philippines intellectual property regulations - jpo.go.jp · part 8 effect and notice of...

PHILIPPINES

Intellectual Property Regulations

as amended in 2002

TABLE OF CONTENTS

I．RULES AND REGULATIONS ON TRADEMARKS, SERVICE MARKS, TRADENAMES AND

MARKED OR STAMPED CONTAINERS

PART 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS

Rule 10 Title

Rule 100 Definitions

Rule 101 Registrability

Rule 102 Criteria for Determining whether a Mark is Well-known

Rule 103 Trade Names or Business Names

PART 2 RIGHT TO A MARK

Rule 200 How Marks are Acquired

Rule 201 International Conventions and Reciprocity

Rule 202 Priority Right; Basis for Claiming Priority Right

Rule 203 Requirements for Applications Claiming Priority Right

Rule 204 Declaration of Actual Use

Rule 205 Contents of the Declaration and Evidence of Actual Use

PART 3 WHO MAY APPLY FOR A MARK

Rule 300 The Applicant

Rule 301 Assigned Marks

Rule 302 Representation; Address for Service

Rule 303 Applicant may be Represented by Attorney

Rule 304 Power of Attorney or Authorization

Rule 305 Death, Insanity, Incapacity of Applicant

Rule 306 Signature and Other Means of Self-identification

PART 4 TRADEMARK APPLICATION

Rule 400 Requirements of Application

Rule 401 Office Application Form

Rule 402 Label

Rule 403 Drawing

Rule 404 Drawing for a Service Mark may be Dispensed with in Certain

Cases

Rule 405 Drawing to be on Bristol Board

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Rule 406 Size of Board; “Sight”

Rule 407 Drawing to be with the Pen or by Other Processing Giving

Satisfactory Results

Rule 408 The Name of the Owner to be within Marginal Lines

Rule 409 When Board may be Turned on Its Side

Rule 410 Manner of mailing the Drawing to the Bureau

Rule 411 Color

Rule 412 Informal Drawing

Rule 413 Use of an Old Drawing in a New Application

Rule 414 The Small Facsimiles of the Drawing, How Prepared

Rule 415 Translation/Transliteration

Rule 416 Nice Classification

Rule 417 Broad Terms

Rule 418 Single registration for goods and/or services

Rule 419 Division of Applications

PART 5 THE FILING DATE

Rule 500 Filing Date

Rule 501 Application Number and Filing Date

PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR REGISTRATION

CHAPTER 1 NATURE OF THE PROCEEDINGS

Rule 600 Application Prosecuted Ex Parte; Protests

Rule 601 Proceedings a Contest between Examiner and the Applicant

Rule 602 Applicant Supposed to Look after His Own Interests

Rule 603 Preliminary Adverse Action of the Examiner Valuable to

Applicant

Rule 604 A Preliminary Rejection should Not be Taken Literally; Examiner

is Only Trying to be Helpful

CHAPTER 2 MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION;

ACTION BY THE EXAMINER; RESPONSE BY THE APPLICANT; ABANDONMENT; REVIVAL

Rule 605 Order of Examination; Priority of Action

Rule 606 Jurisdiction of the Examiner

Rule 607 Examination of the Application; Action by the Examiner

Rule 608 Disclaimers

Rule 609 Interview with the Examiners: when no Interview is Permitted

Rule 610 Period for Response, Action by Applicant

Rule 611 Communications Other than the Original

Rule 612 Re-examination

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Rule 613 Final Action

Rule 614 Abandonment; Incomplete Response

Rule 615 Revival of Abandoned Application

Rule 616 Time less than Four Months; when Request for Extension should

be Made

Rule 617 Suspension of Action by the Bureau

Rule 618 Provisional Allowance

Rule 619 Express Abandonment

CHAPTER 3 AMENDMENTS TO THE APPLICATION; RESPONSE TO OBJECTIONS OF

THE EXAMINER

Rule 620 Amendments to the Application

Rule 621 Amendments to Description or Drawing

Rule 622 Manner of Making the Amendment

Rule 623 Prohibition against Marking of Papers or Records of the Office

by Applicants

PART 7 PUBLICATION, ALLOWANCE AND ISSUANCE OF CERTIFICATE OF

REGISTRATION

Rule 700 Publication in the IPO Gazette; End of Jurisdiction of the

Examiner

Rule 701 Examiner may Petition for the Remand to His Jurisdiction,

of an Allowed Application

Rule 702 Examiner to be in Charge of Publication for Opposition;

Applications Confidential Prior to Publication

Rule 703 Allowance of application and Issuance of Certificate of

Registration

PART 8 EFFECT AND NOTICE OF REGISTRATION

Rule 800 Rights Conferred

Rule 801 Duration

Rule 802 Non-use of a Mark when Excused

Rule 803 Use of a Mark in a Different Form

Rule 804 Use of a Mark for Goods Belonging to the Class Registered

Rule 805 Use of a Mark by Related Company

Rule 806 Certificates of Registration; Records and Copies in Registered

Cases

Rule 807 Contents of Certificate of Registration

Rule 808 Use of Indications by Third Parties for Purposes Other than

Those for which the Mark is Used

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PART 9 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR REGISTRATION

CHAPTER 1 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER

BY THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES


Rule 901 Cancellation upon Application by Registrant

Rule 902 Amendment or Disclaimer of Registration

Rule 903 Correction of Mistakes Made by the Office

Rule 904 Corrections of Mistakes Made by Applicant

Rule 905 Surrender, Cancellation, Amendment, Disclaimer, and

Correction to be Given Publicity

CHAPTER 2 RECORDING OF ASSIGNMENTS OF REGISTRATION; OR ANY OTHER

INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING

LICENSES, DIVISION OF REGISTRATION

Rule 906 Assignment and Transfer of Application and Registration

Rule 907 Form of Assignment or Transfer

Rule 908 Recordal of Assignment or Transfer

Rule 909 Assignment, Other Instruments Affecting the Registration,

or License, and Translation, to be Submitted in Duplicate

Rule 910 Date of Receipt of Instrument to be Recorded Considered Its

Date of Recording

Rule 911 A New Certificate of Registration must be Issued to Assignee

Rule 912 Action may be Taken by Assignee of Record in any Proceeding

in Office

Rule 913 Clearance of Trademark License Agreement Prior to Recordal

Rule 914 Division of Registration

Rule 915 Cancellation of Original Certificate and Issuance of Transfer

Certificates of Registration

Rule 916 Contents of Transfer Certificates of Registration

CHAPTER 3 RENEWAL OF REGISTRATION

Rule 917 Request for Renewal

Rule 918 When to File Request for Renewal


Rule 920 Need for Appointing a Resident Agent

Rule 921 Renewal of Prior Act Registration; Use and Proof Thereof,

Required

Rule 922 Prior Act Certificate of Registration to be Surrendered

Rule 923 Refusal of Renewal Registration; Appeal to the Director

Rule 924 Certificate of Renewal of Registration

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PART 10 REGISTRATION OF STAMPED OR MARKED CONTAINER

Rule 1000 Rules or registration of Trademarks and Service Marks to

Apply

Rule 1001 “Stamped or Marked Container” Defined

Rule 1002 No Drawing Required

Rule 1003 No Labels Required; Sample may be Required

PART 11 PETITIONS AND APPEAL

Rule 1100 Nature of the Function of Examiners

Rule 1101 Petition to the Director to Question the Correctness of the

Action of an Examiner on a Matter not Subject to Appeal

Rule 1102 Appeals to the Director

Rule 1103 Effect of a Final Decision of an Examiner which is Not Appealed

Rule 1104 Time and Manner of Appeal

Rule 1105 Appellant’s Brief Required

Rule 1106 The Examiner’s Answer

Rule 1107 Appellant’s reply

Rule 1108 Appeal to the Director General


Rule 1110 Director’s Comment

Rule 1111 Appeal to the Court of Appeals

FINAL PROVISIONS

Section 1 Correspondence

Section 2 Fees and Charges to be Prepaid; Fees and Charges Payable

in Advance

Section 3 Applications pending on Effective Date of the IP Code

Section 3.1 Amendment of Pending Applications

Section 3.2 Filing Date of Pending Applications; Declaration of Actual

Use

Section 3.3 Processing of Pending Applications

Section 3.3.1 Interference

Section 3.4 Duration of Registration

Section 3.5 Duration of Renewal of Registration Granted under Republic

Act No. 166

Section 3.6 Abolition of the Supplemental Register

Section 3.7 Renewal of a Registration in the Supplemental Register

Section 3.7.1 Registrations Subsisting on January 1, 1998

Section 3.7.2 Registrations, or Extension Thereof, with Term Ending

on or Before December 31, 1997

Section 3.7.3 Notice to Comply

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Section 4 Repeals

Section 5 Separability

Section 6 Effectivity

II. RULES & REGULATIONS ON INVENTIONS

PART 1 DEFINITIONS


PART 2 PATENTABILITY

Rule 200 Patentable Inventions

Rule 201 Statutory Classes of Invention

Rule 202 Non-patentable Inventions

Rule 203 Novelty

Rule 204 Prior Art

Rule 205 Non-prejudicial Disclosure

Rule 206 Inventive Step

Rule 207 Person Skilled in the Art

Rule 208 Industrial Applicability

PART 3 RIGHT TO A PATENT

Rule 300 Right to a Patent

Rule 301 Who may be Named in an Application as an Applicant

Rule 302 Inventions Created Pursuant to a Commission

Rule 303 Inventions Made in the Course of Employment

Rule 304 First-to-File Rule

Rule 305 Right of Priority

Rule 306.1 Multiple Priorities

Rule 306.2

Rule 306.3

Rule 306.4

Rule 307 Certified Copy of the Foreign Applications

PART 4 THE PATENT APPLICATION

Rule 400 The Patent Application

Rule 401 Payment of Fees

Rule 402 Marking of Documents; Acknowledgment

Rule 403 Form of Request; Office Application Form

Rule 404 The Request

Rule 405 Disclosure and Description of the Invention

Rule 406 Test for enabling Disclosure

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Rule 407 Content of the Description

Rule 408 Requirements of Applications Relating to Biological Materials

and Microorganisms

Rule 409 Requirements of Application Relating to Biological Materials

and Microorganisms before Allowance

Rule 410 Title of the Invention

Rule 411 Abstract

Rule 412 Prohibited Matter

Rule 413

Rule 414.1 Uniform Standard of Excellence Suited to Photolithographic

Process, Required of Drawings

Rule 414.2 Paper and Ink

Rule 414.3 Size of Drawing Sheet; Imaginary Line

Rule 414.4 Character and Color Lines

Rule 414.5 The Fewest Possible Number of Lines and Little or No Shading

to be Used

Rule 414.6 Scale to which Drawing is Made to be Large Enough

Rule 414.7 Letters and Figures of Reference

Rule 414.8 Signature, Where to be Placed

Rule 414.9 Title of the Drawing

Rule 414.10 Position on Drawing Sheets of Large Views

Rule 414.11 Flow Sheets and Diagrams

Rule 414.12 Requisites for the Figure of the IPO Gazette

Rule 414.13 Reference Signs

Rule 414.14 Photographs

Rule 414.15 Matters not Permitted to Appear on the Drawings

Rule 414.16 Drawings not Conforming to Foregoing Rules to be Accepted

Only Conditionally

Rule 415 Claim

Rule 416 Form and Content of the Claims

Rule 417 Claims Incurring Fee

Rule 418 Presentation of the Application Documents

Rule 419 Models, when Required

Rule 419.1 Requisites for the Model

Rule 419.2 Material Required for the Model; Working Models

Rule 419.3 Models, when Returned to Applicant

Rule 419.4 Models Filed as Exhibits in Contested Cases

Rule 420 Employment of Attorney-at-Law or Agent Recommended

Rule 421 Appointment of Resident Agent or Representative

Rule 422 Decorum and Courtesy Required in the Conduct of Business

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PART 5 WHO MAY APPLY FOR A PATENT

Rule 500 Who may Apply for a Patent

Rule 501 When the Applicant Dies, Becomes Insane

Rule 502 Assigned Invention and Patents

Rule 503 Juridical Person -- Definition

Rule 504 Proof of Authority

Rule 505 Forms of Signatures

PART 6 FILING DATE AND FORMALITY EXAMINATION

Rule 600 Filing Date Requirements

Rule 600.1 Incomplete application

Rule 600.2

Rule 601 According a Filing Date

Rule 602 Late-filed or Missing Drawings

Rule 603 Formality Examination

Rule 604 Unity of Invention

Rule 604.1

Rule 605 Requirements for Unity of Invention

Rule 606 Reconsideration for Requirement

Rule 607 Appeal from requirement for Division

Rule 608 Subsequent Presentation of Claims for Different Invention

Rule 609 Election of Species

Rule 610 Separate Application for Invention Not Elected

Rule 611 Divisional Application

Rule 612 Information Concerning Corresponding Foreign Application for

Patents

Rule 612.1

Rule 612.2 Non-compliance

PART 7 CLASSIFICATION AND SEARCH

Rule 700 Classification and Search

Rule 701

Rule 701.1 Content of the Intellectual Property Search Report

PART 8 PUBLICATION AND REQUEST FOR EXAMINATION

Rule 800 Publication of Application

Rule 801 Confidentiality before Publication

Rule 802 Observation of Third Parties

Rule 803 Request for Substantive Examination

Rule 803.1

Rule 804 Rights Conferred by an Application after Publication

8

Rule 805 Citation and references

PART 9 THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN

THE EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL CONSIDERATIONS

Rule 900 Applications Prosecuted Ex Parte

Rule 901 Proceedings, a Contest between the Examiner and the Applicant

Rule 902 Applicant supposed to Look after His Interest

Rule 903 Preliminary Adverse Actions of the Examiner Valuable to

Applicant



Rule 905 The Examiners shall Have Original Jurisdiction over All

Applications; Appeal to the Director

Rule 906 Order of Examination

Rule 907 Nature of Examination, Examiner’s Action

Rule 908 Completeness of Examiner’s action

Rule 909 Rejection of Claims

Rule 910 Unpublished, Withdrawn and Forfeited Applications Not Cited

Rule 911 Reply by applicant

Rule 912 Re-examination and Reconsideration

Rule 913 Final Rejection or Action

Rule 914 Conversion of Patent Applications or Applications for Utility

Model

Rule 915 Prohibition against Filing of Parallel Applications

AMENDMENTS BY THE APPLICANT

Rule 916 Amendment by the Applicant

Rule 917 Amendments after final action of the Examiner

Rule 918 Amendment and Revision Required

Rule 919 Amendment of Disclosure

Rule 920 Amendment of claims

Rule 921 Manner of Making Amendments

Rule 922 Entry and Consideration of Amendments

Rule 923 Amendments to the Drawing

Rule 924 Amendment of Amendments

Rule 925 Substitute specification

Rule 926 Numbering of Claims

Rule 927 Petition from Refusal to Admit Amendment

Rule 928 Interviews with the Examiners: when No Interview is Permitted

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TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION

Rule 929 Withdrawal of Application for Failure to Respond within Time

Limit

Rule 930 Revival of Application

Rule 931 Express Withdrawal of Application

PART 10 GRANT OF PATENT

Rule 1000 Grant of Patent

Rule 1001 Contents of Patent

Rule 1002 Publication upon Grant of Patent

Rule 1003

PART 11 TERM OF PATENT

Rule 1100 Term of Patent

Rule 1101 Annual Fees

Rule 1102 Date Application is Published

Rule 1103 Non-payment of Annual Fees

Rule 1104 Grace Period

PART 12 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT

CHAPTER 1 RECORDING OF ASSIGNMENT OF LETTERS PATENT, AND OF OTHER

INSTRUMENTS AFFECTING TITLE TO PATENTS, INCLUDING LICENSES

Rule 1200 Form of Assignment of a Patent or of an Application for a

Patent

Rule 1201 Form of Other Instruments Affecting the Title to a Patent

or Application, Including Licenses

Rule 1202 Assignment and Other Instruments to be Submitted in Duplicate

Rule 1203 Date of Recording of Assignment or Other Instrument or License

Considered Its Date of Filing

Rule 1204 Letters patent may be Issued to the Assignee in Place of

the Applicant

Rule 1205 Action may be taken by assignee of record in any proceeding

in the Office

CHAPTER 2 SURRENDER, CORRECTION AND AMENDMENT OF PATENT

Rule 1206 Surrender of Patent

Rule 1207 Correction of Mistakes of the Office

Rule 1208 Correction of Mistake in the Application

Rule 1209 Changes in Patent

Rule 1210 Form and Publication of Amendment or Corrections

10

Rule 1212 Assignment of Inventions

Rule 1213 Rights of Joint Owners




Action of an Examiner on a Matter Not Subject to Appeal






Rule 1307 Appellant’s Reply




FINAL PROVISIONS


Section 2 Fees and charges to be prepaid; Fees and charges payable

in advance

Section 3 Implementation

Section 4 Repeals


Section 6 Furnishing of Certified Copies


III. RULES AND REGULATIONS ON UTILITY MODELS AND INDUSTRIAL DESIGNS

PART 1 DEFINITIONS

Rule 10


PART 2 UTILITY MODELS

Rule 200 Registrable Utility Models

Rule 200.1 Non-Registrable Utility Models

Rule 200.2 Industrial Applicability

Rule 201 Statutory Classes of Utility Models


Rule 203 Filing Date of Utility Model Application

Rule 204 Right of Priority for Utility Model

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Rule 205 Registration of Utility Model

