| (as
amended by Order No. 61 series 2001 and Office Order No. 09 series of
2000)
WHEREAS,
the State recognizes that an effective industrial property system is vital
to the development of domestic creativity, facilitates transfer of
technology, attracts foreign investments and ensures market access for our
products;
WHEREAS,
it is the policy of the State to streamline administrative procedures in
granting patents and enhance the enforcement of intellectual property
rights in the Philippines;
NOW,
therefore, pursuant to the provisions of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, the following
rules and regulations on utility models and industrial designs are hereby
promulgated:
PART 1
RULE 10. These
regulations shall be known as the Utility Model and Design
Regulations. [As amended by Office Order No.
09 (2000)]
Definitions
RULE
100. Definitions. Unless
otherwise specified, the following terms shall have the meaning provided
in this Rule:
(a)
"Bureau" means the Bureau of Patents of the Office;
(b)
"Director" means the Director of the Bureau of Patents;
(c)
"Director General" means the head of the Intellectual
Property Office;
(d)
"Examiner" means any officer or employee of the Bureau of
Patents authorized to examine applications. The title or official
designation of such officer or employee may change as the structure of the
Office may be set;
(e)
"IP Code" means Republic Act No. 8293 otherwise known as
the Intellectual Property Code of the Philippines;
(f)
"IPO Gazette" means the Intellectual Property Office's
own publication where all matters required to be published under the IP
Code shall be published;
(g)
"Office" means the Intellectual Property Office; and
(h)
"Regulations" means this set of rules and regulations and
such Rules of Practice as may be formulated by the Director of Patents and
approved by the Director General.
PART
2
Utility
Models
RULE
200. Registrable Utility Models.
Any technical solution of a problem in any field of human activity
which is new and industrially applicable shall be registrable.
RULE
200. 1
Non-Registrable
Utility Models. The following shall be excluded from protection as
utility models:
(a)
Discoveries, scientific theories and mathematical method;
(b)
Schemes, rules and methods of performing mental acts, playing games
or doing business, and programs for computers;
(c)
Methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal body. This
provision shall not apply to products and compositions for use in any of
these methods;
(d)
Plant varieties or animal breeds or essentially biological process
for the production of plants or animals. This provision shall not apply to
microorganisms and non-biological and microbiological processes;
(e)
Aesthetic creations; and
(f)
Anything which is contrary to public order or morality.
RULE
200.2
Industrial Applicability.
A utility model which can be produced and used in any industry shall
be industrially applicable.
RULE
201. Statutory Classes of Utility
Models. A utility model may be, or may relate to
(a)
a useful machine;
(b)
an implement or tool;
(c)
a product or composition;
(d)
a method or process; or
(e)
an improvement of any of the foregoing.
[As amended by Office Order No. 09 (2000)]
RULE
202. First
to File Rule. If two or more persons have made the same utility
model separately and independently of each other, the right to the utility
model registration shall belong to the person who filed an application for
such utility model, or where two or more applications are filed for the
same utility model to the applicant who has the earliest filing date or
the earliest priority date.
RULE
203. Filing Date of Utility Model
Application. The filing date of a utility model application shall
be the date on which the Office received the following requirements:
(a)
A property filled-out request form
for registration as prescribed by the Bureau;
(b)
A description of the Utility Model;
(c)
Claim or claims; and
(d)
Drawings or a pictorial representation disclosing completely the
utility model, if there is/are any.
Without
need of any notice from the office, the filing fee shall be paid within
one (1) month from the date of application was received by the office,
otherwise, the application
shall be deemed forfeited. [As
amended by Office Order No.
09 (2000)]
RULE
204. Right of Priority for Utility
Model. An application for utility model filed by any person who
has previously applied for the same utility model in another country which
by treaty, convention, or law affords similar privileges to Filipino
citizens, shall be considered as filed as of the date of filing the
foreign application: Provided, That: (a) the local application expressly
claims priority; (b) it is filed within twelve [12] months from the date
the earliest foreign application was filed; and (c) a certified copy of
the foreign application together with an English translation is filed
within six [6] months from the date of filing in the Philippines.
RULE
205.
Registration of Utility Model.
A utility model application shall be registered without substantive
examination provided all fees such as filing, excess claims and
publication fees are paid on time and all formal requirements set forth in
these Regulations are filed without prejudice to a determination as
regards its novelty, industrial applicability and whether or not it is one
of the non-registrable utility models. [As
amended by Office Order No.
61 (2001)]
RULE
206.
Formality Examination of
Utility Model Application. The utility model application shall be
classified and examined as to the completeness of the formal requirements
prescribed in these Regulations, and a report thereon shall be transmitted
to the applicant. The formality examination shall take into account the
parts of these Regulations on: (a) the right to a utility model
registration, (b) who may apply for a utility model registration, (c)
filing date requirements and (d) other formality requirements. [As amended by Office Order No. 09( 2000)]
RULE
207.
Applicant's Action on the
Formality Examination Report. Within two (2) months from the
mailing date of the formality examination report, the applicant may: (1)
voluntarily withdraw the application, (2) amend the application, (3)
convert the application to an application for an invention patent, or (4)
upon payment of the required fee, request for a registrability report. [As amended by Office Order No. 09 (2000)]
RULE
207.1.
Voluntary Withdrawal.
The application shall be deemed withdrawn and all files expunged from the
record of the Bureau upon receipt of the applicant's voluntary withdrawal.
RULE
207.2.
Amended Applications.
The amended application shall be classified and subjected to formality
examination. Report thereon shall be submitted to the applicant within two
(2) months from receipt of the amended application. Within two (2) months
from mailing date of the formality examination report on the amended
application, the applicant may: (1) withdraw the application, (2) convert
the same to an application for an invention patent, or (3) upon payment of
the required fee, request for a registrability report. [As amended by Office Order No. 09 (2000)]
RULE
207.3.
Application Converted to an
Application for Inventions Patent. The application or amended
application which is converted into an application for an invention patent
shall be processed as an invention patent application upon receipt of
notice from the applicant.
RULE
207.4. No
Action on the Part of Applicant Where Formal Requirements are Complete.
Where the application meets all the formal requirements for
registrability and the Bureau fails to receive any action from the
applicant, the utility model shall be published upon the expiration of two
(2) months from the mailing date of the formality examination report,
provided the issuance, publication and all required fees have been fully
paid. [As amended by Office Order
No. 16 (2001)]
RULE
207.5. No
Action on the Part of Applicant Where Formal Requirements are not Complete.
Where the application fails to meet any of the formal requirements for
registration and the Bureau fails to receive any action from the
applicant, the application shall be deemed withdrawn and all files thereon
shall be expunged from the records of the Bureau upon the expiration of
two (2) months from the mailing date of the formality examination report.
The Bureau may return to the applicant all the files expunged from its
records.
RULE
207.6.
Registrability Report.
The report shall contain citations of relevant prior art documents
with appropriate indications as to their degree of relevance which will
serve as an aid to the applicant or to third parties including judicial
and quasi-judicial bodies, in the determination of the validity of the
utility model claim(s) in respect to newness. [As amended by Office Order No.
16 (2001)]
The
registrability report shall be given within two (2) months from receipt of
the request and upon payment of fees. If the applicant has requested for a
registrabilty report prior to the publication of the utility model
appliation, the registrabily report shall be included in the publication
of utility model application. [As
amended by Office Order No. 16 (2001)]
RULE
207.7 Non-Payment
of Issuance and Publication Fees. Where the application meets all
the formal requirements for registrability and the applicant fails to pay
the issuance and publication fees within the prescribed period, the
utility model application shall be deemed withdrawn.
[As amended by Office Order No. 09 (2000)]
RULE
207.8 Final
Action. Where the applicant fails to file a complete response to
the formality examination report, any subsequent formality examination
report submitted to the applicant shall be a final action which may be
appealed to the Director of Patents in a manner provided for in these
Regulations. [As amended by Office Order No. 09 (2000)]
RULE
208.
Requirements for Applications
for Utility Model. An application for Utility Model Registration
and other correspondences shall be in Filipino or English and must be
addressed to the Director of the Bureau of Patents.
The
application shall contain the following:
a)
A duly accomplished request for registration as prescribed by the
Bureau,
b)
Description containing the following:
1.
title
2.
technical field
3.
background of the Utility Model
4.
brief description of the several views of the drawings, if any
5.
detailed description
c)
Claim or claims
d)
Drawings, if any
e)
Abstract of the Disclosure
[As amended by Office Order No. 9, (2000),]
RULE
208.1. Title.
The title should be as short and specific as possible, and should
appear as heading on the first page of the specification. Fancy names are
not permissible in the title.
[As amended by Office Order No.09 ( 2000).]
RULE
208.2.
Technical Field. A
statement of the technical field of the art to which the utility pertains.
The statement should be directed to the subject matter of the claimed
utility model.
