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Patent FAQs

PRE-FILING

A Patent is a grant given by the government to inventors/applicants in return for disclosing an Invention. It is a legal right to exclusively exploit the invention for the life of the patent. The term of protection for a Patent is (20) years from the date of filing in the Philippines, with no possibility of renewal.

No, an idea of a new invention alone cannot be patented. To qualify for patent
protection, an invention has to be applied to a product or process. For an invention to
be patentable, it should meet the three criteria: it must be new, involves an inventive
step and is industrially applicable.

A Patentable Invention is any technical solution to a problem in any field of human activity which is new, inventive, and useful. An Invention may relate to a product (e.g. machine, device, an article of manufacture, a composition of matter, a microorganism), process or method, (e.g. a method of use, method of manufacturing, a non-biological process, a microbiological process), computer-related inventions, and improvement of any of the foregoing.

It is not possible to obtain patent protection for the mere outward appearance of an
article, that is, a shape configuration, pattern or ornamentation because a patent
protects the functional application of a product. Instead, an Industrial Design
registration may be a more appropriate option.

However, if the outward appearance has a functional application as opposed to a
mere visual purpose, it may be possible to obtain patent protection, subject to the
patentability requirements of novelty, inventive step and industrial application.

The Office cannot give any legal advice to applicants on any subject, which includes
the patentability of an invention. If you have difficulty ascertaining the patentability of
your invention or other legal requirements, you should consider seeking professional
advice from a patent agent or an IP practitioner.

A patent is an exclusive right that gives the inventor the right to exclude others from making, using, or selling the product of his invention during the life of the patent. Patent owners may also give permission to, or license, other parties to use their inventions on mutually agreed terms. Owners may also sell their invention rights to someone else, who then becomes the new owner of the patent.

Yes, you can commercialize or use your invention without patent protection.
However, once your invention is made known to the public, you may not be able to
obtain a patent if you decide to apply for protection later because your invention can
no longer be considered new.

The Intellectual Property Code of the Philippines sets three conditions for an invention to be deemed patentable: it has to be:

1. New (if it already forms part of the domain of prior art.  Prior art is explained in the Intellectual Property Code of the Philippines, Chapter 2,  Section 24 - 24.2)

2. Involves an inventive step (An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention.)

3. Industrially applicable (An invention that can be produced and used in any industry is considered industrially applicable.)

Meanwhile, the following are considered non-patentable: 

1.Discoveries, scientific theories and mathematical methods

2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

3. 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 composition for use in any of these methods;

4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes.

5. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection:

6. Aesthetic creations; and

7. Anything which is contrary to public order or morality.

You can request for a grant of a patent by filing through our main office or by filing online through the eInventionFile System

eInventionFile System is an Internet-based service of IPOPHL for the online filing of new Patent applications without physically transacting with the IPOPHL office or its satellite offices (IPSOs).

There is no need for registration or signing up to access eInventionFile System to file for a patent application online. The online service is accessible to everyone as long as the applicant or agent has an internet connection and an active email address.

Whether the application is filed at the main office or online via the eInvention System, the applicant can be any individual or juridical entity may file a patent application. For applicants who are non-residents of the Philippines, they should appoint a Resident Agent or Patent Attorney.

The grant of Letters Patent is not automatic. Your invention must pass the test for patentability:

  • Novelty;
  • Inventive Step; and
  • Industrial Applicability.

A well-drafted patent application with a carefully crafted set of claims will increase your chances for a patent grant. If you are an under-resourced inventor, you may check out our Inventor Assistance Program and see if you are qualified to be paired with a pro bono patent agent for free advice.

IPOPHL has several programs in place to provide assistance to local applicants, particularly small entities. In general, our filing fees for small entities are lower than regular published rates charged to big entities.

Click here for the Schedule of Patent-related Fees.

FILING

  1. Online Filing

All PDFs must be full text searchable prior to uploading into the system. Parties are encouraged to use the “Convert to PDF” function for MS Office files to ensure the PDF is full text searchable. For hard copies, they must be scanned and saved as PDF.