Rule 206 Formality Examination of Utility Model Application

Rule 207 Applicant’s Action on the Formality Examination Report

Rule 207.1 Voluntary Withdrawal

Rule 207.2 Amended Applications

Rule 207.3 Application Converted to an Application for Inventions Patent

Rule 207.4 No Action on the Part of Applicant Where Formal Requirements

are Complete


are not Complete

Rule 207.6 Registrability Report

Rule 207.7 Non-Payment of Issuance and Publication Fees

Rule 207.8 Final Action

Rule 208 Requirements for Applications for Utility Model

Rule 208.1 Title

Rule 208.2 Technical Field

Rule 208.3 Background of the Utility Model

Rule 208.4 Brief Description of the Several Views of the Drawings,

if there be any

Rule 208.5 Detailed Description

Rule 208.6 Claim or Claims

Rule 209 Unity of Utility Model

RULE 209.1 Claims Incurring Fee

Rule 210 Requirement for Restriction; Division

Rule 211 Publication of the Utility Model Application

Rule 211.1 Adverse Information; Effects

Rule 212 Term of Registration of Utility Model

Rule 213 Cancellation of the Utility Model Registration

Rule 214 Conversion of Invention Patent Application to an Application

for Utility Model Registration

Rule 215 Conversion of an Application for Utility Model Registration

to a Patent Application

Rule 216 Prohibition Against Filing of Parallel Applications

PART 3 INDUSTRIAL DESIGNS

Rule 300 Definition of Industrial Design

Rule 301 Requisites for Registrability of Industrial Design

Rule 301.1 Requisites for Registrability Explained

Rule 302 Degree of Novelty Required

Rule 303 Filing Date of Industrial Design Application


12

Rule 305 Right of Priority for Design

Rule 306 Registration of Industrial Design

Rule 307 Formality Examination of Industrial Design Application

Rule 308 Applicant’s Action on the Formality Examination Report and

the Search Report



Rule 308.3 No Action On The Part Of The Applicant Where Formal

Requirements are Complete

Rule 308.4 No Action on the Part of Applicant where Formal Requirements

are not Complete




Rule 309 The Application

Rule 310 Fees

Rule 311 Specimen

Rule 312 Special Form of Specification for Application for Registration

of Industrial Design

Rule 312.1 Title

Rule 312.2 Brief Description of the Several Views of the Drawings

Rule 312.3 Characteristic-Feature Description

Rule 312.4 Claim

Rule 312.5 Special Requirements for the Drawing of an Industrial Design

Rule 312.6 Requirements for Graphic Representation of Industrial

Designs

Rule 313 Several Industrial Designs in One Application

Rule 313.1 Restriction; Division

Rule 314 Publication of the Industrial Design Application


Rule 315 Term of Industrial Design Registration

Rule 316 The Renewal Fee

Rule 317 Cancellation of Design Registration

Rule 317.1

PART 4 COMMON PROVISIONS

CHAPTER 1 REGISTRABILITY

Rule 400 Novelty

Rule 401 Prior Art

Rule 402 Non-Prejudicial Disclosure

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CHAPTER 2 RIGHT TO A REGISTRATION

Rule 403 Right to a Registration


Rule 405 Utility Models and Industrial Designs Created Pursuant to

a Commission

Rule 406 Multiple Priorities

Rule 406.1

Rule 406.2

Rule 406.3


CHAPTER 3 THE APPLICATION

Rule 408


Rule 410 Information Concerning Corresponding Foreign Application

Rule 411 Other Documents Relating to the Foreign Application may Consist

of the Following:

Rule 412 Non-Compliance

CHAPTER 4 Drawings

Rule 413 General Requisites for the Drawing

Rule 414 Drawing for an Improvement

Rule 415 Uniform Standard of Excellence Suited to Photolithographic


Rule 416 Paper and Ink

Rule 417 Size of Drawing Sheet; Imaginary Line

Rule 418 Character and Color Lines

Rule 419 The Fewest Possible Number of Lines and Little or No Shading

to be Used

Rule 420 Scale to which Drawing is Made to be Large Enough

Rule 421 Letters and Figures of Reference

Rule 422 Signature, where to be Placed

Rule 423 Title of the Drawing

Rule 424 Position on Drawing Sheets of Large Views

Rule 425 Flow Sheets and Diagrams

Rule 426 Requisites for the Figure of the IPO Gazette

Rule 427 Reference Signs

Rule 428 Photographs

Rule 429 Matters not Permitted to Appear on the Drawings

Rule 430 Drawings not Conforming to Foregoing Rules to be Accepted

Only Conditionally

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CHAPTER 5 REPRESENTATION, SIGNATURES



Rule 433 Revocation of Power of Attorney


CHAPTER 6 WHO MAY REQUEST FOR A REGISTRATION

Rule 435 Who may Request for a Registration


Rule 437 Assigned Applications




CHAPTER 7 CLASSIFICATION AND SEARCH


Rule 442 Content of the Search Report

Rule 443 Confidentiality Before Publication

Rule 444 Unpublished, Withdrawn and Forfeited Applications not Cited

CHAPTER 8 AMENDMENTS; WITHDRAWAL BY THE APPLICANT






Rule 450 Substitute Specification


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


PART 5 THE CERTIFICATE OF REGISTRATION


Rule 501

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PART 6 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR THE REGISTRATION

CHAPTER 1 ASSIGNMENT

Rule 600 Form of Assignment

Rule 601 Form of Other Instrument Affecting the Title to a Registration



Rule 603 Date of Receipt of Assignment or Other Instrument or License

Considered its Date of Recording

Rule 604 Certificates may be Issued to the Assignee in Place of the

Applicant


in the Office

CHAPTER 2 SURRENDER, CORRECTION AND AMENDMENT OF CERTIFICATE

Rule 606 Surrender of Certificate



Rule 609 Changes in Registration


CHAPTER 3 RECORDAL; TRANSMISSION OF RIGHTS

Rule 611 Transmission of Rights

Rule 612 Assignment

Rule 613 Recording


CHAPTER 4 REQUEST FOR REGISTRABILITY REPORT

Rule 615 Who May Request For Registrability Report

Rule 616 Contents of Registrability Report

Rule 617 Time within which to Issue Report

PART 7 PETITIONS AND APPEALS


Action of an Examiner on Matters of Form


Rule 70 Complaints Against Examiners to be on Separate Paper

Rule 70 Effect of a Final Decision of an Examiner which is not Appealed




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FINAL PROVISIONS



in Advance

Section 3 Formality and Search Report Covering Pending Applications

Section 4 Duration of Utility Model and Industrial Design Registration

of Pending Applications


Section 6 Repeals




IV. RULES & REGULATIONS ON VOLUNTARY LICENSING

PART 1 DEFINITIONS

Rule 1 Definition of Terms

Rule 2 Prohibited Clauses

Rule 3 Mandatory Provisions

PART 2 REGISTRATION OF EXEMPT TECHNOLOGY TRANSFER ARRANGEMENTS

Rule 4 Application for Exemption

Rule 5 Who May File

Rule 6 When to File

Rule 7 Filing Date

Rule 8 Notice of Additional Requirements

Rule 9 Scope of Evaluation

Rule 10 Acceptable Worldwide Industry Standards and Practices

Rule 1 Recognition of Valid Intellectual Property Rights

Rule 1 Payment of Taxes

Rule 1 Decision

Rule 1 Issuance of Certificate

Rule 1 Certificate Registry Book

Rule 1 Cancellation of Registration

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PART 3 SUMMARY PROCEDURES

CHAPTER 1 TRADEMARK LICENSE AGREEMENT

Rule 17 Clearance Prior to Recordal with the Office

Rule 18 Evaluation Period

Rule 19 Certificate of Clearance

Rule 20 Notice to Comply

CHAPTER 2 CERTIFICATE OF COMPLIANCE AND APPROVAL FOR LEGAL PURPOSES

Rule 21 Request for certification of compliance

Rule 22 Evaluation Period; Action on the request

CHAPTER 3 PRELIMINARY REVIEW AND/OR PRE-CLEARANCE OF TECHNOLOGY

TRANSFER ARRANGEMENTS

Rule 23 Request for Preliminary Review


Rule 25 Notice of Findings

Rule 26 Submission of the Agreement under Part 2

PART 4 RECONSIDERATION AND APPEAL

Rule 27 Requests for Reconsideration


Rule 29 Appeal to the Secretary of Trade and Industry

PART 5 MISCELLANEOUS PROVISIONS

Rule 30 Rights of Licensor

Rule 3 Rights of Licensee

Rule 3 Technology Transfer Agreements Subject of Judicial Proceedings

Rule 3 Publications

Rule 3 Office Forms

Rule 3 Coverage

FINAL PROVISIONS


Section 2 Fees and Charges to be prepaid; Fees and charges Payable

in Advance

Section 3 Repeal



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V. RULES & REGULATIONS ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF

LAW INVOLVING INTELLECTUAL PROPERTY RIGHTS

RULE 1 DEFINITIONS, INTERPRETATION; RULES OF COURT

Section 1 Definition of Terms

Section 2 Interpretation

Section 3 Suppletory Application of the Rules of Court

RULE 2 COMMENCEMENT OF ACTION

Section Complaint, When and to Whom Filed

Section Original Jurisdiction

Section Venue of Hearings

Section Formal Requirement

Section Partners, Named Individually

Section Payment of Filing Fee and Docketing

Section Representation and Confidentiality of Records

Section Summons

Section Answer

Section 10 Answer to Amended Complaint

Section 1 Motion to Dismiss Not Allowed

Section 1 Pre-trial

Section 1 Effect of Failure to File Pre-Trial Brief or to Appear

Section 1 Appearance of the Parties

Section 1 Effect of Failure to File Pre-trial Brief or to Appear in

the Pre-trial Conference

Section 16 Record of Pre-Trial Results

Section 17 Pre-Trial Calendar

RULE 3 POWERS OF HEARING OFFICERS

Section 1 Powers of Hearing Officers

Section 2 Service of Subpoena

Section 3 Quashing a Subpoena Duces Tecum

RULE 4 PRELIMINARY ATTACHMENT

Section Grounds Upon Which Attachment May Issue

Section Issuance and Contents of Order

Section Affidavit and Bond Required

Section Condition of Applicant’s Bond

Section Manner of Attaching Property

Section Sheriff’s Return

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Section 7 What May be the Subject of Attachment and the Manner of Executing

the Same

Section 8 When Attached Property May Be Sold After Levy on Attachment

and Before Entry of Judgment

Section 9 Discharge of Attachment Upon Giving Counterbond

Section 10 Discharge of Attachment on Other Grounds

Section 11 When the Property Attached is Claimed by Third Person

Section 12 Satisfaction of Judgment out of Property Attached; Sheriff’s

Return

Section 13 Balance Due Collected Upon an Execution; Excess Delivered

to Judgment Obligor

Section 14 Disposition of Money Deposited

Section 15 Disposition of Attached Property Where Judgment is for Party

Against Whom Attachment was Issued

Section 16 Claim for Damages on Account of Improper, Irregular or

Excessive Attachment

RULE 5 PRELIMINARY INJUNCTION

Section 1 Preliminary Injunction Defined; who may Grant

Section 2 Grounds for Issuance of Preliminary Injunction

Section 3 Verified Application and Bond for Preliminary Injunction

or Temporary Restraining Order

Section 4 Preliminary Injunction not Granted Without Notice; Exception

Section 5 Grounds for Objection to, or for Motion of Dissolution of,

Injunction or Restraining Order

Section 6 When Final Injunction Granted

RULE 6 CONTEMPT

Section 1 Direct Contempt Punished Summarily

Section 2 Indirect Contempt to be Punished After Charge and Hearing

Section 3 Contempt Proceedings

Section 4 Hearing; Release on Bail

Section 5 Punishment for Indirect Contempt

Section 6 Imprisonment Until Order Obeyed

Section 7 Proceedings When Party Released on Bail Fails to Answer

Section 8 Hearing Officer May Release Respondent

Section 9 Review of Judgment or Order by the Director

RULE 7 CALENDAR AND ADJOURNMENTS

Section 1 Trial Calendar

Section 2 Notice of Trial

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Section 3 Continuous Trial

Section 4 Raffle of Cases

RULE 8 DEPOSITIONS AND DISCOVERIES

Section 1 Deposition Pending Action

Section 2 Effect of Taking Depositions

Section 3 Stipulations Regarding Taking of Depositions

Section 4 Period Within Which to Submit Answers to Written

Interrogatories

RULE 9 HEARING

Section Trial of Cases

Section Postponement of Hearings

Section Order of Trial

Section Agreed Statements of Facts

Section Period for Resolving Cases

Section Consolidation

RULE 10 EVIDENCE

Section 1 Evidence Required

Section 2 Documentary Evidence

Section 3 Director or Hearing Officer not Bound by Technical Rules

of Evidence

Section 4 Burden of Proof in Process Patents

Section 5 Power to Stop Further Evidence

Section 6 Equitable Principles to Govern Proceedings

RULE 11 DECISIONS AND ORDERS

Section 1 Rendition of Decisions

RULE 12 ADMINISTRATIVE PENALTIES AND SANCTIONS

Section 1 Administrative Penalties Imposable

RULE 13 JUDGMENTS, FINAL ORDERS AND ENTRY THEREOF

Section 1 Rendition of Judgments and Final Orders

Section 2 Entry of judgments and Final Orders

Section 3 Order and Writ of Execution

Section 4 Execution Pending Appeal

RULE 14 APPEAL

Section 1 Finality of Decision and Order

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Section 2 Appeal, How Perfected

FINAL PROVISIONS




VI. REVISED RULES AND REGULATIONS ON SETTLEMENT OF DISPUTES INVOLVING

TECHNOLOGY TRANSFER PAYMENTS AND THE TERMS OF A LICENSE INVOLVING THE

AUTHOR’S RIGHT TO PUBLIC PERFORMANCE OR OTHER COMMUNICATION OF HIS

WORK

Section 1 Title


Section 3 Jurisdiction of the Director General

Section 4 Jurisdiction of the Director

Section 5 Who may File a Complaint

Section 6 Contents of Complaint

Section 7 Escrow

Section 8 Mediation Process

Section 9 Notice to Settle

Section 10 Mediation Conference

Section 11 Appearance of Parties

Section 12 Effect of Failure to Appear at Mediation Conference

Section 13 Venue of the Mediation Conference

Section 14 Proceedings in case of Successful Settlement

Section 15 Confidentiality of Records

Section 16 Proceedings in case of Failure of Mediation

Section 17 Clarificatory Hearing

Section 18 Decision of Director General or Director

Section 19 Appeal to the Director General

Section 20 Appellant’s brief required

Section 21 Director’s comment

Section 22 Appeal to the Secretary of Trade and Industry

FINAL PROVISIONS


Section 24 Amendment




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VII. REGULATIONS ON INTER PARTES PROCEEDINGS (Petitions for

Cancellations of a Mark, Patent, Utility Model, Industrial Design,

Opposition to Registration of a Mark & Compulsory Licensing)

RULE 1 DEFINITION OF TERMS


RULE 2 INTER PARTES PROCEEDINGS, THE PARTIES TO THE PROCEEDINGS;

JURISDICTION; PROCEDURE; EVIDENCE

Section 1

Section 2 Parties in Inter Partes Proceedings

Section 3 Original Jurisdiction over Inter Partes Proceedings

Section 4 Right of Foreign Corporation to Sue in Trademark or Service

Mark Enforcement Action

Section 5 Jurisdiction of the Courts in Patent Cancellation

Section 6 Rules of Procedure to be Followed in the Conduct of Hearing

of Inter Partes Cases

Section 7 Powers of Hearing Officer

Section 8 Workflow/Procedure in Inter Partes Proceedings

Section 9 Summons and Answer

Section 10 Pre-trial

Section 11

Section 12 Conduct of hearings

Section 13 Order of trial

Section 14 Demurrer to Evidence Not Allowed

Section 15 Director or Hearing Officer Not Bound by Technical Rules

of Evidence

Section 16 Judgment on the Pleadings

Section 17 Summary Judgment

Section 18 Transcript

Section 19 Introduction of Document Belonging to Another Case

Section 20 Case Not to be Discussed Informally unless in Presence of

Both Parties

Section 21 Equitable Principles may be Applied

Section 22 Submission of Memoranda and Draft Decision

Section 23 Hearing Officer’s Report

RULE 3 CANCELLATION OF PATENTS

Section 1 Cancellation of Patents; -- Grounds

Section 2 Partial Cancellation

Section 3 Requirement of the Petition

23

Section 4 Notice of Hearing

Section 5

Section 6 Effect of Cancellation of Patent or Claim

Section 7 Patent Found Invalid May be Cancelled

RULE 4 CANCELLATION OF UTILITY MODEL REGISTRATION

Section 1 Grounds for Cancellation of Utility Model Registration

Section 2 Procedure for the Cancellation of Utility Model

Section 3 Effect of Cancellation of Utility Model Registration

RULE 5 CANCELLATION OF DESIGN REGISTRATION

Section 1 Grounds for the Cancellation of Design Registration


Section 3 Procedure

Section 4 Effect of Cancellation

RULE 6 PETITION FOR COMPULSORY LICENSING

Section 1 Patents Subject to Proceedings for Compulsory Licensing

Section 2 Who may File Petition for compulsory Licensing; Time for

Filing the Petition

Section 3 Grounds for Compulsory Licensing

Section 4 Requirement to Obtain a License on Reasonable Commercial

Terms

Section 5 When a Petition for Compulsory Licensing may be Granted Even

without Efforts to Obtain Authorization from the Patent Owner

Section 6 Notice to the Right Holder

Section 7 Compulsory Licensing of Patents Involving Semi-Conductor

Technology

Section 8 Compulsory License Based on Interdependence of Patents

Section 9 Form and Contents of Petition


Section 11 Publication of Notice

Section 12 Grant of License

Section 13 Terms and Conditions of Compulsory License

Section 14 Amendment of Compulsory License

Section 16 Surrender of the License by the Licensee

Section 17 Publication of the Amendment, Surrender, or Cancellation

of the License

RULE 7 OPPOSITION TO APPLICATION FOR REGISTRATION OF MARKS

Section 1

24

Section 2

Section 3 Contents of the Notice of Opposition

Section 4 Extension of Period for Filing the Verified Opposition

Section 5 Filing of an Opposition in a Form Other than the Original

RULE 8 CANCELLATION OF REGISTRATION OF MARKS

Section 1 Who may File a Petition for Cancellation

Section 2 When may a Petition be Filed

Section 3 Contents of Petition for Cancellation

Section 4 Verification of Petition

Section 5 Service of Petition and Notice of Hearing

Section 6 Power of the Bureau to Cancel the Mark in the Exercise of

Its Power to Hear and Adjudicate any Action to Enforce the Rights to

a Registered Mark

Section 7 Effect of Filing of a Suit before the Bureau or with the

Proper Court

Section 8 Cancellation of Registration

RULE 9 RECONSIDERATION; APPEAL


Section 2 Grounds of and Period for Filing Motion for Reconsideration

Section 3 Contents of Motion for Reconsideration and Notice Thereof

Section 4 Action upon Motion for Reconsideration

Section 5 Resolution of Motion

Section 6 Second Motion for Reconsideration

Section 7 Partial Reconsideration

Section 8 Remedy against Order Denying a Motion for Reconsideration

Section 9 Appeal to the Court of Appeals or Supreme Court

RULE 10 EXECUTION OF DECISIONS PENDING APPEAL

Section 1 Order of Execution

Section 2 Cancellation of Patent is Immediately Executory



Section 2 Entry of Judgments and Final Orders

FINAL PROVISIONS

Section 1 Coverage

Section 1.1


25



26

I．RULES AND REGULATIONS ON TRADEMARKS, SERVICE MARKS, TRADENAMES AND

MARKED OR STAMPED CONTAINERS

(as amended by Office Order No. 39 (2002), Order No. 40 (2002), Office

Order No. 20 (2001), Office Order No. 08 (2000), Office Order No. 17

(1998))

PART 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS

Rule 10 Title

These regulations shall be known as the “Trademark Regulations”. [As

amended by Office Order No. 08 (2000)]


Unless otherwise specified, the following terms shall have the meaning

provided in this Rule:

(a) “Bureau” means the Bureau of Trademarks of the Intellectual Property

Office;

(b) “Collective mark” means any visible sign designated as such in

the application for registration and capable of distinguishing the

origin or any other common characteristics, including the quality of

goods or services of different enterprises which use the sign under

the control of the registered owner of the collective mark;

(c) “Competent authority” for purposes of determining whether a mark

is well-known, means the Court, the Director General, the Director

of the Bureau of Legal Affairs, or any administrative agency or office

vested with quasi-judicial or judicial jurisdiction to hear and

adjudicate any action to enforce the rights to a mark;

(d) “Director” means the Director of the Bureau of Trademarks;

(e) “Director General” means the head of the Intellectual Property

Office;

(f) “Examiner” means the trademark examiner or any official or employee

of the Bureau of Trademarks authorized to examine applications for

registration or renewals thereof;

(g) “IP Code” means Republic Act No. 8293 otherwise known as the

Intellectual Property Code of the Philippines;

(h) “IPO Gazette” means the Intellectual Property Office’s own

publication where all matters required to be published under the IP

Code shall be published;

(i) “Mark” means any visible sign capable of distinguishing the goods

(trademark) or services (service mark) of an enterprise and shall

include a stamped or marked container of goods;

27

(j) “Office” means the Intellectual Property Office;

(k) “Regulations” means these set of rules and regulations and such

Rules of Practice in Trademarks and Service Marks as may be formulated

by the Director of Trademarks and approved by the Director General;

and

(l) “Trade name” means the name or designation identifying or

distinguishing an enterprise, also known or referred to as business

identifier.