RULE
208.3.
Background of the Utility
Model. It is a description which indicates the so-called
"background art" constituting the related prior art or state of
the art or known technology for the utility model sought to be registered,
including references to specific documents where appropriate. Where
applicable, the problems involved in the information which may be solved
by the applicant's utility model should be indicated.
RULE
208.4. Brief
Description of the Several Views of the Drawings, if there be any.
Every view of the drawings should be briefly described, and indicated with
corresponding figure numbers.
RULE
208.5.
Detailed Description.
The detailed description must specifically include a complete description
of the manner or making and using the utility model. It must set forth the
precise or exact utility model for which registration is sought, in such
manner as to distinguish the utility model from the prior art it pertains
to and the technical problem solved by the utility model should be
indicated.
RULE
208.6. Claim
or Claims.
a)
The claim(s) must define the subject matter of the utility model
for which registration is sought. Such claim(s) should be clear and
concise and fully supported by the description.
b)
If the utility model application relates to an improvement, the
claim(s) should specifically point out and distinctly claim the
improvement in combination with a preamble statement indicating the prior
art features which are necessary for the definition of the claimed subject
matter.
RULE
209. Unity
of Utility Model. Only one independent genus or generic claim is
permissible in a utility model application. However, specific variations
of the utility model may be claimed in a reasonable number of dependent
claims in a single application, provided such variations fall under a
single statutory class provided in these Regulations and are embodied
under a single general innovative concept. Such specific variations of the
claimed utility model must fall within the scope of the generic claim.
RULE
209.1. Claims Incurring Fee. (a) Any
utility model application comprising more than five (5) claims,
independent and/or multiple/alternative dependent claims at the time of
filing, or added claims after the filing date in respect of each claim
over and above five (5) incurs payment of a claims fee. The claims fee
shall be payable within one (1) month after the filing of the application.
If the claim fees have not been paid in due time, they may still be
validly paid within a grace period of one (1) month from notice pointing
out the failure to observe the time limit. If the claims fee is not paid
within the time limit and the grace period referred to in this Rule, the
claim or claims concerned shall be deemed deleted.
RULE
210.
Requirement for Restriction;
Division. A restriction or division of multiple embodiments in a
utility model application may be deemed proper if such embodiments are
independent and distinct, or can not be considered as specific variations
specified in these Regulations. A divisional application covering the
restricted embodiment(s), if filed during the pendency of the utility
model application, shall be entitled to the benefit of the filing date of
such parent application.
RULE
211. Publication of the Utility Model Application. An application
which meets the formal requirements shall be published in the form of
bibliographic data and representative drawing, if any, in the IPO Gazette.
If an applicant has previously requested for a registrability report, the
publication shall include the registrability report. [As
amended by Office Order No. 61 (2001),]
RULE
211.1 Adverse Information. Effects. Within two (2) months from
publication of the utility model application, any interested party may
request the Director for a registrability report and/or furnish the
Director information, evidence or data in writing and under oath, showing
that the utility model is not new. The Director may require such third
party to submit relevant and collateral facts or data to substantiate the
information. [As amended by Office Order No.
61 (2001),]
Within
two (2) months from receipt of the request and/or adverse information, the
Director shall decide whether or not to register the utility model and
shall issue the registrability report, if one has been requested. The
Director may also issue a registrability report motu proprio within
the same two (2)-month period. [As
amended by Office Order No. 61 (2001),]
In
case the Director refuses or denies the registration of the utility model,
the applicant may appeal such decision to the Director General pursuant to
Section 7.1 (b) of the IP Code and in accordance with Part 7 of these
Regulations. [As amended by Office Order
No. 61 (2001),]
In
case the Director allows the registration of the utility model, any
interested party may file a petition for cancellation with the Bureau of
Legal Affairs in accordance with Section 109.4 of the IP Code and in
accordance with the Regulations on, Inter Partes Proceedings. [As
amended by Office Order No. 61 (2001),]
If
the Director receives no adverse information within the 2-month period, he
shall certify to that effect and direct the preparation and issuance of
the certificate of registration with effect as of the date of publication
of the utility model application. [As
amended by Office Order No. 61 (2001),]
RULE
212. Term
of Registration of Utility Model. A utility model registration
shall expire, without any possibility of renewal, at the end of seventh
year after the date of the filing of the application.
However,
taking into account the first-to-file rule, the volume of pending
applications as of the effectivity of the IP Code and the time that has
elapsed between the effectivity of the IP Code and the effectivity of
these Regulations:
(a)
The registration of Utility Model applications pending at the
effective date of, and proceeded with in accordance with, the IP Code
shall expire, without possibility of renewal, at the end of seven (7)
years from effectivity of these Regulations;
(b)
The registration of utility model applications filed after the
effectivity of the IP Code and pending upon effectivity of these
Regulations shall expire, without possibility of renewal, at the end of
seven (7) years from effectivity of these Regulations.
[As amended by Office Order No. 09 (2000)]
RULE
213.
Cancellation of the Utility
Model Registration. The utility Model registration shall be
cancelled on the following grounds:
(a)
That the utility model does not qualify for registration as a
utility model and does not meet the requirements of novelty and industrial
applicability or it is among non-registrable utility models;
(b)
That the description and the claims do not comply with the
prescribed requirements;
(c)
That any drawing which is necessary for the understanding of the
utility model has not been furnished;
(d)
That the owner of the utility model registration is not the maker
or his successor in title.
RULE
214.
Conversion of Invention
Patent Application to an Application for Utility Model Registration.
At any time before the grant or refusal of a patent for an invention,
an applicant for a patent for an invention may, upon payment of the
prescribed fee, convert his application into an application for
registration of a utility model, which shall be accorded the filing date
of the application. An application may be converted only once.
RULE
215.
Conversion of an Application
for Utility Model Registration to a Patent Application. At any
time before the grant or refusal of a utility model registration, an
applicant for a utility model registration may, upon payment of the
prescribed fee, convert his application into a patent application, which
shall be accorded the filing date of the utility model application.
RULE
216.
Prohibition Against Filing of
Parallel Applications. An applicant may not file two (2)
applications for the same subject, one for utility model registration and
the other for the grant of a patent for an invention whether
simultaneously or consecutively.
PART
3
Industrial
Designs
RULE
300.
Definition of Industrial
Design. An industrial design is any composition of lines or colors
or any three-dimensional form, whether or not associated with lines or
colors: Provided that, such composition or form should give a special
appearance to and can serve as pattern for an industrial product or
handicraft that are new or original.
RULE
301.
Requisites for Registrability
of Industrial Design. In order to be registrable, an industrial
design must be any new or original creation relating to the ornamental
features of shape, configuration, form, or combination thereof, of an
article of manufacture, whether or not associated with lines, patterns or
colors, which imparts an aesthetic and pleasing appearance to the article.
The design which is embodied in any composition of lines, patterns or
colors must be inseparable from the article and cannot exist alone merely
as a scheme of surface ornamentation.
An
article of manufacture is defined as anything which belongs to the useful
or practical art, or any part thereof, which can be made and sold
separately.
Industrial
designs that are dictated essentially by technical or functional
considerations to obtain a technical result or those that are contrary to
public order, health or morals, are not registrable. [As
amended by Office Order No. 09 (2000)]
RULE
301.1.
Requisites for Registrability
Explained. The object of the statute is to encourage the
decorative arts and a design, which merely pleases the eye, is a proper
subject matter for a design registration. That is to say, a registrable
design must not only be new or original, but ornamental as well.
Ornamentation implies beauty, the giving of a pleasing appearance to an
object or article. Registrable design must therefore show a variance which
enhances the aesthetic beauty and attractive appearance of the article and
which significantly differs from known design features or combination of
known design features.
RULE
302.
Degree of Novelty Required.
The standard of novelty established by Sections 23 (Novelty) and 25
(Non-prejudicial disclosure) of the IP Code applies to industrial designs:
provided that the period of twelve (12) months specified in Section 25
shall be six (6) months in the case of designs.
An
industrial design shall not be considered new if it differs from prior
designs only in minor respects that it can be mistaken as such prior
designs by an ordinary observer.
RULE
303. Filing
Date of Industrial Design Application. The Bureau shall accord as
the filing date of an application for industrial design registration the
date on which the Bureau received the following elements:
(a)
Indications allowing the identity of the applicant to be
established; and,
(b)
A representation of the article embodying the industrial design or
a pictorial representation thereof.
If
these requirements are not received by the Bureau upon the filing of the
application, it shall nevertheless accept the application and accord as
the filing date the date on which all the formal requirements for
registration are filed or the mistakes are corrected in accordance with
these Regulations.
RULE
304. First
to File Rule. If two or more persons have made the same design
separately and independently of each other, the right to the design
registration shall belong to the person who filed an application for such
design, or where two or more applications are filed for the same design to
the applicant who has the earliest filing date or the earliest priority
date.
