PCT Applicant's Guide Philippines EQE - Valid as from 31 Oct 2023

GENERAL INFO
RO
ISA
IPEA
BIO
NATIONAL CHAPTER

Materials for the European Qualifying Examination (EQE)
Special edition as of 31 October 2023, prepared for EQE candidates

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau (pct.guide@wipo.int).

List of abbreviations used in this document:

Office: Intellectual Property Office of the Philippines

IP Code: Republic Act No 8293 otherwise known as the Intellectual Property Code of the Philippines

PRo-PCT: Philippine Rules on PCT Applications

Regulations: The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs (as in force from 16 March 2012)

IPO Fee Structure: Rules and Regulations Establishing the Fee Structure of the IPO

List of currencies used in this document:

CHF (Swiss franc), EUR (Euro), PHP (Philippine peso), USD (US dollar)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

Rule 26bis.3(j), Rule 49.6(f), Rule 49ter.1(g), Rule 49ter.2(h)
Refer to the full list.

Office Closed dates

The Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Contracting State:

Philippines

Two-letter code:

Name of Office:

Intellectual Property Office of the Philippines

Location:

G/F, 2/F, 14/F, 16/F Intellectual Property Center
#28 Upper McKinley Road
McKinley Hill Town Center
Fort Bonifacio
Taguig City
1634 Philippines

Mailing address:

Same as above

Telephone:

(632) 7238 63 00

E-mail:

pct@ipophil.gov.ph
mail@ipophil.gov.ph

Website:

http://www.ipophil.gov.ph

Facsimile:

(632) 8856 92 93

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

Competent receiving Office(s) for international applications filed by nationals or residents of this State:

IB,

Does national legislation restrict the filing of international applications with foreign Offices?

Refer to the Office

Competent designated (or elected) Office(s) for this State:

Refer to corresponding National Phase.

Types of protection available via the PCT:

Patents

Utility models (a utility model may be sought instead of a patent)

Availability under the national law for an international-type search (PCT Article 15):

None

Provisional protection after international publication:

In accordance with PCT Article 29(1), as far as the protection of any rights of the applicant under Section 46 of the IP Code is concerned, the international publication in English of an international application shall have the same effect as a publication in the IPO Gazette (under Section 44 of the IP Code and its implementing rules and regulations), provided that notice of the international publication and copy of the international application have been transmitted, pursuant to Section 46.2 of the IP Code, by the applicant to the actual unauthorized user of the invention claimed in the international application.

If the language in which the international publication has been effected is a language other than English, the protection of any rights of the applicant under Section 46 of the IP Code shall be applicable only from such time as a translation into English has been published in the IPO Gazette (under Section 44 of the IP Code and its implementing rules and regulations), and such translation into English has been transmitted, pursuant to Section 46.2 of the IP Code, by the applicant to the actual unauthorized user of the invention claimed in the international application.

Where the international publication has been effected, on the request of the applicant, before the expiration of 18 months from the priority date, the rights provided for under Section 46 of the IP Code shall be applicable only from the expiration of 18 months from the priority date subject to the conditions mentioned in the preceding paragraphs.

Information of interest if this Contracting State is designated (or elected)

Time when the name and address of the inventor must be given:

May be in the request or may be furnished later. If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Are there special provisions concerning the deposit of microorganisms and other biological material?

Yes, refer to Annex L.

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

Philippines

Language in which international applications may be filed:

If the language in which the international application is filed is not accepted by the International Searching Authority (refer to Annex D), the applicant will have to furnish a translation (PCT Rule 12.3).

English,

Filipino

Language accepted for language-dependent free text in the sequence listing:

English or Filipino; or both

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Yes, the Office accepts electronic filing via ePCT-Filing

For the relevant notifications by the Office, refer to the Official Notices (PCT Gazette) dated 7 January 2016, pages 2 et seq. and 11 May 2023, pages 110 et seq.

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the receiving Office”).