Rule 101 Registrability

A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter

which may disparage or falsely suggest a connection with persons, living

or dead, institutions, beliefs, or national symbols, or bring them

into contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the

Philippines or any of its political subdivisions, or of any foreign

nation, or any simulation thereof;

(c) Consists of a name, portrait or signature identifying a particular

living individual except by his written consent, or the name, signature,

or portrait of a deceased President of the Philippines, during the

life of his widow, if any, except by written consent of the widow;

(d) Is identical with a registered mark belonging to a different

proprietor or a mark with an earlier filing or priority date, in respect

of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive

or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a

translation of a mark which is considered by the competent authority

of the Philippines to be well-known internationally and in the

Philippines, whether or not it is registered here, as being already

the mark of a person other than the applicant for registration, and

used for identical or similar goods or services; Provided, That in

determining whether a mark is well-known, account shall be taken of

the knowledge of the relevant sector of the public, rather than of

the public at large, including knowledge in the Philippines which has

been obtained as a result of the promotion of the mark;

(f) Is identical with, or confusingly similar to, or constitutes a

translation of a mark considered well-known in accordance with the

28

preceding paragraph, which is registered in the Philippines with respect

to goods or services which are not similar to those with respect to

which registration is applied for: Provided, That use of the mark in

relation to those goods or services would indicate a connection between

those goods or services, and the owner of the registered mark: Provided,

further, That the interests of the owner of the registered mark are

likely to be damaged by such use;

(g) Is likely to mislead the public, particularly as to the nature,

quality, characteristics or geographical origin of the goods or services.

Geographical indications are indications which identify certain goods

as originating in the territory of a country, or a region or locality

in that territory, where a given quality, reputation or other

characteristic of the goods is essentially attributable to its

geographical origin.

(h) Consists exclusively of signs that are generic for the goods or

services that they seek to identify;

(i) Consists exclusively of signs or of indications that have become

customary or usual to designate the goods or services in everyday

language or in bona fide and established trade practice;

(j) Consists exclusively of signs or of indications that may serve

in trade to designate the kind, quality, quantity, intended purpose,

value, geographical origin, time of production of the goods or rendering

of the services, or other characteristics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors

or by the nature of the goods themselves or factors that affect their

intrinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

As regards signs or devices mentioned in paragraphs (j), (k), and (l),

nothing shall prevent the registration of any such sign or device which

has become distinctive in relation to the goods or services for which

registration is requested as a result of the use that has been made

of it in commerce in the Philippines. The Office may accept as prima

facie evidence that the mark has become distinctive, as used in

connection with the applicant’s goods or services in commerce, proof

of substantially exclusive and continuous use thereof by the applicant

in commerce in the Philippines for five years before the date on which

the claim of distinctiveness is made.

The nature of the goods or services to which the mark is applied will

not constitute an obstacle to registration.

29

Rule 102 Criteria for Determining whether a Mark is Well-known

In determining whether a mark is well-known, the following criteria

or any combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of the mark,

in particular, the duration, extent and geographical area of any

promotion of the mark, including advertising or publicity and the

presentation, at fairs or exhibitions, of the goods and/or services

to which the mark applies;

(b) the market share, in the Philippines and in other countries, of

the goods and/or services to which the mark is applied;

(c) the degree of the inherent or acquired distinction of the mark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in the world;

(f) the exclusivity of registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether the

mark is a well-known mark; and,

(l) the presence or absence of identical or similar marks validly

registered for or used on identical or similar goods or services and

owned by persons other than the person claiming that his mark is a

well-known mark.

Rule 103 Trade Names or Business Names

(a) A name or designation may not be used as a trade name if by its

nature or the use to which such name or designation may be put, it

is contrary to public order or morals and if, in particular, it is

liable to deceive trade circles or the public as to the nature of the

enterprise identified by that name.

(b) Notwithstanding any laws or regulations providing for any obligation

to register trade names, such names shall be protected, even prior

to or without registration, against any unlawful act committed by third

parties. In particular, any subsequent use of the trade name by a third

party, whether as a trade name or a mark or collective mark, or any

such use of a similar trade name or mark, likely to mislead the public,

shall be deemed unlawful.

(c) The remedies provided for cancellation and infringement of marks

30

in Sections 153 to 156 and Sections 166 and 167 of the IP Code shall

apply to trade names mutatis mutandis.

(d) Any change in the ownership of a trade name shall be made with

the transfer of the enterprise or part thereof identified by that name.

However, such transfer or assignment shall be null and void if it is

liable to mislead the public, particularly as regards the nature, source,

manufacturing process, characteristics, or suitability for their

purpose, of the goods or services to which the mark is applied.

PART 2 RIGHT TO A MARK

Rule 200 How Marks are Acquired

The rights in a mark shall be acquired through registration made validly

in accordance with the law.

Rule 201 International Conventions and Reciprocity

(a) Any person who is a national or who is domiciled or has a real

and effective industrial establishment in a country which is a party

to any convention, treaty or agreement relating to intellectual property

rights or the repression of unfair competition, to which the Philippines

is also a party, or extends reciprocal rights to nationals of the

Philippines by law, shall be entitled to benefits to the extent necessary

to give effect to any provision of such convention, treaty or reciprocal

law, in addition to the rights to which any owner of an intellectual

property right is otherwise entitled by the Intellectual Property Code.

(b) The registration of a mark of such person shall be independent

of the registration in the country of origin and the duration, validity

or transfer in the Philippines of such registration shall be governed

by the IP Code and these Regulations.

Rule 202 Priority Right; Basis for Claiming Priority Right

(a) An application for registration of a mark filed in the Philippines

by a person referred to in Rule 201, and who previously duly filed

an application for registration of the same mark in one of those countries,

shall be considered as filed as of the day the application was first

filed in the foreign country.

(b) No registration of a mark in the Philippines by a person described

in this rule shall be granted until such mark has been registered in

31

the country of origin of the applicant.

(c) The country of origin of the applicant is the country in which

he is a national, domiciled, or has a bona fide and effective industrial

or commercial establishment.

(d) Nothing in this rule shall entitle the owner of a registration

granted under this rule to sue for acts committed prior to the date

on which his mark was registered in the Philippines; Provided, That,

notwithstanding the foregoing, the owner of a well-known mark, as

defined in the IP Code and these Regulations, that is not registered

in the Philippines, may, against an identical or confusingly similar

mark, oppose its registration, or petition the cancellation of its

registration or sue for unfair competition, without prejudice to

availing himself of other remedies provided for under the law.

(e) In like manner and subject to the same conditions and requirements,

the priority right may be based upon a subsequent regularly filed

application in the same foreign country: Provided, That any foreign

application that was made the basis of the priority right and filed

prior to such subsequent application has been withdrawn, abandoned,

or otherwise disposed of, without having been laid open to public

inspection and without leaving any rights outstanding, and has not

served as a basis for claiming a right of priority shall not thereafter

serve as a basis for claiming a right of priority.

Rule 203 Requirements for Applications Claiming Priority Right

An application with claim of priority right must be filed within six

months from the date the earliest foreign application was filed. Without

need of any notice from the Office, Bureau or examiner, the applicant

shall file an English translation of a certified copy of any of the

following within three months from the date of filing in the Philippines:

(a) Foreign application showing the date of filing

(b) Foreign registration indicating the date of filing. [as amended

by Office Order No. 39 (2002)]

Rule 204 Declaration of Actual Use

The Office will not require any proof of use in commerce in the processing

of trademark applications. However, without need of any notice from

the Office, all applicants or registrants shall file a declaration

of actual use of the mark with evidence to that effect within three

32

years, without possibility of extension, from the filing date of the

application. Otherwise, the application shall be refused or the mark

shall be removed from the register by the Director motu proprio.

Rule 205 Contents of the Declaration and Evidence of Actual Use

The declaration shall be under oath, must refer to only one application

or registration, must contain the name and address of the applicant

or registrant declaring that the mark is in actual use in the Philippines,

list the goods where the mark is attached; list the name or names and

the exact location or locations of the outlet or outlets where the

products are being sold or where the services are being rendered, recite

sufficient facts to show that the mark described in the application

or registration is being actually used in the Philippines and,

specifying the nature of such use. The declarant shall attach five

labels as actually used on the goods or the picture of the stamped

or marked container visibly and legibly showing the mark as well as

proof of payment of the prescribed fee. [As amended by Office Order

No. 08 (2000)]

PART 3 WHO MAY APPLY FOR A MARK

Rule 300 The Applicant

(a) Applicant may be a person or juridical person.

(b) Unless modified by this Part, all applications for a mark should

be in the name of the applicant(s) who may sign the application. If

there are more than one applicant, all of them should be named as applicant

but anyone may sign the application for and in behalf of all the

applicants.

Rule 301 Assigned Marks

In case the whole interest in the mark is assigned, the application

may be filed 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, each of the joint owners will sign the

application.

Rule 302 Representation; Address for Service

If the applicant is not domiciled or has no real and effective commercial

establishment in the Philippines, he shall designate by a written

33

document filed in the Office, the name and address of a Philippine

resident who may be served notices or process in proceedings affecting

the mark. The written document shall be submitted to the Office within

sixty days from filing date without need of any notice from the Office.

Such notices or services may be served upon the person so designated

by leaving a copy thereof at the address specified in the last designation

filed. If the person so designated cannot be found at the address given

in the last designation, such notice or process may be served upon

the Director. [As amended by Office Order No. 08 (2000)]

Rule 303 Applicant may be Represented by Attorney

The owner of a mark may file and prosecute his own application for

registration, or he may be represented by any attorney or other person

authorized to practice in such matters by the Office. The Office shall

not aid in the selection of an attorney or agent other than the furnishing

of the list of Attorneys or agents authorized to practice before the

Office.

Rule 304 Power of Attorney or Authorization

At the time of filing of an application, no power of attorney or

authorization is required. However, the Office may require any attorney

or other recognized person to submit within sixty days from notice

a power of attorney or authorization before he will be allowed to take

an initial or further action in any application or registration.

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. [As amended


Rule 305 Death, Insanity, Incapacity of Applicant

When the applicant dies, becomes insane or otherwise incapacitated,

the legally appointed executor, administrator, guardian, conservator

or representative of the dead or insane or incapacitated applicant

may prosecute the application in behalf of the heirs and

successors-in-interest of the applicant.

Rule 306 Signature and Other Means of Self-identification

(a) Where a signature is required, the Office shall accept:

(1) A hand-written signature; or

(2) The use of other forms of signature, such as a printed or stamped

signature, or the use of a seal, instead of a hand-written signature:

34

Provided, That where a seal is used, it should be accompanied by an

indication in letters of the name of the signatory.

(b) No attestation, notarization, authentication, 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

registration.

PART 4 TRADEMARK APPLICATION

Rule 400 Requirements of Application

All applications must be addressed to the Director and shall be in

Filipino or English and shall contain the following:

(a) A request for registration;

(b) The name and address of the applicant;

(c) The name of a State of which the applicant is a national or where

he has domicile; and the name of a State in which the applicant has

a real and effective industrial or commercial establishment, if any;

(d) Where the applicant is a juridical entity, the law under which

it is organized and existing;

(e) The appointment of an agent or representative, if the applicant

is not domiciled in the Philippines;

(f) Where the applicant claims the priority of an earlier application,

a declaration claiming the priority of that earlier application,

together with an indication of:

-- the name of the state with whose national Office the earlier

application was filed or if filed with an Office other than a national

Office, the name of that Office;

-- the date on which the earlier application was filed; and

-- where available, the application number of the earlier application;

(g) Where the applicant wishes to claim color as a distinctive feature

of the mark, a statement to that effect as well as the name or names

of the color or colors claimed and an indication, in respect of each

color, of the principal parts of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a statement to that

effect;

(i) A reproduction of the mark and facsimiles thereof as provided in

these Regulations;

(j) A transliteration or translation of the mark or of some parts of

the mark, as prescribed in these Regulations;

35

(k) The names of the goods or services for which the registration is

sought, grouped according to the classes of the Nice Classification,

together with the number of the class of the said Classification to

which each group of goods or services belongs;

(l) Where the application is for a collective mark, a designation to

that effect;

(m) A signature by, or other self-identification of, the applicant

or his representative;

(n) Power of Attorney if the filing is through a representative; and

(o) Sworn statement that the applicant is a small entity if such be

the fact.

Rule 401 Office Application Form

For the convenience of applicants, the Office shall draw up and make

available a standard application form which may be reproduced at will

by applicants and other persons at their own cost.

Rule 402 Label

The applicant may include the label as actually used or intended to

be used on the goods or a copy or duplicate made by photo engraving

or some similar process.

The mark must be bigger and more dominant than the generic term of

goods except in the case of medicine as required by law.

Rule 403 Drawing

(a) The drawing of the mark shall be substantially exact representation

thereof as actually used or intended to be used on or in connection

with, the goods or services of the applicant.

(b) A typed drawing may be accepted by the Examiner if no special

characteristics have to be shown such as design, style of lettering,

color, diacritical marks, or unusual forms of punctuation.

A computer print-out may also be accepted by the Examiner if it

substantially complies with the requirement that it must be the exact

representation of the mark.

(c) The provisions of this Rule shall, however be construed liberally

in determining whether the applications shall be considered complete

for the purpose of granting a filing date.

36

Rule 404 Drawing for a Service Mark may be Dispensed with in Certain

Cases

The drawing of a service mark may be dispensed with but the application

must contain an adequate description of such mark.

Rule 405 Drawing to be on Bristol Board

The Drawing must be made upon pure white paper of a thickness of a

Bristol board. The surface of the paper must be calendered and smooth.

Rule 406 Size of Board; “Sight”

The size of a sheet on which a Drawing is made must be exactly two

hundred ten millimeters (210 mm) by two hundred ninety-seven millimeters

(297 mm) or the size of an A4 paper. Nineteen millimeters (19 mm) from

its edges, a single marginal line is to be drawn, leaving the “sight”

precisely one hundred seventy-two millimeters (172 mm) by two hundred

fifty-nine millimeters (259 mm). Within this margin all work and

signatures must be included. One of the shorter sides of the sheet

should be regarded as its top.

Rule 407 Drawing to be with the Pen or by Other Processing Giving

Satisfactory Results

If colors are not claimed, all Drawings must be made with pen only

or by a 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,

and to shading. All lines must be clean, sharp, and solid, and they

must not be too fine or crowded. Surface shading, when used, should

be open.

Rule 408 The Name of the Owner to be within Marginal Lines

The name of the proprietor of the trademark, service mark or trade

name must be within the marginal lines and should not encroach upon

the drawing. It should be signed by the owner or his Attorney of record.

However, a printed or stamped signature or the use of seal accompanied

by an indication in letters of the name of signatory is also accepted.

Rule 409 When Board may be Turned on Its Side

When the view is longer than the width of the sheet, the sheet should

be turned on its side.

37

Rule 410 Manner of mailing the Drawing to the Bureau

Drawing transmitted to the Office should be sent flat, protected by

a sheet of heavy binder’s board, or should be rolled for transmission

in a suitable mailing tube. They should never be folded.

Rule 411 Color

Where color is a material feature of the mark as used or intended to

be used, the color or colors employed may be actually reproduced in

the drawings and facsimiles. Otherwise, a statement must be made giving

the name or names of the color or colors claimed indicating the principal

part or parts of the mark which are in such color or colors.

Rule 412 Informal Drawing

A Drawing not executed in conformity with the foregoing rules may be

accepted for the purpose of examination, but the Drawing must be

corrected or a new one furnished, as may be required, before the mark

can be published for opposition or the application allowed. Substitute

Drawings will not be accepted unless they have been required by the

Examiner or unless correction of original Drawing would require that

the mark or trade name be substantially entirely redrawn.

Rule 413 Use of an Old Drawing in a New Application

In an application filed in place of an abandoned or rejected application,

a new complete application is required, but the old Drawing, if suitable,

may be used. The application must be accompanied by a request for the

transfer of the Drawing, and by a permanent photographic copy, or an

order for such copy, of the Drawing to be placed in the original file.

A drawing so transferred or to be transferred cannot be amended.

Rule 414 The Small Facsimiles of the Drawing, How Prepared

The ten small facsimiles of the Drawing must be printed in black ink

or in color, if colors are claimed, one facsimile on Bristol board

and the other nine facsimiles on an ordinary coupon bond paper and

must be capable of being satisfactorily reproduced when published in

the IPO Gazette. The size of the sheet on which these facsimiles are

to be printed must be seventy millimeters (70 mm) long and thirty-five

millimeters (35 mm) wide.

Rule 415 Translation/Transliteration

A translation or transliteration of the mark or of some parts of the

mark must accompany the application if the mark or some parts of the

38

mark is/are foreign word(s), letter(s) and character(s), or foreign

sounding.

Transliteration is an act, process or instance of representing or

spelling of words, letters or characters of one language in the letters

and characters of another language or alphabet.

Translation is an act, process or instance of translating as rendering

from one language or representational system into another.