RULE
305. Right
of Priority for Design. An application for design filed by any
person who has previously applied for the same design in another country
which by treaty, convention, or law affords similar privileges to Filipino
citizens, shall be considered as filed as of the date of filing the
foreign application: Provided, That: (a) the local application expressly
claims priority; (b) it is filed within six [6] months from the earliest
filing date of the corresponding foreign application; and (c) a certified
copy of the foreign application together with an English translation is
filed within six [6] months from the date of filing in the Philippines.
RULE
306. Registration of Industrial Design. If the application meets
the requirements of the IP Code and these Regulations, including the
requirement of novelty or originality, the Bureau shall effect the
registration of the industrial design, Provided, that all fees are paid on
time. [As
amended by Office Order No. 61 (2001),]
RULE
307.
Formality Examination of
Industrial Design Application.
The industrial application shall be classified and examined as to the
completeness of the formal requirements prescribed in these Regulations
and a report thereon shall be transmitted to the applicant. The formality
examination shall take into account the parts of these Regulations on: (a)
the right to an industrial design registration, (b) who may apply for an
design registration, (c) filing date requirements and (d) other formality
requirements. [As
amended Office Order No. 09
(2000)]
RULE
308.
Applicant's Action on the
Formality Examination Report and the Search Report. Within two (2)
months from the mailing date of the formality examination report, the
applicant may: (1) voluntarily withdraw the application, (2) amend the
application, or, (3) upon payment of the required fee, request for a
registrability report. [As
amended Office Order No. 09
(2000)]
RULE
308.1.
Voluntary
Withdrawal. The application shall be deemed withdrawn and all
files expunged from the records of the Bureau upon receipt of the
applicant's voluntary withdrawal.
RULE
308.2.
Amended
Applications. The amended application shall be classified and
subjected to formality examination. Report thereon shall be submitted to
the applicant within two (2) months from receipt of the amended
application. Within two (2) months from mailing date of the formality
examination report on the amended application, the applicant may: (1)
withdraw the application, or, (2) upon payment of the required fee,
request for a registrability report. [As
amended Office Order No. 09
(2000)]
RULE
308.3. No Action On The Part Of The Applicant Where Formal Requirements
Are Complete. Where the application meets all the formal requirements
for registrability and the Bureau fails to receive any action from the
applicant, the industrial design application shall be published upon the
expiration of two (2) months from the mailing date of the formality
report, provided the issuance, publication and all the required fees have
been fully paid. [As amended
Office Order No. 61 (2001)]
RULE
308.4.
No
Action on the Part of Applicant where Formal Requirements are not Complete.
Where the application fails to meet any of the formal requirements for
registration and the Bureau fails to receive any action from the
applicant, the application shall be deemed withdrawn and all files thereon
shall be expunged from the records of the Bureau upon the expiration of
two (2) months from the mailing date of the formality examination report.
The Bureau may return to the applicant all the files expunged from its
records.
RULE
308.5. Registrability Report. The report shall contain citations
of
relevant prior art documents with appropriate indications as to their
degree of relevance. It will serve as an aid to the applicant or to third
parties including judicial and quasi-judicial bodies, in the determination
of the validity of the industrial design claim(s) in respect to newness. [As amended
Office Order No. 61 (2001)]
The
registrability report shall be given within two (2) months from receipt of
the request and upon payment of fees. If the applicant has requested for a
registrability report prior to the publication of the industrial design
application, the registrability report shall be included in the
publication of the industrial design application. [As
amended Office Order No. 61
(2001)]
RULE
308.6.
Non-Payment
of Issuance and Publication Fees. Where the application meets all
the formal requirements for registrability and the applicant fails to pay
the issuance and publication for within the prescribed period, the
industrial design application shall be deemed withdrawn.
RULE
308.7.
Final
Action. Where the applicant fails to file a complete response to the
formality examination report, any subsequent formality examination report
submitted to the applicant shall be a final action which may be appealed
to the Director in a manner provided for in these regulations. [As
amended Office Order No.
09(2000)]
RULE
309. The
Application. An application for industrial design registration and
other correspondences shall be in Filipino or English and must be
addressed to the Director of the Bureau.
The
application shall contain the following:
(a)
A completely filled-out request for registration as prescribed by
the Bureau containing the name and address of the applicant or where the
applicant is not the designer, a statement indicating the origin of the
right to the industrial design; and, an indication of the kind of article
of manufacture to which the design shall be applied;
(b)
Specification containing the following:
1.
title;
2.
brief description of the different views of the drawings.
3.
characteristic-feature description of the design;
4.
claim.
(c)
Drawings of the different views of the design showing the complete
appearance thereof including the signature of the applicant or
representative. The Bureau may also accept photographs or other adequate
graphic representation of the design provided the same comply with the
requirements of these Regulations regarding drawings of industrial
designs.
RULE
310. Fees. An application
for an industrial design registration shall be subject to the payment of
the filing fee. The application shall be deemed forfeited if the filing
fee is not paid within one (1) month from the date that the application
was received by the Office. [As
amended Office Order No.
09(2000)]
RULE
311. Specimen. The Bureau of
Patents may require that the application be accompanied by a
"specimen" of the article embodying the industrial design which
requirement shall be subject to the payment of the prescribed fee within
one (1) month from submission of such specimen.
The
specimen is defined as a sample or unit of the industrial product that is
deliberately selected for examination, display or study and chosen as
typical of its kind.
RULE
312. Special Form of Specification
for Application for Registration of Industrial Design. The
application for registration of industrial design shall include a
specification containing the following matters, arranged in the order
hereunder shown:
(a)
Title of the design;
(b)
Detailed description of the several views or figures of the formal
drawings;
(c)
Statement of the characteristic features of the design, if
required; and
(d)
Claim.
RULE
312.1.
Title.
The title of the design must technically designate the particular
article embodying the design.
RULE
312.2.
Brief
Description of the Several Views of the Drawings. Every view of
the drawing should be briefly described, i.e. perspective, front, side,
top, bottom and/or back, and indicated with corresponding figure numbers.
RULE
312.3.
Characteristic-Feature
Description. A characteristic feature statement describing the
particular novel and ornamental features of the claimed design which are
considered to be dominant.
RULE
312.4.
Claim.
The claim shall be in formal terms to the ornamental design for the
article (specifying name) substantially as shown and described. More than
one claim is neither required nor permitted.
RULE
312.5.
Special
Requirements for the Drawing of an Industrial Design. In addition
to the drawings being made in conformity with the common rules laid down
for drawings for utility models and industrial designs, the drawings for
an industrial design must comprise sufficient number of views to
constitute a complete disclosure of the appearance of the article.
Appropriate surface shadings must be used to show the character or contour
of the surfaces represented.
In
case of a color claim, a cross-sectional view of the design may be
required in lieu of surface shading, and the color coding based on the
color chart as prescribed by the Bureau should be applied.
RULE
312.6.
Requirements
for Graphic Representation of Industrial Designs. Graphic
representation of industrial design such as computer aided drawing (CAD)
in lieu of the India Ink Drawing could be accepted provided that such
should be made in conformity with these Regulations particularly with
request to the special requirements for drawing of an industrial design.
RULE
313. Several Industrial Design in
One Application. More than one embodiment of an industrial design
in one application may be permissible in a proper case. A number of
articles presented should not be patentably distinct from each other, and
they should be of substantially similar dominant design features that are
embodied in a single design concept. They must relate to the same subclass
of the International Classification or to the same set or composition of
articles. A "set of articles" which is customarily sold or used
together as a set may be made a proper subject matter in one application
for design registration provided that each article is of, or has, the same
design or a substantially similar design.
RULE
313.1.
Restriction;
Division. A restriction or division of multiple design embodiments
may be deemed proper if two or more independent or distinct designs are
presented in one design application for registration.
RULE
314. Publication of the Industrial Design Application. An
application which meets the formal requirements shall be published in the
form of bibliographic data and representative drawing, if any, in the IPO
Gazette. If an applicant has previously requested for a registrability
report, the publication shall include the registrability report. [As
amended Office Order No.
61(2001)]
RULE
314.1 Adverse Information. Effects. Within two (2) months from
publication of the industrial design application, any interested party may
request the Director for a registrability report and/or furnish the
Director information, evidence or data in writing and under oath, showing
that the industrial design is not new. The Director may require such third
party to submit relevant and collateral facts or data to substantiate the
furnished information. [As
amended Office Order No.
61(2001)]
Within
two (2) months from receipt of the request and/or adverse information, the
Director shall decide whether or not to register the industrial design and
shall issue the registrability report, if one has been requested. The
Director may also issue a registrability report motu proprio within
the same two (2)-month period. [As
amended Office Order No.
61(2001)]
In
case the Director refuses or denies the registration of the industrial
design, the applicant may appeal such decision to the Director General
pursuant to Section 7.1 (b) of the IP -Code and in accordance with Part 7
of these Regulations. [As
amended Office Order No.