Where the international application contains a sequence listing as a separate part of the description, this should be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Competent International Searching Authority:

AU,

EP,

JP,

KR,

PH,

Competent International Preliminary Examining Authority:

AU,

EP ¹,

JP ¹,

KR,

PH,

US ¹

Fees payable to the receiving Office:

Transmittal fee:

4,200 PHP

International filing fee:

1,435 USD

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

Fee per sheet in excess of 30:

16 USD

Reductions (under Schedule of Fees, item 4):

Electronic filing (the request in character coded format):

216 USD

Electronic filing (the request, description, claims and abstract in character coded format):

324 USD

Search fee:

Fee payable in USD

Refer to
Annex D(AU)
Annex D(EP)
Annex D(JP)
Annex D(KR)
Annex D(PH)
Annex D(US)

Fee for priority document (PCT Rule 17.1(b)):

2,700 PHP

Is an agent required by the receiving Office?

No, if the applicant resides in the Philippines
Yes, if the applicant is a non-resident

Who can act as agent?

Any patent agent or representative residing in the Philippines upon whom notices or processes for judicial or administrative procedure may be served

Waiver of power of attorney:

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where the Office receives a notice or communication from a sub-agent appointed by the agent; or from a new agent appointed by the common representative; or the Office receives a notice or communication from an agent or common representative who is appointed by the applicant in replacement of the agent or common representative previously appointed by the applicant; or the Office receives a notice or communication from an agent or a common representative submitting the names of additional applicants not named in the request form.

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex D - International Searching Authority

International Searching Authority competent for the following Receiving Offices:

PH,

Search fee (PCT Rule 16):

This fee is payable to the receiving Office in the currency or one of the currencies accepted by it

561 CHF

564 EUR

600 USD

The amounts below apply where the applicant is a small entity which refers to any natural or juridical person whose assets are worth not more than one hundred million pesos (P100M); 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

187 CHF

188 EUR

200 USD

Additional search fee (PCT Rule 40.2):

600 USD

200 USD

This fee is payable to the International Searching Authority and only in particular circumstances.

Fee for copies of documents cited in the international search report (PCT Rule 44.3):

per document 20 USD

per document 10 USD

How to obtain copies:

The Authority provides applicants with a copy of cited documents in electronic form, free of charge, when transmitting the international search report by e-mail. No copies are provided when the international search report is sent by mail

Copies are available upon request, free of charge, for designated (elected) Offices, by e-mail at:
pct@ipophil.gov.ph

Applicants will be charged the fee mentioned below

Fee for copies of documents contained in the file of the international application (PCT Rule 94.1ter):

per document 20 USD

per document 10 USD

Protest fee (PCT Rule 40.2(e)):

400 USD

200 USD

Late furnishing fee (PCT Rule 13ter.1(c)):

200 USD

100 USD

Conditions for refund and amount of refund of the search fee:

Money paid by mistake, without cause, or in excess, will be refunded

Where the international application is withdrawn or is considered withdrawn, under PCT Article 14(1), (3) or (4), before the start of the international search:
refund of 100%

Where the Authority benefits from an earlier search already made by the Authority, depending on the extent to which the Authority benefits from that earlier search:
refund of 50%

Languages accepted for international search:

English

Does the Authority accept informal comments on earlier search results where an international application claims priority from an earlier application already searched by this Authority?

Types of physical media accepted for the furnishing of nucleotide and/or amino acid sequence listings :

CD-R,

DVD-R

Subject matter that will not be searched:

The subject matter specified in items (i) to (vi) of PCT Rule 39.1, with the exception of any subject matter searched under the patent grant procedure in accordance with the provisions of national patent law of the Philippines

Waiver of power of attorney:

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex E - International Preliminary Examining Authority

International Preliminary Examining Authority competent for the following Receiving Offices:

PH,

Preliminary examination fee (PCT Rule 58):

This fee is payable to the International Preliminary Examining Authority

300 USD

The amount below applies where the applicant is a small entity which refers to any natural or juridical person whose assets are worth not more than one hundred million pesos (P100M); 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

150 USD

This fee is payable to the International Preliminary Examining Authority.

Additional preliminary examination fee (PCT Rule 68.3):

This fee is payable to the International Preliminary Examining Authority and only in particular circumstances.

