and
which significantly differs from known design features or combination of
known design features.
RULE
302.
Degree of Novelty Required.
The standard of novelty established by Sections 23 (Novelty) and 25
(Non-prejudicial disclosure) of the IP Code applies to industrial designs:
provided that the period of twelve (12) months specified in Section 25
shall be six (6) months in the case of designs.
An
industrial design shall not be considered new if it differs from prior
designs only in minor respects that it can be mistaken as such prior
designs by an ordinary observer.
RULE
303. Filing
Date of Industrial Design Application. The Bureau shall accord as
the filing date of an application for industrial design registration the
date on which the Bureau received the following elements:
(a)
Indications allowing the identity of the applicant to be
established; and,
(b)
A representation of the article embodying the industrial design or
a pictorial representation thereof.
If
these requirements are not received by the Bureau upon the filing of the
application, it shall nevertheless accept the application and accord as
the filing date the date on which all the formal requirements for
registration are filed or the mistakes are corrected in accordance with
these Regulations.
RULE
304. First
to File Rule. If two or more persons have made the same design
separately and independently of each other, the right to the design
registration shall belong to the person who filed an application for such
design, or where two or more applications are filed for the same design to
the applicant who has the earliest filing date or the earliest priority
date.
RULE
305. Right
of Priority for Design. An application for design filed by any
person who has previously applied for the same design 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 the
foreign application: Provided, That: (a) the local application expressly
claims priority; (b) it is filed within six [6] months from the earliest
filing date of the corresponding foreign application; 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.
RULE
306. Registration of Industrial Design. If the application meets
the requirements of the IP Code and these Regulations, including the
requirement of novelty or originality, the Bureau shall effect the
registration of the industrial design, Provided, that all fees are paid on
time. [As
amended by Office Order No. 61 (2001),]
RULE
307.
Formality Examination of
Industrial Design Application.
The industrial application shall be classified and examined as to the
completeness of the formal requirements prescribed in these Regulations
and a report thereon shall be transmitted to the applicant. The formality
examination shall take into account the parts of these Regulations on: (a)
the right to an industrial design registration, (b) who may apply for an
design registration, (c) filing date requirements and (d) other formality
requirements. [As
amended Office Order No. 09
(2000)]
RULE
308.
Applicant's Action on the
Formality Examination Report and the Search Report. Within two (2)
months from the mailing date of the formality examination report, the
applicant may: (1) voluntarily withdraw the application, (2) amend the
application, or, (3) upon payment of the required fee, request for a
registrability report. [As
amended Office Order No. 09
(2000)]
RULE
308.1.
Voluntary
Withdrawal. The application shall be deemed withdrawn and all
files expunged from the records of the Bureau upon receipt of the
applicant's voluntary withdrawal.
RULE
308.2.
Amended
Applications. The amended application shall be classified and
subjected to formality examination. Report thereon shall be submitted to
the applicant within two (2) months from receipt of the amended
application. Within two (2) months from mailing date of the formality
examination report on the amended application, the applicant may: (1)
withdraw the application, or, (2) upon payment of the required fee,
request for a registrability report. [As
amended Office Order No. 09
(2000)]
RULE
308.3. No Action On The Part Of The Applicant Where Formal Requirements
Are Complete. Where the application meets all the formal requirements
for registrability and the Bureau fails to receive any action from the
applicant, the industrial design application shall be published upon the
expiration of two (2) months from the mailing date of the formality
report, provided the issuance, publication and all the required fees have
been fully paid. [As amended
Office Order No. 61 (2001)]
RULE
308.4.
No
Action on the Part of Applicant where Formal Requirements are not Complete.
Where the application fails to meet any of the formal requirements for
registration and the Bureau fails to receive any action from the
applicant, the application shall be deemed withdrawn and all files thereon
shall be expunged from the records of the Bureau upon the expiration of
two (2) months from the mailing date of the formality examination report.