61(2001)]
In
case the Director allows the registration, any interested party may file a
petition for cancellation with the Bureau of Legal Affairs in accordance
with Section 120 of the IP Code and in accordance with the Regulations on
Inter Partes Proceedings.
[As amended Office Order No.
61(2001)]
If
the Director receives no adverse information within the 2-month period, he
shall certify to that effect and direct the preparation and issuance of
the certificate of registration with effect as of the date of publication
of the industrial design application. [As
amended Office Order No.
61(2001)]
RULE
315. Term of Industrial Design
Registration. The terms shall be five (5) years from the filing
date of the application and may be renewed for not more than two (2)
consecutive periods of five (5) years each, by paying the renewal fee (Secs.
118.1 and 118.2, R.A. 8293).
However,
taking into account the first-to-file rule, the volume of applications
pending upon the effectivity of the IP Code and the time that has lapsed
between the effectivity of the IP Code and the effectivity of these
Regulations:
(a)
The first term of the industrial registrations filed prior to the
effectivity of, and processed under, the IP Code shall end five (5) years
from the effectivity of these Regulations.
(b)
The first term of the industrial registrations filed under the IP
Code and pending upon the effectivity of these Regulations shall end five
(5) years from the effectivity of these Regulations.
RULE
316. The Renewal Fee. The
renewal fee shall be paid within twelve (12) months preceding the
expiration of the period of registration. A grace period of six (6) months
shall be granted for payment of the fees after such expiration, upon
payment of a surcharge.
RULE
317. Cancellation of Design
Registration. At any time during the term industrial design
registration, any person upon payment of the required fee, may petition
the Director of Legal Affairs of the Office to cancel the industrial
design on any of the following grounds:
(a)
If the subject matter of the industrial design is not registrable
within the terms of Sections 112 and 113 of the IP Code;
(b)
If the subject matter is not new; or
(c)
If the subject matter of the industrial design extends beyond the
content of the application as originally filed.
[As amended Office Order No. 09(2000)]
RULE
317.1.
Where
the grounds for cancellation relate to a part of the industrial design,
cancellation may be effected to such extent only. The restriction may be
effected in the form of an alteration of the effected features of the
design.
PART 4
Common
Provisions
CHAPTER
1
Registrability
RULE
400. Novelty. An industrial
design or utility model shall not be considered new if it forms part of a
prior art.
RULE
401. Prior Art. Prior art
shall consist of:
(a)
Everything made available to the public anywhere in the world
before the filing date or the priority date of the application provided
that the disclosure is contained in printed documents or in any tangible
form.
(b)
The whole contents of an application for a patent for invention,
utility model or industrial design published under Sec. 44 of the IP CODE,
filed or effective in the Philippines, with a filing or priority date that
is earlier than the filing or priority date of the industrial design or
utility model application: Provided, That the application which has
validly claimed priority shall be prior art with effect as of the said
priority date, Provided Further, That the applicant identified in both
applications are not one and the same.
Where
two or more applications are independently filed with respect to the same
industrial design or utility model, and the later applications are filed
before the publication of the first application or earliest application,
the whole contents of such first or earliest application shall be novel
with respect to the later application or applications.
RULE
402. Non-Prejudicial Disclosure.
The disclosure of information contained in the industrial design
application during the six (6) months preceding the filing date or the
priority date of the application or during the twelve (12) months
preceding the filing date or priority date in the case of utility model
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:
(a)
The Maker/Designer;
(b)
A patent office and the information was contained [i] in another
application filed by the maker/designer and should have not been disclosed
by the patent office, or [ii] in an application filed without the
knowledge or consent of the designer by a third party which obtained the
information directly or indirectly from the maker/designer; or
(c)
A third party which obtained the information directly or indirectly
from the maker/designer;
For
the purposes of this Rule "designer" also means any person who,
at the filing date of application, had the right to the industrial design.
[As
amended Office Order No.
09(2000)]
CHAPTER
2
Right
to a Registration
RULE
403. Right to a Registration.
The right to a registration belongs to the maker or designer, his
heirs, or assigns. When two (2) or more persons have jointly made a
utility model or industrial design, the right shall belong to them
jointly.
RULE
404. Who may be Named in an
Application as an Applicant. The application may be filed by the
actual maker(s) or designer(s) or in the name of his heirs, legal
representative or assigns.
RULE
405. Utility Models and Industrial
Designs Created Pursuant to a Commission. The person who
commissions the work shall own the registration, unless otherwise provided
in the contract.
In
case the employee made the invention in the course of his employment
contract, the registration shall belong to:
(a)
The employee, if the activity is not a part of his regular duties
even if the employee uses the time, facilities and materials of the
employer.
(b)
The employer, if the utility model or industrial design is the
result of the performance of his regularly-assigned duties, unless there
is an agreement, express or implied, to the contrary.
RULE
406. Multiple Priorities. An
application can claim more than one priority even from different
countries. If more than one patent priority is claimed, time limits
computed from the priority date will be based upon the earliest priority
date.
RULE
406.1.
If
one or more priorities are claimed, the right of priority shall cover only
those elements of the application which are included in the application or
applications whose priority is claimed.
RULE
406.2.
If
certain elements of the utility model or industrial design for which
priority is claimed do not appear among the claims formulated in the
previous application, priority may nonetheless be granted, provided that
the previous application as a whole specifically disclose such elements.
RULE
406.3.
Where
an application could have claimed the priority of an earlier application,
but when filed, did not contain such priority, the applicant shall be
given two (2) months from the filing date to submit the priority claim.
Submission
of priority claim after the filing of the application shall be accompanied
by a declaration of the applicant stating that the delay in submitting the
priority claim was unintentional.
RULE
407. Certified Copy of the Foreign
Applications. The certified copy of foreign applications on which
the priority claim is based shall be the copy of the application(s) as
duly certified to be a true and faithful reproduction thereof by the
Industrial Property Office which received it or any other office which has
official custody of the foreign application(s).
CHAPTER
3
The
Application
RULE
408 (a).
All papers for an application for a utility model and industrial
design registration which are to become part of the permanent records of
the Office must be the original copy only, and legibly written,
typewritten, or printed in permanent ink only on one side of the sheet. If
necessary, only graphic symbols and characters and chemical or
mathematical formulas may be written by hand or drawn. The typing shall be
1½ spaced. All text matter shall be in characters, the capital letters of
which are not less than 0.21 cm. high, and shall be in dark, indelible
color. [As
amended Office Order No.
09(2000)]
(b) The
documents making up the application shall be on a 29.7 cm x 21 cm paper or
the size of an A4 paper which shall be pliable, strong, white, smooth,
matt and durable.
(c) The
specification and claim(s) of the application must be written with the
lines numbered in sets of five and the number appearing on the left side
margin.
(d) The
description and the claims may contain chemical or mathematical formulas.
The description may contain tables. The claims may contain tables only if
their subject matter makes the use of tables desirable. Tables and
chemical or mathematical formula may be placed sideways on the sheet if
they cannot be presented satisfactorily in an upright position thereon;
sheets on which tables or chemicals or mathematical formulas are presented
sideways shall be so presented that the tops of the tables or formula are
at the left side of the sheet.
(e) Physical
values shall be expressed in the units recognized in international
practice, wherever appropriate in terms of the metric system using system
international (SI) units. Any data not meeting this requirement must also
be expressed in the units recognized in international practice. For
mathematical formula, the symbols in general use shall be employed. For
chemical formula the symbols, atomic weights and molecular formula in
general use shall be employed. In general, use should be made of the
technical terms, signs and symbols generally accepted in the field in
question.
(f) The
terminology and the signs shall be consistent throughout the application.
(g) Each
of the documents making up the application (request for registration,
description, claims, drawings and abstract of the disclosure) shall
commence on a separate sheet. The separate sheets shall be filed in such a
way that they can easily be turned over, and joined together again. [As
amended Office Order No.
09(2000)]
(h) Margins
The
margins of the documents shall be within the following ranges:
Top
2 cm. 4 cm.
Leftside
2.5 cm. 4 cm.
Rightside
2. cm. 3 cm.
Bottom
2 cm. 3 cm.
The
margins of the documents making up the application must be completely
blank.
All
the sheets making up the documents shall have their pages numbered
consecutively using Arabic numeral. The page numbers shall appear in the
central portions of either the top or bottom margins.
(i) The
documents making up the application except the request for grant shall be
filed in four (4) copies.
Rule
408 (j).
Paragraphs (d), (e) and (f) of this Rule shall only be applicable
to utility model applications. [As
amended Office Order No.