Documents must be formatted for electronic filing into Portable Document Format (PDF) and the file name is required as follows:

Application Type

Requirements

PCT 

  • International Application Information (e.g. International Application Number, International Publication Number)

PCT Divisional

  • International Application Information (e.g. International Application Number, International Publication Number) 
  • Relevant Claims for the Divisional Application (PDF); 
  • Parent Application Details (Parent Application Number and Filing Date)

Direct Route

  • Specification covering the disclosure of the application (PDF); 
  • Abstract covering the summary or gist of the application (PDF);
  • Claims covering the protection sought to be patented (PDF);
  • Drawings, if any (PDF); and 
  • Sequence Listing, if any (PDF). 

Direct Divisional

  • Specification covering the disclosure of the application (PDF); 
  • Abstract covering the summary or gist of the application (PDF); 
  • Relevant Claims for the Divisional Application (PDF); 
  • Parent Application Details (Parent Application Number and Filing Date); 
  • Drawings, if any (PDF); and
  • Sequence Listing, if any (PDF).

2. In-Person Filing

A. Three (3) filled out copies of the Patent Application Form

B. Specification and description of the patent:

  • The Title
  • A brief statement of its nature and purposes
  • Brief explanation of the drawings, if any
  • Complete and detailed enabling description
  • Distinct and explicit claim or claims which the applicant seeks to be protected
  • Abstract of the invention

C. Drawings of the invention

No. The eInventionFile System is provided free from service fee. The only fees that will be required are those associated with Patent application filing such as filing fee, excess claim fee, and priority claims.

  • Php2,020 (Small entities with 100M worth of assets or less) 
  • Php4,363.2 (Big entities with more than P100M worth of assets)

Note: Filing Fees are inclusive of 1% Legal Research Fund (LRF). Other charges may apply depending on the progress of your application

Yes. You have the option of saving a draft of your application when using the Patent eFiling online service. This option saves the draft as an XML file on your computer by means of the 'Save my Application' button. If you would like to make changes to a saved application you will need to resume the transaction with the eInventionFile System using the 'Open my saved Application' button.

Please note that saved drafts will expire after fourteen (14) days, at which point you will have to begin again. We strongly discourage you from relying on only these drafts to record the information they enter into your application.

The eInventionFile System is preferably supported by the latest versions of Internet Explorer, Firefox and Google Chrome. Please take note that to ensure session security, cookies can be disabled.

The online service is available 24/7, except when the system is under maintenance. Maintenance schedule will be posted at the IPOPHL website and our social media pages.

No. Our satellite offices are not receiving offices for manual filing but our satellite officers can provide assistance with your online filing.

No. The electronic application containing all the information and the attachments supplied by the applicant or the applicant’s representative will be automatically uploaded into the IPOPHL Database. Please make sure that you have provided all the necessary information when you file the application online. In the event, however, that submission of paper copies of documents attached in the electronic filing are deemed necessary the applicant or representative shall be notified by the IPOPHL.

An electronic copy of the Statement of Account (SOA) and a PDF copy of the application form will be sent to the email account of the applicant or agent in real-time to confirm the completion of transaction.

 If you did not receive any email correspondence relating to your online application, you may email us at verify@ipophil.gov.ph

No. You have to hire a resident agent or an authorized representative in the Philippines who will file the application on behalf of you or your company. A copy of the Special Power of Attorney or Appointment of Resident Agent should be attached in the online application by your representative.

Documents must be formatted for electronic filing into Portable Document Format (PDF preferably searchable) and the file name is required as follows:

Application Type

Optional Requirements

PCT Application

  • Specification covering the disclosure of the application; 
  • Abstract covering the summary or gist of the application; 
  • Claims covering the protection sought to be patented; 
  • Drawings, if any; 
  • Sequence Listing if any;
  • Priority Document/s and the English translation if the document is not in English; 
  • Deed of Assignment; 
  • Special Power of Attorney;
  • Declaration of the applicant’s small entity status as required in Sec. 5.3 of IPOPHL Memorandum Circular No. 16-012 Series of 2016. (Effective 01 Jan 2017); 
  • Amendments 
    • Under PCT Article 19
    • Under PCT Article 34
  • International Search Report;
  • International Preliminary Examination; and 
  • PCT/IB/304. 

