The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs

2011

IPO OFFICE ORDER NO. 067-11

 

In line with the mission of the Intellectual Property Office of the Philippines of ". . . enabling and ensuring the effective use of the IP system in all levels of society for the creation, protection, utilization and enforcement of IP" and its strategic goal to deliver quality and timely patents and other registrations, the Director General, pursuant to his authority under Sec. 7.1 of Republic Act No. 8293, hereby promulgates the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs.

Introduction

The Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs (IRR) have been in existence for more than 10 years. The IRR for Patents was approved on December 29, 1998 while the IRR for Utility Models and Industrial Designs were approved on December 2, 1998. Although there were several amendments thereafter, a comprehensive review of the regulations was not conducted. Considering the accumulated experience through years of implementation of the regulations, it is timely to take stock of the learning and incorporate the best practices into the IRR to improve the structure and system of examining and granting patents, utility models and industrial designs. There are procedural aspects that need to be streamlined and substantive aspects that needs clarification. Further, with the recent advent of emerging technologies, such as computer-related inventions, biotechnology, nanotechnology and the likes, the regulations need to provide more fitting parameters and processes for the same.

The draft of the proposed amendments to the IRR was initially prepared by Engr. Feliciano P. del Mundo, Jr., and it was subsequently reviewed by a technical work group comprising of senior examiners from the Bureau of Patents. With inputs coming from experts of various fields, the draft underwent several revisions. It was further revised after consultations with other internal and external stakeholders were conducted on several occasions.

THE REVISED IMPLEMENTING RULES AND REGULATIONS FOR PATENTS, UTILITY MODELS, AND INDUSTRIAL DESIGNS

General Provisions: Title and Construction

Section 1. Title of the Rules

Section 2. Applicability of the Rules

Section 3. Construction of the Rules

Part 1: Definitions

Rule 100. Definitions

Part 2: Patentability

Rule 200. Patentable Inventions

Rule 201. Statutory Classes of Patentable Inventions

Rule 202. Non-patentable Inventions

Rule 203. Novelty

Rule 204. Prior Art

Rule 204.1. Equivalents

Rule 205. Non-prejudicial Disclosure

Rule 206. Inventive Step

Rule 207. Person Having Ordinary Skills in the Art

Rule 208. Industrial Applicability

Part 3: Right to a Patent

Rule 300. Right to a Patent

Rule 301. Who may be named in an Application as an Applicant

Rule 302. Inventions created pursuant to a Commission

Rule 303. Inventions made in the Course of Employment

Rule 304. First-to-File Rule

Rule 305. Right of Priority

Rule 306. Multiple Priorities

Rule 306.1. Multiple Priorities

Rule 306.2. Multiple Priorities

Rule 306.3. Multiple Priorities

Rule 307. Certified Copy of the Foreign Applications

Part 4: The Patent Application

Rule 400. The Patent Application

Rule 401. Payment of Fees

Rule 401.1. Effect of Non-payment of Fees

Rule 402. Marking of Documents; Acknowledgement

Rule 403. Form of Request; Office Application Form

Rule 404. The Request

Rule 405. Disclosure and Description of the Invention

Rule 406. Test for Enabling Disclosure

Rule 406.1. Enabling Disclosure

Rule 407. Contents of the Description

Rule 408. Requirements of Application relating to Biological Materials and Microorganisms

Rule 409. Requirements of Application relating to Biological Materials and Microorganisms before Allowance

Rule 410. Title of the Invention

Rule 411. Abstract of the Disclosure

Rule 412. Prohibited Matter

Rule 413. General Requisites for the Drawings

Rule 414.1. Uniform Standard of Excellence required of Drawings

Rule 414.2. Paper and Ink

Rule 414.3. Size of Drawing Sheet; Imaginary Lines

Rule 414.4. Character and Color Lines

Rule 414.5. The Fewest Possible Number of Lines and Little or No Shading to be Used

Rule 414.6. Scale to which the Drawing is made; Presentation of the Drawings

Rule 414.7. Letters and Figures of Reference

Rule 414.8. Signature, Where to be Placed

Rule 414.9. Position on Drawing Sheets of Large Views

Rule 414.10. Flow Sheets and Diagrams

Rule 414.11. Requisites for the Figure in the IPOPHL E-Gazette

Rule 414.12. Reference Signs

Rule 414.13. Photographs

Rule 414.14. Matters Not Permitted to Appear on the Drawings

Rule 414.15. Drawings Not Conforming to Foregoing Rules to be Accepted Only Conditionally