400 USD

200 USD

Handling fee (PCT Rule 57.1):

216 USD

This fee is payable to the International Preliminary Examining Authority. It is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

Fee for copies of documents cited in the international preliminary examination report (PCT Rule 71.2):

per document 20 USD

per document 10 USD

How to obtain copies:

The Authority provides applicants with a copy of cited documents in electronic form, free of charge, when transmitting the international preliminary examination report by e-mail. No copies are provided when the international preliminary examination report is sent by mail

Copies are available, free of charge, for elected Offices, upon request by e-mail at:
pct@ipophil.gov.ph

Applicants will be charged the fee mentioned above

Fee for copies of documents contained in the file of the international application (PCT Rule 94.2):

per document 20 USD

per document 10 USD

Protest fee (PCT Rule 68.3(e)):

400 USD

200 USD

Late furnishing fee (PCT Rule 13ter.2):

200 USD

100 USD

Conditions for refund and amount of refund of the preliminary examination fee:

Money paid by mistake, without cause, or in excess, will be refunded

In the cases provided for under PCT Rule 58.3:
refund of 100%

If the international application or the demand is withdrawn before the start of the international preliminary examination:
refund of 100%

Languages accepted for international preliminary examination:

English

Subject matter that will not be examined:

The subject matter specified in items (i) to (vi) of PCT Rule 67.1, with the exception of any subject matter examined under the patent grant procedure in accordance with the provisions of national patent law of the Philippines

Waiver of power of attorney:

Has the Authority waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Has the Authority waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

At the time of filing (as part of the application)

— any additional indications:

At the time of filing (as part of the application)

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

To the extent available to the applicant, relevant information on the characteristics of the microorganism

Additional information

Deposits may be made for the purposes of patent procedure before the Intellectual Property Office of the Philippines with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

This time limit can be extended by one month provided the applicant pays an extension fee for late entry into the national phase, equal to 50% of the prescribed filing fee

Under PCT Article 22(1): 30 months from the priority date
Under PCT Article 39(1)(a): 30 months from the priority date

Translation of international application required into (one of) the following language(s):

Must be furnished within the time limit applicable under PCT Article 22 or 39(1)

English

Required contents of the translation for entry into the national phase:

Where the applicant furnishes only a translation of the international application as amended, the Office will invite the applicant to furnish the missing translation of the international application as originally filed. If the translation of the amended part is missing, the Office will not invite the applicant to furnish the missing translation and the amendments will be disregarded

Under PCT Article 22: Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19 ), any text matter of drawings, abstract

Under PCT Article 39(1): Description, claims, any text matter of drawings, abstract (if any of those parts has been amended, both as originally filed and as amended by the annexes to the international preliminary examination report)

Is a copy of the international application required in particular circumstances?

No, where the international application was filed in a language other than English

Yes, where it was filed in English and the applicant has not received Form PCT/IB/308

National fees:

Must be paid at the time of entry into the national phase or within one month from the time of entry into the national phase. Where the national phase is entered after 30 months but not later than 31 months from the priority date, a surcharge will have to be paid

The amount in parentheses is applicable in cases of filing by a “small entity”. A small entity is any natural or legal person whose assets are worth 100 million PHP 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. At the time of payment, any natural or legal person is presumed to be a big entity unless a written statement to the contrary is submitted by such natural person or the duly authorized representative of such legal person

Patents

Filing fee

4,320 PHP

(2,000 PHP)

Utility models

Filing fee

3,600 PHP

(1,720 PHP)

Exemptions, reductions or refunds of fees:

No filing fee is payable if priority of an earlier national application is claimed.

Special requirements of the Office (PCT Rule 51bis):

Appointment of an agent if the applicant is not a resident of the Philippines ²

Copy or translation of the international application to be furnished in duplicate ³

Name and address of the inventor if they have not been furnished in the “Request” part of the international application, ³ ⁴

Instrument of assignment of the international application if the applicant is not the inventor ³ ⁴

Instrument of assignment of the priority application where the applicants are not identical ³ ⁴

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 International Bureau (Form PCT/IB/306) ²

Furnishing, where applicable, of a nucleotide and/or amino sequence listing in electronic form ³

Who can act as agent?

Any patent agent or representative residing in the Philippines upon whom notices and processes for judicial or administrative procedure may be served

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

The procedure in the national Phase

PH.01 FORMS FOR ENTERING THE NATIONAL PHASE

The Office recommends the use of an electronic form for entering the national phase, which is available on the Office’s web site at: https://onlineservices.ipophil.gov.ph/eInventionFile/. This form is used by the Office to identify the application as a national phase entry and to assign an appropriate application number.