PCT Divisional Application 

  • Specification covering the disclosure of the application;
  • Abstract covering the summary or gist of the application;
  • Drawings, if any; 
  • Sequence Listing if any;
  • Priority Document/s and the English translation if the document is not in English; 
  • Deed of Assignment; 
  • Special Power of Attorney;
  • Declaration of the applicant’s small entity status as required in Sec. 5.3 of IPOPHL Memorandum Circular No. 16-012 Series of 2016. (Effective 01 Jan 2017); 
  • Amendments 
    • Under PCT Article 19 
    • Under PCT Article 34 
  • International Search Report; 
  • International Preliminary Examination; and 
  • PCT/IB/304. 

Direct Route Application

  • Priority Document/s and the English translation if the document is not in English; 
  • Other documents that are deemed necessary to prosecute the application before IPOPHL including the Special Power of Attorney and Deed of Assignment; and 
  • Declaration of the applicant’s small entity status as required in Sec. 5.3 of IPOPHL Memorandum Circular No. 16-012 Series of 2016. (Effective 01 Jan 2017). 

Direct Route Divisional Application

  • Priority Document/s and the English translation if the document is not in English; Other documents that are deemed necessary to prosecute the application before IPOPHL including the Special Power of Attorney and Deed of Assignment; and 
  • Declaration of the applicant’s small entity status as required in Sec. 5.3 of IPOPHL Memorandum Circular No. 16-012 Series of 2016. (Effective 01 Jan 2017). 

No application number was assigned to your application because the eInventionFile/eUMFile /eIDFile did not consider it as a bona fide application due to any of the following reasons:

  1.   The advance filing fee was not paid; 
  2. The application is presumed to be fictitious for containing highly-questionable entries (e.g. Title, Names, Addresses, etc.) and/or unintelligible specification details not complying with Section 32 of the IP Code of the Philippines indicating the absence of bona fide intention to seek protection; or, 
  3. The application is presumed to be redundant because it is a second and/or subsequent application/s filed bearing the same title, filed by the same applicant, having the same description, claim/s, abstract and drawings as a previously filed online application and accepted by the system. 

Note: Fictitious and/or Redundant Invention, Utility Model, or Industrial Design applications, as defined above, are considered as invalid/not bona fide applications and are not assigned application numbers by the online filing system. Such applications shall be filtered and reviewed and shall be removed from the Patents internal system.

This happens because the Online Filing System is designed to assign application numbers once payment of either the advance partial fee or full filing fee is made.  Dragonpay’s payment channels give applicants different payment deadlines ranging from several hours to a certain number of days. Hence, the applications that are paid earlier will be assigned lower application numbers  and those paid later will be assigned higher numbers.  The chronological discrepancy of the application numbers depends on the length of time that lapsed between payments and on the number of filing fee payments made. Therefore, it is common for applications filed on the same day to have application numbers that are sequentially apart from each other.

A reference code is automatically generated by a system for internal data integrity purposes. The IPOPHL system is different from the Dragonpay system. These two independent systems will always have different reference codes, but by some internal process, which has been tested and verified, they will always refer to one and only one application/transaction. Thus, even if IPOPHL and Dragonpay have different reference codes, this will not affect the application.

The online filing system is designed to accommodate PDF file size of up to 10MB per attachment. The 10 MB file size does not have an exact equivalent number of pages given that PDF file sizes depends on a number factors including software and content which makes it difficult to ascertain what constitutes 10 MB in terms of number of pages. Therefore, Applicants are advised to make sure that the file size of documents that they intend to upload using eInventionFile does not exceed 10 MB per attachment limit.

If the online filing system prompts with an error message when uploading an attachment that exceeds 10MB, you may reduce the file size of the document/attachment through the following steps:

1. Open the PDF filing using Acrobat Professional version 8.0 or higher;
2. Access in the upper tab the “Document” tab;
3. Select the “Reduce File Size” option; and
4. Select Acrobat 5.0 or Acrobat 4.0 version for compatibility and then click “OK”.

To know the file size of the PDF document right click the PDF file and select “properties”.
For further assistance, please email verify@ipophil.gov.ph

The filing date is the date when the application was filed electronically as long as it complies with the requirements under the IP Code.

POST-FILING

The requirement to pay the advance partial payment (Php 500) was implemented not only to discourage/deter fictitious applications but likewise to provide remedy/correction for instances involving inadvertently filed multiple applications. The online filing system is specifically designed to require payment of the advance partial fee for all online applications such that only those applications with advance partial payments shall be considered as bonafide applications. Therefore, in cases where multiple applications were inadvertently filed, only those application/s with corresponding advance partial payments or full filing payments shall be given application numbers and shall be uploaded in the IPOPHL internal database. On the other hand, applications without payments of either the advance partial payment or full filing payment shall not be considered as bonafide applications.

