INTERNATIONAL PHASE: PATENT COOPERATION TREATY (PCT) FAQ

What is an international patent application?

An international patent application is an application filed via the Patent Cooperation Treaty (PCT).

Who may file an international patent application?

A resident or national of the Philippines may file an international application.  If there are two or more applicants, the right to file an international application shall exist if at least one of them is a resident or national of the Philippines.

Where may an international patent application be filed?

A PCT application may be filed with the national Office of the Contracting State of which the applicant (or at least one of the applicants) is a national or resident or with the International Bureau of WIPO.  A resident or national of the Philippines may file with the IPO Philippines or with the International Bureau (IB) of the World Intellectual Property Organization (WIPO).

Where may an international patent application be filed?

A PCT application may be filed with the national Office of the Contracting State of which the applicant (or at least one of the applicants) is a national or resident or with the International Bureau of WIPO. A resident or national of the Philippines may file with the IPO Philippines or with the International Bureau (IB) of the World Intellectual Property Organization (WIPO).

What is the accepted language of the application?

The international application must be filed either in English or Filipino. An English translation must be furnished for applications filed in Filipino.

How may an international patent application be filed with the IPOPHL?

The IPO Philippines requires two (2) copies of the application.

Which International Searching Authorities (ISAs) are competent to conduct the International Search for applicants who wish to file an international patent application with the IPOPHL?

·   Intellectual Property Office of the Philippines

·   Australian Patent Office

·   European Patent Office

·   Japan Patent Office

·   Korean Intellectual Property Office

·   United States Patent and Trademark Office

 

The Japan Patent Office and the Korean Intellectual Property Office are competent only for international applications filed in English.

How many copies of the international patent application are required by the IPOPHL?

The IPOPHL requires only one copy of the application.

What are the modes of filing an international patent application in the IPOPHL?

An international application may be filed in paper format or through ePCT.

In what manner can the fees be paid?

All fees for the benefit of the IPO Philippines shall be paid in cash, money order, bank drafts and/or checks in Philippine currency. In case of cash payment, the date of receipt is the date on which the full amount due was paid in cash.  In case of money order, check or bank draft payment, the date of receipt of the money order, check or bank draft will be the date of presentment provided that the same is honored upon first presentment and provided that the payment covers the full amount due.

 

All fees for the benefit of the IB and the ISA collected by IPO Philippines as receiving Office shall be paid to IPO Philippines in US Dollars in the form of cash or bank draft. In case of cash payment, the date of receipt is the date on which the full amount due was paid in cash.  In case of bank draft payment, the date of receipt of the bank draft will be the date of presentment provided that the same is honored upon first presentment and provided further that the payment covers the full amount due.

 

Payment shall be made to the IPO Philippines Cashier during regular working days and business hours from Monday to Friday, 8:00 a.m. to

5:00 p.m.


What are the applicable fees to be paid during the international phase?

For the benefit of IPO Philippines

·   Transmittal fee

·   Priority document fee (if the IPOPHL is the country of filing of the priority claim)

·   Fee for transmitting the priority document

 

For the benefit of the IB and ISA

·   International filing fee

·   Supplement fee for each sheet in excess of 30

·   Search fee

 

The international filing fee and supplement fee for sheets in excess of 30, is further reduced by 90% provided that the applicant or, if there are two or more applicants, each applicant is a natural person and is a national of and resides in the Philippines and other States whose per capita income is below USD 3,000 (according to the average per capita income figures used by the United Nations for determining its scale of assessments for the contributions payable for the years 1995, 1996 and 1997), as well as the following States: Antigua and Barbuda, Bahrain, Barbados, Libya, Oman, the Seychelles, Singapore, Trinidad and Tobago and the United Arab Emirates.

Is an agent required by the IPOPHL? Who can act as agent? Is a Power of Attorney required by the Office?

An agent is not required by the IPO Philippines if the applicant resides in the Philippines.  An agent is required if the applicant is a non- resident.

 

Any patent agent or representative residing in the Philippines may act as the applicant’s agent upon whom notices or processes for judicial or administrative procedure may be served.

Which International Preliminary Examining Authorities (IPEAs) are competent to conduct the international preliminary examination for applications filed with the IPOPHL?

·   Australian Patent Office

·   European Patent Office

·   Japan Patent Office

·   Korean Intellectual Property Office

·   United States Patent and Trademark Office

 

The European Patent Office is competent only if the international search is or has been performed by that Office.  The Japan Patent Office is competent only if the international search is or has been performed by that Office. The United States Patent and Trademark Office is competent only if the international search report has been prepared by that Office.

Is the Demand for international preliminary examination compulsory?

No, filing of the Demand for international preliminary examination is optional for the applicant.

Where may the Demand for international preliminary examination be filed? Is the Demand for international preliminary examination compulsory?

The Demand for international preliminary examination, as well as the fees associated with it, may be filed directly with the IPEA chosen by the applicant or with the IB.

Does the filing of an international application via the PCT result in the granting of an international patent?

No, the PCT does not grant an international patent.  The granting of patents remains under the control of the national or regional patent Offices in what is called the national phase.

What are the PCT Regulations that do not apply in the Philippines?

a.  Rule 26bis.3(j), 49ter.1(g), 49ter.2 (h)Restoration of Right of Priority

b.  Rule 49.6(f) Reinstatement of Rights after Failure to Perform the

Acts referred to in Article 22 (national phase entry)