IPOPHL expands service for Filipino inventors, starts operation as international authority
waives fees for first hundred requests
Published on May 21, 2019
To expand its service and assistance to Filipino inventors, the Intellectual Property Office of the Philippines (IPOPHL) begins operation as an International Searching Authority and International Preliminary Examining Authority (ISA/IPEA), enabling it to conduct search and preliminary examination of international applications filed under the Patent Cooperation Treaty (PCT) of the World Intellectual Property Organization (WIPO).
“This significant milestone is part of IPOPHL’s effort in building a culture of innovation and creativity. With our expanded service, we’re confident that this will facilitate the entry of Filipino inventions to the global patent system. Given IPOPHL’s competence in search and examination, we are assured of quality patents that have undergone our scrutiny. On top of this, considering the limited resources of Filipino inventors and higher educational institutions, we are waiving search and preliminary examining fees for the first one hundred applicants choosing IPOPHL as the competent ISA/IPEA,” Director General Josephine R. Santiago said.
UP Manila proved to be the first mover to take advantage of IPOPHL’s strengthened capacity as an ISA/IPEA, officially filing the first request for an international search report (ISR) for their PCT invention application on Monday, with funding and assistance from DOST-Technology Application and Promotion Institute (DOST-TAPI).
The request for ISR was received by Atty. Lolibeth R. Medrano, Director of the Bureau of Patents witnessed by Deputy Director Generals Atty. Teodoro Pacsua and Atty. Nelson P. Laluces, IPOPHL officials, and representatives from DOST-TAPI.
“As a Filipino inventor, having an in-country ISA/IPEA closer in proximity and allowing quicker personal communication goes a long way in facilitating international applications. We have a better chance for our inventions to ‘go global’ and be shared with the world,” said UP Manila Technology Transfer & Business Development Office (UPTTBDO) member Dr. Jose B. Nevado Jr.
“For UP Manila, this is a landmark moment. This is the first international application for a patent that our technology transfer office has filed. UP has always been a trailblazer and with this move, we’re living up to that,” added UPTTBDO Director Dr. Lourdes S. Tejero.
It may be recalled that IPOPHL was designated as 2nd international authority in Southeast Asia and 23rd in the world last October 5, 2017 by the PCT Union during the WIPO General Assemblies in Geneva, Switzerland. The PCT facilitates the international filing of patent applications from a member country seeking protection in some or all of the 152 member states.
An applicant filing an international application under the PCT system will have to choose an ISA/IPEA that will conduct search and preliminary examination. The designated authority issues an international search report (detailing existing inventions or research that may affect the originality of invention’s claim, if any) and establishes the first opinion on novelty (newness), inventive step, and industrial applicability of the claimed invention - a crucial step in helping the applicant decide if he will pursue the PCT (international) application at the national phase stage.
In the past, Philippine residents can only choose foreign IP Offices to be their ISA/IPEAs and issue international search reports for PCT applications.
Recognizing the role of the patent system as a driver to further research and innovation, IPOPHL hopes to encourage more Filipino inventors to seek international protection of their inventions, considering the fee waiver program and the office’s upgrading of competence and expertise.
The Bureau of Patents (BOP) will implement the PCT Filing Assistance Program, through which search fees ($ 1000 for big entity, $ 400 for small) and preliminary examination fees ($ 200 for small entities and $ 500 for big entities) will be waived for the first one hundred applicants who choose IPOPHL as the ISA/IPEA
Apart from 1) individual Filipino inventors and 2) HEIs part of IPOPHL’s Innovation and Technology Support Office network, also eligible for this waiver program are 3) foreign applicants from states included in the ‘WIPO List of eligible nationals or residents for 90% reduction in certain PCT fees’ (developing or least-developed countries). The program will be in effect from May 20 to December 31, 2019 or after 100 requests for ISRs have been filed, whichever comes first.
Moreover, the BOP is currently reviewing the resident patent applications filed last year to see if there are potential PCT international applications.
“We will reach out to universities, research and funding institutions as well as inventors to encourage them to leverage on our expanded service, and reap the benefits of their work recognised and protected abroad,” added Bureau of Patents Director Atty. Lolibeth Medrano.
Even after the waiver program, IPOPHL’s regular search fee rate is still the most competitive among IP offices in the region.