PH.02 CORRESPONDENCE

Regulations Final Provisions Section 1
All business with the Office or the Bureau of Patents shall be performed in writing. Actions will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding. All letters and other communications must be addressed to the Director of Patents; if addressed to any other officer, they will ordinarily be returned. In every case, a separate letter shall be written in relation to each distinct subject of inquiry. When a letter concerns an application it shall state the name of the applicant, the title of the invention, the application number and the filing date of the application. When the letter concerns a granted patent, it shall state the name of the patentee, the title of the invention, the patent number and date of issuance.

PH.03 FORM OF SIGNATURES

Regulations Rule 505
Where a signature is required, the Office may accept a hand-written signature; or 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 thumb mark 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 sentence will be required, except where the signature concerns the surrender of a letters patent.

PH.04 REPRESENTATION

IP Code Section 33, Regulations Rule 421, PRo-PCT Rule 7(a), PRo-PCT Rule 7(c)
An applicant who is not a resident of the Philippines shall appoint and maintain an agent or representative residing in the Philippines upon whom notices or processes for judicial or administrative procedure may be served relating to the international application filed with the Office. An applicant who is a resident of the Philippines may likewise appoint and maintain an agent or representative residing in the Philippines for the same purpose.

PH.05 EARLIER NATIONAL APPLICATIONS FROM WHICH PRIORITY IS CLAIMED

PRo-PCT Rule 36
Where the international application claims the priority of an earlier Philippine national application, the applicant should elect which one of the two applications shall be further prosecuted. The applicant may indicate his choice in the form for entering the national phase. Otherwise, the Office will invite the applicant, within one month from the date of entry into the national phase of the international application, to elect only one application for further prosecution within two months from the date of the invitation, or within a longer period which the Office may allow, but not to exceed six months from the date of entry into the national phase.

PH.06 SUBMISSION OF PRIORITY DOCUMENT

PRo-PCT Rule 38.2
If the priority document has not been submitted to the International Bureau in accordance with PCT Rule 17.1(a)-b-(b-bis), the applicant shall submit to the Office a certification from the national Office concerned stating the following data regarding the application the priority of which is claimed: name of the applicant, filing date, application number and title of the application. The certification, and its English translation if not in English, together with the payment of the fee for extension of time to submit the priority document, and the surcharge for late payment provided for in the IPO Fee Structure, shall be submitted within six months from the date of entry into the national phase without need of notice. The certification, and its English translation if not in English, do not require legalization. Failure of the applicant to comply with PRo-PCT Rule 38.2 shall be grounds to disregard the priority claim.

PH.07 STATEMENT CONCERNING CORRESPONDING APPLICATIONS IN OTHER COUNTRIES

IP Code Section 39, Regulations Rule 612, Regulations Rule 612.1, Regulations Rule 612.2
The applicant shall, at the request of the (Director of the Bureau of Patents) Office, furnish the date and number of any application for a patent filed by him abroad 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. 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.

Other documents relating to the foreign application may consist of the following:

(i) a copy of the search reports in English on the corresponding or related foreign application prepared by the European, Japanese or United States Patent and Trademark Offices, by the searching authorities under the Patent Cooperation Treaty or by the office where the first patent application was filed;

(ii) a photocopy of the relevant documents cited in the search report;

(iii) a copy of the patent granted to the corresponding or related application;

(iv) a copy of the examination report or decision on the corresponding or related foreign application; and

(v) other documents which could facilitate adjudication of the application.

PH.08 FEES (MANNER OF PAYMENT)

Regulations Final Provisions Section 2, PRo-PCT Rule 43
The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex PH.I.