Rule 416 Nice Classification

The applicant must indicate the names of the goods or services for

which the registration is sought, grouped according to the classes

of the Nice Classification, together with the number of the class of

the Nice Classification to which each group of goods or services belongs.

(a) CLASSIFICATION OF GOODSTITLE Class 1 Chemical products used in industry, science, photography,

agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids or plates, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry.

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

2 Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; coloring matters; dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators

3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions, dentrifices

4 Industrial oils and greases (other than edible oils and fats and essential oils);lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, nightlights and wicks

5 Pharmaceutical, veterinary and sanitary substances; infants’; and invalids’ foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin

6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles); cables and wires (non-electric); lock-smiths’ work ;

39

metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores

7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators

8 Hand tools and instruments; cutlery, forks and spoons; side arms 9 Scientific, nautical, surveying and electrical apparatus and

instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers; calculating machines; fire-extinguishing apparatus

10 Surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth)

11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary

12 purposes Vehicles; apparatus for locomotion by land, air or water

13 Firearms; ammunition and projectiles; explosive substances; fireworks

14 Precious metals and their alloys and goods in precious metals or coated therewith ( except cutlery, forks and spoons); jewelry, precious stones; horological and other chronometric instruments

15 Musical instruments (other than talking machines and wireless apparatus)

16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding materials; photographs; stationery, adhesive materials (stationery); artists’ materials; paint brushes; typewriters and Office requisites (other than furniture); instructional and teaching material (other than apparatus);playing cards; (printers’) type and cliches (stereotype)

17 Gutta percha, india rubber, balata and substitutes, articles made from these substances, and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacturers; materials for packing, stopping or insulating; asbestos, mica and their products; hose pipes (non-metallic)

18 Leather and imitations of leather, articles made from these materials, and not included in other classes; skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

19 Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; road-making materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots

20 Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these material, or of plastic

21 Small domestic utensils and containers (not of precious metal, nor coated therewith);combs and sponges; brushes (other than paint brushes);brush-making materials; instruments and materials for cleaning purposes; steel wool; unworked or semi-worked glass (excluding glass used in building); glassware, porcelain and earthenware not included in other classes

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22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hair, capoc, feathers, seaweeds, etc.); raw textile materials

23 Yarns, threads 24 Tissues (piece goods); bed and table covers; textile articles not

included in other classes 25 Clothing, including boots, shoes and slippers 26 Lace and embroidery, ribbons and braids; buttons, press buttons,

hooks and eyes, pins and needles; artificial flowers 27 Carpets, rugs, mats and matting; linoleums and other materials for

covering existing floors; wall hangings (non-textile) 28 Games and playthings; gymnastic and sporting articles (except

clothing); ornaments and decorations for Christmas trees 29 Meat, fish, poultry and game; meat extracts; preserved, dried and

cooked fruits and vegetables; jellies, jams; eggs; milk and other dairy products; edible oils and fats; preserves, pickles

30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes pastry and confectionery, ices; honey, treachel; yeast, baking-powder; salt mustard; pepper, vinegar, sauces; spices; ice

31 Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt

32 Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.

33 Wines, spirits and liqueurs 34 Tobacco, raw or manufactured; smokers’ articles; matches (b) CLASSIFICATION OF BUSINESS OR SERVICES35 Advertising and business 36 Insurance and financial 37 Construction and repair 38 Communication 39 Transportation and storage 40 Material treatment 41 Education and entertainment 42 Miscellaneous

Rule 417 Broad Terms

In any application, the use of broad terms in identifying the goods,

business or services shall be unacceptable. Applicants whose

application are based on foreign registration shall be required to

specify the goods covered by such foreign registration in all cases

where the foreign registration used broad terms in identifying the

goods, business or services.

Rule 418 Single registration for goods and/or services

One application may relate to several goods and/or services, whether

they belong to one class or to several classes of the Nice Classification.

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Where goods and/or services belonging to several classes of the Nice

Classification have been included in one application, such an

application shall result in one registration.

Rule 419 Division of Applications

(a) Any application referring to several goods or services referred

to as the “initial application” may be divided by the applicant into

two or more applications hereafter referred to as the “divisional

applications” by distributing among the latter the goods or services

referred to in the initial application.

(b) A single class shall not be subdivided.

(c) The divisional applications must be submitted before examination

of the initial application or within two months from mailing date of

the first action of the Bureau.

(d) Upon receipt of the divisional applications, the Office shall cancel

the initial application together with its application number. New

application numbers shall be given to the divisional applications but

the filing date shall be the same as the filing date of the initial

application. The divisional applications shall likewise preserve the

benefit of the right of priority of the initial application.

PART 5 THE FILING DATE

Rule 500 Filing Date

Subject to the provisions on priority right, the filing date of an

application shall be the date on which the Office received the payment

for the required fee and the following indications and elements in

English or Filipino:

(a) An express or implicit indication that the registration of a mark

is sought;

(b) The identity of the applicant;

(c) Indications sufficient to contact the applicant or his

representative, if any;

(d) A reproduction of the mark whose registration is sought; and

(e) The list of the goods or services for which the registration is

sought.

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Rule 501 Application Number and Filing Date

(a) Before starting to examine the registrability of a mark, the Examiner

or such other personnel as the Director may authorize, shall examine

whether the application satisfies the requirements for the grant of

a filing date as provided in these Regulations. If the application

does not satisfy the filing date requirements, the Bureau shall notify

the applicant who shall, within a period of one month from mailing

date of the notice, complete or correct the application as required;

otherwise, the application shall be considered withdrawn.

(b) If the application did not satisfy the requirements for grant of

a filing date at the time that the filing fee and other indications

were received by the Office, the filing date that was given shall be

cancelled and a new filing date shall be entered in the records of

the Office. The new filing date shall be the date on which the Office

received the completed or corrected application as specified in the

notice to the applicant.

PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR REGISTRATION

CHAPTER 1 NATURE OF THE PROCEEDINGS

Rule 600 Application Prosecuted Ex Parte; Protests

An application for registration is prosecuted ex parte by the applicant;

that is, the proceedings are like a lawsuit in which there is a plaintiff

(the applicant) but no defendant, the court itself (the Examiner) acting

as the adverse party.

No attention shall be paid to ex parte statements or protests of persons

concerning pending applications to which they are not parties, unless

information of the pendency of these applications shall have been

voluntarily communicated by the applicants.

Rule 601 Proceedings a Contest between Examiner and the Applicant

An ex parte proceeding in the Office for the registration of a mark

is a law contest between the Examiner, representing the interest of

the public and the applicant (or his attorney), representing his own

private interests.

Rule 602 Applicant Supposed to Look after His Own Interests

The Office, represented by the Examiner, is not supposed to look after

the interest of an applicant. The law imposes that duty upon the applicant

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himself. The Examiner is charged with the protection of the interests

of the public and hence must be vigilant to see that no registration

issues for a mark contrary to law and these Regulations.

Rule 603 Preliminary Adverse Action of the Examiner Valuable to

Applicant

The positive value of a preliminary adverse action of the Examiner

should be fully appreciated by the applicant or his attorney. A

hard-fought application will produce a registration much more likely

to stand in court than a registration which has slid through the Office

easily. The reason for this is that every point raised by the Examiner

and finally decided by the Office in favor of the applicant will give

the applicant a prima facie standing on that point in court.

The Office is empowered by law to pass upon applications for registration

and, because of the authority vested in it, its decisions with respect

to the grant of a registration, or on any point connected with it,

are presumed to be correct by the courts.



A preliminary rejection by the Examiner is never to be taken literally.

An applicant should remember that the Examiner may not be actually

rejecting his application. The Examiner may in fact be quite prepared

to admit the application, and is only trying to give the applicant

a chance to explain away some reference or some difficulty rather than

have him wait until the registration is granted and become involved

in a litigation, when it may then be difficult for him to make the

explanation.

CHAPTER 2 MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION;

ACTION BY THE EXAMINER; RESPONSE BY THE APPLICANT; ABANDONMENT; REVIVAL

Rule 605 Order of Examination; Priority of Action

(a) Applications shall be examined for registrability in the order

in which the complete requirements for grant of filing date are received

by the Office. Ordinarily, the order of the application number assigned

to them by the Office will be followed and no application bearing a

higher application number shall be examined in advance of the

applications with lower application numbers unless the filing date

of the application bearing the higher number is earlier than those

bearing a lower number.

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(b) Priority of action and/or examination may be granted upon petition

under oath with payment of fees and upon order of the Director, to

trademark applications falling under any of the following:

1. Re-filing by the same registrant or assignee of a mark previously

registered but cancelled for failure to meet the maintenance

requirement.

2. Re-filing by the same applicant of a mark previously filed but

abandoned and can no longer be revived.

3. An application for registration of a mark, names or abbreviation

of names, logos of any nation, intergovernmental or international

organizations.

4. An application for registration of a mark, names, abbreviation of

names, logos of any sports competition conducted within a short period

of time or when periodically conducted, the TM registration is necessary

to promote goodwill or image before the commencement of the sports

activity.

5. An application for registration of mark, names, abbreviation of

names, logos of product and services of applicants introduced and/or

participating in a trade mission and/or exposition local or abroad

and will be conducted within a short period of time.

6. An application for registration of mark, names, abbreviations of

names, logos of a religious, social or charitable, educational activity

the early registration of which is necessary to achieve its purpose

or objective.

7. Domain names (as service mark); and,

8. Trademarks, servicemarks, and tradenames used or to be used in

Information and Communications Technology (ICT) infrastracture. [As



The Examiners shall have original jurisdiction over the examination

of all applications for registration and over their allowance for

publication in the IPO Gazette for purposes of opposition. Their

decision, when final, shall be subject to petition and appeal to the

Director. Applicants, their attorneys or agents shall take up the

problems arising from their pending applications only with the

respective Examiners in charge and with no other person in the Office.

Rule 607 Examination of the Application; Action by the Examiner

(a) If, after the examination, the applicant is found not entitled

to registration for any reason, he will be so notified by the Examiner.

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He will be advised of the reasons therefor and of any formal requirements

or objections, and he will be given such information and references

as may be helpful to him in the further prosecution of his application.

(b) All Examiners are required to include all grounds of objection

existing at the time of the issuance of an action in that action. Piece

meal action shall be prohibited.

Rule 608 Disclaimers

The basic purpose of disclaimers is to make of record, that a significant

element of a composite mark is not being exclusively appropriated apart

from the composite. The following portions of a mark when forming part

of the composite mark, must be disclaimed to permit registration, namely

(a) a generic term; (b) a descriptive matter in the composite mark;

(c) a matter which does not function as a trademark, or service mark

or a trade name.

Such disclaimer shall not prejudice or affect the applicant’s rights

then existing under some other law or thereafter arising in the

disclaimed matter, nor shall such disclaimer prejudice or affect the

applicant’s rights to registration on another application of later

date, where the disclaimed matter has become distinctive of the

applicant’s goods, business or services.

Where the examiner determines that any portion of a mark contains

unregistrable matter which must be disclaimed, he shall communicate

his finding to the Applicant by means of an Action document. If the

applicant fails to respond within the time allowed under these Rules,

the finding of the examiner shall become final and the unregistrable

matter shall be disclaimed. [as amended by Office Order No. 39 (2002)]

Rule 609 Interview with the Examiners: when no Interview is Permitted

Interviews with Examiners concerning applications pending before the

Office can be held only upon written request specifying the query he

would want to propound and after payment of the required fee, but in

respect of which the Examiner has the discretion to grant the interview

or instead reply to the query in writing. The interview shall take

place within the premises of the Office and during regular office hours

as specified by the Examiner. All interviews or conferences with

Examiners shall be reduced to writing and signed by the Examiner and

the applicant immediately after the conference. Such writing shall

form part of the records of the Office. Interviews for the discussion

of pending applications shall not be held prior to the first official

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action thereon.

Rule 610 Period for Response, Action by Applicant

The applicant has two months from the mailing date of any action of

the Examiner to respond thereto. Such response may be made with or

without amendment and must include such proper action by the applicant

as the nature of the action of the Examiner and the condition of the

case may require. The period to respond may be extended upon written

request and upon payment of the required fee but in no case shall the

total period to respond exceed four months from the mailing date of

the Examiner’s action requiring the response.

Rule 611 Communications Other than the Original

“Communication” shall mean any response filed with the Office except

compliance with filing date requirements. The Office shall accept

communications to it by telecopier, or by electronic means. When

communications are made by telefacsimile, the reproduction of the

signature, or the reproduction of the seal together with, where required,

the indication in letters of the name of the natural person whose seal

is used, must appear. Within twenty-four hours from receipt of the

telefacsimile by a machine of the Office, the Examiner shall confirm

the date of receipt of the telefacsimile by means of a notice requiring

the applicant to pay the cost, as may be established by the Office

from time to time, incurred by the Office to enable the Office to receive

such telefacsimile. The original copy of such communication and the

payment of the cost herein provided must be received by the Office

within one month from date of receipt of the telefacsimile. Otherwise,

the communication shall be deemed withdrawn and expunged from the

records. In all cases, the burden of proof lies on the applicant that

such documents have been received by the Office.

Rule 612 Re-examination

After response by the applicant, the application will be re-examined

or reconsidered by the Examiner, and if the registration is again refused

or formal requirements insisted upon, but not stated to be final, the

applicant may respond again.

Rule 613 Final Action

On the first or any subsequent re-examination or reconsideration, the

Examiner may state that the refusal of the registration or the insistence

upon a requirement is final. Thus, the applicant’s recourse is limited

47

to an appeal to the Director or to a compliance with the requirement

made by the Examiner.

Rule 614 Abandonment; Incomplete Response

If an applicant fails to respond, or to submit a complete response,

within the period given counted from the mailing date of an action

of the Examiner, the application shall be deemed abandoned as of the

day immediately following the last day of the aforesaid period.

Rule 615 Revival of Abandoned Application

(a) An abandoned application may be revived as a pending application

within three months from the date of abandonment, if it is shown to

the satisfaction of the Director, and upon payment of the required

fee, that the delay was due to fraud, accident, mistake, or excusable

negligence.

(b) A request to revive an abandoned application must be accompanied

by a statement of the causes of the delay in submitting the complete

response and by the proposed response, unless the same has been

previously filed. Any application not revived within the specified

time will be deemed forfeited upon the expiration of the three-month

period to revive.

(c) There shall be no revival of an abandoned application that has

been revived once before on the same issue.

Rule 616 Time less than Four Months; when Request for Extension should

be Made

(a) The applicant may be required to prosecute his application in a

time shorter than four months but not less than one month from the

mailing date of the examiner’s action whenever such shorter time is

deemed necessary or expedient. Unless the applicant is notified in

writing that response is required in less than four months, a maximum

period of four months is allowed.

(b) The time for reply, when a time less than four months has been

set, will be extended only for good and sufficient cause and for a

reasonable time specified. Any request for such extension must be filed

on or before the day on which the response of the applicant is due.

In all cases, the maximum time within which to submit a response to

an action shall not exceed four months from the mailing date of the

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action.

Rule 617 Suspension of Action by the Bureau

Action by the Bureau may be suspended upon written request of the

applicant for good and sufficient cause, for a reasonable time specified

and upon payment of the required fee. The Examiner may grant only one

suspension, and any further suspension shall be subject to the approval

of the Director. An Examiner’s action, which is awaiting a response

by the applicant, shall not be subject to suspension.

Rule 618 Provisional Allowance

If the only issue remaining in an application based on foreign

application claiming priority right is the submission of a certified

copy of the foreign or home registration, the Examiner may provisionally

allow the application and suspend the submission of the certified copy

of the foreign or home registration for a period not exceeding twelve

months counted from allowance. On request of the applicant and subject

to the approval of the Director and payment of the required fee, said

twelve month period may be extended for good cause by an additional

period not exceeding twelve months. Should the applicant fail to submit

the certified copy of the foreign or home registration within the maximum

period of twenty-four months counted from allowance, the applicant

may waive his claim to priority right in writing and request that the

application be considered based on intent to use. Said waiver and request

shall be filed within two months, without extension, counted from the

expiration of the maximum twenty-four month period without need of

any notice from the Office. Otherwise, the application shall be deemed

forfeited. After submission of the request for conversion to intent

to use and upon payment of the required fees, the application shall

be published by the Office for opposition. Furthermore, the declaration

of actual use shall be filed within three years without extension and

without need of notice counted from the date of the filing of request

for conversion. Otherwise, the application shall be refused or the

mark shall be removed from the register by the Director motu proprio.

[As amended by Office Order No. 08 (2000)]

Rule 619 Express Abandonment

An application may be expressly abandoned by filing with the Bureau

a written declaration of abandonment signed by the applicant himself

or by the assignee of record.

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CHAPTER 3 AMENDMENTS TO THE APPLICATION; RESPONSE TO OBJECTIONS OF

THE EXAMINER

Rule 620 Amendments to the Application

The application may be amended to correct formalities, to overcome

objections made by the Examiner, or for other reasons arising in the

course of examination.

Rule 621 Amendments to Description or Drawing

Amendments to the description or drawing of the mark may be permitted

only if warranted by the mark as shown on the labels originally filed,

but may not be made if the nature of the mark is changed thereby.

Rule 622 Manner of Making the Amendment

In every amendment the exact word or words to be stricken out or inserted

must be specified and the precise point indicated where the erasure

or insertion is to be made. All such amendments must be on sheets of

paper separate from the papers previously filed, and written on only

one side of the paper.

Rule 623 Prohibition against Marking of Papers or Records of the Office

by Applicants

The applicant or his representative shall not make any erasure, addition,

insertion, or mutilations of any papers or records of the Office.

PART 7 PUBLICATION, ALLOWANCE AND ISSUANCE OF CERTIFICATE OF

REGISTRATION

Rule 700 Publication in the IPO Gazette; End of Jurisdiction of the

Examiner

An application for registration is subject to opposition proceeding

before issuance of the certificate of registration. Thus, after

examination or re-examination of an application for registration, if

it should appear to the Examiner in charge of the examination thereof

that the applicant is entitled to have his mark registered, the mark

will, upon the recommendation of said Examiner, be ordered by the

Director to be published in the IPO Gazette for opposition, and the

applicant notified of such action.

The jurisdiction of an Examiner over an application ceases after the

Director has ordered the mark to be published for opposition.

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Rule 701 Examiner may Petition for the Remand to His Jurisdiction,

of an Allowed Application

After allowance and within one month from publication of the allowed

application, the Examiner may again exercise jurisdiction over an

application upon petition by him to the Director on the ground of newly

discovered ex parte objections to the registration of the mark.

After an application has been remanded to the Examiner, any amendment

recommended by the Examiner may be approved by the Director and may

be made without withdrawing the allowance, provided the payment for

the issuance of the certificate has not been received by the Office.