No. Article 111 of the IP Code expressly prohibits parallel filing of an invention and utility model applications simultaneously or consecutively.

Please contact the Patents Records Management Division at (632) 238-6300 local 3312
from 8:30 AM to 4:00 PM, Mondays through Fridays or email the following: 

bop-records@ipophil.gov.ph for updates on the status of applications

bop@ipophil.gov.ph for general BOP queries 

pct@ipophil.gov.ph for PCT applications, queries, and concerns 

verify@ipophil.gov.ph for concerns on online filings and submissions

The term of a patent shall be twenty (20) years from the filing date of the application. The patent must be maintained yearly, starting from the 5th year.

READ: Patent Maintenance

The eDocFile System is an Internet-based service of IPOPHL for the online submission of client communications related to Inventions, Utility Models (UM), and Industrial Designs (ID) without physically transacting with IPOPHL or its Satellite Offices (IPSOs).

The eDocFile facility is designed to receive a range of response/document types as well as to process different requests types such as Extensions, Recordals, Conversions, and Registrability Reports for UM and ID. Aside from these, eDocFile is likewise capable of handling fee payments including payment of balance on filing fees, annuities, fees on extensions, publication, and issuance of certificate payments. To access the online service, please refer to the following link:

https://www.ipophil.gov.ph/edocfile-for-patents/

The eDocFile System is preferably supported by the latest versions of Internet Explorer, Firefox and Google Chrome. Please take note that to ensure session security, cookies can be disabled.

The systems is a fast, economical and efficient way of submitting documents online without the inconvenience of going to IPOPHL and more importantly minimizing health risks as this can be done without leaving the safety and convenience of your homes or offices.

The eDocFile System is provided free of charge. The only fees that will be required are those associated with patent-related payments including balance of filing fee, extension fees, annuities for invention patents, revival fees, and recordal of assignment.

Any individual or juridical entity with pending or granted applications may submit communications through eDocFile. For entities who are non-residents of the Philippines, they should appoint a resident agent or patent attorney to transact using eDocFile on their behalf.

There is no need for registration in order to access eDocFile and submit communications including responses, requests, and payments online. The online service is accessible to all IPOPHIL clients who have pending or granted applications as long as the applicant or agent has an internet connection and an active email address.

Yes. The eDocFile System is configured to receive payment of the remaining balance of the filing fee.

The eDocFile System will automatically compute the required fees during the application process. Further, a copy of the Statement of Account (SOA) that includes the details of required fee payable to IPOPHL will be sent thru email. For complete details of fees refer to the link: https://drive.google.com/file/d/138zRWPEofZJCc5TzJvJ4hwUx8UPM-cPX/view

Submission of responses and documents via eDocFile adheres to the same procedure as the manual filing of communications. Given that computer systems plainly follows the instruction of users in the same manner as when submitting document manually, when mistakes in entering/writing an application number happens the eDocFile System shall be consequently directed to store/attach the submitted documents in the wrong electronic file. In such case, applicant needs to correct the mistake by informing the Bureau of Patents  by submitting a Correction of Entry through the edocfile Patents. We strongly suggest that this be done at the earliest possible opportunity to avoid complications such as withdrawal of the application due to non-filing of reply to office action.

Pursuant to the guidelines promulgated regarding the use of IPOPHL electronic systems, the mailing date as indicated in the physical copy dictates the start of the period to file for Reply to an Office action.

Payment Related Questions when Filing

The eInventionFile System will automatically compute the required fees during the application process. A copy of the Statement of Account (SOA) with the details of the required fee payable to IPOPHL will be sent through email together with the electronic copy of the application form.
There is an advance filing fee of P500 that must be paid within the period indicated in the SOA that will be sent to your email after the application is successfully received by the system. 

Hence, for small entities the remaining balance is P1,500 and for big entities P3,820.