PH.09 ANNUAL FEES

IP Code Section 55, Regulations Rule 1100, Regulations Rule 1101, Regulations Rule 1102, PRo-PCT Rule 40(b), IPO Fee Structure, Part II General Provisions Sections 1, Part II General Provisions Sections 2, Part II General Provisions Sections 3, Part II General Provisions Sections 4, Part II General Provisions Sections 5, Part II General Provisions Sections 6
To maintain the patent application or patent, an annual fee shall be paid upon the expiration of four years from the date of the international publication regardless of the language of publication, and on each subsequent anniversary of such date. Payment may be made within three months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled. If an annual fee is not paid within the prescribed time, a notice of non-payment shall be published in the IPOPHLE-Gazette. After publication, a notice shall also be immediately mailed to the patent owner, applicant, or resident agent. Within a grace period of six months from the publication of the notice of non-payment in the IPOPHL E-Gazette, the annual fee plus the prescribed surcharge for delayed payment and the publication fee must be paid in full. In case of failure to pay the annual fee, surcharge, and the publication fee within the grace period, a notice that the application is deemed withdrawn or that the patent is considered as lapsed as of the date following the expiration of the original period within which the annual fee was due, shall be issued and published in the IPOPHL E-Gazette and recorded in the appropriate Register of the Office.

PH.10 CLAIMS FEES

Regulations Rule 417, IPO Fee Structure, Part II General Provisions Section 6
Any application comprising more than five claims, independent and/or multiple/alternative dependent claims at the time of filing, or claims added after the filing date over and above five, incurs payment of a claims fee. The claims fee shall be payable within one month from the date of entry into the national phase. If the claims fees have not been paid in due time, they may still be validly paid within a grace period of one month following a notice from the Office indicating the failure to pay the claims fee. If the claims fee is not paid within the time limit and the grace period referred to in Rule 417, or the claims fee is not fully paid within the time limit prescribed during substantive examination of the application, the claim or claims concerned shall be deemed withdrawn.

PH.11 FEE AND TIME LIMIT FOR REQUESTING EXAMINATION

PRo-PCT Rule 40(c)
There is no need to file a separate request for substantive examination in the case of international applications, but the substantive examination fee has to be paid at the date of entry into the national phase or within six months thereafter. The international application shall be deemed withdrawn if the substantive examination fee is not paid within six months from the date of entry into the national phase. The applicant may use a form for payment provided by the Office for this purpose.

PH.12 FEE FOR GRANT

IP Code Section 50.1, IP Code Section 50.2, Regulations Rule 1000
If the required fees for grant and printing are not paid in due time, the application shall be deemed to be withdrawn.

PH.13 AMENDMENT OF THE APPLICATION; TIME LIMITS

PRo-PCT Rule 35(d), Regulations Rule 916, Regulations Rule 917, Regulations Rule 918, Regulations Rule 919, Regulations Rule 920, Regulations Rule 921, Regulations Rule 922, Regulations Rule 923, Regulations Rule 924, Regulations Rule 925, Regulations Rule 926, Regulations Rule 927
During the national phase, and at any time 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.

PH.14 REQUIREMENTS FOR APPLICATIONS RELATING TO BIOLOGICAL MATERIALS AND MICROORGANISMS

Regulations Rule 408(b)
If the depositary institution and the file number of the culture deposit are not stated in the application at the time of filing the application, the said information shall be submitted within two months from a request by the examiner.

PH.15 REVIEW UNDER ARTICLE 25 OF THE PCT

PRo-PCT Rule 37
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase of the Guide.

PH.16 EXCUSE OF DELAYS IN MEETING TIME LIMITS

Reference is made to paragraphs 6.022 to 6.027 of the National Phase of the Guide.

PH.17 EXTENSION OF TIME LIMITS

Regulations Rule 928(b)
The time limit for reply to an official action requiring a response may be extended only for good and sufficient cause. Any request for such extension must be filed not later than the day on which the response is due. The examiner may grant a maximum of two extensions, provided that the aggregate period granted, inclusive of the initial period allowed to file the response, shall not exceed six months from the mailing date of the official action requiring such response.

PH.18 REVIVAL OF APPLICATION

Regulations Rule 929
An application deemed withdrawn for failure to prosecute may be revived as a pending application within a period of four months from the mailing date of the notice of withdrawal if it is shown to the satisfaction of the Director of the Bureau of Patents that the failure was due to fraud, accident, mistake or excusable negligence. A petition to revive an application deemed withdrawn must be accompanied by showing of a justifiable reason for the failure to prosecute, a complete response, and full payment of the required fee.