Rule 415. Claims

Rule 416. Form and Contents of the Claims

Rule 417. Claims incurring Fee

Rule 418. Presentation of the Application Documents

Rule 419. Working Models of the Invention, when Required

Rule 419.1. Requisites for the Model

Rule 419.2. Suspension of Action

Rule 419.3. Material required for the Model; Working Models

Rule 419.4. Models Returned to the Applicant

Rule 419.5. Plant Visit and Inspection

Rule 420. Employment of Attorney-at-Law or Patent Agent Recommended

Rule 421. Appointment of Resident Agent and Representative

Rule 421.1. Agents or Representatives on Record

Rule 422. (a) Decorum and Courtesy Required in the Conduct of Business; (b) Complaints Against Examiners to be on a Separate Paper

Part 5: Who May Apply for a Patent

Rule 500. Who may Apply for a Patent

Rule 501. When the Applicant Dies, becomes insane or incapacitated

Rule 502. Assigned Invention and Patents

Rule 503. Definition of Juridical Person

Rule 504. Proof of Authority

Rule 505. Forms of Signature

Part 6: Filing Date and Formality Examination

Rule 600. Filing Date Requirements

Rule 600.1. Incomplete Application

Rule 600.2. Incomplete Application

Rule 601. According a Filing Date

Rule 602. Late-filed or Missing Drawings

Rule 603. Formality Examination

Rule 604. Unity of Invention

Rule 604.1. Unity of Invention

Rule 605. Requirements for Unity of Invention

Rule 606. Reconsideration for Requirement

Rule 607. Appeal from Requirement for Division

Rule 608. Subsequent Presentation of Claims for Different Inventions

Rule 609. Election of Species

Rule 610. Separate Application for Invention not Elected

Rule 611. Voluntary Divisional Application

Rule 611.1. Term of a Divisional Application

Rule 612. Information concerning Corresponding Foreign Application for Patents

Rule 612.1. Other documents relating to foreign application

Rule 612.2. Non-compliance

Part 7: Classification and Search

Rule 700. Classification and Search

Rule 701. Office shall use the IPC classification

Rule 701.1. Content of the Intellectual Property Search Report

Part 8: Publication and Request for Examination

Rule 800. Publication of Application

Rule 800.1. Early Publication of Patent Application

Rule 801. Confidentiality before Publication

Rule 802. Community Review of Patent Applications

Rule 803. Observation by Third parties

Rule 804. Request for Substantive Examination

Rule 805. Rights conferred by an Application after Publication

Rule 806. Citation of Prior Art References

Rule 806.1. Citation of Prior Art References based on Personal Knowledge

Part 9: Patent Examination Process and Proceedings

Rule 900. Applications Prosecuted Ex Parte

Rule 901. Contest between the Examiner and the Applicant

Rule 902. Official Actions of the Examiner

Rule 903. Conferences and Interviews with the Examiner

Rule 904. An examiner's Refusal is not final

Rule 905. Examiner's Decision Appealable to the Director

Rule 906. Order of Examination

Rule 907. Nature of Examination; Examiner's Action

Rule 908. Completeness of the Examiner's Action

Rule 908.1. Standard Action Form

Rule 909. Refusal of Claims

Rule 910. Unpublished Applications Not Cited

Rule 911. Reply by the Applicant

Rule 912. Re-examination and Reconsideration

Rule 913. Final Refusal or Action

Rule 914. Conversion of Patent Applications to Utility Model Applications

Rule 915. Prohibition Against Filing of Parallel Applications

Amendments by the Applicant

Rule 916. Amendment by the Applicant

Rule 917. Amendments after Final Action of the Examiner

Rule 918. Amendment and Revision Required

Rule 919. Amendment of the Disclosure

Rule 920. Amendment of Claims

Rule 921. Manner of Making Amendments

Rule 922. Entry and Consideration of Amendments

Rule 923. Amendments to the Drawing

Rule 924. Amendment of Amendments

Rule 925. Substitute Description

Rule 926. Numbering of Claims

Rule 927. Petition from Refusal to Admit Amendment

Time for Response by the Applicant; Withdrawal of Application