09(2000)]
RULE
409. Prohibited Matter. (a)
The application shall not contain:
(i)
a statement or other matter contrary to "public order" or
morality;
(ii)
statement disparaging the products or processes of any particular
person other than the applicant, or the merits or validity of applications
or patents of any such person. Mere comparison with the prior art shall
not be considered disparaging per se; [As
amended Office Order No.
09(2000)]
(iii)
any statement or other matter obviously irrelevant or unnecessary
under the circumstances.
(b) If
an application contains prohibited matter within the meaning of this Rule,
the Bureau shall omit it when publishing the registration, indicating the
place and number of words or drawing omitted.
RULE
410. Information Concerning
Corresponding Foreign Application. The applicant shall, at the
request of the Director, furnish him with the date and number of any
application filed by him abroad, hereafter referred to as the
"foreign application", relating to the same or essentially the
same utility model or industrial design as that claimed in the application
filed with the Office and other documents relating to the foreign
application.
RULE
411. Other Documents Relating to the Foreign Application may Consist of
the Following:
(a)
A copy of the search reports in English on the corresponding or
related foreign application prepared by the European, Japanese or United
States Patent Offices, searching authorities under the Patent Cooperation
Treaty or by the office where the first application was filed.
(b)
Photocopy of the relevant documents cited in the search report;
(c)
Copy of the patent granted to the corresponding or related
application;
(d)
Copy of the examination report or decision on the corresponding or
foreign related application; and
(e)
Other documents which could facilitate registration.
RULE
412. Non-Compliance. 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.
CHAPTER
4
Drawings
RULE
413. General Requisites for the
Drawing. The drawing must be signed by the applicant or the name
of the applicant may be signed on the drawing by his attorney or agent.
The drawing must show every feature of the utility model or industrial
design covered by the claim(s), and the figures should be consecutively
numbered.
RULE
414. Drawing for an Improvement.
When the utility model consists of an improvement of an old machine,
the drawing must exhibit, in one or more views, the utility model itself,
isolated from the old structure, and also, in another view, so much only
the old structure as will suffice to show the relation of the utility
model therewith.
RULE
415. Uniform Standard of Excellence
Suited to Photolithographic Process, Required of Drawings. Unless
and until otherwise notified, the printing of the drawings in the IPO
Gazette is done by the photolithographic process, and therefore the
character of each original drawing must be brought as nearly as possible
to a uniform standard of excellence suited to the requirements of the
process, to give the best results, in the interests of the inventors,
makers and designers, of the Office, and of the public. The following
rules will therefore be strictly enforced, and any departure from them
will be certain to cause delay in the registration of an application.
RULE
416. Paper and Ink. Drawings
must be made upon paper that is flexible, strong, white, smooth, non-shiny
and durable. Two ply or three ply Bristol board is preferred. The surface
of the paper should be calendered and of a quality which will permit
erasure and correction with India ink. India ink, or its equivalent in
quality, is preferred for pen drawings to secure perfectly black solid
lines. The use of white pigments to cover lines is not permissible.
RULE
417. Size of Drawing Sheet;
Imaginary Line. The size of a sheet on which a drawing is made
must be exactly 29.7 cm x 21 cm or the size of an A4 paper. The minimum
imaginary margins shall be as follows: top 2.5 cm; left side 2.5 cm; right
side 1.5 cm; bottom 1 cm. Within this imaginary margin all work and
signatures must be included. One of the shorter sides of the sheet is
regarded as its top, and, measuring downwardly from the imaginary line, a
space of not less than 3 cm is to be left blank for the heading of title,
name, number, and date.
RULE
418. Character and Color Lines.
All drawings must be made with the pen or by a photolithographic
process which will give them satisfactory reproduction characteristics.
Every line and letter (signatures included) must be absolutely black. This
direction applies to all lines, however fine, to shading and to lines
representing cut surfaces in sectional views. All lines must be clean,
sharp, and solid, and they must not be too fine or crowded. Surface
shading, when used, should be open. Sectional shading should be made by
oblique parallel lines, which may be about 0.3 cm apart. Solid black
should not be used for sectional or surface shading. Freehand work should
be avoided whenever possible.
RULE
419. The Fewest Possible Number of
Lines and Little or No Shading to be Used. Drawings should be made
with the fewest lines possible consistent with clearness. By the
observance of this rule the effectiveness of the work after reduction will
be much increased. Shading (except on sectional views) should be used
sparingly, and may even be dispensed with if the drawing be otherwise well
executed. The plane upon which a sectional view is taken should be
indicated on the general view by a broken or dotted line, which should be
designated by numerals corresponding to the number of the sectional view.
Heavy lines on the shade sides of objects should be used, except where
they tend to thicken the work and obscure letter of reference. The light
is always supposed to come from the upper left hand corner of an angle of
45 degrees.
RULE
420. Scale to which Drawing is Made
to be Large Enough. The scale to which a drawing is made ought to
be large enough to show the mechanism without crowding, and two or more
sheets should be used if one does not give sufficient room to accomplish
this end; but the number of sheets must never be more than what is
absolutely necessary.
RULE
421. Letters and Figures of
Reference. The different views should be consecutively numbered.
Letters and figures of reference must be carefully formed. They should, if
possible, measure at least 32 millimeters in height, so that they may bear
reduction to 10.6 millimeters; and they may be much larger when there is
sufficient room. They must be so placed in the close and complex parts of
drawings as not to interfere with a thorough comprehension of the same,
and therefore should rarely cross or mingle with the lines. When
necessarily grouped around a certain part, they should be placed at a
little distance where there is available space, and connected by lines
with the parts to which they refer. They should not be placed upon shaded
surfaces, but when it is difficult to avoid this, blank space must be left
in the shading where the letter occurs, so that it shall appear perfectly
distinct and separate from the work. If the same part of utility model or
industrial design appears in more than one view of the drawing, it must
always be represented by the same character, and the same character must
never be used to designate different parts.
RULE
422. Signature, where to be Placed.
The signature of the applicant should be placed at the lower
right-hand corner within the imaginary margins of each sheet, but in no
instance should they trespass upon the drawings.
RULES
423. Title of the Drawing.
The title should be written with pencil on the back of the sheet. The
permanent name and title constituting the heading will be applied
subsequently by the Bureau of Patents in uniform style.
RULE
424. Position on Drawing Sheets of
Large Views. All views on the same sheet must stand in the same
direction and must, if possible, stand so that they can be read with the
sheet held in an upright position. If views longer than the width of the
sheet are necessary for the proper illustration of the utility model or
industrial design, the sheet may be turned on its side. The space for
heading must then be reserved at the right and the signatures placed at
the left, occupying the same space and position as in the upright views
and being horizontal when the sheet is held in an upright position. One
figure must not be placed upon another or within the outline of another.
RULE
425. Flow Sheets and Diagrams.
Flow Sheets and diagrams are considered drawings.
RULE
426. Requisites for the Figure of
the IPO Gazette. As a rule, only one view of each utility model or
industrial design can be shown in the IPO Gazette illustrations. The
selection of that portion of a drawing best calculated to explain the
nature of the utility model or industrial design or its specific
improvement would be facilitated and the final result improved by
judicious execution of a figure with express reference to the IPO Gazette,
but which must at the same time serve as one of the figures referred to
the specification. For this purpose the figure may be a plan, elevation,
section, or perspective view, according to the judgment of the draftsman.
All its parts should be especially open and distinct, with very little or
no shading, and it must illustrate only the utility model or industrial
design claimed, to the exclusion of all other details. When well executed,
it will be used without curtailment or change, but any excessive fineness
or crowding or unnecessary elaborateness of detail will necessitate its
exclusion from the IPO Gazette.
RULE
427. Reference Signs.
Reference signs not mentioned in the description and claims shall not
appear in the drawings and vice versa. The same features, when denoted by
reference signs, shall throughout the application, be denoted by the same
signs.
RULE
428. Photographs. (a)
Photographs are not normally considered to be proper drawings. Photographs
are acceptable for obtaining a filing date and generally considered to be
informal drawings. Photographs are only acceptable where they come within
the special categories as set forth in the paragraph below.
Photolithographs of photographs are never acceptable.
(b) The
Office is willing to accept black and white photographs or
photomicrographs (not photolithographs or other reproduction of
photographs made by using screens) printed on sensitized paper in lieu of
India ink drawings, to illustrate the inventions which are incapable of
being accurately or adequately depicted by India ink drawings restricted
to the following categories: crystalline structures, metallurgical
microstructures, textile fabrics, grain structures and ornamental effects.
The photographs or photomicrographs must show the utility model or
industrial design more clearly than they can be done by the India ink
drawings and otherwise comply with the rules concerning such drawings.
(c) Such
photographs to be acceptable must be made on photographic paper having the
following characteristics which are generally recognized in the
photographic trade: paper with a surface described as smooth, tint, white,
or be photographs mounted on a proper sized Bristol board.
RULE
429.
Matters not Permitted to
Appear on the Drawings. An agent's or attorney's stamp, or
advertisement or written address shall not be permitted on the drawings.