PH.19 PETITIONS AND APPEAL

IP Code Section 51, Regulations Rule 1300, Regulations Rule 1301, Regulations Rule 1302, Regulations Rule 1303, Regulations Rule 1304, Regulations Rule 1305, Regulations Rule 1306, Regulations Rule 1307, Regulations Rule 1308, Regulations Rule 1309, Regulations Rule 1310, Regulations Rule 1311
Petitions may be filed with the Director of Patents from any repeated action or requirement of the examiner which is not subject to appeal and in other appropriate circumstances. The final order of refusal of the examiner to grant the patent may be appealed to the Director of the Bureau of Patents.

PH.20 UTILITY MODEL

IP Code Section 108, IP Code Section 109, IP Code Section 111, PRo-PCT Rule 5
In respect of the Philippines as a designated or elected State, an applicant cannot seek two kinds of protection for the same subject, one for a utility model registration and the other for the grant of a patent, whether simultaneously or consecutively.

Regulations Rule 1405, Regulations Rule 1406
All applications for utility models shall be registered without substantive examination provided that all required fees, including fees for excess claims and publication are paid and all formal requirements set forth in the Regulations are complied with. However, applicants may request the Office to prepare a registrability report in accordance with Rules 1901-1903 before initiating infringement proceedings in respect of the registered utility model. The Office shall conduct a formality examination of the application and a report thereon shall be transmitted to the applicant.

PH.21 CONVERSION

IP Code Section 110, Regulations Rule 1417, Regulations Rule 1418
At any time before the grant or refusal of a patent, an application for a patent may, upon payment of the prescribed fee, be converted into an application for registration of a utility model, which shall be accorded the filing date of the initial application. It may be converted only once.

At any time before the grant or refusal of a utility model registration, an application for a utility model registration may, upon payment of the prescribed fee, be converted into a patent application, which shall be accorded the filing date of the initial application.

Annexes

Annex PH.I - Fees

Patents

Pre-examination:

— Filing fee

No filing fee is payable if priority of an earlier national application is claimed (PRo-PCT Rules 35(b) and 40(a))

big entity 4,320 PHP

small entity 2,000 PHP

— For each sheet in excess of thirty (30)

big entity 36 PHP

small entity 18 PHP

— For each claim in excess of five (5)

big entity 360 PHP

small entity 180 PHP

— Request for right of priority

big entity 2,160 PHP

small entity 1,000 PHP

— Request for extension of time to file priority documents

big entity 1,560 PHP

small entity 740 PHP

— Divisional application (for each division)

big entity 4,320 PHP

small entity 2,000 PHP

— Conversion from utility model to patent

big entity 1,440 PHP

small entity 690 PHP

— Additional fee for late entry into the national phase

big entity 2,160 PHP

small entity 1,000 PHP

Examination:

— Request for:

— Extension of time to file response:

— First

big entity 720 PHP

small entity 360 PHP

— Second

big entity 780 PHP

small entity 390 PHP

— Substantive examination

big entity 4,200 PHP

small entity 2,010 PHP

— Revival

big entity 1,200 PHP

small entity 570 PHP

— Revival fee for non-payment of the substantive examination fee

big entity 960 PHP

small entity 920 PHP

— Preparation of amended page(s) of the master copy of the specification and/or claims, per page

big entity 70 PHP

small entity —

Post-examination:

— Amendment or correction in the letters patent (plus publication fee)

big entity 600 PHP

small entity 300 PHP

— Petition for:

— Any amendment or any correction of mistakes in a letters patent of formal and clerical nature without fault of Office

big entity 720 PHP

small entity 360 PHP

— Any amendment or any correction in a letters patent of a substantive nature

big entity 1,800 PHP

small entity 860 PHP

Annual fees:

