INVENTION PATENT APPLICATION

What this is For:

[u]Application for grant of Invention Patent[/u]

Where to File:

Bureau of Patents(BOP) of the Intellectual Property Office (IPO) through the Receiving Section/Counter of the Administrative, Financial and Human Resource Development Services Bureau (AFHRDSB) located at the ground floor of the IPO Building

How to File:

1. Application for Invention Patent

2. Formality Examination

Upon receipt of the application, the examiner checks if the application satisfies the formal requirements needed for the grant of a filing date. The date of filing is very important under the present first-to-file system because it serves to determine, in case of a dispute with another applicant for the same invention, who has the right to the patent.

3. Publication of Unexamined Application

After the formality examination, search and the classification of the field of technology to which the invention is assigned, the application together with the results of the search (which contains a list of published patent applications or issued patents for inventions, which are identical or equivalent to those claimed by the application), will be published in the IPO Gazette (after the expiration of 18 months from the filing date or priority date). After the publication of the application, any person may present observations in writing concerning the patentability of the invention. Such observation shall be communicated to the applicant who may comment on them.

4. Request for Substantive Examination Substantive examination is conducted upon request.

The request for substantive examination of the application must be filed within six (6) months from the date of the publication. The application is considered withdrawn if no request is made within that period. If the examiner finds reason to refuse the registration of the application, i.e. the application is not new, inventive or industrially applicable, the Bureau shall notify the applicant of the reason for refusal/rejection giving the applicant the chance to defend or amend the application.

5. Decision to Grant Patent Registration or Decision of Refusal

If the examiner finds no reason for refusal of the application, or if the notice of reason for refusal is satisfactorily complied with by amendment or correction, the examiner issues a decision to grant the patent registration. Otherwise, the examiner refuses the application.

6. Inspection of Records

The grant of a patent together with other information shall be published in the IPO Gazette within six (6) months. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office.

7. Appeal

(a) Every applicant may appeal to the Director of Patents the final refusal of the examiner to grant the patent within two (2) months from the mailing date of the final refusal. The decision or order of the Director shall become final and executory fifteen (15) days after receipt of a copy by the appellant unless within the same period, a motion for reconsideration is filed with the Director or an appeal to the Director General is filed together with the payment of the required fee. (b) The decision of the Director General may be appealed to the Court of Appeals. If the applicant is still not satisfied with the decision of the Court of Appeals, he may appeal to the Supreme Court.

NOTE:

SCHEDULE OF INVENTION PATENT-RELATED FEES

ReferenceCode Type of Fee Big Small

1. PRE-EXAMINATION

201 1.1. Filing Fee 3,600.00 1,800.00

202 1.2. For each sheet in excess of thirty (30) 30.00 15.00

203 1.3. For each claim in excess of five (5) 300.00 150.00

204 1.4. Request for right of priority 1,800.00 900.00

205 1.5. Request for Extension of Time to File Priority Documents 1,300.00 650.00

206 1.6. Divisional Application (for each division) 3,600.00 1,800.00

207 1.7. Conversion From Utility Model to Invention 1,200.00 600.00

208 1.8. Early Publication: Request for publication before the expiration of 18 months from filing date or priority date 5,550.00

2. EXAMINATION

2.1. Request for:

2.1.1. Extension of time to file Response

209 2.1.1.1. First 600.00 300.00

210 2.1.1.2 Second 650.00 325.00

211 2.1.2. Substantive Examination 3,500.00 1,750.00

212 2.1.3. Revival 1,000.00 500.00

213 2.2. Preparation of amended page(s) of the master copy of the specification and/or claims 70.00 per page

3. POST-EXAMINATION

214 3.1. Amendment or correction in the Letters Patent 500.00 250.00

plus publication fee

3.2 Petition for:

215 3.2.1 Voluntary surrender or cancellation 600.00 300.00

plus publication fee

216 3.2.2 Any amendment or any correction of mistake in a Letters Patent of formal and clerical nature without fault of Office 600.00 300.00

217 3.2.3 Any amendment or any correction in a Letters Patent of substantive nature 1,500.00 750.00