RULE
430.
Drawings not Conforming to
Foregoing Rules to be Accepted Only Conditionally. A drawing not
executed in conformity to the foregoing rules may be admitted for purposes
of according a filing date only. In such cases, the drawing must be
corrected or a new one furnished within two (2) months from mailing date
of the formality report. Otherwise, the application shall be deemed
withdrawn.
Applicants
are advised to employ competent draftsman to make their drawings.
CHAPTER 5
Representation,
Signatures
RULE
431. Employment of Attorney-at-Law
or Agent Recommended. An applicant or an assignee of the entire
interest may prosecute his own case, but he is advised, unless familiar
with such matters, to employ a competent attorney-at-law or agent, as the
value of patents depends largely upon the skillful preparation of the
specification and claims. The Office cannot aid in the selection of an
attorney-at-law or agent.
RULE
432. Appointment of Resident Agent
or Representative. An applicant who is not a resident of the
Philippines must appoint and maintain a resident agent or representative
in the Philippines upon whom notice or process for judicial or
administrative procedure relating to the application or the registration
may be served.
If
there are two (2) or more agents appointed by the applicant, the Office
shall forward all correspondence to the latest agent appointed. A
substitute or associate attorney may be appointed by an attorney only upon
the written authorization of his principal; but a third attorney appointed
by the second will not be recognized.
RULE
433. Revocation of Power of Attorney.
A power of attorney or authorization may be revoked upon proper
notification to the Director General, and, when revoked, the Office will
notify the attorney or agent of such revocation and shall communicate with
the latest attorney or agent appointed. [As
amended Office Order No.
09(2000)]
RULE
434. Decorum and Courtesy Required
in the Conduct of Business. Applicants, their attorneys or agents
are required to conduct their business with the Office with politeness,
decorum, and courtesy. Applicants who act or persist in acting in
violation of this rule, shall be required to be represented by attorney,
and papers presented containing matter in violation of this Rule will be
submitted to the Director General and returned to the sender, by his
direct order.
CHAPTER
6
Who
may Request for a Registration
RULE
435. Who may Request for a
Registration. Any person, natural or juridical, may request for a
registration. If the applicant is not the maker/designer, the Office may
require him to submit proof of his authority to apply for a registration.
RULE
436. When the Applicant Dies,
Becomes Insane. In case the applicant dies, becomes insane or
incapacitated, the legally appointed administrator, executor, guardian,
conservator, or representative of the applicant, may sign the application
papers and other documents, and apply for and obtain the certification of
registration in the name of the applicant, his heirs or assignee.
RULE
437. Assigned Applications.
In case the whole interest in the utility model or industrial design is
assigned, the application may be filed by or in the name of the assignee
who may sign the application. In case the assignee is a juridical person,
any officer thereof may sign the application in behalf of the said person.
In case of an aliquot portion or undivided interest, any of the joint
owners will sign the application.
RULE
438. Juridical Person Definition.
A juridical person is a body of persons, a corporation, a partnership,
or other legal entity that is recognized by law which grants a juridical
personality separate and distinct from that of a share holder, partner or
member.
RULE
439. Proof of Authority. If
the person who signs the application in behalf of a juridical person is an
officer of the corporation, no proof of authority to file the said
application will be required. However, if any other person signs for and
in behalf of a juridical person, the Office shall require him to submit
proof of authority to sign the application.
If
the applicant appoints a representative to prosecute and sign the
application, the Office shall require proof of such authority.
RULE
440. Forms of Signatures.
Where a signature is required, the Office may accept:
(a)
A hand-written signature; or
(b)
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 thumbmark 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 paragraphs, will be required, except, where the signature
concerns the surrender of a Certificate of Registration.
CHAPTER
7
Classification
and Search
RULE
441. Classification and Search.
An application for utility model or an industrial design shall be
classified and a search conducted to determine the prior art. [As amended
Office Order No. 09(2000)]
RULE
442. Content of the Search Report.
The Search Report is drawn up on the basis of the claims, description,
and the drawings if there is any:
(a)
The search report shall mention those documents, available at the
Office at the time of drawing up the report, which may be taken into
consideration in assessing novelty.
(b)
The search report shall contain the classification of the subject
matter of the application in accordance with the International
Classification.
(c)
The search report may include documents cited in a search
established in the corresponding foreign application.
Upon
payment of the required fees, the Office shall provide a copy of the
Search Report with respect to any published utility model and industrial
design within a maximum period of two (2) months from receipt of the
request. [As amended
Office Order No. 09(2000)]
RULE
443. Confidentiality Before
Publication. A registration, which has not yet been published, and
all related documents shall not be made available for inspection without
the consent of the registrant.
RULE
444. Unpublished, Withdrawn and
Forfeited Applications not Cited. Unpublished, withdrawn and
forfeited applications as such will not be cited as references.
CHAPTER
8
Amendments;
Withdrawal by the Applicant
RULE
445. Amendment by the Applicant.
An applicant may amend the application prior to registration:
Provided, That such amendment shall not include new matter outside the
scope of the disclosure contained in the application as filed.
RULE
446. Amendment and Revision Required.
The description, claim(s) and drawing(s) must be amended and revised
when required, to correct inaccuracies of disclosure and definition or
unnecessary prolixity, and to secure correspondence between the claim(s),
the description and the drawing(s).
RULE
447. Manner of Making Amendments.
Erasures, additions, insertions, or alterations of the papers and
records must not be made by the applicant. Amendments by the applicant are
made by filing a paper in accordance with these Regulations, directing or
requesting that specified amendments be made. The exact word or words to
be stricken out or inserted in the application must be specified and the
precise point indicated where the deletion or insertion is to be made. The
basis of the proposed amendments in the original application as filed
shall be indicated.
RULE
448. Entry and Consideration of
Amendments. (a) Amendments are entered by the Office by making the
proposed deletions by drawing a line in red ink through the word or words
cancelled, and by making the proposed substitutions or insertions in red
ink, small insertions being written in at the designated place and larger
insertions being indicated by reference.
RULE
449. Amendments to the Drawing.
The paper requesting amendments to the drawing should be separate from
other papers. The drawing may not be withdrawn from the Office except for
signature. Substitute drawings will not ordinarily be admitted in any case
unless required by the Office.
RULE
450. Substitute Specification.
If the number or nature of the amendments shall render it difficult to
arrange the papers for printing or copying, the Examiner may require the
entire description or claim(s), or any part thereof, to be rewritten. A
substitute specifications will ordinarily not be accepted unless it has
been required by the Examiner. A substitute specifications may be required
within two (2) months from registration prior to publication of the
registration in the IPO Gazette.
RULE
451. Express Withdrawal of
Application. An application may be expressly withdrawn by filing
in the Office a written declaration of withdrawal, signed by the applicant
himself and the assignee of record, if any, and identifying the
application.
CHAPTER
9
Time
for Response by Applicant; Withdrawal of Application
for
Failure to Respond Within Time Limit
RULE
452. Withdrawal of Application for
Failure to Respond to the Formality Examination Report and the Notice of
Issuance and Publication Fees Within the Prescribed Time Limit.
(a)
If an applicant fails to prosecute his application within the
required time as provided in these Regulations, the application shall be
deemed withdrawn.
(b)
The time for reply may be extended only for good and sufficient
cause, and for reasonable time specified. Any request for such extension
must be filed on or before the day on which action by the applicant is
due. The Examiner may grant a maximum of two (2) extensions, provided that
the aggregate period granted inclusive of the initial period allowed to
file the response, shall not exceed six (6) months from mailing date of
the official action requiring such response.
(c)
Prosecution of an application to save it from being deemed
withdrawn must include such complete and proper action as the condition of
the case may require. Any amendment not responsive to the last official
action shall not operate to save the application from being deemed
withdrawn.
(d)
When the action by the applicant is a bona fide attempt to advance
the case to final action, and is substantially a complete response to the
Examiner's action, but consideration of some matter or compliance with
some requirements has been inadvertently omitted, opportunity to explain
and supply the omission may be given before the question of withdrawal is
considered.
(e)
Prompt ratification or filing of a correctly signed copy may be
accepted in case of an unsigned or improperly signed paper.
RULE
453. Revival of Application.
An application deemed withdrawn for failure to prosecute may be revived as
a pending application within a period of four (4) months from the mailing
date of the notice of withdrawal if it is shown to the satisfaction of the
Director that the failure was due to fraud, accident, mistake or excusable
negligence.
A
petition to revive an application deemed withdrawn must be accompanied by
(1) a showing of the cause of the failure to prosecute, (2) a complete
proposed response, and (3) the required fee.
An
application not revived in accordance with this rule shall be deemed
forfeited. [As
amended Office Order No.
09(2000)]
PART
5
The
Certificate of Registration
RULE
500. Contents of Certificate of
Registration. The Certificate of Registration 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.