The remaining fees should be paid within one month from the filing date of the application computed as follows: 

Fees

Small Entity

Big Entity

Filing Fee 

  • Advance filing payment (500.00)
  • Balance of Filing fee

2,000.00


1,500.00


4,320.00


P3,820.00

Each claim in excess of 5 

180.00

360.00

Each sheet in excess of 30

18.00

36.00

Priority Claim 

1000.00

2,160.00

Request for extension of time file priority documents

740.00

1,560.00

Sequence listing for INV in excess of 4000 pages

0.60

2.40

The advance filing fee of Five Hundred Pesos (Php 500), is a requirement when submitting an application online using eInventionFile to ensure that only those individuals/parties with real intention to seek patent protection use the online filing service.  The advance filing fee is deductible from the filing fee. 

Failure to pay the P500.00 advance fee will not be given an application number and will not be uploaded into IPOPHL’s internal system. Operationally, there is no application received as this is not treated as a bonafide application.

The online filing system does not modify existing reglementary period on payment of fees provided under the Rules.  Rule 401 provides that the filing fee must be paid within one (1) month from the online/filing reception date. Since the advance payment fee and the remaining balance constitutes the filing fee (Filing fee = advance payment + remaining balance), it follows that applicant is given one (1) month from the online filing date to pay the amount in full. 

The requirement for the advance payment is only meant to ensure that only those with true intention to seek protection are serviced by the online filing system. 

Since the advance filing fee and the remaining balance constitutes the filing fee (Filing fee = advance payment + remaining balance), it follows that applicant is given one (1) month from the online filing date to pay the amount in full. The value of paying the advance fee is that the online filing system considers the application as bonafide filing by assigning an application number and subsequently entering/uploading the application into IPOPHL’s internal database.

The balance of the filing fee may be conveniently filed/transacted electronically via eDocFile for Patents. This online service is accessible via eServices in the IPOPHL website or through this link: https://www.ipophil.gov.ph/edocfile-for-patents/

Filing fees may be paid conveniently through the Dragonpay  gateway options: 

  1. Pay directly online using the following Philippine bank accounts: BDO, BPI, Metrobank, RCBC, Unionbank, LandBank. 
  2. Pay Cash Over-the-Counter at selected banks namely BDO, BPI, Metrobank, RCBC, RCBC Savings, UCPB, and Unionbank. Check payments are accepted but are subject to bank clearing guidelines. Additionally, you can also pay through the ATM machines of the following banks: BDO, BPI, Unionbank, RCBC, and UCPB.
  3. Pay Cash Over-the-Counter at selected payment collection centers such as LBC branches, SM Payment Counters, Robinsons Department Stores, Cebuana Lhuillier and M. Lhuillier branches nationwide. 
  4. Use mobile payments namely Globe GCash and BPI BanKO.

Choosing the payment option is the last step in the e-Filing system.

No. The IPOPHL Cashier will only accept over-the-counter payment for annuity payments if the amount involved is at least P100,000 for every Statement of Account.

Dragonpay is an online payment solution that enables IPOPHL clients to use their existing online banking facility or pay cash over-the-counter at physical retail channels. Dragonpay automatically monitors the online and offline payments made by the client and notifies IPOPHL of a completed payment so that IPOPHL can completely process the application filed online. For details on Dragonpay, click this link

No. Dragonpay will facilitate payment transactions by linking up with several payment partners (Philippine banks and non-banks only), which will collect your payment on behalf of IPOPHL. This option is open to the general public, and there is no Dragonpay account needed to enable this option.

Dragonpay’s Payment Instruction includes the following details: 

  • Description of payment channel (Name of the payment channel); 
  • Payment Reference No. (8 characters Dragonpay Reference No.) ; 
  • Amount  to be paid; 
  • Description (SOA Type); 
  • The deadline within which to pay the fee/s; and
  • Step by Step instruction including how and where to transact payment as well as brief details of payment confirmation.

The validity of this SOA is determined by each payment channel/merchant affiliated with Dragonpay and varies from a few hours to a certain number of days as indicated in the payment instruction provided by the online filing system to the applicant/filer. If the SOA lapses without payment, Dragonpay through its affiliated merchants will not allow payment of fees to proceed. In such a case, the payor will have to email onlineservices@ipophil.gov.ph or verify@ipophil.gov.ph to request for another link/payment instruction to proceed with the payment.

It is strongly recommended that advance filing fees should be paid within the period indicated in the SOA to avoid complications. 