The Bureau may return to the applicant all the files expunged from its
records.
RULE
308.5. Registrability Report. The report shall contain citations
of
relevant prior art documents with appropriate indications as to their
degree of relevance. It will serve as an aid to the applicant or to third
parties including judicial and quasi-judicial bodies, in the determination
of the validity of the industrial design claim(s) in respect to newness. [As amended
Office Order No. 61 (2001)]
The
registrability report shall be given within two (2) months from receipt of
the request and upon payment of fees. If the applicant has requested for a
registrability report prior to the publication of the industrial design
application, the registrability report shall be included in the
publication of the industrial design application. [As
amended Office Order No. 61
(2001)]
RULE
308.6.
Non-Payment
of Issuance and Publication Fees. Where the application meets all
the formal requirements for registrability and the applicant fails to pay
the issuance and publication for within the prescribed period, the
industrial design application shall be deemed withdrawn.
RULE
308.7.
Final
Action. Where the applicant fails to file a complete response to the
formality examination report, any subsequent formality examination report
submitted to the applicant shall be a final action which may be appealed
to the Director in a manner provided for in these regulations. [As
amended Office Order No.
09(2000)]
RULE
309. The
Application. An application for industrial design registration and
other correspondences shall be in Filipino or English and must be
addressed to the Director of the Bureau.
The
application shall contain the following:
(a)
A completely filled-out request for registration as prescribed by
the Bureau containing the name and address of the applicant or where the
applicant is not the designer, a statement indicating the origin of the
right to the industrial design; and, an indication of the kind of article
of manufacture to which the design shall be applied;
(b)
Specification containing the following:
1.
title;
2.
brief description of the different views of the drawings.
3.
characteristic-feature description of the design;
4.
claim.
(c)
Drawings of the different views of the design showing the complete
appearance thereof including the signature of the applicant or
representative. The Bureau may also accept photographs or other adequate
graphic representation of the design provided the same comply with the
requirements of these Regulations regarding drawings of industrial
designs.
RULE
310. Fees. An application
for an industrial design registration shall be subject to the payment of
the filing fee. The application shall be deemed forfeited if the filing
fee is not paid within one (1) month from the date that the application
was received by the Office. [As
amended Office Order No.
09(2000)]
RULE
311. Specimen. The Bureau of
Patents may require that the application be accompanied by a
"specimen" of the article embodying the industrial design which
requirement shall be subject to the payment of the prescribed fee within
one (1) month from submission of such specimen.
The
specimen is defined as a sample or unit of the industrial product that is
deliberately selected for examination, display or study and chosen as
typical of its kind.
RULE
312. Special Form of Specification
for Application for Registration of Industrial Design. The
application for registration of industrial design shall include a
specification containing the following matters, arranged in the order
hereunder shown:
(a)
Title of the design;
(b)
Detailed description of the several views or figures of the formal
drawings;
(c)
Statement of the characteristic features of the design, if
required; and
(d)
Claim.
RULE
312.1.
Title.
The title of the design must technically designate the particular
article embodying the design.
RULE
312.2.
Brief
Description of the Several Views of the Drawings. Every view of
the drawing should be briefly described, i.e. perspective, front, side,
top, bottom and/or back, and indicated with corresponding figure numbers.
RULE
312.3.
Characteristic-Feature
Description. A characteristic feature statement describing the
particular novel and ornamental features of the claimed design which are
considered to be dominant.
RULE
312.4.
Claim.
The claim shall be in formal terms to the ornamental design for the
article (specifying name) substantially as shown and described. More than
one claim is neither required nor permitted.
RULE
312.5.
Special
Requirements for the Drawing of an Industrial Design. In addition
to the drawings being made in conformity with the common rules laid down
for drawings for utility models and industrial designs, the drawings for
an industrial design must comprise sufficient number of views to
constitute a complete disclosure of the appearance of the article.
Appropriate surface shadings must be used to show the character or contour
of the surfaces represented.