— for the 5^th year

big entity 3,240 PHP

small entity 1,550 PHP

— for the 6^th year

big entity 4,320 PHP

small entity 2,000 PHP

— for the 7^th year

big entity 5,400 PHP

small entity 2,580 PHP

— for the 8^th year

big entity 6,480 PHP

small entity 3,100 PHP

— for the 9^th year

big entity 8,640 PHP

small entity 4,140 PHP

— for the 10^th year

big entity 10,800 PHP

small entity 5,170 PHP

— for the 11^th year

big entity 13,920 PHP

small entity 6,670 PHP

— for the 12^th year

big entity 17,280 PHP

small entity 8,280 PHP

— for the 13^th year

big entity 20,400 PHP

small entity 9,770 PHP

— for the 14^th year

big entity 24,840 PHP

small entity 11,900 PHP

— for the 15^th year

big entity 29,160 PHP

small entity 13,970 PHP

— for the 16^th year

big entity 33,360 PHP

small entity 15,980 PHP

— for the 17^th year

big entity 37,680 PHP

small entity 18,050 PHP

— for the 18^th year

big entity 45,240 PHP

small entity 21,670 PHP

— for the 19^th year

big entity 54,360 PHP

small entity 26,040 PHP

— for the 20^th year

big entity 65,160 PHP

small entity 26,040 PHP

— Annual fee for each claim in excess of five (5) [5^th to 20^th year] due and payable at the same time as the applicable Annual Fee listed above.

big entity 420 PHP

small entity 210 PHP

— Notice and publication of non-payment of annual fee (minimum; approximately 1/8 page)

big entity 360 PHP

small entity 360 PHP

Utility models

Entity

Pre-examination: Big Small

— Filing fee

big entity 3,600 PHP

small entity 1,720 PHP

— For each sheet in excess of thirty (30)

big entity 36 PHP

small entity 18 PHP

— For each claim in excess of five (5)

big entity 240 PHP

small entity 120 PHP

— Request for right of priority

big entity 1,800 PHP

small entity 860 PHP

— Divisional application (for each division)

big entity 3,600 PHP

small entity 1,720 PHP

— Conversion from patent to utility model

big entity 660 PHP

small entity 330 PHP

— Additional fee for late entry into the national phase

big entity 1,800 PHP

small entity 860 PHP

Examination:

— Request for:

— Extension of time to file response:

— First

big entity 720 PHP

small entity 360 PHP

— Second

big entity 780 PHP

small entity 390 PHP

— Registrability report

big entity 1,320 PHP

small entity 630 PHP

— Revival

big entity 1,200 PHP

small entity 570 PHP

— Preparation of amended page(s) of the master copy of the specification and/or claims, per page

big entity 84 PHP

small entity 84 PHP

Post-examination:

— Amendment or correction to the registration (plus publication fee)

big entity 600 PHP

small entity 300 PHP

— Petition for:

— Any amendment or any correction of mistakes in a registration of formal and clerical nature without fault of Office

big entity 600 PHP

small entity 300 PHP

— Any amendment or any correction of mistakes in a registration of substantive nature

big entity 800 PHP

small entity 400 PHP

How can payment of fees be effected?

The payment of the fees has to be effected in Philippine pesos (PHP). Fees shall be paid on or before the due date prescribed in the IP Code or the rules and regulations. Where no due date is specified, the fees shall be due upon submission or filing of the request for the service or material incurring the fee. Fees shall be paid in cash, money order, bank drafts and/or cheques in Philippine currency. Payments in the form of money order, bank drafts and/or cheques shall be made payable to the Intellectual Property Office of the Philippines

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 presentation and provided that the payment covers the amount due in full.

Subject to the IP Code or the applicable Regulations, the Office may give the person making the payment the opportunity to fully pay the fee or any deficiency within a maximum period of two months from the mailing date of the notice. Failure to pay the full amount shall not result in any refund whatsoever of any amount already paid.

Forms

The following documents are maintained by the Office. Refer to the Office website (Annex B) for latest version and other languages.

Annex PH.II - National phase entry application form

Notes:
¹ ^a ^b ^cThe Office is competent only if the international search is or has been carried out by that Office.
² ^a ^bIf not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.
³ ^a ^b ^c ^d ^eWhere necessary, the Office will invite the applicant to comply with the requirement within a time limit which shall not be less than two months from the date of the invitation.
⁴ ^a ^b ^cThis requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Processing

PH - Philippines
Intellectual Property Office of the Philippines

Useful information

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Annex C - Receiving Office

Annex D - International Searching Authority

Annex E - International Preliminary Examining Authority

Annex L - Deposits of Microorganisms and Other Biological Material

National Phase

Summary of requirements for entry into the national phase

The procedure in the national Phase

Annexes

Processing

PH - Philippines Intellectual Property Office of the Philippines

Error Information Warning Confirmation

PH - Philippines
Intellectual Property Office of the Philippines