Rule 928. Withdrawal of Application for Failure to Respond within Time Limit

Rule 929. Revival of Application

Rule 929.1. Revival of Application Without Cost

Rule 930. Voluntary Withdrawal of Application

Rule 931. Reconstitution of Application File Wrappers

Part 10: Grant of Patent

Rule 1000. Grant of Patent

Rule 1001. Contents of Patent

Rule 1002. Publication upon Grant of Patent

Rule 1003. Inspection of published application

Part 11: Term of Patent

Rule 1100. Term of Patent

Rule 1101. Annual Fees

Rule 1102. Date Application is Published

Rule 1103. Non-payment of Annual Fees

Rule 1104. Grace Period

Part 12: Other Proceedings Affecting the Application for Patent

Chapter 1. Recording of Assignment of Letters Patent and Other Instruments affecting Title to Patents, Including Licenses

Rule 1200. Form of Assignment of a Patent or of an Application for a Patent

Rule 1201. Form of other instruments affecting the title to a patent or application including licenses

Rule 1202. Assignment and other instruments to be submitted in duplicate

Rule 1203. Date of recording of assignment or other instruments or licenses considered its date of filing

Rule 1204. Letters Patent may be issued to the Assignee in place of the Applicant

Rule 1205. Action may be taken by the Assignee of Record in Any Proceeding in the Office 

Chapter 2. Surrender, Correction, and Amendment of Patent

Rule 1206. Surrender of Patent

Rule 1207. Correction of mistakes of the office

Rule 1208. Correction of mistakes in the application

Rule 1209. Changes in Patent

Rule 1210. Form and publication of amendments or corrections

Chapter 3. Assignment and Transmission of Rights

Rule 1211. Assignment and Transmission of Rights

Rule 1212. Assignment of Inventions

Rule 1213. Rights of Joint Owners

Part 13: Petitions and Appeal

Rule 1300. Nature of the Function of Examiners

Rule 1301. Petition to the Director to Question the Correctness of the Action of an Examiner on a Matter Not Subject to Appeal

Rule 1302. Appeals to the Director

Rule 1303. Effect of a Final Decision of an Examiner which is Not Appealed

Rule 1304. Time and Manner of Appeal

Rule 1305. Appellant's Brief Required

Rule 1306. The Examiner's Answer

Rule 1307. Appellant's Reply

Rule 1308. Decision of the Director and Appeal to the Director General

Rule 1309. Appellant's Brief Required

Rule 1310. Director's Comment

Rule 1311. Appeal to the Court of Appeals

Part 14: Utility Models

Rule 1400. Registrable Utility Models

Rule 1401. Non-registrable Utility Models

Rule 1402. Industrial Applicability

Rule 1403. Filing Date of Utility Model Application

Rule 1403.1. Incomplete Application

Rule 1403.2. According a Filing Date

Rule 1403.3. Late-Filed or Missing Drawings

Rule 1404. Fees

Rule 1404.1. Effect of Non-payment of Fees

Rule 1405. Registration of Utility Model

Rule 1406. Formality Examination of Utility Model Application

Rule 1407. Applicant's Action on the Formality Examination Report

Rule 1407.1. Working Models of the Utility Model, when Required

Rule 1408. Voluntary Withdrawal

Rule 1409. Final Action

Rule 1410. The Utility Model Application

Rule 1410.1 Title

Rule 1410.2. Technical Field

Rule 1410.3. Background of the Utility Model

Rule 1410.4. Summary of the Utility Model

Rule 1410.5. Brief Description of the Drawings

Rule 1410.6. Detailed Description

Rule 1410.7. Claim

Rule 1410.8. Abstract of the Disclosure

Rule 1411. Claims incurring Fee

Rule 1412. Unity of Utility Model

Rule 1413. Requirement for Restriction; Division

Rule 1413.1. Term of a Divisional Application

Rule 1414. Publication of the Utility Model Application

Rule 1415. Term of Registration of Utility Model

Rule 1416. Cancellation of the Utility Model Registration

Rule 1417. Conversion of Invention Patent Application to a Utility Model Application

Rule 1418. Conversion of an Application for Utility Model Registration to an Invention Patent Application

Rule 1419. Published Patent Application converted to an Application for Utility Model Registration

