Chapter V

PROCEDURE FOR GRANT OF PATENT

Sec. 40. Filing Date Requirements

       40.1. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements:

            (a) An express or implicit indication that a Philippine patent is sought; 
            (b) Information identifying the applicant; and 
            (c) Description of the invention and one (1) or more claims in Filipino or English. 

       40.2. If any of these elements is not submitted within the period set by the Regulations, the application shall be considered withdrawn. (n) 

Sec. 41. According a Filing Date

       The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing as provided in Section 40 hereof. If the date of filing cannot be accorded, the applicant shall be given an opportunity to correct the deficiencies in accordance with the implementing Regulations. If the application does not contain all the elements indicated in Section 40, the filing date should be that date when all the elements are received. If the deficiencies are not remedied within the prescribed time limit, the application shall be considered withdrawn. (n) 

Sec. 42. Formality Examination

       42.1. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations, the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period, otherwise the application shall be considered withdrawn. 

       42.2. The Regulations shall determine the procedure for the re-examination and revival of an application as well as the appeal to the Director of Patents from any final action by the examiner. (Sec. 16, R.A. No. 165a) 

Sec. 43. Classification and Search

       An application that has complied with the formal requirement shall be classified and a search conducted to determine the prior art. (n) 

Sec. 44. Publication of Patent Application

       44.1. The patent application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen (18) months from the filing date or priority date. 

       44.2. After publication of a patent application, any interested party may inspect the application documents filed with the Office. 

       44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines. (n) 

Sec. 45. Confidentiality Before Publication

       A patent application, which has not yet been published, and all related documents, shall not be made available for inspection without the consent of the applicant. (n) 

Sec. 46. Rights Conferred by a Patent Application After Publication

       The applicant shall have all the rights of a patentee under Section 76 against any person who, without his authorization, exercised any of the rights conferred under Section 71 of this Act in relation to the invention claimed in the published patent application, as if a patent had been granted for that invention: Provided, That the said person had: 

       46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or 

       46.2. Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of a patent on the published application and within four (4) years from the commission of the acts complained of. (n) 

Sec. 47. Observation by Third Parties

       Following the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. (n) 

Sec. 48. Request for Substantive Examination

       48.1. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41, a written request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time. 

       48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. (n) 

Sec. 49. Amendment of Application

       An applicant may amend the patent application during examination: Provided, That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. (n) 

Sec. 50. Grant of Patent

       50.1. If the application meets the requirements of this Act, the Office shall grant the patent: Provided, That all the fees are paid on time. 

       50.2. If the required fees for grant and printing are not paid in due time, the application shall be deemed to be withdrawn. 

       50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. (Sec. 18, R.A. No. 165a) 

Sec. 51. Refusal of the Application

       51.1. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act. 

       51.2. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken. (n) 

Sec. 52. Publication Upon Grant of Patent

       52.1. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations. 

       52.2. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office. (Sec. 18, R.A. No. 165a) 

Sec. 53. Contents of Patent

       The patent shall be issued in the name of the Republic of the Philippines under the seal of the Office and shall be signed by the Director, and registered together with the description, claims, and drawings, if any, in books and records of the Office. (Secs. 19 and 20, R.A. No. 165a) 

Sec. 54. Term of Patent

       The term of a patent shall be twenty (20) years from the filing date of the application. (Sec. 21, R.A. No. 165a) 

Sec. 55. Annual Fees

       55.1. To maintain the patent application or patent, an annual fee shall be paid upon the expiration of four (4) years from the date the application was published pursuant to Section 44 hereof, 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. 

       55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent considered as lapsed from the day following the expiration of the period within which the annual fees were due. A notice that the application is deemed withdrawn or the lapse of a patent for non-payment of any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of the Office. 

       55.3. A grace period of six (6) months shall be granted for the payment of the annual fee, upon payment of the prescribed surcharge for delayed payment. (Sec. 22, R.A. No. 165a) 

Sec. 56. Surrender of Patent

       56.1. The owner of the patent, with the consent of all persons having grants or licenses or other right, title or interest in and to the patent and the invention covered thereby, which have been recorded in the Office, may surrender his patent or any claim or claims forming part thereof to the Office for cancellation. 

       56.2 A person may give notice to the Office of his opposition to the surrender of a patent under this section, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question. 

       56.3. If the Office is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention before that day for the services of the government. (Sec. 24, R.A. No. 165a) 

Sec. 57. Correction of Mistakes of the Office

       The Director shall have the power to correct, without fee, any mistake in a patent incurred through the fault of the Office when clearly disclosed in the records thereof, to make the patent conform to the records. (Sec. 25, R.A. No. 165) 

Sec. 58. Correction of Mistake in the Application

       On request of any interested person and payment of the prescribed fee, the Director is authorized to correct any mistake in a patent of a formal and clerical nature, not incurred through the fault of the Office. (Sec. 26, R.A. No. 165a) 

Sec. 59. Changes in Patents

       59.1. The owner of a patent shall have the right to request the Bureau to make the changes in the patent in order to: 

            (a) Limit the extent of the protection conferred by it; 
            (b) Correct obvious mistakes or to correct clerical errors; and 
            (c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith: Provided, That where the change would result in a broadening of the extent of protection conferred by the patent, no request may be made after the expiration of two (2) years from the grant of a patent and the change shall not affect the rights of any third party which has relied on the patent, as published. 

       59.2. No change in the patent shall be permitted under this section, where the change would result in the disclosure contained in the patent going beyond the disclosure contained in the application filed. 

       59.3. If, and to the extent to which the Office changes the patent according to this section, it shall publish the same. (n) 

Sec. 60. Form and Publication of Amendment

       An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction, authenticated by the seal of the Office and signed by the Director, which certificate shall be attached to the patent. Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the Office shall include a copy of the certificate of amendment or correction. (Sec. 27, R.A. No. 165)