The Implementing Rules require that the filing fee must be fully paid within 1 month from the filing date; otherwise, the application will be considered forfeited.

On top of the IPOPHL filing fees, the following payment channels/integrator will charge the ff:

  • VISA thru DBP charges 2% of the transaction amount
  • Dragonpay charges P20 per transaction PLUS the different payment channels will charge their own convenience fees.
  • VISA, Mastercard, JCB credit cards thru Paymaya charges 1.25% of the transaction amount
  • Paymaya Wallet charges P8 per transaction. 

This is in accordance with "DTI-DOF Joint Department Administrative Order No. 10-01 Guidelines on the Use of Access Devices for Payment of Fees, Charges, Assessments and Other Revenues Due to the Government through the Electronic Payment and Collection System (EPCS) of a Government Entity", which allows electronic payment service providers to collect convenience fees from the transacting client.

The login ID and password that is being prompted from you is your online or Internet banking login ID and password with your bank. This is the same login ID and password you use when you check your bank account balance over the Internet. Dragonpay does not require a separate ID and password other than the one you already have. For more details, please click this link. 

For Dragonpay-related concerns,  please contact the Dragonpay Customer Service for further assistance. 

For errors on payment and payment –related matters, please email epayment.queries@ipophil.gov.ph.

For errors on online services/applications/systems please email server.error@ipophil.gov.ph  

We're working hard to answer your queries, please note that this page will be updated from time to time. Got urgent concerns? Send us a message at ask@ipophil.gov.ph

2022 Revised IRR FAQs

Rule 401 of the 2022 IRR requires the full payment of filing fee, publication fee and priority claim (if any) upon filing.  The application shall not be considered as a bona fide application for failure to pay the said fees upon filing (Rule 401.1). In addition, payments for claims in excess of five (5), sheets in excess of thirty (30), and legal research fund included in the statement of account generated by the online filing system must also be paid, otherwise the payment will be considered unsuccessful.

  • The Formality examination report shall indicate any deficit in terms of payment for excess claims and multiple dependent claims upon filing. The applicant is required to pay the deficit within one (1) month from the notice, otherwise, the claims or claims shall be deemed deleted as per Rule 418.
  • In the substantive examination stage, if claims fee is not fully paid within the time limit prescribed in the examination report, the claim or claims concerned shall be deemed deleted as per Rule 418.
  • All claims, whether valid or not, which are to be submitted for examination should be subjected for payment and is not refundable merely because they are rejected afterwards.
  • IPOPHL does not refund erroneously computed claim fees made in good faith - IPOPHL's policy on refund of fees is covered under Section 11 of Memorandum Circular 17-002, IPOPHL revised Fee Structure of 2017.
  • Rule 601, last paragraph, states that for incomplete applications with respect to appointment of resident agent or representative, Rule 422 shall apply. Rule 422 states that the applicant shall be given one (1) month from the issuance of a notice to submit the appointment of the agent or representative and failure to do so shall cause the application to be withdrawn.

 

Assuming Rule 600 requirements a-f are submitted at the time of filing and the POA is lacking, the filing date will not be "given" or "recognized" yet. Instead, the applicant shall be given 1 month from notice of the deficiency to comply (Rule 422).

 

 If the POA is submitted within 1 month from the issuance of a notice, the initial filing date will not be affected and will be "given" once the proof is submitted.

 

If the POA is not submitted within 1 month from the issuance of a notice, it will be considered withdrawn.  It may still be revived upon submission of a request for revival and proof of appointment of agent or representative. If revival is successful, the initial filing date will not be affected. However, there should be an explicit indication upon filing that there is a resident agent or representative and thus the deficiency is merely in the proof that the local agent is indeed engaged.

  • The request for a second extension, if filed on or after September 20, 2022, will not be granted. However, if an applicant is unable to submit the response to Office Action which falls due on Sept. 12-19, 2022 (as per 1st extension) and submits a valid and timely 2nd extension before September 20, 2022, this will be allowed since the 2017 IRR still applies.
  • Since the Notice of Withdrawn Application was issued before September 20, 2022, the applicant has four months from the date of mailing to file a Petition to Revive. However, the Petition to Revive will then be subject to the 2022 Revised IRR.

 

For those applications with Notice of Withdrawn Application issued on September 20, 2022, the 2022 Revised IRR shall apply and the applicant shall have 3 months to file a Petition for Revival.