In
case of a color claim, a cross-sectional view of the design may be
required in lieu of surface shading, and the color coding based on the
color chart as prescribed by the Bureau should be applied.
RULE
312.6.
Requirements
for Graphic Representation of Industrial Designs. Graphic
representation of industrial design such as computer aided drawing (CAD)
in lieu of the India Ink Drawing could be accepted provided that such
should be made in conformity with these Regulations particularly with
request to the special requirements for drawing of an industrial design.
RULE
313. Several Industrial Design in
One Application. More than one embodiment of an industrial design
in one application may be permissible in a proper case. A number of
articles presented should not be patentably distinct from each other, and
they should be of substantially similar dominant design features that are
embodied in a single design concept. They must relate to the same subclass
of the International Classification or to the same set or composition of
articles. A "set of articles" which is customarily sold or used
together as a set may be made a proper subject matter in one application
for design registration provided that each article is of, or has, the same
design or a substantially similar design.
RULE
313.1.
Restriction;
Division. A restriction or division of multiple design embodiments
may be deemed proper if two or more independent or distinct designs are
presented in one design application for registration.
RULE
314. Publication of the Industrial Design Application. An
application which meets the formal requirements shall be published in the
form of bibliographic data and representative drawing, if any, in the IPO
Gazette. If an applicant has previously requested for a registrability
report, the publication shall include the registrability report. [As
amended Office Order No.
61(2001)]
RULE
314.1 Adverse Information. Effects. Within two (2) months from
publication of the industrial design application, any interested party may
request the Director for a registrability report and/or furnish the
Director information, evidence or data in writing and under oath, showing
that the industrial design is not new. The Director may require such third
party to submit relevant and collateral facts or data to substantiate the
furnished information. [As
amended Office Order No.
61(2001)]
Within
two (2) months from receipt of the request and/or adverse information, the
Director shall decide whether or not to register the industrial design and
shall issue the registrability report, if one has been requested. The
Director may also issue a registrability report motu proprio within
the same two (2)-month period. [As
amended Office Order No.
61(2001)]
In
case the Director refuses or denies the registration of the industrial
design, the applicant may appeal such decision to the Director General
pursuant to Section 7.1 (b) of the IP -Code and in accordance with Part 7
of these Regulations. [As
amended Office Order No.
61(2001)]
In
case the Director allows the registration, any interested party may file a
petition for cancellation with the Bureau of Legal Affairs in accordance
with Section 120 of the IP Code and in accordance with the Regulations on
Inter Partes Proceedings.
[As amended Office Order No.
61(2001)]
If
the Director receives no adverse information within the 2-month period, he
shall certify to that effect and direct the preparation and issuance of
the certificate of registration with effect as of the date of publication
of the industrial design application. [As
amended Office Order No.
61(2001)]
RULE
315. Term of Industrial Design
Registration. The terms shall be five (5) years from the filing
date of the application and may be renewed for not more than two (2)
consecutive periods of five (5) years each, by paying the renewal fee (Secs.
118.1 and 118.2, R.A. 8293).
However,
taking into account the first-to-file rule, the volume of applications
pending upon the effectivity of the IP Code and the time that has lapsed
between the effectivity of the IP Code and the effectivity of these
Regulations:
(a)
The first term of the industrial registrations filed prior to the
effectivity of, and processed under, the IP Code shall end five (5) years
from the effectivity of these Regulations.
(b)
The first term of the industrial registrations filed under the IP
Code and pending upon the effectivity of these Regulations shall end five
(5) years from the effectivity of these Regulations.
RULE
316. The Renewal Fee. The
renewal fee shall be paid within twelve (12) months preceding the
expiration of the period of registration. A grace period of six (6) months
shall be granted for payment of the fees after such expiration, upon
payment of a surcharge.
