MEMORANDUM CIRCULAR NO. 4 SERIES 2002 Clarification as to the Meaning of "Third Party" in Section 25.1, Item (c) of Republic Act. No.8293 Otherwise Known as the Intellectual Property Code of the Philippines. =============================================================================== TO : All Parties Concerned FROM : EPIFANIO M. EVASCO Director, Bureau of Patents DATE : 19 March 2002 =============================================================================== The Intellectual Property Office (IPO) through the Bureau of Patents receives queries as regards what constitute non-prejudicial disclosures under Section 25 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code, for brevity). The specific matter of concern is whether or not the term “third party” mentioned in Section 25.1, item (c) of the IP Code embraces foreign patent offices, including the World Intellectual Property Organization (WIPO) with respect to applications filed through the Patent Cooperation Treaty (PCT). It is noted that the disclosure or publication of applications by foreign patent offices is covered by the general rule on prejudicial disclosures set forth under Section 24 (Prior Art) of the IP Code. Section 25.1, on the other hand, enumerates the exceptions to such general rule. Precisely, the disclosures described under Section 25.1, item (c) are the explicit exceptions to the general rule with respect to the disclosure or publication of applications by foreign patent offices. Hence, the disclosure by a “third party” under Section 25.1, item (c) does not refer to the disclosure or publication of applications by patent offices. Accordingly, the following clarifications are hereby issued: 1. The term “third party” as used in the phrase “third party which obtained information directly or indirectly from the inventor” appearing in Section 25.1, item (c) of the IP Code, excludes all patent offices as well as the WIPO which publishes patent applications filed through the PCT. 2. Any disclosure of information not within the exceptions specified under Sec. 25 shall be considered prejudicial taking into consideration the meaning of a “third party” as defined above. 3. A disclosure that is prejudicial shall have the same adverse effect on novelty whether made before or after a non-prejudicial disclosure. These clarifications apply to all applications filed under the IP Code. For information and guidance. Recommending Approval: Approved: (Sgd.) EPIFANIO M. EVASCO (Sgd.) EMMA C. FRANCISCO Director, Bureau of Patents Director General document reference # 32