In the 2022 IRR, it provides a clear reckoning period within which a voluntary divisional application can be filed - which is 4 months from grant date as per Rule 611. But this is only for voluntary divisional applications.

In the question, we understand that you are referring to an application (parent application) with restriction requirement, therefore it is a mandatory divisional requirement. A different rule applies, Rule 610 and not Rule 611. Under Rule 610, the reckoning of the 4 month period is the requirement for mandatory divisional application and not the grant for the parent.

We think there are 2 hypothetical scenarios which you raise:

  1. If there is a mandatory requirement to divide the parent application but before the 4 month deadline, the parent application is granted, if you can still file the mandatory divisional application within the 4 month period from grant.

This is not allowed. In a mandatory divisional application, only the Examiner-elected invention claims will proceed and may eventually granted. The non-elected invention loses its existence unless the applicant files the mandatory divisional application within the 4 month period. In fact, a divisional application filed beyond the four (4) month prescriptive period from the date the requirement for division becomes final will be rejected as an invalid divisional application.

You cannot apply the 4 month period from grant of the patent under Rule 611 to the non-elected mandatorily divided invention since the legal effect of grant in this case is that the non-elected invention becomes invalid.   Rule 611 will not extend the filing period of the (mandatory) divisional application under Rule 610 just because the patent has been issued early.

  1. If there is a mandatory requirement to divide the parent application but before the 4 month deadline, the parent application is granted, if you can still file the mandatory divisional application within the 4 month period reckoned from the date the mandatory division is required.

This is still not allowed. As mentioned, the legal effect of a patent grant on the non-elected invention is that it becomes invalid and loses its existence.

The two rules cannot be mixed in this way.  Rule 610 is only for mandatory divisional applications, arising from the restriction requirement, and Rule 611 is only for voluntary divisional application (no restriction requirement raised in the parent application).

Yes, under Rule 600 it is a requirement in order to be considered as a complete application.

Pro-PCT applies for PCT National Phase Entries, wherein the requirements are similar to Rule 400, except for the publication fee as these applications have been published internationally. The PCT application in our Office is already considered as a national filing, Pro-PCT is aligned where the current IRR applies. Hence, the fees to be paid (filing fee and claim for priority, if any) upon entry is the same as what is required in Rule 401 (except for the publication fee).

For PCT National Phase applications, the “required filing fees at the time of filing” shall include the filing fee and priority claim (if any). In addition, payments for claims in excess of five (5), sheets in excess of thirty (30), and legal research fund included in the statement of account generated by the online filing system must also be paid, otherwise the payment will be considered unsuccessful.

The filing fee must accompany the application or submission otherwise it is a failed application or submission. There is no consideration or exemption for separate filing/submission and payment.

As we require all payments, filings and submissions be done through IPOPHL’s online portal, due dates falling on a holiday or in the advent of work disruptions/suspensions, the Office usually issues a memorandum circular and service advisory in our website and social media that all papers and documents due on the affected dates may be received on the immediately succeeding working day and shall be considered as having been filed on their due dates, not a “failed application”. The same applies on weekends.

In the event of a holiday wherein the IPOPHL issues an office-wide advisory that due dates falling on said holiday will be moved to the next working day, we suggest that you file or submit the documents and pay the fees at the same time.

The language of Rule 400 says it “may be filed manually” and not “must be filed manually”. In the case that the voluminous application was successfully uploaded electronically and accepted through IPOPHL’s online portal, there is no need to make another filing for manual copies as this will constitute double filing of the application.

  • The question is not clear as to what is meant by “condensed claims” There is no such thing as “condensed claims” in Philippine patent practice. As such, we are unable to provide a proper response.

Nonetheless, at no point does Rule 418 allow for deferment of payment of excess claims fee. Rule 418 provides only that if the claims fee paid upon filing appears to be deficient, the deficit may still be paid within a grace period of one (1) month from notice pointing out the deficit in payment; otherwise, unpaid excess claim or claims shall be deemed deleted. This is no way can be construed as IPOPHL allowing deferred payment of excess claims fee.

Further, if the excess claims fee is not paid, the Office shall simply delete claims 6 onwards and shall retain Claims 1-5 as is. Any amendment or revision of Claims 1-5 may happen during prosecution.