218 5th year 2,700.00 1,350.00

219 6th year 3,600.00 1,800.00

220 7th year 4,500.00 2,250.00

221 8th year 5,400.00 2,700.00

222 9th year 7,200.00 3,600.00

223 10th year 9,000.00 4,500.00

224 11th year 11,600.00 5,800.00

225 12th year 14,400.00 7,200.00

226 13th year 17,000.00 8,500.00

227 14th year 20,700.00 10,350.00

228 15th year 24,300.00 12,150.00

229 16th year 27,800.00 13,900.00

230 17th year 31,400.00 15,700.00

231 18th year 37,700.00 18,850.00

232 19th year 45,300.00 22,650.00

233 20th year 54,300.00 27,150.00

234 5. Annual fee for each claim in excess of five (5) (5th to 20th year) due and payable at the same time as the applicable Annual Fee listed above. 350.00 175.00

235 6. Notice and publication of non-payment of annual fee 350.00

minimum; approximately 1/8 page

Other Documentary Requirements:

Requirements needed to obtain a filing date:

(a) Properly filled-out Request Form for a Grant of Philippine Patent;

(b) Name, address and signature of applicant(s); for non-resident applicant, the name and address of his/her/their resident agent; and

(c) Description of the invention and one or more claims.

NOTE: It is advised that any drawing/s necessary to understand the subject invention should be submitted at the time of filing so that there would not be a possible change in filing date due to late submission/filing of said drawing/s. The other formal requirements, which are not needed to obtain a filing date, but maybe included at the time of filing are:

(a) A filing fee (for big or small entities) which maybe paid during application filing or within one month from the date of filing. The application shall be deemed automatically cancelled/withdrawn in case of non-payment of such fees;

(b) Drawing(s) necessary to understand the invention;

The Intellectual Property Rights Rule 413 states the following with regards to inclusion of drawing(s) specifications on the application:

(a) 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 invention covered by the claims, and the figures should be consecutively numbered.

(b) Drawing for an Improvement - When the invention consists of an improvement of an old machine, the drawing must exhibit, in one or more views, the invention 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 invention therewith.

In addition to the above rulings, RULE 414 clearly indicates the following specifications:

Rule 414.1. Uniform Standard of Excellence Suited to Photolithographic Process, Required of Drawings. - 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, 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 examination of an application. Rule 414.2. 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 414.3. 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 414.4. 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 414.5. 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 414.6. 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 414.7. 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 an invention 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 414.8. 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. Rule 414.9. 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 414.10. 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 invention, 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 414.11. Flow Sheets and Diagrams. - Flow Sheets and diagrams are considered drawings. Rule 414.12. Requisites for the Figure of the IPO Gazette. As a rule, only one view of each invention can be shown in the IPO Gazette illustrations. The selection of that portion of a drawing best calculated to explain the nature of the invention 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 in 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 invention 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 414.13. 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 414.14. 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. Photolitographs of photographs are never acceptable. (b) The Office is willing to accept black and white photographs or photomicrographs (not photolitographs 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 invention 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 414.15. Matters not Permitted to Appear on the Drawings. An agents or attorneys stamp, or advertisement or written address shall not be permitted on the drawings. Rule 414.16. 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 examination if it sufficiently illustrates the invention, but in such case, the drawing must be corrected or a new one furnished before the application will be allowed. Applicants are advised to employ competent draftsman to make their drawings.

(c) An abstract; and

As stated in the Intellectual Property Rights Rule 411, The abstract shall be written in a separate sheet with a heading ABSTRACT shall consist of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words. It must be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall merely serve for technical information. Each main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by a reference sign placed between parentheses.

(d) If the priority of an earlier filed application is being claimed, the details of the claim, i.e. filing date, file number and country of origin.

The Intellectual Property Rights Rule 305, states the following with regards to Right of Priority:

An application for patent filed by any person who has previously applied for the same invention 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 of 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 (Sec. 31, IP CODE).

This six (6) month-period may be extended by the Director for a maximum of six (6) months upon showing of good cause or in compliance with treaties to which the Philippines is or may become a mem