Rule 702 Examiner to be in Charge of Publication for Opposition;

Applications Confidential Prior to Publication

The Examiner shall be in charge of all matters relating to the publication

for opposition of all marks and trade names ordered by the Director

to be published as provided in these Regulations.

Access to files of pending applications will not be given to anyone

prior to publication for opposition of the mark or trade name or name

and other mark of ownership stamped on containers, without the written

authority of the applicant. However, an index of pending applications

stating the name and address of the applicant, a description of the

mark or trade name or name and other mark of ownership, the goods,

business or service or container with which the mark or trade name

or name or other mark of ownership is used, the class number, the

application number and filing date of the application will be available

for public inspection as soon as practicable after filing.

Rule 703 Allowance of application and Issuance of Certificate of

Registration

(a) Upon certification by the Director of the Bureau of Legal Affairs

that no notice of opposition, whether or not verified and whether or

not by means of the original copy, has been filed within one month

from the date of release for circulation of the IPO Gazette publishing

the application for opposition, and upon payment of the required fee,

the office shall issue the certificate of registration. The Director

of the Bureau of Legal Affairs shall issue such certification within

two months from the date of release for circulation of any IPO Gazette

publishing applications for opposition. The issuance of the certificate

of registration shall be published in the IPO Gazette and shall be

entered on the records of the Office.

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(b) If the application is deficient in any formal matter relating to

form, documents, or other papers necessary for the preparation and

issuance of the certificate of registration or for the publication

of such registration, the Examiner shall send a notice thereof to the

applicant. The applicant shall complete such deficiency within two

months from mailing date of the notice; otherwise the application shall

be declared abandoned. The abandoned application, however, may be

revived subject to the requirements of these Regulations.

PART 8 EFFECT AND NOTICE OF REGISTRATION

Rule 800 Rights Conferred

(a) The owner of a registered mark shall have the exclusive right to

prevent all third parties not having the owner’s consent from using

in the course of trade identical or similar signs or containers for

goods or services which are identical or similar to those in respect

of which the mark is registered where such use would result in a likelihood

of confusion. In case of the use of an identical sign for identical

goods or services, a likelihood of confusion shall be presumed.

(b) The exclusive right of the owner of a well-known mark which is

registered in the Philippines, shall extend to goods and services which

are not similar to those in respect of which the mark is registered:

Provided, That use of the mark in relation to those goods or services

would indicate a connection between those goods or services and the

owner of the registered mark: Provided further, That the interests

of the owner of the registered mark are likely to be damaged by such

use.

Rule 801 Duration

A certificate of registration shall remain in force for ten years;

Provided, That, without need of any notice from the Office, the

registrant shall file a declaration of actual use and evidence to that

effect, or shall show valid reasons based on the existence of obstacles

to such use, as prescribed by these Regulations, within one year from

the fifth anniversary of the date of the registration of the mark.

Otherwise, the Office shall remove the mark from the Register. Within

one month from receipt of the declaration of actual use or reason for

non-use, the Examiner shall notify the registrant of the action taken

thereon such as acceptance or refusal.

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Rule 802 Non-use of a Mark when Excused

(a) Non-use of a mark may be excused if caused by circumstances arising

independently of the will of the trademark owner. Lack of funds shall

not excuse non-use of a mark.

(b) The special circumstances to excuse non-use in affidavits of non-use

shall not be accepted unless they are clearly beyond the control of

the registrant such as the prohibition of sale imposed by government

regulation.

Rule 803 Use of a Mark in a Different Form

The use of the mark in a form different from the form in which it is

registered, which does not alter its distinctive character, shall not

be ground for cancellation or removal of the mark and shall not diminish

the protection granted to the mark.

Rule 804 Use of a Mark for Goods Belonging to the Class Registered

The use of a mark in connection with one or more of the goods or services

belonging to the class in respect of which the mark is registered shall

prevent its cancellation or removal in respect of all other goods or

services of the same class.

Rule 805 Use of a Mark by Related Company

The use of a mark by a company related with the registrant or applicant

shall inure to the latter’s benefit, and such use shall not affect

the validity of such mark or of its registration: Provided, That such

mark is not used in such manner as to deceive the public. If use of

a mark by a person is controlled by the registrant or applicant with

respect to the nature and quality of the goods or services, such use

shall inure to the benefit of the registrant or applicant.

Rule 806 Certificates of Registration; Records and Copies in Registered

Cases

A certificate of registration of a mark shall be prima facie evidence

of the validity of the registration, the registrant’s ownership of

the mark, and of the registrant’s exclusive right to use the same in

connection with the goods or services and those that are related thereto

specified in the certificate.

After a mark or trade name or name or other mark of ownership has been

registered, the statement, the drawings, and all documents relating

to the case are subject to general inspection, and copies will be

53

furnished upon payment of the required fees.


The certificate of registration of a mark shall include a reproduction

of the mark and shall mention its number, the name and address of the

registered owner and, if the registered owner’s address is outside

the country, his address for service within the country; the dates

of application and registration; if priority is claimed, an indication

of this fact, and the number, date and country of the application,

basis of the priority claims; the list of goods or services in respect

of which registration has been granted, with the indication of the

corresponding class or classes; and such other data as the Regulations

may prescribe from time to time.

Rule 808 Use of Indications by Third Parties for Purposes Other than

Those for which the Mark is Used

Registration of the mark shall not confer on the registered owner the

right to preclude third parties from using bona fide their names,

addresses, pseudonyms, a geographical name, or exact indications

concerning the kind, quality, quantity, destination, value, place of

origin, or time of production or of supply, of their goods or services:

Provided, That such use is confined to the purposes of mere

identification or information and cannot mislead the public as to the

source of the goods or services.

PART 9 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR REGISTRATION

CHAPTER 1 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER

BY THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES


The Examiner shall have original jurisdiction over all matters relating

to voluntary surrender, voluntary cancellation, voluntary amendment,

and voluntary disclaimer of registration, and his decisions, when final,

shall be subject to appeal to the Director in the same manner that

final decisions of the Examiners in respect of applications for

registration may be appealed to the Director. In all such matters,

registrants or assignees, their attorneys or agents will deal with

him exclusively, or with such other officials and employees whom the

Director may designate to assist him.

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Rule 901 Cancellation upon Application by Registrant

Upon application of the registrant, the Office may permit any

registration to be surrendered for cancellation, and upon cancellation

the appropriate entry shall be made in the records of the Office. The

application for cancellation of registration shall be under oath and

shall be duly authenticated or legalized if the registrant is a

non-resident.

Rule 902 Amendment or Disclaimer of Registration

(a) Upon application of the registrant and payment of the prescribed

fee, the Office, for good cause, may permit any registration to be

amended or to be disclaimed in part: Provided, That the amendment or

disclaimer does not alter materially the character of the mark.

Appropriate entry shall be made in the records of the Office upon the

certificate of registration or, if said certificate is lost or destroyed,

upon a certified copy thereof.

(b) Upon application of the registrant and payment of the prescribed

fee, a replacement certificate may be issued by the Office stating

on its face the fact that it is a replacement and bearing the same

entry regarding the amendment or disclaimer that was made on the

certified copy of a lost or destroyed certificate. A duplicate original

of such replacement certificate shall be kept in the records of the

Office.

Rule 903 Correction of Mistakes Made by the Office

Whenever a material mistake in a registration incurred through the

fault of the Office is clearly disclosed by the records of the Office,

a certificate stating the fact and nature of such mistake shall be

issued without charge, recorded and a printed copy thereof shall be

attached to each printed copy of the registration. Such corrected

registration shall thereafter have the same effect as the original

certificate; or in the discretion of the Director of the Administrative,

Financial and Human Resource Development Service Bureau a new

certificate of registration may be issued in accordance with these

Regulations and without charge. All certificates of correction

heretofore issued and the registration to which they are attached shall

have the same force and effect as if such certificates and their issuance

had been authorized by the IP Code.

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Rule 904 Corrections of Mistakes Made by Applicant

(a) Whenever a mistake is made in a registration and such mistake occurred

in good faith through the fault of the applicant, the Office may issue

a certificate upon the payment of the prescribed fee: Provided, That

the correction does not involve any change in the registration that

requires republication of the mark.

(b) The application for correction must be under oath and must specify

the mistake for which correction is sought, the manner in which it

arose and must state that it occurred in good faith.

(c) A copy of the certificate of correction shall be attached to each

copy of the registration.

Rule 905 Surrender, Cancellation, Amendment, Disclaimer, and

Correction to be Given Publicity

Notice of the cancellation, surrender, amendment, disclaimer, and

correction shall be published in the IPO Gazette. The cost of publication

shall be for the account of the registrant or assignee of record, except

when the notice of correction refers to a mistake of the Office.

CHAPTER 2 RECORDING OF ASSIGNMENTS OF REGISTRATION; OR ANY OTHER

INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING

LICENSES, DIVISION OF REGISTRATION

Rule 906 Assignment and Transfer of Application and Registration

An application for registration of a mark, or its registration, may

be assigned or transferred with or without the transfer of the business

using the mark.

Such assignment or transfer shall, however, be null and void if it

is liable to mislead the public particularly as regards the nature,

source, manufacturing process, characteristics, or suitability for

their purpose, of the goods or services to which the mark is applied.

Rule 907 Form of Assignment or Transfer

The assignment of the application for registration of a mark, or of

its registration, shall be notarized and require the signature of the

applicant, registrant or the assignee of record in case of subsequent

assignment. Transfers by mergers or other forms of succession may be

evidenced by the deed of merger or by any document supporting such

transfer.

56

Rule 908 Recordal of Assignment or Transfer

Assignments and transfers shall have no effect against third parties

until they are recorded at the Office. Assignments and transfers of

registration of marks shall be recorded at the Office on payment of

the prescribed fee; assignment and transfers of applications for

registration shall, on payment of the same fee, be provisionally

recorded, and the mark, when registered, shall be in the name of the

assignee or transferee.

Rule 909 Assignment, Other Instruments Affecting the Registration,

or License, and Translation, to be Submitted in Duplicate

The original document of assignment, other instrument or license and

its translation, together with a signed duplicate thereof, shall be

submitted. After recordal, the Office shall retain the signed duplicate,

and return the original to the party filing the instrument with a notation

of the fact of recording.

Rule 910 Date of Receipt of Instrument to be Recorded Considered Its

Date of Recording

The date of recording of an assignment, other document or license is

the date of its receipt at the Office in proper form and accompanied

by the full recording fee.

Rule 911 A New Certificate of Registration must be Issued to Assignee

Upon written request of an assignee of record, and upon payment of

the required fee, a new certificate of registration for the unexpired

period of the registration must be issued to the assignee.


in Office

Any action in any proceeding in the Office which may or must be taken

by a registrant or applicant may be taken by the assignee to the exclusion

of the original owner, registrant, applicant or earlier assignee,

provided the assignment has been recorded. Unless such assignment has

been recorded, no assignee will be recognized to take action.

Rule 913 Clearance of Trademark License Agreement Prior to Recordal

Any trademark license agreement shall be applied for clearance with

the Documentation Information and Technology Transfer Bureau (DITTB)

of the Office and shall be recorded only upon certification by the

Director of the DITTB that the agreement does not violate Sections

57

87 and 88 of the IP Code.

Rule 914 Division of Registration

At any time during the life of a certificate of registration, and upon

payment of the required fee, the owner of the registered mark may request

in writing and under oath that the registration be divided. The request

must state the name and address of the owner of record or his

representative of record, the mark, the number and date of issuance

of the certificate to be divided, the goods and/or services into which

the registration is to be divided specifying the number of the class

of said goods and/or services according to the Nice Classification.

The Bureau may grant the request to divide the registration provided

that the division shall not involve any change in the registration

that requires republication of the mark and provided that a single

class shall not be subdivided.

Rule 915 Cancellation of Original Certificate and Issuance of Transfer

Certificates of Registration

Upon approval of the request to divide a registration and payment of

the required fee, the Director shall order that the original certificate

be cancelled and new certificates of registration be issued for the

remainder of the term covered by the original certificate.

Rule 916 Contents of Transfer Certificates of Registration

The transfer certificates of registration shall include a reproduction

of the mark and shall mention their numbers, the name and address of

the registered owner, and if the registered owner’s address is outside

the country, his address for service within the country; the name of

the registered owner of the original certificate in case the owner

of the transfer certificate be a different person; the date of request

for division of the original registration; the date of the issuance

of the transfer certificate of registration; the date of filing and

registration of the original registration; if priority is claimed,

an indication of this fact, and the number, date and country of the

application which is the basis of the priority claims; the list of

goods or services covered by the transfer certificate of registration

with the indication of the corresponding class or classes; and such

other data as the Regulations may prescribe from time to time.

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CHAPTER 3 RENEWAL OF REGISTRATION

Rule 917 Request for Renewal

A certificate of registration may be renewed for periods of ten years

at its expiration upon payment of the prescribed fee and upon filing

of a request. The request shall contain the following indications:

(a) An indication that renewal is sought;

(b) The name and address of the registrant or his successor-in-interest,

hereafter referred to as the “right holder”;

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the registration

concerned to be renewed;

(e) Where the right holder has a representative, the name and address

of that representative;

(f) The names of the recorded goods or services for which the renewal

is requested or the names of the recorded goods or services for which

the renewal is not requested, grouped according to the classes of the

Nice Classification to which that group of goods or services belongs

and presented in the order of the classes of the said Classifications;

(g) A signature by the right holder or his representative; and

(h) In case there has been material variation in the manner of display,

five sets of the new labels must be submitted with the application.

Rule 918 When to File Request for Renewal

Such request shall be in Filipino or English and may be made at any

time within six months before the expiration of the period for which

the registration was issued or renewed, or it may be made within six

months after such expiration on payment of the additional fee herein

prescribed.


The Examiner shall have original jurisdiction over applications for

renewal registration, and his decisions, when final, are subject to

appeal to the Director under the conditions specified in these

Regulations for appeals to the Director from the final decisions of

the Examiners in respect of applications for registration. If the Office

refuses to renew the registration, it shall notify the registrant of

his refusal and the reasons therefor.

Rule 920 Need for Appointing a Resident Agent

If the registrant, assignee or other owner of the mark which is the

59

subject of a petition for renewal registration is not domiciled in

the Philippines, and if the petition for renewal is being filed by

a person who is not his representative or resident-agent of record,

the power of attorney appointing the person filing the petition as

the representative of the registrant must be filed and, upon payment

of the required fee, must be recorded before the Office can act upon

the petition for renewal.

Rule 921 Renewal of Prior Act Registration; Use and Proof Thereof,

Required

Marks registered under Republic Act No. 166 shall remain in force and

effect but shall be deemed to have been granted under the IP Code and

shall be renewed within the time and manner provided for renewal of

registration by these Regulations; provided, that marks whose

registration have a remaining duration as of January 1, 1998 of more

than six and one-half years shall be required to submit the declaration

and evidence of actual use prescribed in these Regulations within one

year following the tenth and fifteenth anniversaries of the registration

or renewal registration under Republic Act No. 166; provided, further,

that marks whose registrations have a remaining duration of six and

one-half years or less may no longer be subject to the requirement

of declaration and evidence of use but shall be renewed within the

time and in the manner provided for renewal of registration by these

Regulations and, upon renewal, shall be reclassified in accordance

with the Nice Classification. The renewal shall be for a duration of

ten years. Trade names and marks registered in the Supplemental Register

under Republic Act No. 166 whose registration, including any renewal

thereof, was subsisting as of January 1, 1998 shall remain in force

but shall no longer be subject to renewal.

Rule 922 Prior Act Certificate of Registration to be Surrendered

With the application for the renewal of a registration made under

Republic Act No. 166 the certificate of registration to be renewed

must be surrendered to the Office, if the official copy of such

certificate of registration is not in the files of the Office.

After he has surrendered the certificate of registration granted under

Republic Act No. 166, the applicant for renewal may, if he so desires,

obtain a certified copy thereof, upon payment of the usual fees.

Rule 923 Refusal of Renewal Registration; Appeal to the Director

The application for renewal may be refused by the Examiner for any

60

valid reason. The application for renewal may then be completed or

amended in response to the refusal, or the case may be appealed to

the Director if the refusal has become final.

Rule 924 Certificate of Renewal of Registration

The Office may issue a certificate of renewal of registration in all

cases where the request for renewal is approved and the registrant

requests in writing and pays the required fee for the issuance of said

certificate. The certificate of renewal of registration shall contain

the number of the certificate of registration and the mark being renewed,

the date of original issuance thereof, the duration of the renewal

registration, all the data required to be contained in a certificate

of registration provided in these Regulations including any limitation

contained in the order of the Director approving the renewal of the

registration.

PART 10 REGISTRATION OF STAMPED OR MARKED CONTAINER

Rule 1000 Rules or registration of Trademarks and Service Marks to

Apply

Unless otherwise provided by these Regulations, the registration of

container marks shall be the same as that of trademarks and service

marks.

Rule 1001 “Stamped or Marked Container” Defined

“Stamped or marked container” means, any container of goods upon which

a mark is impressed or molded which will give a distinctive effect,

provided that the mark cannot be deleted or removed from the container.

The stamp or mark on the container must be legible and visible for

registration.

Rule 1002 No Drawing Required

No drawing is required for this registration. In lieu of the drawing,

two photographs of the container, duly signed by the applicant or his

representative, showing clearly and legibly the mark sought to be

registered, shall be submitted. The photographs shall be of the same

size as required for trademarks and service marks. No “sight” is

required.

Rule 1003 No Labels Required; Sample may be Required

If the Examiner so requires, the applicant or his representative shall

61

bring a sample of the container to the Bureau on a date and time specified

by the Examiner. The sample shall not be left in the Office and shall

be brought by the applicant or his representative with him immediately

after the viewing thereof by the Examiner.



The function of determining whether or not an application for

registration or renewal thereof should be allowed or denied under the

facts disclosed in the application and in the references consulted

by the Examiner and under the applicable law (statutory and decisional),

is a quasi-judicial function and involves the exercise of judicial

discretion.

Thus, with respect to such function, the Director cannot lawfully

exercise direct control, direction and supervision over the Examiners

but only general supervision, exercised through a review of the

recommendation they may make for the grant of registration and of other

actions, and through a review of their adverse decisions by petition

or appeal.


Action of an Examiner on a Matter not Subject to Appeal

Petition may be filed with the Director from any repeated action or

requirement of the Examiner which is not subject to appeal 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.

The mere filing of a petition will not stay the maximum period of four

months counted from the mailing date of the Examiner’s action subject

of the appeal for replying to an Examiner’s action nor act as a stay

of other proceedings.


Every applicant for the registration of a mark or other mark of ownership

may, upon the final refusal of the Examiner to allow registration,

appeal the matter to the Director. Appeal may also be taken to the

62

Director from any adverse action of the Examiner in any matter over

which these Regulations give original jurisdiction to the Examiner.

