NATIONAL PHASE: PATENT COOPERATION TREATY FAQ

What are the types of protection available in the Philippines for PCT applications?

Invention or Utility Model

What is the time limit for entry into the national phase in the Philippines?

Entry into the national phase in the Philippines must be made within thirty (30) months from the earliest priority date or international filing date (if the international application has no priority claim) of the international application.  Subject to the payment of an extension fee for late entry equal to 50% of the filing fee prescribed in the IPO Philippines Fee Structure, the entry into the national phase may be extended by one (1) month.

What are the requirements for entry into the national phase in the Philippines?

Request for national phase entry

  • The use of the National Phase Entry Application Form is recommended.  This Form is available for download at this website.
  • The English translation of the international application if it was filed in another language or a copy of the international application in English as filed if the applicant has not yet received Form PCT/IB/308
  • A copy of the amendments under Article 19 and/or Article 34 (if applicable) in English

What are the fees to be paid?

These are the preliminary national fees to be paid: Invention 

  • Filing fee: PhP 4,320 (big entity) | Php 2,000 (small entity)
  • Fee for each sheet in excess of thirty (30): PhP 36 (big entity) | Php 36 (small entity)
  • Fee for each claim in excess of five (5): PhP 360 (big entity) | Php180 (small entity)
  • Request for right of priority: PhP 2,160 (big entity) | Php1,000 (small entity)
  • Substantive examination fee: PhP 4,200 (big entity) | Php2,010 (small entity)

Utility Model 

  • Filing fee: PhP 3,600 (big entity) | Php1,720 (small entity)
  • Fee for each sheet in excess of thirty (30): PhP 36 (big entity) | 18 (small entity)
  • Fee for each claim in excess of five (5): PhP240 (big entity) | Php120 (small entity)
  • Request for right of priority: PhP 1,800 (big entity) | Php860 (small entity)

The  filing  fee must be  paid within one  (1) month from the  date of national phase entry.

 

A small entity is any natural or juridical person whose assets are worth PhP 100M or less or any entity, agency, office, bureau or unit of the Philippine government including government- owned or controlled corporations, state universities and colleges and government-owned or government-run schools.  On the other hand, a youth filer is any natural person or a group of natural persons all of whom have not reached their twenty-second (22nd) birthday at the time of filing the application.

 

An international application which claims the priority of an earlier Philippine national application shall be exempt from payment of the filing fee.

In what manner can the fees be paid?

Fees shall be paid in cash, money order, bank drafts and/or cheques in

Philippine pesos.

 

Fees shall be considered to have been paid as follows:

a) In case of cash payment: the date of receipt in cash of the amount due in full.

b) In case of money order, cheque or bank draft payment: the date of receipt of the money order, cheque or bank draft provided that the same is honored upon first presentment and provided that the payment covers the amount due in full.

 

Payment transactions shall be made during regular working days and business hours from Monday to Friday 8:00 am to 5:00 p.m. to the IPO Philippines cashier only.  Where any official response, pleading or other document or paper is to be submitted for which a fee is required, the payment shall be made not later than 4:00 p.m. and submission shall nevertheless be made not later than 5:00 p.m.

What are the special requirements of the IPOPHL?

a.  Appointment of an agent or representative if the applicant is not a resident of the Philippines

 

  • Copy  or translation  of the international  application to be furnished in duplicate
  • Name  and address  of the inventor  if they have not  been furnished in the “Request” part of the international application Instrument of assignment of the international application if the applicant is not the inventor
  • Instrument of assignment of the priority application where the applicants are not identical
  • Document  evidencing  a change of  name or person  of the applicant if  the change occurred after the  international filing date and has not been reflected in the PCT pamphlet or in a notification from the IB (Form PCT/IB/306)
  • Furnishing,  where applicable,  of a nucleotide and/or  amino sequence listing in electronic form

 

If not already complied with, the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation. The requirements relating to the instrument of assignments and relating to the information on the inventor may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

How is business conducted with the IPO Philippines?

All business with the Office shall be transacted in writing.  Actions will be based exclusively on the written record. All Office letters must be sent in the name of the Director of Patents.  Letters shall state the name of the applicant, the title of the invention, the application number and the filing date.

Can the time limit for a required response be extended?

The time for reply may be extended only for good and sufficient cause, and for a reasonable time specified.  Any request for such extension must be filed on or before the day on which action by the applicant is due. The Examiner may grant a maximum of two (2) extensions, provided that the aggregate period granted inclusive of the initial period allowed to file the response, shall not exceed six (6) months

from the mailing date of the official action requiring such response.

Can amendments to the application be made?

During the national phase, and at anytime before a patent is granted or refused on the international application, the applicant may present amendments to the specification, claims and drawings in accordance with the IP Code and its implementing rules and regulations.

Can a patent application be converted to a utility model application and vice versa?

At anytime 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 or vice versa, which shall be accorded the filing date of the initial application. An application may be converted only once.

What is the term of a patent in the Philippines?

The term of a patent shall be twenty (20) years from the international filing date of the application.

What is the term of registration of a utility model in the Philippines?

A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application.

What are the important time limits to be observed?

a.  Six (6) months from the date of entry into the national phase

 

Priority document

 

The priority document of a claimed earlier application must be submitted to the IB within sixteen (16) months from the priority date.  If it has not been submitted to the IB within the said time period, it must be submitted to the IPO Philippines, together with payment of fee for extension of time to submit priority document plus surcharge provided for in the IPO Philippines Fee Structure, within  six (6) months from the date of entry into the national phase without need of notice. Failure of the applicant to comply shall be ground to disregard the priority claim.

 

Request for substantive examination

 

The application shall be deemed withdrawn if the request for substantive examination is not made and the substantive examination fee is not paid within six (6) months from the date of entry into the national phase.

 

b.  Four (4) years from the date of the international publication

 

The annual fee of a patent application or patent shall be due and payable on the expiration of four (4) years from the date of the international publication, and on each subsequent anniversary of such date.  Payment may be made within three (3) months before the due date. The obligation to pay the

annual fees shall terminate should the application be withdrawn, refused, or cancelled.

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)