Rule 1420. Publication Against Filing of Parallel Applications

Part 15: Industrial Designs

Rule 1500. Registrable Industrial Designs

Rule 1501. Non-registrable Industrial Designs

Rule 1502. Requisites for Registrability of Industrial Design

Rule 1503. Degree of Novelty Required

Rule 1504. Filing Date of Industrial Design Application

Rule 1505. Registration of Industrial Design

Rule 1506. Formality Examination of Industrial Design Application

Rule 1507. Applicant's Action on the Formality Examination Report

Rule 1508. Voluntary Withdrawal

Rule 1509. Final Action

Rule 1510. The Industrial Design Application

Rule 1511. Payment of Fees

Rule 1511.1. Effect of Non-payment of Fees

Rule 1512. Specimen

Rule 1513. Special Form of Description for Application for Registration of Industrial Design

Rule 1513.1. Title

Rule 1513.2. Brief Description of the Several Views of the Drawings

Rule 1513.3. Characteristic Feature

Rule 1513.4. Claim

Rule 1514. Special Requirements for the Drawing of an Industrial Design

Rule 1514.1. Requirements for Graphic Representation of Industrial Designs

Rule 1514.2. Use of Broken Lines in the Design Drawings

Rule 1515. Several Industrial Designs in One Application

Rule 1516. Restriction; Division

Rule 1516.1. Term of a Divisional Application

Rule 1517. Publication of the Industrial Design Application

Rule 1518. Term of Industrial Design Registration

Rule 1519. The Renewal Fee

Rule 1520. Cancellation of Design Registration

Rule 1521.1 Grounds for cancellation relating to a part of the industrial design

Part 16: Common Provisions for Utility Models and Industrial Designs

Chapter 1. Registrability

Rule 1600. Novelty; Prior Art

Rule 1601. Non-prejudicial Disclosure

Chapter 2. Right to a Registration

Rule 1602. Right to a Registration

Chapter 3. The Application

Rule 1603. Presentation of the Application Documents

Rule 1604. Prohibited Matter

Rule 1605. Information concerning Corresponding Foreign Application

Rule 1606. Other documents relating to foreign application

Rule 1607. Non-compliance

Chapter 4. Drawings

Rule 1608. Drawings

Chapter 5. Representation; Signatures

Rule 1609. Employment of Attorney-at-Law or Agent Recommended

Rule 1610. Appointment of Resident Agent or Representative

Rule 1611. Decorum and Courtesy Required in the Conduct of Business

Chapter 6. Who may Request for a Registration

Rule 1612. Who may Request for a Registration

Chapter 7. Classification and Search

Rule 1613. Classification and Search

Rule 1614. Unpublished, Withdrawn, and Forfeited Applications not cited

Chapter 8. Amendments by the Applicant

Rule 1615. Amendments by the Applicant

Chapter 9. Time for Response by Applicant; Withdrawal of Application for Failure to Respond within Time Limit

Rule 1616. Time for Response by Applicant; Withdrawal of Application for Failure to Respond within Time Limit

Rule 1617. Reconstitution of Application File Wrappers

Part 17: Adverse Information

Rule 1700. Community Review of the Utility Model and Industrial Design Applications

Rule 1701. Adverse Information

Rule 1702. Decision of the Director

Rule 1703. Registration of Utility Model and Industrial Design without Adverse Information

Part 18: The Certificate of Registration

Rule 1800. Contents of Certificate of Registration

Rule 1801. Inspection of Documents

Part 19: Other Proceedings Affecting the Application or the Registration for Utility Model and Industrial Design

Chapter 1. Assignment, Surrender, Correction, and Amendments of Certificate; Recordal and Transmission of Rights

Rule 1900. Assignment, Surrender, Correction, and Amendments of Certificate; Recordal and Transmission of Rights

Chapter 2. Request for Registrability Report

Rule 1901. Who may request for a Registrability Report

Rule 1902. Contents of the registrability report

Rule 1903. Time within which to issue report

Part 20: Petitions and Appeals

Rule 2000. Petitions and Appeals

Final Provisions

Section 1. Correspondence

Section 2. Fees and Charges to be Prepaid; Fees and Charges Payable in Advance

Section 3. Implementation

Section 4. Repeals

Section 5. Separability

Section 6. Furnishing of Certified Copies

Section 7. Effectivity

ATTACHMENT

The Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs dated April 20, 2011