RULE
501. Any interested party may inspect the complete description, claims and
drawings on file with the Office.
PART
6
Other
Proceedings Affecting the Application or the Registration
CHAPTER
1
Assignment
RULE
600. Form of Assignment. To
be acceptable for recording, the assignment:
(a)
must be in writing and if in a language other than English or
Filipino, the document must be accompanied by an English translation;
(b)
must be acknowledged before a notary public or other officer
authorized to administer oaths and perform other notarial acts, and be
certified under the hand and official seal of the said notary or other
officer;
(c)
must be accompanied by an appointment of a resident agent, if the
assignee is not domiciled in the Philippines;
(d)
must identify the registration involved by number and date, giving
the name of the registrant and the title of the utility model or
industrial design as set forth in the certificate; in the case of an
application for registration, the application number and filing date of
the application should be stated, giving also the name of the applicant,
and the title of the utility model or industrial design, set forth in the
application, but if an assignment is executed concurrently with or
subsequent to the execution of the application but before the application
is filed, it should adequately identify the application, by its date of
execution and name of the applicant, and the title of the utility model or
industrial design; so that there can be no mistake as to the utility model
or industrial design or application intended; and
(e)
must be accompanied by the required recording and publication fees.
RULE
601. Form of Other Instrument
Affecting the Title to a Registration or Application, Including Licenses.
In order to be acceptable for recording, the form of such other
instrument, including licenses, must conform with the requirements of the
preceding rule.
RULE
602. Assignment and Other
Instruments to be Submitted in Duplicate. The original document of
assignment, together with a signed duplicate thereof, shall be submitted;
but if the original is not available, two certified copies thereof may be
submitted instead. After recording, the Office shall retain the signed
duplicate or one of the certified copies, as the case may be, and return
the original or the other certified copy to the party filing the
assignment, with a notation of the fact of recording.
RULE
603. Date of Receipt of Assignment
or Other Instrument or License Considered its Date of Recording.
The date of recording of an assignment or other instruments is the date of
its receipt at the Office in proper form and accompanied by the full
recording fee.
Rule
604. Certificates may be Issued to
the Assignee in Place of the Applicant. In the case of the
assignment of a pending application for registration, the certificate may
be issued to the assignee of the applicant, provided the assignment has
been recorded in the Office before the actual issue of the certificate.
RULE
605. Action may be Taken by Assignee
of Record in any Proceeding in the Office. Any action in any
proceeding in the Office which may or must be taken by a patentee or
applicant may be taken by the assignee, provided the assignment has been
recorded.
CHAPTER
2
Surrender,
Correction and Amendment of Certificate
RULE
606. Surrender of Certificate.
(a) The owner of the registration, with the written and verified
consent of all persons having grants or licenses or other right, title or
interest in and to the registration and the utility model or industrial
design covered thereby, which have been recorded in the Office, may
surrender his registration, any claim or claims forming part thereof to
the Office for cancellation. The petition for cancellation shall be in
writing, duly verified by the petitioner and if executed abroad shall be
authenticated.
(b) Any
person may give notice to the Office of his opposition to the surrender of
a registration, and if he does so, the Bureau shall notify the proprietor
of the registration and determine the question.
(c) If
the Office is satisfied that the registration may properly be surrendered,
it may accept the offer and, as from the day when notice of his acceptance
is published in the IPO Gazette, the registration shall cease to have
effect, but no action for infringement shall lie and no right compensation
shall accrue for any use of the registered utility model or industrial
design before that day for the services of the government.
RULE
607. Correction of Mistakes of the
Office. Upon written petition, in duplicate, of the patentee or
assignee of record, and upon tender to the Office of the copy of the
registration issued to the patentee, the Director shall have the power to
correct without fee any mistake in a registration incurred through the
fault of the Office when clearly disclosed by the records thereof, to make
the registration conform to the records.
RULE
608. 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
the registration of a formal and clerical nature, not incurred through the
fault of the Office.
RULE
609.Changes in Registration.
The owner of the registration shall have the right to request the Bureau
to make changes in the Certificate 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 were the change would result in
broadening of the extent of the protection conferred by the registration,
no request may be made after the expiration of two (2) years from the
grant of a registration and the change shall not affect the rights of any
third party which has relied on the registration, as published.
RULE
610. Form and Publication of
Amendment or Corrections. An amendment or correction of a
registration 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 registration. Notice
of such amendment or correction shall be published in the IPO Gazette and
copies of the registration furnished by the Office shall include a copy of
the certificate of the amendment or correction.
CHAPTER
3
Recordal;
Transmission of Rights
RULE
611. Transmission of Rights.
Registration and applications for utility models and industrial designs
shall be protected in the same way as the rights of other property under
the Civil Code. Utility models and industrial designs and any right, title
or interest in and to registration and utility models and industrial
designs covered thereby may be assigned, or transmitted by inheritance or
bequest or may be the subject of a license contract.
RULE
612. Assignment. An
assignment may be of the entire right, title or interest in and to the
registration and application for utility models and industrial designs
covered thereby, or of an undivided share of the entire registration and
utility models and industrial designs in which event the parties become
joint owners thereof. An assignment may be limited to a specified
territory.
RULE
613. Recording. The Office
shall record assignments, licenses and other instruments relating to the
transmission of any right, title or interest in and to certificates of
registration or application for utility models and industrial designs,
which are presented in due form to the Office for registration, in books
and records kept for the purpose. The original document together with a
signed duplicate thereof shall be filed and the contents thereof should be
kept confidential. If the original is not available, certified copy
thereof in duplicate may be filed. Upon recording, the Office shall retain
the duplicate, and return the original or the certified copy to the party
who filed the same and notice of the recording shall be published in the
IPO Gazette.
Such
instruments shall be void as against any subsequent purchaser or mortgagee
for a valuable consideration and without notice unless it is recorded in
the Office within three (3) months from the date thereof, or prior to the
subsequent purchase or mortgage.
RULE
614. Rights of Joint Owners.
If two or more persons jointly own a registration and the utility model or
industrial design covered thereby either by the issuance of the
registration in their joint favor or by reason of the assignment of an
undivided share in the registration and utility model or industrial design
or by reason of the succession in title to such share, each joint owner
shall be entitled to personally make, use, sell or import the utility
model or industrial design for his own profit: Provided, however, That
neither of the joint owners shall be entitled to grant licenses or to
assign his right, title or interest or part thereof without the consent of
the other owner or owners, or without proportionately dividing the
proceeds with the other owner or owners.
CHAPTER
4
Request
for Registrability Report
RULE
615. Who May Request For Registrability Report. The applicant
or
any interested party, including judicial and quasi-judicial agencies where
a case is pending involving the utility model or industrial design
concerned, may, upon payment of the required fee, request for
registrability report concerning registered utility model or industrial
design. Judicial and quasi-judicial agencies requesting registrability
report, however, shall be exempt from the payment of fees. [As
amended Office Order No.
61(2001)]
RULE
616. Contents of Registrability
Report. The registrability report concerning a registered utility
model or industrial design shall contain citations of relevant prior art
documents with appropriate indications as to their degree of relevance
which may serve as an aid to the requesting party in the determination of
the validity of the utility model claim(s) or the industrial design claim
in respect to newness.
Where
a registrability report has been issued prior to registration, and
published after registration, of the utility model or industrial design in
accordance with these Regulations, the registrability report issued
hereunder shall be limited to the published registrability report;
Provided, however, That the person requesting for the registrability
report of the registered utility model or industrial design may expressly
request that the registrability report include such other information or
documents that may have arisen after the registration of the utility model
or industrial design.
RULE
617. Time within which to Issue
Report. The registrability report shall be given to the party
requesting within two (2) months from receipt of the request together with
full payment of the required fee.
PART
7
Petitions
and Appeals
RULE
700. Petition to the Director to
Question the Correctness of the Action of an Examiner on Matters of Form.
Petition may be filed with the Director from any repeated action or
requirement of the Examiner on matters of form and in other appropriate
circumstances. Such petition, and any other petition which may be filed,
must contain a statement of the facts involved and the point or points to
be reviewed. Briefs or memoranda, if any, in support thereof should
accompany or be embodied in the petition. The Examiner, as the case may
be, may be directed by the Director to furnish a written statement setting
forth the reasons for his decision upon the matter averred in the
petition, supplying a copy thereof to the petitioner.
RULE
701. Appeals to the Director.
Every applicant may, upon the final refusal of the Examiner to
register, appeal the matter to the Director.
RULE
702. Complaints Against Examiners to
be on Separate Paper. Complaints against Examiners and other
officers must be made in a communication separate from other papers, and
will be promptly investigated.
RULE
703. Effect of a Final Decision of
an Examiner which is not Appealed. A final decision of an Examiner
which is not appealed to the Director within the time permitted, or, if
appealed, the appeal is not prosecuted, shall be considered as final to
all intents and purposes, and shall have the effect of res judicata in
respect of any subsequent action on the same subject matter.