A second adverse decision by the Examiner on the same grounds may be

considered as final by the applicant, petitioner, or registrant for

purposes of appeal.


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.

If an application is considered abandoned for failure of the applicant

to respond to an action of the examiner on the merits e.g. citation

of confusingly similar marks, the order declaring the application as

abandoned which has become final shall likewise have the effect of

res judicata.


Any petition or appeal must be taken by filing the petition in duplicate

or a notice of appeal, as the case may be, and payment of the required

fee within two 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 period herein provided shall, in no case, exceed the

maximum period of four months from the mailing date of the action appealed

from.


In case of an appeal, the appellant shall, within two months, without

extension, 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.


The Examiner shall furnish a written statement in answer to the petition

or appellant’s brief, as the case may be, within two 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.

63

Rule 1107 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 month from the date copy of such answer is received by him.


The decision or order of the Director shall become final and executory

fifteen 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 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.


The appellant shall, within one 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.


The Director shall submit within one month his comments on the

appellant’s brief if so required by the Director General.


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


The following regulations shall apply to correspondence between

registrants/applicants 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.

64

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 Trademarks.

All Office letters with respect to matters within the jurisdiction

of the Bureau must be sent in the name of the Director of Trademarks.

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 mark or trade

name or name or other mark of ownership sought to be registered, the

application number and the filing date of the application.

(f) Letters relating to registrations. When the letter concerns a

registered mark, it shall state the name of the registrant, the mark

registered, the number and date of the certificate of registration,

and the classes of goods or services according to the Nice

Classification.

(g) Subjects on which information cannot be given. The Office cannot

respond to inquiries as to whether or not a mark is acceptable for

registration in advance of the filing of an application.

On the propriety of making an application for the registration of a

mark, the applicant must judge for himself or consult an attorney-at-law.

The Office is open to him, and its records pertaining to all registrations

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 trademark law.


in Advance

Express charges, freight, postage, telephone, telefacsimile including

65

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 Applications pending on Effective Date of the IP Code

The following regulations shall apply to applications pending on the

effective date of the IP Code on January 1, 1998 (referred to in this

Section as “pending applications”):

Section 3.1 Amendment of Pending Applications

On or before December 15, 1998, all pending applications may be amended,

if practicable, to bring them under the provisions of the IP Code.

Accordingly, applicants with pending applications for registration

in the former Supplemental Register who wish to pursue the grant of

registration may amend their applications to comply with requirements

for registration under the IP Code.

Section 3.2 Filing Date of Pending Applications; Declaration of Actual

Use

Pending applications shall retain their priority date or original date

of filing with the Bureau of Patents Trademarks and Technology Transfer.

Applicants which elected to prosecute their applications under Republic

Act No. 166 and its Implementing Rules and Regulations under which

they were required to submit proof of use of the Mark, particularly

with reference to applications for registrations based on use in the

Philippines, shall file the corresponding declaration of actual use

with evidence to that effect as prescribed by these Regulations, without

need of any notice from the Office, within three years from the

effectivity of these Regulations, without possibility of extension.

Otherwise, the application shall be refused or the mark shall be removed

from the register by the Director motu prorio. [As amended by Office

Order No. 17 (1998)]

Section 3.3 Processing of Pending Applications

Pending applications amended in accordance with this Section shall

be proceeded with and registration thereof granted in accordance with

these Regulations. Where there are no applicable provisions in the

IP Code and these Regulations, pending applications that are not amended

in accordance with this Section shall be proceeded with and registration

66

thereof granted in accordance with the laws and regulations under which

they were filed.

Section 3.3.1 Interference

In all cases where interference could have been declared under Republic

Act No. 166, as amended, and its implementing rules and regulations,

as amended, but the same can not be declared such as when one of the

applications has been amended and prosecuted under the IP Code while

the other application or applications were not, the application which

first meets all the requirements for registration shall be allowed

and published for opposition in the IPO Gazette in accordance with

these Regulations. The other applicant or applicants shall have the

right to file a notice of opposition, without need of paying the filing

fee, to determine whether or not any of the applicant/s and or oppositor/s

has the right to the registration of the mark, and, all other issues

including the registrability of the mark.

Section 3.4 Duration of Registration

A certificate of registration granted to an application filed on or

before December 31, 1997 and therefore pending on the effective date

of the IP Code on January 1, 1998 shall be subject to the same conditions

for maintenance as provided in these Regulations and shall have a term

of twenty years or ten years as follows:

(a) Twenty years, in the case of pending applications published for

opposition prior to the effectivity of these Regulations with respect

to which no notice of opposition was filed within the prescribed period

under Republic Act No. 166 of thirty days from release for circulation

of the corresponding Official Gazette (BPTTT or IPO) as certified by

the Caretaker/Officer-in-Charge or Director of the Bureau of Legal

Affairs.

(b) Ten years, in the case of pending applications published for

opposition after the effectivity of these Regulations with respect

to which no notice of opposition is filed as certified by the

Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs

in accordance with these Regulation.

(c) Ten years, in the case of pending applications subject of opposition

or any other proceeding before the Office.

Section 3.5 Duration of Renewal of Registration Granted under Republic

Act No. 166

The renewal of a registration granted under Republic Act No. 166 shall

67

have the same term of ten years and shall be subject to the same

requirements for renewal as a registration granted under the IP Code.

Section 3.6 Abolition of the Supplemental Register

(a) In compliance with the state policy declared in the IP Code, the

IPO shall endeavor to issue certificates of registration that can stand

up to scrutiny in infringement and other cases. Considering that

(i) marks or trade names that are not registrable on the principal

register under Republic Act No. 166 are registrable in the Supplemental

Register;

(ii) marks or trade names not registrable on the said principal register

are not registrable under the IP Code; and

(iii) the Supplemental Register was abolished by the IP Code,

all applications for registration in the Supplemental Register pending

upon effectivity of the IP Code shall be examined in accordance with

the IP Code and such applications which do not meet requirements for

registration under the IP Code shall be rejected. [as amended by Office

Order No. 40 (2002)]

(b) Release of Certificates of Registration of Applications in the

Supplemental Register Allowed Prior to Effectivity of the IP Code.

A Certificate of registration may be released covering an application

for registration in the Supplemental Register provided that all the

following requirements occurred prior to the effectivity of the IP

Code, i.e. on or before 31 December 1997:

(1) such application had been allowed and the allowance was approved

by Atty. Rosario N.E. Macatangay, Chief of the Trademark Examining

Division of the then Bureau of Patents Trademarks and Technology

Transfer as evidenced by the original copy of the Allowance in the

file wrapper of the application;

(2) Notice of Issuance of Certificate of Registration had been issued

as evidenced by the original copy of the Notice in the file wrapper

of the application or the applicant’s original copy thereof, and

(3) all the required fees were fully paid for by the applicant as evidenced

by the original copy of the Official Receipt, a photocopy of which

shall be submitted by the applicant to the Bureau for inclusion in

the corresponding file wrapper. The Registration shall remain in force

for twenty years from the date of allowance, without possibility of

renewal, and subject to compliance with all the requirements for

maintenance of the registration. The mark shall be published in the

IPO Gazette and may be subject to cancellation on grounds provided

68

under the law. [as amended by Office Order No. 40 (2002)]

Section 3.7 Renewal of a Registration in the Supplemental Register

The following regulations shall apply to the renewal of a registration

in the Supplemental Register under Republic Act No. 166:

Section 3.7.1 Registrations Subsisting on January 1, 1998

The registration, or extension thereof, in the Supplemental Register

under Republic Act No. 166 of a trade name or mark which was subsisting

on the effectivity of the IP Code on January 1, 1998 shall remain in

force for the entire term for which it was granted. However, such

registration shall no longer be subject to renewal.

Section 3.7.2 Registrations, or Extension Thereof, with Term Ending

on or Before December 31, 1997

The renewal of a registration, or any extension thereof, in the

Supplemental Register whose term ended on or before December 31, 1997

may be granted as follows:

(a) The application for renewal of registration in the Supplemental

Register was seasonably filed including full payment of the required

fee pursuant to Section 15 of Republic Act No. 166 and the applicable

regulations;

(b) Full compliance with all the requirements for renewal shall have

been made by the applicant on or before December 31, 1998;

(c) The renewal shall be for a term of twenty years counted from the

date of expiration of the registration or renewal subject of the

application; and,

(d) The renewal herein granted shall no longer be subject to renewal.

Section 3.7.3 Notice to Comply

For the effective implementation of Section 3.7.2(b), all concerned

examiners together with the Chief of the Trademark Examining Division

of the former Bureau of Patents Trademarks and Technology Transfer

have been directed to mail to the applicants the corresponding notice

to comply with requirements for renewal of registration, or extension

thereof, on or before October 31, 1998. Further, applicants who have

not received said notice may request for a copy thereof from the examiner

concerned who shall issue said copy within two working days from receipt

of the request.

69

Section 4 Repeals

All rules and regulations, memoranda, circulars, and memorandum

circulars and parts thereof inconsistent with these Regulations

particularly the Rules of Practice in Trademark Cases, as amended,

are hereby repealed; Provided that such earlier rules or parts thereof

shall be continued only for the purpose of prosecuting applications

for registration in the principal register filed as of December 31,

1997 wherein the applicants expressly elected to prosecute said

applications under Republic Act No. 166; and, Provided, further, that

there are no applicable provisions in these Regulations.


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 affected thereby.


These rules and regulations shall take effect fifteen days after

publication in a newspaper of general circulation.

70

II. RULES & REGULATIONS ON INVENTIONS

PART 1 DEFINITIONS




(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


(f) “IPO Gazette” means the Intellectual Property Office’s own



(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 PATENTABILITY

Rule 200 Patentable Inventions

Any technical solution of a problem in any field of human activity

which is new, involves an inventive step and is industrially applicable

shall be patentable. (Sec. 21, IP CODE)

Rule 201 Statutory Classes of Invention

An invention may be, or may relate to;

(a) A useful machine;

(b) A product;

(c) Process or an improvement of any of the foregoing;

(d) Microorganism; and

(e) Non-biological and microbiological processes. (Sec. 21, IP CODE)

71

Rule 202 Non-patentable Inventions

The following shall be excluded from patent protections:

(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. (Sec. 22,

IP CODE)

Rule 203 Novelty

An invention shall not be considered new if it forms part of a prior

art. (Sec. 23, IP CODE)

Rule 204 Prior Art

Prior art shall consist of:

(a) Everything made available to the public by means of a written or

oral disclosure, by use, or in any other way, before the filing date

or the priority date of the application claiming the invention. Prior

use which is not present in the Philippines, even if widespread in

a foreign country, cannot form part of the prior art if such prior

use is not disclosed in printed documents or in any tangible form.

(b) The whole contents of an application for a patent, utility model,

or industrial design registration, published under Sec. 44 of 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 application:

Provided, That the application which has validly claimed the filing

date of an earlier application under Section 31 of IP CODE, shall be

prior art with effect as of the filing date of such earlier application:

Provided further, That the applicant or the inventor identified in

both applications are not one and the same, (Sec. 24, IP CODE):

Where two or more applications are independently filed with respect

to the same invention, and the later applications are filed before

the first application or earlier application is published, the whole

contents of the first or earliest filed application published in

72

accordance with Sec. 44, IP CODE on or after the filing date or priority

date of the later filed application shall be novelty destroying with

respect to the later filed application.

Rule 205 Non-prejudicial Disclosure

The disclosure of information contained in the application during the

twelve months preceding the filing date or the priority date of the

application shall not prejudice the applicant on the ground of lack

of novelty if such disclosure was made by:

(a) The Inventor;

(b) A foreign patent office, the Bureau or the Office, and the information

was contained (a) in another application filed by the inventor and

should not have been disclosed by the office, or (b) in an application

filed without the knowledge or consent of the inventor by a third party

which obtained the information directly or indirectly from the inventor;

or

(c) A third party which obtained the information directly or indirectly

from the inventor.

For the purposes of subsection (a) “inventor” also means any person

who, at the filing date of application, had the right to the patent.

(Sec. 25, IP CODE)

Rule 206 Inventive Step

(a) 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. (Sec. 26, IP CODE)

(b) Only prior art made available to the public before the filing date

or priority date shall be considered in assessing inventive step.

Rule 207 Person Skilled in the Art

The person skilled in the art is presumed to be an ordinary practitioner

aware of what was common general knowledge in the art at the relevant

date. He is presumed to have knowledge of all references that are

sufficiently related to one another and to the pertinent art and to

have knowledge of all arts reasonably pertinent to the particular

problems with which the inventor was involved. He is presumed also

to have had at his disposal the normal means and capacity for routine

work and experimentation.

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Rule 208 Industrial Applicability

An invention which can be produced and used in any industry shall be

industrially applicable. (Sec. 27, IP CODE)

PART 3 RIGHT TO A PATENT

Rule 300 Right to a Patent

The right to a patent belongs to the inventor, his heirs, or assigns.

When two or more persons have jointly made an invention, the right

to a patent shall belong to them jointly (Sec. 28, IP CODE).


The application may be filed by the actual inventor(s) or in the name

of his heirs, legal representative or assigns.

Rule 302 Inventions Created Pursuant to a Commission

The person who commissions the work shall own the patent, unless

otherwise provided in the contract. (Sec. 30.1, IP CODE)

Rule 303 Inventions Made in the Course of Employment

In case the employee made the invention in the course of his employment

contract, the patent shall belong to:

(a) The employee, if the inventive 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 invention is the result of the performance

of his regularly-assigned duties, unless there is an agreement, express

or implied, to the contrary. (Sec. 30.2, IP CODE)


If two or more persons have made the same invention separately and

independently of each other, the right to the patent shall belong to

the person who filed an application for such invention, or where two

or more applications are filed for the same invention, to the applicant

who has the earliest filing date or, the earliest priority date (Sec.

29, IP CODE).

Where two or more applications for the same invention made separately

and independently of each other have the same filing date, or

priority-date the patent will be issued jointly to the applicants of

all such applications.

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Rule 305 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 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 months from the date of filing in the

Philippines (Sec. 31, IP CODE).

This six-month period may be extended by the Director for a maximum

of six months upon showing of good cause or in compliance with treaties

to which the Philippines is or may become a member.

Rule 306.1 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 306.2

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 306.3

If certain elements of the invention 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 306.4

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 months from the filing date to submit

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.

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The certified copy of foreign applications mentioned in Rule 305 shall

be the copy of the priority application(s) as duly certified to be

a true or faithful reproduction thereof by the Industrial Property

Office which received it or any other office which has official custody

of the foreign application.

PART 4 THE PATENT APPLICATION

Rule 400 The Patent Application

An application for a patent shall be in Filipino or English and shall

be filed in writing either directly to the Bureau or by post and must

be addressed to the Director. The application shall contain the

following:

(a) A request for the grant of a patent;

(b) A description of the invention;

(c) Drawing(s) necessary for the understanding of the invention;

(d) One or more claims; and

(e) An abstract.

Rule 401 Payment of Fees

An application shall be subject to the payment of the filing fee, the

search fee and publication fee (1st publication) within one month after

the filing date of the application.

The application shall be deemed forfeited for non-payment of these

fees.

Rule 402 Marking of Documents; Acknowledgment

The Bureau shall mark the documents making up the application with

the date of the receipt. After receipt of the full payment of the required

fees, the Bureau may issue an acknowledgment stating the application

number, name of applicant and title of the invention.

Rule 403 Form of Request; Office Application Form

The request shall be made on a form drawn up by the Office. For the

convenience of applicants, the Office shall draw up and make available

a standard application form which may be reproduced at will by applicants

and other persons at their own cost.

Rule 404 The Request

The request shall contain the following:

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(a) Petition for the grant of a patent;

(b) Applicant’s name and address;

(c) Title of the invention;

(d) Inventor’s name;

(e) If with claim for convention priority it shall contain the file

number, country of origin and the date of filing in the said country

where the application was first filed;

(f) Name and address of the resident agent/representative (if any);

and

(g) Signature of the applicant or resident agent/representative.

Rule 405 Disclosure and Description of the Invention

The application shall disclose the invention in a manner sufficiently

clear and complete for it to be carried out by a person skilled in

the art.

Rule 406 Test for enabling Disclosure

The test for enabling disclosure is whether the persons to whom it

is addressed could, by following the directions therein, put the

invention into practice.

Rule 407 Content of the Description

(1) The description shall:

(a) Specify the technical field to which the invention relates;

(b) Indicate the background art which, as far as known to the applicant,

can be regarded as useful for understanding the invention, for drawing

up the search report and for the examination, and, preferably, cite

the documents reflecting such art;

(c) Disclose the invention, as claimed, in such terms that the technical

problem (even if not expressly stated as such) and its solution can

be understood, and state any advantageous effects of the invention

with reference to the background art;

(d) Briefly describe the figures in the drawings, if any;

(e) When there are drawings, there shall be a brief description of

the several views of the drawings and the detailed description of the

invention shall refer to its different parts, as shown in the views,

by use of reference letters or numerals (preferably the latter);

(f) Describe in detail at least one way of carrying out the invention

claimed using examples where appropriate and referring to the drawings,

if any; and

(g) Indicate explicitly, when it is not obvious from the description

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or nature of the invention, the way in which the invention is capable

of exploitation in industry.

(2) The description shall be presented in the manner and order specified

in paragraph 1, unless because of the nature of the invention, a different

manner or a different order would afford a better understanding and

a more economic presentation.

Rule 408 Requirements of Applications Relating to Biological Materials

and Microorganisms

Where the application concerns a microbiological process or the product

thereof and involves the use of a microorganism which cannot be

sufficiently disclosed in the application in such a way as to enable

the invention to be carried out by a person skilled in the art, and

such material is not available to the public, the invention shall only

be regarded as being disclosed if:

(a) A culture of the microorganism has been deposited in a depositary

institution before filing the application;

(b) The depositary institution and the file number of the culture deposit

are stated in the application. If this information is not yet available

at the time of filing the application, the said information shall be

submitted within two months from request of the Examiner. Publication

of the application under Section 44, IP CODE shall be held pending

submission of said information; and

(c) The application as filed gives relevant information as is available

to the applicant on the characteristics of the microorganism.

Rule 409 Requirements of Application Relating to Biological Materials

and Microorganisms before Allowance

An application which concerns a microbiological process or the product

thereof and involves the use of any novel strain of microorganism shall

be allowed only when the following conditions are met:

(a) A deposit was made in a recognized international depositary

authority;

(b) Proof of such deposit together with the proper identification or

deposit number assigned by the depositary is submitted; and

(c) That the depositary should be under the contractual obligation

to place the culture in permanent collection, and to provide access

to persons who shall have interest therein in regard to matters relating

to the patent application as published.