RULE
317. Cancellation of Design
Registration. At any time during the term industrial design
registration, any person upon payment of the required fee, may petition
the Director of Legal Affairs of the Office to cancel the industrial
design on any of the following grounds:
(a)
If the subject matter of the industrial design is not registrable
within the terms of Sections 112 and 113 of the IP Code;
(b)
If the subject matter is not new; or
(c)
If the subject matter of the industrial design extends beyond the
content of the application as originally filed.
[As amended Office Order No. 09(2000)]
RULE
317.1.
Where
the grounds for cancellation relate to a part of the industrial design,
cancellation may be effected to such extent only. The restriction may be
effected in the form of an alteration of the effected features of the
design.
PART 4
Common
Provisions
CHAPTER
1
Registrability
RULE
400. Novelty. An industrial
design or utility model shall not be considered new if it forms part of a
prior art.
RULE
401. Prior Art. Prior art
shall consist of:
(a)
Everything made available to the public anywhere in the world
before the filing date or the priority date of the application provided
that the disclosure is contained in printed documents or in any tangible
form.
(b)
The whole contents of an application for a patent for invention,
utility model or industrial design published under Sec. 44 of the 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 industrial design or
utility model application: Provided, That the application which has
validly claimed priority shall be prior art with effect as of the said
priority date, Provided Further, That the applicant identified in both
applications are not one and the same.
Where
two or more applications are independently filed with respect to the same
industrial design or utility model, and the later applications are filed
before the publication of the first application or earliest application,
the whole contents of such first or earliest application shall be novel
with respect to the later application or applications.
RULE
402. Non-Prejudicial Disclosure.
The disclosure of information contained in the industrial design
application during the six (6) months preceding the filing date or the
priority date of the application or during the twelve (12) months
preceding the filing date or priority date in the case of utility model
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:
(a)
The Maker/Designer;
(b)
A patent office and the information was contained [i] in another
application filed by the maker/designer and should have not been disclosed
by the patent office, or [ii] in an application filed without the
knowledge or consent of the designer by a third party which obtained the
information directly or indirectly from the maker/designer; or
(c)
A third party which obtained the information directly or indirectly
from the maker/designer;
For
the purposes of this Rule "designer" also means any person who,
at the filing date of application, had the right to the industrial design.
[As
amended Office Order No.
09(2000)]
CHAPTER
2
Right
to a Registration
RULE
403. Right to a Registration.
The right to a registration belongs to the maker or designer, his
heirs, or assigns. When two (2) or more persons have jointly made a
utility model or industrial design, the right shall belong to them
jointly.
RULE
404. Who may be Named in an
Application as an Applicant. The application may be filed by the
actual maker(s) or designer(s) or in the name of his heirs, legal
representative or assigns.
RULE
405. Utility Models and Industrial
Designs Created Pursuant to a Commission. The person who
commissions the work shall own the registration, unless otherwise provided
in the contract.
In
case the employee made the invention in the course of his employment
contract, the registration shall belong to:
(a)
The employee, if the 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 utility model or industrial design is the
result of the performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.
RULE
406. 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
406.1.
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
406.2.
If
certain elements of the utility model or industrial design 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
406.3.
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 the 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
407. Certified Copy of the Foreign
Applications. The certified copy of foreign applications on which
the priority claim is based shall be the copy of the application(s) as
duly certified to be a true and faithful reproduction thereof by the
Industrial Property Office which received it or any other office which has
official custody of the foreign application(s).
CHAPTER
3
The
Application
RULE
408 (a).
All papers for an application for a utility model and industrial
design registration 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
1½ 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. [As
amended Office Order No.
09(2000)]
(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 claim(s) of the application must be written with the
lines numbered in sets of five and the number appearing on the left side
margin.
(d) The
description and the claims may contain chemical or mathematical formulas.
The description 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 registration,
description, claims, drawings and abstract of the disclosure) 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. [As
amended Office Order No.
09(2000)]
(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
408 (j).
Paragraphs (d), (e) and (f) of this Rule shall only be applicable
to ut |