RULE
704. Time and Manner of Appeal.
Any petition or appeal must be taken by filing the petition in
duplicate and payment of the required fee within two (2) months from the
mailing date of the action appealed from, must specify the various grounds
upon which the appeal is taken, and must be signed by the petitioner or
appellant or by his attorney of record. The petition shall include a brief
of the authorities and arguments on which he relies to maintain his
appeal. A third copy of the petition shall be furnished the Examiner. On
failure to file the brief within the time allowed, the appeal shall stand
dismissed.
RULE
705. The Examiner's Answer.
The Examiner shall furnish a written statement in answer to the petition
or appellant's brief, as the case may be, within two (2) months from the
order of the Director directing him to submit such statement. Copy of such
statement shall be served on the petitioner or appellant by the Examiner.
RULE
706. Appellant's Reply. In
case of an appeal, the appellant may file a reply brief directed only to
such new points as may be raised in the Examiner's answer, within one (1)
month from the date copy of such answer is received by him.
RULE
707. Appeal to the Director General.
The decision or order of the Director shall become final and executory
fifteen (15) days after receipt of a copy thereof by the appellant unless
within the said period, a motion for reconsideration is filed with the
Director or an appeal to the Director General has been perfected by a
filing a notice of appeal and payment of the required fee.
Only
one motion for reconsideration of the decision or order of the Director
shall be allowed.
RULE
708. Appellant's Brief Required.
The appellant shall, within one (1) month from the date of filing of
the notice of appeal, file a brief of the authorities and arguments on
which he relies to maintain his appeal. On failure to file the brief
within the time allowed, the appeal shall stand dismissed.
RULE
709. Director's Comment. The
Director shall submit within one (1) month his comments on the appellant's
brief if so required by the Director General.
RULE
710. Appeal to the Court of Appeals.
The decision of the Director General shall be final and executory
unless an appeal to the Court of Appeals is perfected in accordance with
the Rules of Court applicable to appeals from decisions of Regional Trial
Courts. No motion for reconsideration of the decision or order of the
Director General shall be allowed.
Final
Provisions
SECTION
1.
Correspondence. The
following regulations shall apply to correspondence between
registrant/applicant and the Office or the Bureau:
(a)
Business to be transacted in writing. All business with the Office
or Bureau shall be transacted in writing. Actions will be based
exclusively on the written record. No attention will be paid to any
alleged oral promise, stipulation, or understanding.
(b)
Personal Attendance of Applicants and Other Persons Unnecessary.
Unless otherwise provided, the personal attendance of applicants and other
persons at the Office is unnecessary. Their business can be transacted by
correspondence.
(c)
Correspondence to be in the Name of the Director of Patents. All
Office letters with respect to matters within the jurisdiction of the
Bureau must be sent in the name of the Director of Patents. All letters
and other communications intended with respect to such matters must be
addressed to him and if addressed to any other officer, they will
ordinarily be returned.
(d)
Separate letter for each case. In every case, a separate letter
shall be written in relation to each distinct subject of inquiry.
(e)
Letter relating to applications. When a letter concerns an
application it shall state the name of the applicant, the title of the
utility model or industrial design, the application number and the filing
date of the application.
(f)
Letters relating to registered utility model or industrial design.
When the letter concerns a registered utility model or industrial design,
it shall state the name of the patentee, the title of the utility model or
industrial design, the registration number and date of issuance.
(g)
Subjects on which information cannot be given. The Office cannot
respond to inquiries as to the newness of an alleged utility model or
industrial design desired to be patented in advance of the filing of an
application for a patent.
On
the propriety of making an application for the registration of utility
model or industrial design, the applicant must judge for himself or
consult an attorney-at-law or patent agent. The Office is open to him, and
its records pertaining to all patents granted may be inspected either by
himself or by any attorney or agent he may call to his aid. Further than
this the Office can render him no assistance until his Application comes
regularly before it in the manner prescribed by law and by these
Regulations. A copy of the law, rules, or circular of information, with a
section marked, set to the individual making an inquiry of the character
referred to, is intended as a respectful answer by the Office.
Examiners'
digests are not open to public inspection.
The
foregoing shall not, in any way, be interpreted to prohibit the Office
from undertaking an information dissemination activity in whatever format,
to increase awareness on the patent law.
SECTION
2. Fees
and Charges to be Prepaid; Fees and Charges Payable in Advance.
Express charges, freight, postage, telephone, telefacsimile including cost
of paper and other related expenses, and all other charges on any matter
sent to the Office must be prepaid in full. Otherwise, the Office shall
not receive nor perform any action on such matters.
The
filing fees and all other fees and charges payable to the Office shall be
collected by the Office in advance of any service to be rendered.
SECTION
3.
Formality and Search Report
Covering Pending Applications. (a) With respect to applications
for utility model or industrial design registrations which were filed on
or before December 31, 1998 and being proceded with under the IP Code on
January 1, 1998, the Formality Report and the Search Report shall be
issued by the Chiefs of the Mechanical and Electrical Examining and the
Chemical Examining Divisions of the former Bureau of Patents, Trademarks
and Technology Transfer on or before January 31, 1999.
(b) With
respect to applications for utility model or industrial design
registrations which were filed on or before December 31, 1998 and being
proceded with in accordance with the Acts under which they were filed as
elected by the applicants pursuant to Memorandum Order No. 1040 issued on
December 16, 1997 by the Secretary of Trade and Industry, the results of
the formality examination as well as the search thereon will be
communicated to the applicant in accordance with the Rules of Practice in
Patent Cases, as amended. However, in order to avoid any potential
conflict between such applications and those filed under the IP Code, the
Chiefs of the Mechanical and Electrical and the Chemical Examining
Divisions shall issue the office actions covering the results of the
formality and the search thereon on or before January 31, 1999.
Furthermore, said applications may still be proceeded with in accordance
with these Regulations by filing a written notice to the Office together
with an express statement of the applicant's action in accordance with
Rule 207 or Rule 308 of these Regulations, as the case may be.
SECTION
4.
Duration of Utility Model and
Industrial Design Registration of Pending Applications.
Considering the time that has lapsed since the filing of the applications
under the former Acts but are proceded with in accordance with these
Regulations as well as the time that has lapsed since the effectivity of
the IP Code, the following rules shall govern the determination of
duration of pending applications:
(a)
The registration of utility model applications that were filed
under the IP Code prior to the effectivity of these Regulations and
applications that were filed under the former Acts but proceded with in
accordance with these Regulations shall expire, without possibility of
renewal, at the end of the seventh year from the effectivity of these
Regulations.
(b)
The registration of industrial design applications that were filed
under the IP Code prior to the effectivity of these Regulations and
applications that were filed under the former Acts but proceded with in
accordance with these Regulations shall for a period of five (5) years
from the effectivity of these Regulations, subject to renewal as provided
in the IP Code and these Regulations.
SECTION
5.
Implementation. In
the interest of the service, until the organization of the Bureau is
completed, the functions necessary to implement these Regulations shall be
performed by the personnel of the former Bureau of Patents, Trademarks and
Technology Transfer as may be designated by the Director General upon the
recommendation of the Chiefs of the Chemical Examining Division and the
Mechanical and Electrical Examining Division of the Bureau of Patents,
Trademarks and Technology Transfer, or the Director of Patents if one has
been appointed and qualified or the Caretaker or the Officer-in-Charge as
the Director General may designate.
SECTION
6.
Repeals. All rules
and regulations, memoranda, circulars, and memorandum circulars and parts
thereof inconsistent with these Regulations particularly the Rules of
Practice in Patent Cases, as amended, are hereby repealed and all
applications for utility models or industrial design pending at the
effective date of the IP Code on January 1, 1998 shall be proceeded with
in accordance with the IP Code and these Regulations unless pursuant to
Memorandum Order No. 1040 dated December 16, 1997 issued by the Secretary
of Trade and Industry, the applicants elected, on or before June 30, 1998,
to prosecute said applications in accordance with the Acts under which
they were filed.
SECTION
7.
Separability. If any
provision in these Regulations or application of such provision to any
circumstance is held invalid, the remainder of these Regulations shall not
be effected thereby.
SECTION
8.
Furnishing of Certified
Copies. Mr. Eduardo Joson, Records Officer II, is hereby directed
to immediately file three (3) certified copies of these Regulations with
the University of the Philippines Law Center, and, one (1) certified copy
each to the Office of the President, the Senate of the Philippines, the
House of Representatives the Supreme Court of the Philippines, and the
National Library.
SECTION
9.
Effectivity. These
rules and regulations shall take effect fifteen (15) days after
publication in a newspaper of general circulation.
Done
this 2nd day of December 1998.
(Sgd.)
EMMA C. FRANCISCO, Director General |