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Rule 410 Title of the Invention

The title of the invention should be as short and specific as possible,

and should appear as a heading on the first page of the specification.

All fancy names are not permissible in the title.

Rule 411 Abstract

The abstract 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 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.


(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 or 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;

(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 application,

indicating the place and number of words or drawing omitted.

Rule 413

(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,

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and also, in another view, so much only the old structure as will suffice

to show the relation of the invention therewith.

Rule 414.1 Uniform Standard of Excellence Suited to Photolithographic


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

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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

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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,

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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 agent’s or attorney’s 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

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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.

Rule 415 Claim

(a) The specification must conclude with a claim particularly pointing

out and distinctly claiming the part, improvement, or combination which

the applicant regards as his invention.

(b) The application may contain one or more independent claims in the

same category, (product, process, apparatus or use) where it is not

appropriate, having regard to the subject matter of the application,

to cover this subject matter by a single claim which shall define the

matter for which protection is sought. Each claim shall be clear and

concise, and shall be supported by the description.

(c) One or more claims may be presented in dependent form, referring

back and further limiting another claim or claims in the same application.

Any dependent claim which refers to more than one other claim (“multiple

dependent claim”) shall refer to such other claims in the alternative

only. A multiple dependent claim shall not serve as a basis for any

other multiple dependent claim. For fee calculation purpose a multiple

dependent claim will be considered to be that number of claims to which

direct reference is made therein. Furthermore, any claim depending

on a multiple dependent claim will be considered to be that number

of claims to which direct reference is made in that multiple dependent

claims. In addition to the other filing fees, any original application

which is filed with, or is amended to include, multiple dependent claims

must have to pay the prescribed additional fees. Claims in dependent

form shall be construed to include all the limitations of the claims

incorporated by reference into the dependent claim. A multiple dependent

claim shall be construed to incorporate by reference all the limitations

of each of the particular claims in relation to which it is being

considered.

(d) The claim or claims must conform to the invention as set forth

in the description made in the specification, and the terms and phrases

used in the claims must find clear support or antecedent basis in the

said description, so that the meaning of the terms in the claims may

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be ascertainable by reference to the description. Claims shall not,

except where absolutely necessary, rely in respect of the technical

features of the invention, on references to the description or drawings.

In particular, they shall not rely on such references as: “as described

in part xxx of the description” or, “as illustrated in figure xxx of

the drawings”.

Rule 416 Form and Content of the Claims

The claims shall define the matter for which protection is sought in

terms of the technical features of the invention. Wherever appropriate

the claims shall contain:

(a) a statement indicating the designation of the subject matter of

the invention and those technical features which are necessary for

the definition of the claimed subject matter but which, in combination,

are part of the prior art;

(b) a characterizing portion preceded by the expression “characterized

in that” or “characterized by” -- stating the technical features which,

in combination with the features stated in sub-paragraph (a), it is

desired to protect; and

(c) If the application contains drawings, the technical features

mentioned in the claims shall preferably, if the intelligibility of

the claim can thereby be increased, be followed by reference signs

relating to these features and placed between parentheses. These

reference signs shall not be construed as limiting the claim.

Rule 417 Claims Incurring Fee

Any application comprising more than five 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 incurs payment of a claims fee. The claims fee shall be payable

within one 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 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 418 Presentation of the Application Documents

(a) All papers for an application for an invention patent 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

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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 1 ½ 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.

(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 claims of an invention patent must be written

with the lines numbered in sets of five and the number appearing on

the left side margin.

(d) The description, the claims and the abstract may contain chemical

or mathematical formulas. The description and the abstract may contain

tables. The claims may contain tables only if their subject-matter

makes the use of tables desirable. Tables and chemical or mathematical

formulas may be placed sideways on the sheet if they cannot be presented

satisfactorily in an upright position thereon; sheets on which tables

or chemical 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 grant,

specification, claims, drawings and abstract) 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.

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(h) Margins

The margins of the documents shall be within the following ranges:

Top: 2 cm - 4 cm

Left side: 2.5 cm - 4 cm

Right side: 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 copies.

Rule 419 Models, when Required

A model may be required when the invention sought to be patented cannot

be sufficiently described in the application. The Examiner shall notify

the applicant of such requirement, which will constitute an official

action in the case. When a model has been received in compliance with

the official requirement, the date of its filing shall be entered on

the file wrapper. Models not required nor admitted will be returned

to the applicants. When a model is required, the examination may be

suspended until it shall have been filed.

Rule 419.1 Requisites for the Model

The model, when required, must clearly exhibit every feature of the

machine which form the subject of a claim of invention, but should

not include other matter than that covered by the actual invention

or improvement, unless it be necessary to the exhibition of the invention

in a working model.

Rule 419.2 Material Required for the Model; Working Models

The model must be neatly and substantially made of durable material,

but when the material forms an essential feature of the invention,

the model should be constructed of that material.

A working model may be required if necessary to enable the office to

fully and readily understand the precise operation of the machine.

Rule 419.3 Models, when Returned to Applicant

In all applications which have been rejected or become abandoned, the

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model, unless it be deemed necessary that it be preserved in the Office,

may be returned to the applicant upon demand and at his expense; and

the model in any pending case may be returned to the applicant upon

the filing of a formal abandonment of the application signed by the

applicant in person and any assignee.

Models belonging to patented cases shall not be taken from the Office

without the authorization by the Director.

Rule 419.4 Models Filed as Exhibits in Contested Cases

Models filed as exhibits in contested cases may be returned to the

parties at their expense. If not claimed within a reasonable time,

they may be disposed of at the discretion of the Director.


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.


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 for patent or the patent may be served.

(a) If there are two or more agents appointed by the applicant, the

Office shall forward all actions to the last 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.

(b) Revocation of Power of Attorney. -- A power of attorney or

authorization may be revoked at any stage in the proceedings of a case

upon proper notification to the Director General, and, when revoked,

the Office will notify the attorney or agent of such revocation and

shall communicate directly with the applicant or with such other

attorney or agent as he may later appoint.

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(a) 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 and returned to the sender, by his direct order.

(b) 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 by or

at the instance of the Director.

PART 5 WHO MAY APPLY FOR A PATENT

Rule 500 Who may Apply for a Patent

Any person, natural or juridical, may apply for a patent. If the applicant

is not the inventor, the Office may require him to submit proof of

his authority to apply for a patent.


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 patent in the name of

the applicant, his heirs or assignee.

Rule 502 Assigned Invention and Patents

In case the whole interest in the invention 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.


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.

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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 Bureau 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 Bureau shall require proof of such authority.


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 thumbmarks, 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 letters patent.

PART 6 FILING DATE AND FORMALITY EXAMINATION

Rule 600 Filing Date Requirements

The filing date of a patent application shall be the date on which

the Office received the following elements in English or Filipino:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and,

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

Rule 600.1 Incomplete application

Where the application refers to a drawing or drawings, it shall not

be considered complete if the drawing or drawings are not included

in the application.

Rule 600.2

For purposes of obtaining a filing date, the Bureau may accept a copy

of the application received by the resident agent by telefax, subject

to submission of the original copy within two months from the filing

date.

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Rule 601 According a Filing Date

The Office shall examine whether the patent application satisfies the

requirements for the grant of filing date as provided in these

Regulations. If the filing date cannot be accorded, the applicant shall

be given an opportunity to correct the deficiencies. If the application

does not contain all the elements indicated in these regulations, the

filing date should be that date when all the elements are received.

If the deficiencies are not remedied within two months from the date

on which the application was initially presented to the Office, the

application shall be considered withdrawn (Sec. 41, IP CODE).

Rule 602 Late-filed or Missing Drawings

(1) If the formality examination reveals that the drawings were filed

after the filing date of the application, the Bureau shall send a notice

to the applicant that the drawings and the references to the drawings

in the application shall be deemed deleted unless the applicant requests

within two months that the application be granted a new filing date

which is the date on which the drawings were filed.

(2) If the formality examination reveals that the drawings were not

filed, the Bureau shall require applicant to file them within two months

and inform the applicant that the application will be given a new filing

date which is the date on which the drawings are filed, or, if they

are not filed in due time, any reference to them in the application

shall be deemed deleted.

(3) The new filing date shall be cited in all succeeding correspondences

between the Bureau and the applicant.

Rule 603 Formality Examination

If a patent application has been accorded a filing date and the required

fee has been paid within one month, compliance with other requirements

will be checked. Such other requirements may relate to the following:

(a) Contents of the request for grant of a Philippine patent;

(b) Priority documents if with claim of convention priority (i.e.,

file number, date of filing and country of the priority applications);

(c) Proof of authority, if the applicant is not the inventor;

(d) Deed of assignment;

(e) Payment of all fees, (e.g. excess claims)

(f) Signatures of the applicants;

(g) Identification of the inventor; and

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(h) Formal drawings.

Rule 604 Unity of Invention

(a) The application shall relate to one invention only or to a group

of inventions forming a single general inventive concept. (Sec. 38.1,

IP CODE)

(b) If several independent inventions which do not form a single general

inventive concept are claimed in one application, the Director may

require that the application be restricted to a single invention. A

later application filed for an invention divided out shall be considered

as having been filed on the same day as the first application: Provided

that the later application is filed within four months after the

requirement to divide becomes final, or within such additional time,

not exceeding four months, as may be granted. Provided further, That

each divisional application shall not go beyond the disclosure in the

initial application. (Sec. 38.2, IP CODE)

Rule 604.1

The fact that a patent has been granted on an application that did

not comply with the requirement of unity of invention shall not be

a ground to cancel the patent (Sec. 38.3, IP CODE).

Rule 605 Requirements for Unity of Invention

(a) The requirement of unity of invention shall be fulfilled only when

there is a technical relationship among those inventions involving

one or more of the same or corresponding special technical features.

The expression “special technical features” shall mean those technical

features that define a contribution which each of the claimed inventions,

considered as a whole makes over the prior art.

(b) The determination whether a group of inventions is so linked as

to form a single general inventive concept shall be made without regard

to whether the inventions are claimed in separate claims or as

alternative within a single claim.

(c) A plurality of independent claims in different categories may

constitute a group of inventions linked to form a single general

inventive concept, the link being e.g. that between a product and the

process which produces it; or between a process and an apparatus for

carrying out the process.

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(d) Three different specific combinations of claims in different

categories which are permissible in any one application are the

following:

(1) In addition to an independent claim for a given product, an

independent claim for a process specially adopted for the manufacture

of the product, and an independent claim for a use of the product;

or

(2) In addition to an independent claim for a given process, an

independent claim for an apparatus or means specifically designed for

carrying out the process; or

(3) In addition to an independent claim for a given product, an

independent claim for a process specially adapted for the manufacture

of the product, and an independent claim for apparatus or means

specifically designed for carrying out the process.

Rule 606 Reconsideration for Requirement

(a) If the applicant disagrees with the requirement of division, he

may request reconsideration and withdrawal or modification of the

requirement, giving the reasons therefor. In requesting

reconsideration, the applicant must indicate a provisional election

of one invention for prosecution, which invention shall be the one

elected in the event the requirement becomes final.

(b) The requirement for division will be reconsidered on such a request.

If the requirement is repeated and made final, the principal Examiner

will, at the same time, act on the claims of the invention elected.

Rule 607 Appeal from requirement for Division

After a final requirement for division, the applicant, in addition

to making any response due on the remainder of the action, may appeal

from the requirement. The prosecution on claims of the elected invention

may be continued during such appeal. Appeal may be deferred until after

final action on or allowance of the claims of the invention elected.

Appeal may not be allowed if reconsideration of the requirement was

not requested.

Rule 608 Subsequent Presentation of Claims for Different Invention

If, after an official action on an application, the applicant presents

claim directed to an invention divisible from the invention previously

claimed, such claims, if the amendment is entered, will be rejected

and the applicant will be required to limit the claims to the invention

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previously claimed.

Rule 609 Election of Species

In the first action on an application containing a generic claim and

claims restricted separately to each of more than one species embraced

thereby, the Examiner, if in his opinion, after a complete search,

the generic claim presented is allowable, shall require the applicant

in his response to that action to elect the species of his invention

to which his claim shall be restricted, if no generic claim is finally

held allowable.

Claims directed neither to the species nor to the genus of the disclosed

invention may be allowed. Markush type claims, i.e., claims which

enumerate in alternative manner, members or variations which are

properly claimable as species claims may likewise be allowed, provided

that the amount of the fees payable by the applicant/s shall be computed

depending on the number of members or variations enumerated in the

Markush type claims.

Rule 610 Separate Application for Invention Not Elected

The inventions which are not elected after a requirement for division

may be the subject of separate applications which will be examined

in the same manner as original applications. However, if such an

application is filed before the original application is patented or

withdrawn, and if it is identical with the papers constituting an exact

copy of the original papers which were signed and executed by the

applicant, signing and execution of the applicant may be omitted; such

application may consist of the filing fee, a copy of the drawings

complying with rules relating to drawings and filed, together with

a proposed amendment canceling the irrelevant claims or other matters.

Rule 611 Divisional Application

The applicant may file a divisional application on a pending application

before the parent application is withdrawn, abandoned or patented,

provided that the subject matter shall not extend beyond the content

of the parent application.

The divisional application shall be accorded the same filing date as

the parent application, and shall have the benefit of any right to

priority.

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Rule 612 Information Concerning Corresponding Foreign Application for

Patents

The applicant shall, at the request of the Director, furnish him with

the date and number of any application for a patent filed by him abroad,

hereafter referred to as the “foreign application”, relating to the

same or essentially the same invention as that claimed in the application

filed with the Office and other documents relating to the foreign

application. (Sec. 39, IP CODE)

Rule 612.1

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 patent 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 adjudication of the

application.

Rule 612.2 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.

PART 7 CLASSIFICATION AND SEARCH


An application that has complied with the formal requirements shall

be classified and a search shall be conducted to determine the prior

art. (Sec. 43, IP CODE).

Rule 701

The Office shall use the International Patent Classification.

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Rule 701.1 Content of the Intellectual Property Search Report

The Intellectual Property Search Report is drawn up on the basis of

the claims, description, and the drawings as follows:

(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 and inventive step of the invention.

(b) The search report shall distinguish between cited documents

published before the date of priority claimed, between such date of

priority and the date of filing, and on or after the date of filing.

(c) The search report shall contain the classification of the subject

matter of the application in accordance with the International Patent

Classification.

(d) The search report may include documents cited in a search established

in the corresponding foreign application.

PART 8 PUBLICATION AND REQUEST FOR EXAMINATION

Rule 800 Publication of Application

(a) The application shall be published in the IPO Gazette together

with a search document established by or on behalf of the Office citing

any document or documents that reflect prior art, after the expiration

of eighteen months from the filing date or priority date.

(b) The application will not be published if it has been finally refused

or withdrawn or deemed to be withdrawn before the termination of the

technical preparation for publication.

(c) The application to be published shall contain the bibliographic

data, any drawing as filed and the abstract.

(d) The Office shall communicate to the applicant the date and other

information regarding the publication of the application and draw his

attention to the period within which the request for substantive

examination must be filed.

(e) After publication of a patent application, any interested party

may inspect the application documents filed with the Office.

(f) The Director General, subject to the approval of the Secretary

of Trade and Industry, may prohibit or restrict the publication of

an application, if in his opinion, to do so would be prejudicial to

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the national security and interests of the Republic of the Philippines.

(Sec. 44, IP CODE)

Rule 801 Confidentiality before Publication

An application, which has not yet been published, and all related

documents, shall not be made available for inspection without the

consent of the applicant. (Sec. 45, IP CODE).

Rule 802 Observation of Third Parties

Following the publication of the application, any person may present

observations in writing concerning the patentability of the invention.

Such observations shall be communicated to the applicant who may comment

on them. The Office shall acknowledge and put such observations and

comment in the file of the application to which it relates. (Sec. 47,

IP CODE)

Rule 803 Request for Substantive Examination

The application shall be deemed withdrawn unless within six months

from the date of publication under these rules, a written request to

determine whether a patent application meets the requirements of

Patentability as provided for by the IP CODE, and the fees have been

paid on time.

Rule 803.1

Withdrawal of the request for examination shall be irrevocable and

shall not authorize the refund of any fee. (Sec. 48, IP CODE)

Rule 804 Rights Conferred by an Application after Publication

The applicant shall have all the rights of a patentee under Sec. 76,

of the IP CODE against any person who, without his authorization,

exercised any of the rights conferred under Section 71 of said law

in relation to the invention claimed in the published application,

as if a patent has been granted for that invention: Provided, That

the said person had:

(a) Actual knowledge that the invention that he was using was the subject

matter of a published application; or

(b) Received written notice that the invention that he was using was

the subject matter of a published application being identified in the

said notice by its serial number: Provided, That the action may not

be filed until after the grant of a patent on the published application

and within four years from the commission of the acts complained of

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(Sec. 46, IP CODE).

Rule 805 Citation and references

Should domestic patents be cited, their numbers and dates, the names

of the patentees, and the classes of inventions must be stated. Should

foreign patents be cited, their nationality or country, numbers and

dates and the names of the patentees must be stated, and such other

data must be furnished as may be necessary to enable the applicant

to identify the patents cited. In citing foreign patents, in case part

of the patent be involved, the particular pages and sheets containing

the parts relied upon must be identified. Should non-patent publications

be cited, the author (if any), title, date, relevant pages or plates,

and place of publication, or place where a copy can be found, shall

be given.

PART 9 THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN

THE EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL CONSIDERATIONS

Rule 900 Applications Prosecuted Ex Parte

An application is prosecuted ex parte by the applicant; that is, the

proceedings are like a lawsuit in which there is a plaintiff, but no

defendant, the court itself acting as the adverse party.

Rule 901 Proceedings, a Contest between the Examiner and the Applicant

An ex parte proceeding in the Bureau is a law contest between the Examiner,

representing the public and trying to give the inventor the least

possible monopoly in return for his disclosure, and the applicant or

his attorney trying to get as much monopoly as possible.

Rule 902 Applicant supposed to Look after His Interest

The Bureau, represented by the Examiner, is not supposed to look after

the interests of an applicant. The Examiners are charged with the

protection of the interest of the public, and hence must be vigilant

to see that no patent issues for subject matter which is not patentable,

and is already disclosed in prior inventions and accessible to the

public at large.

Rule 903 Preliminary Adverse Actions of the Examiner Valuable to

Applicant

The positive value of preliminary adverse actions of the Examiner should

be fully appreciated by the applicant and his attorney. A hard-fought

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application will produce a patent much more likely to stand in court

than a patent which has slid through the Bureau easily. This is so

for two reasons: first, the rejections have given the applicant or

his attorney suggestions of strengthening amendments so that his claims

have been made infinitely less vulnerable than would be otherwise

possible; secondly, every point raised by the Examiner and finally

decided by the Bureau in favor of the applicant will give him a prima

facie standing on that point in court. The Office is empowered by law

to pass upon applications for patents and, because of the authority

vested in it, its decisions with respect to the granting of an application

or on any point connected with it will be presumed to be correct by

the courts.



A rejection by the Examiner is never to be taken literally. An applicant

should remember that the Examiner may not be actually rejecting his

invention. The Examiner may in fact be quite prepared to admit the

invention over the references to the prior art. He may be merely rejecting

the applicant’s claims, that is, the way in which the applicant has

expressed his invention.

An Examiner will frequently make a blanket rejection on some reference

to the prior art just to be helpful to the applicant - just to give

the applicant a chance to explain away some reference and make a change

in his claims to avoid it, rather than to wait until the patent is

granted and is involved in a litigation, when it may be too late to

make the explanation.

Rule 905 The Examiners shall Have Original Jurisdiction over All

Applications; Appeal to the Director

The examination of all applications for the grant of invention patents

shall be under the original jurisdiction of the several Examiners;

their decisions, when final, shall be subject to petition, or appeal

to the Director within four months from the mailing date of the notice

of the decision. As regards information on any specific technical or

scientific matter pending final action by the Bureau, the applicant

may, upon payment of a fee, request in writing for a conference with

the Examiner specifying the query he would want to propound to the

Examiner but in respect of which the Examiner has the discretion to

grant the request or choose to reply to the query in writing.

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Rule 906 Order of Examination

Applications filed in the Bureau and accepted as complete applications

are assigned for examination to the respective Examiners handling the

classes of invention to which the applications relate. Applications

shall be taken up for examination by the Examiner in the order in which

they have been filed.

Applications which have been acted upon by the Examiner, and which

have been placed by the applicant in condition for further action by

the said Examiner (amended application) shall be taken up for such

action in the order in which they have been placed in such condition

(date of amendment).

Rule 907 Nature of Examination, Examiner’s Action

(a) On taking up an application for examination, the Examiner shall

make a thorough study thereof and shall make a thorough investigation

of the available prior art relating to the subject matter of the invention

sought to be patented. The examination shall be complete with respect

both to compliance of the application with the statutes and rules and

to the patentability of the invention as claimed, as well as with respect

to matters of form, unless otherwise indicated.

(b) The applicant will be notified of the Examiner’s action. The reasons

for any adverse action or any objection or requirement will be stated

and such information or references will be given as may be useful in

aiding the applicant to judge the propriety of continuing the

prosecution of his application.

Rule 908 Completeness of Examiner’s action

The Examiner’s action will be complete as to all matters, except that

in appropriate circumstances, such as restriction requirement,

fundamental defects in the application, and the like, the action of

the Examiner may be limited to such matters before further action is

made. However, matters of form need not be raised by the Examiner until

a claim is found allowable.

Rule 909 Rejection of Claims

(a) If the invention is not considered patentable, in any manner, all

the claims will be rejected by the Examiner. If the invention is

considered patentable as claimed in certain of the claims, but

unpatentable as claimed in other claims, the latter claims will be

rejected but will not result in the refusal to grant a patent provided

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it is limited only to claims that have not been rejected.

(b) In rejecting claims for want of novelty or for want of inventive

step, the Examiner must cite the references most relevant to the

invention. When a reference is complex or shows or describes inventions

other than that claimed by the applicant, the particular part relied

on must be designated as nearly as practicable. The pertinence of each

reference, if not obvious, must be clearly explained and each rejected

claim specified.

(c) Claims may be rejected for non-compliance with Sec. 35.1 and Sec.

36.1, IP CODE.

Rule 910 Unpublished, Withdrawn and Forfeited Applications Not Cited

Unpublished, withdrawn and forfeited applications as such will not

be cited as references.

Rule 911 Reply by applicant

(a) After the action of the Examiner, if the same be adverse in any

respect, the applicant, if he persists in his application for a patent,

must reply thereto and may request re-examination or reconsideration,

with or without amendment.

(b) In order to be entitled to re-examination or reconsideration, the

applicant must make a request therefor in writing, and he must distinctly

and specifically point out the supposed errors in the Examiner’s action;

the applicant must respond to every ground of objection and rejection

in the prior Examiner’s action (except that request may be made that

objections or requirements as to form, not necessary to further

consideration of the claims, be held in abeyance until a claim is allowed),

and the applicant’s action must appear throughout to be a bona fide

attempt to advance the case to final action. The mere allegation that

the Examiner has erred will not be received as a proper reason for

such reexamination or reconsideration.

(c) In amending an application in response to a rejection, the applicant

must clearly point out the patentable inventiveness and novelty which

he thinks the claims present, in view of the state of the art disclosed

by the references cited or the objections made. He must also show how

the amendments avoid such references or objections.

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Rule 912 Re-examination and Reconsideration

After response by applicant, the application will be re-examined and

reconsidered, and the applicant will be notified if claims are rejected,

or objections or requirements made, in the same manner as after the

first examination. Applicant may respond to such Examiner’s action,

in the same manner provided in these Regulations, with or without

amendment, but any amendments after the second Examiner’s action must

ordinarily be restricted to the rejection or to the objections or

requirements made, and the application will be again considered.

Rule 913 Final Rejection or Action

(a) On the second or any subsequent examination or consideration, the

rejection or other action may be made final, where upon applicant’s

response is limited to appeal, in the case of rejection of any claim

or to amendment as specified in these Regulations. Petition may be

taken to the Director in the case of objections or requirements not

involved in the rejection of any claim as provided in these Regulations.

Response to a final rejection or action must include cancellation of,

or appeal from the rejection of, each claim so rejected; and, if any

claim stands allowable, compliance with any requirement or objection

as to form.

(b) In making such final rejection, the Examiner shall repeat all grounds

of rejection then considered applicable to the claims in the case,

clearly stating the reasons therefor. The Examiner may not cite grounds

that have not been raised in the earlier communications to the applicant.

Rule 914 Conversion of Patent Applications or Applications for Utility

Model

(a) At any time before the grant or refusal of a patent, an applicant

for a patent, 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 initial application.

An application may be converted only once. (Sec. 110, IP CODE)

(b) 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 initial application.

(Sec. 110, IP CODE)

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Rule 915 Prohibition against Filing of Parallel Applications

An applicant may not file two applications for the same subject, one

for utility model registration and the other for the grant of a patent

whether simultaneously or consecutively. (Sec. 111, IP CODE)

AMENDMENTS BY THE APPLICANT


An applicant may amend the patent application during examination:

Provided, That such amendment shall not include new matter outside

the scope of the disclosure contained in the application as filed.

(Sec. 49, IP CODE)

Rule 917 Amendments after final action of the Examiner

(a) After final rejection or action, amendments may be made canceling

claims or complying with any requirement of form which has been made,

and amendments presenting rejected claims in better form for

consideration on appeal may be admitted; but any proceedings relative

thereto, shall not operate to relieve the application from its condition

as subject to appeal or to save it from being considered withdrawn.

(b) Should amendments touching the merits of the application be

presented after final rejection, or after appeal has been taken, or

when such amendment might not otherwise be proper, they may be admitted

upon a showing of good and sufficient reasons why they are necessary

and were not earlier presented.


The specification, claims and drawing must be amended and revised when

required, to correct inaccuracies of description and definition or

unnecessary prolixity, and to secure correspondence between the claims,

the specification and the drawing.

Rule 919 Amendment of Disclosure

No deletion or addition shall broaden the disclosure of an application

to include new matter after the filing date of the application. All

amendments to the specification, claims or drawing, and all additions

thereto made after the filing date of the application must conform

to at least one of them as it was as of the filing date. Matter not

found in either, involving a departure from or an addition to the original

disclosure, cannot be added to the application even though supported

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by a supplemental oath, and can be shown or claimed only in a separate

application.

Rule 920 Amendment of Claims

The claims may be amended by canceling particular claims, by presenting

new claims or by amending the language of particular new claims (such

amended claims being in effect new claims). In presenting new or amended

claims, the applicant must point out how they avoid any reference or

ground of rejection of record which may be pertinent. Furthermore,

in order to facilitate the processing of the examination of the

application, the applicant shall indicate in his response which form

part in the original disclosure constitutes the basis of the 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.


(a) Amendments are entered by the Bureau 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.

(b) Ordinarily all amendments presented in a paper filed while the

application is open to amendment are entered and considered provided

that amendments that do not comply with this rule may not be accepted.

Untimely amendatory papers may be refused entry and consideration in

whole or in part.


No change in the drawing may be made except by permission of the Bureau.

Request for changes in the construction shown in any drawing may be

made only upon payment of the required fee. A sketch in permanent ink

showing proposed changes to become part of the record must be filed

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together with the search request. The paper requesting amendments to

the drawing should be separate from other papers. The drawing may not

be withdrawn from the Bureau except for signature. Substitute drawings

will not ordinarily be admitted in any case unless required by the

Bureau.

Rule 924 Amendment of Amendments

When an amendatory clause is to be amended, it should be wholly rewritten

and the original insertion cancelled, so that no interlineations or

deletions shall appear in the clause as finally presented. Matter

cancelled by amendment can be reinstated only by a subsequent amendment

presenting the cancelled matter as a new insertion.

Rule 925 Substitute specification

If the number or nature of the amendments shall render it difficult

to consider the case, or to arrange the papers for printing or copying,

the Examiner may require the entire specification or claims, or any

part thereof, to be rewritten. A substitute specification will

ordinarily not be accepted unless it has been required by the Examiner.

A substitute specification may be required within two months from grant

of the patent prior to publication of the patent in the IPO Gazette.

Rule 926 Numbering of Claims

The original numbering of the claims must be preserved through the

prosecution. When claims are cancelled, the remaining claims must not

be renumbered. When claims are added by amendment or substituted for

cancelled claims, they must be numbered by the applicant consecutively

beginning with the number next following the highest numbered claim

previously presented (whether entered or not). When the application

is ready for allowance, the Examiner, if necessary, will renumber the

claims consecutively in the order in which they appear or in such order

as may have been requested by applicant.

Rule 927 Petition from Refusal to Admit Amendment

From the refusal of the Examiner to admit an amendment, in whole or

in part, a petition will lie to the Director under these Regulations.

Rule 928 Interviews with the Examiners: when No Interview is Permitted

Interviews with the Examiner concerning an application pending before

the Bureau can be held only upon written request specifying the query

the applicant would want to propound and after payment of the required

105

fee, but in respect of which the Examiner has the jurisdiction to grant

interview or instead reply to the query in writing. The interview shall

take place within the premises of the Bureau and during regular office

hours as specified by the Examiner. All interviews or conferences with

Examiners shall be reduced to writing and signed by the Examiner and

the applicant immediately after the conference. Such writing shall

form part of the records of the Bureau. Interviews for the discussion

of pending applications shall not be held prior to the first official

action thereon.

TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION

Rule 929 Withdrawal of Application for Failure to Respond within 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 a 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 extensions,

provided that the aggregate period granted inclusive of the initial

period allowed to file the response, shall not exceed six months from

mailing date of the official action requiring such response.

(c) Prosecution of an application to save it from withdrawal 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 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.

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An application deemed withdrawn for failure to prosecute may be revived

as a pending application within a period of four 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.


An application may be expressly withdrawn by filing in the Bureau a

written declaration of withdrawal, signed by the applicant himself

and the assignee of record, if any, and identifying the application.

PART 10 GRANT OF PATENT

Rule 1000 Grant of Patent

If the application meets the requirements of the IP CODE and these

Regulations, the office shall grant the patent: Provided, That all

the fees are paid on time. If the required fees for grant and printing

are not paid in due time, the application shall be deemed withdrawn

(Sec. 50, IP CODE)

Rule 1001 Contents of Patent

The patent shall be issued in the name of the Republic of the Philippines

under the seal of the Office and shall be signed by the Director of

Patents, and registered together with the description, claims, and

drawings, if any, in books and records of the Office. (Sec. 53, IP

CODE)

Rule 1002 Publication upon Grant of Patent

The grant of the patent together with other information shall be

published in the IPO Gazette within six months. (Sec. 52.1, IP CODE)

Rule 1003

Any interested party may inspect the complete description, claims,

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and drawings of the patent on file with the Office. (Sec. 52.2, IP

CODE)

PART 11 TERM OF PATENT

Rule 1100 Term of Patent

The term shall be twenty years from the filing date of the application

(Sec. 54, IP CODE). However, a patent shall cease to be in force and

effect if any prescribed annual fees therefor is not paid within the

prescribed time or if the patent is cancelled in accordance with the

provisions of the IP CODE and these Regulations.

Rule 1101 Annual Fees

The first annual fee on a patent shall be due and payable on the expiration

of four years from the date the application is published, and on each

subsequent anniversary of such date. Payment may be made within three

months before the due date. The obligation to pay the annual fees shall

terminate should the application be withdrawn, refused, or cancelled.

(Sec. 55, IP CODE)

Rule 1102 Date Application is Published

The application is published on the date that the IPO Gazette containing

the applications is released for circulation. For example, if the IPO

Gazette containing the application is released for circulation on

January 15, 1999, then the first annual fee shall be due and payable

on January 15, 2003.

Rule 1103 Non-payment of Annual Fees

If any annual fee is not paid within the prescribed time, the application

shall be deemed withdrawn or the patent considered as lapsed from the

day following the expiration of the period within which the annual

fees were due. A notice that the application is deemed withdrawn or

the lapse of a patent for non-payment of any annual fee shall be published

in the IPO Gazette and the lapse shall be recorded in the appropriate

register of the Office. (Sec. 55.2, IP CODE).

Rule 1104 Grace Period

A grace period of six months from the due date shall be granted for

the payment of the annual fee, upon payment of the prescribed surcharge

for delayed payment. (Sec. 55.3, IP CODE)

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PART 12 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT

CHAPTER 1 RECORDING OF ASSIGNMENT OF LETTERS PATENT, AND OF OTHER

INSTRUMENTS AFFECTING TITLE TO PATENTS, INCLUDING LICENSES

Rule 1200 Form of Assignment of a Patent or of An application for a

Patent

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) So that there can be no mistake as to the patent or application

intended, must identify the letters patent involved by number and date,

giving the name of the patentee and the title of the invention as set

forth in the patent; in the case of an application for patent, the

application number and filing date of the application should be stated,

giving also the name of the applicant, and the title of the invention,

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, or before its application number

is ascertained, it should adequately identify the application, by its

date of execution and name of the applicant, and the title of the

invention; and

(e) Must be accompanied by the required recordal and publication fees.

Rule 1201 Form of Other Instruments Affecting the Title to a Patent


In order to be acceptable for recording, the form of such other instrument,

including licenses, must conform with the requirements of the preceding

rule.


The original document together with a signed duplicate thereof, shall

be submitted. If the original is not available, an authenticated copy

thereof in duplicate may be submitted instead. After recording, the

Office shall retain the signed duplicate or one of the authenticated

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copies, as the case may be, and return the original or the other

authenticated copy to the party who filed the same, with a notation

of the fact of recording.

Rule 1203 Date of Recording of Assignment or Other Instrument or License

Considered Its Date of Filing

The date of recording of an assignment or other instrument is the date

of its receipt at the Office in proper form and accompanied by full

payment of the required recording and publication fees.

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 months from the date thereof,

or prior to the subsequent purchase or mortgage. (Sec. 106, IP CODE)

Notice of the recording shall be published in the IPO Gazette.

Rule 1204 Letters patent may be Issued to the Assignee in Place of

the Applicant

In the case of the assignment of a pending application for patent,

the letters patent may be issued to the assignee of the applicant,

provided the assignment has been recorded in the Office before the

actual issue of the patent.

Rule 1205 Action may be taken by assignee of record in any proceeding

in the Office


by a patentee or applicant may be taken by the assignee, provided the

assignment has been recorded.

CHAPTER 2 SURRENDER, CORRECTION AND AMENDMENT OF PATENT

Rule 1206 Surrender of Patent

(a) The owner of the patent, with the written and verified consent

of all persons having grants or licenses or other right, title or interest

in and to the patent and the invention covered thereby, which have

been recorded in the Office, may surrender his patent, 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. (Sec. 56, IP CODE)

(b) Any person may give notice to the Office of his opposition to the

surrender of a patent, and if he does so, the Bureau shall notify the

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proprietor of the patent and determine the question.

(c) If the Office is satisfied that the patent 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 patent shall cease to have effect,

but no action for infringement shall lie and no right compensation

shall accrue for any use of the patented invention before that day

for the services of the government. (Sec. 56, IP CODE)


Upon written petition, in duplicate, of the patentee or assignee of

record, and upon tender to the Office of the copy of the patent issued

to the patentee, the Director shall have the power to correct without

fee any mistake in a patent incurred through the fault of the Office

when clearly disclosed by the records thereof, to make the patent conform

to the records. (Sec. 57, IP CODE)


On request of any interested person and payment of the prescribed fee,

the Director is authorized to correct any mistake in the patent of

a formal and clerical nature, not incurred through the fault of the

Office. (Sec 58, IP CODE)

Rule 1209 Changes in Patent

The owner of the patent shall have the right to request the Bureau

to make changes in the patent in order to:

(a) Limit the extent of the protection conferred by it;

(b) Correct obvious mistakes or to correct clerical errors; and

(c) Correct mistakes or errors, other than those referred to in letter

(b), made in good faith; Provided, That were the change would result

in broadening of the extent of the protection conferred by the patent,

no request may be made after the expiration of two years from the grant

of a patent and the change shall not affect the rights of any third

party which has relied on the patent, as published.


An amendment or correction of a patent shall be accomplished by a

certificate of such amendment or correction, authenticated by the seal

of the Office and signed by the Director, which certificate shall be

attached to the patent. Notice of such amendment or correction shall

be published in the IPO Gazette and copies of the patent furnished

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by the Office shall include a copy of the certificate of the amendment

or correction. (Sec. 60, IP CODE)

Rule 1212 Assignment of Inventions

An assignment may be of the entire right, title or interest in and

to the patent and the invention covered thereby, or of an undivided

share of the entire patent and invention in which event the parties

become joint owners thereof. An assignment may be limited to a specified

territory. (Sec. 104, IP CODE)


If two or more persons jointly own a patent and the invention covered

thereby either by the issuance of the patent in their joint favor or

by reason of the assignment of an undivided share in the patent and

invention 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 invention 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. (Sec. 107, IP CODE)



The function of determining whether or not an application for grant

of patent should be allowed or denied under the facts disclosed in

the application and in the references consulted by the Examiner and

under the applicable law (statutory anddecisional), is a quasi-judicial

function and involves the exercise of judicial discretion.

Thus, with respect to such function, the Director cannot lawfully

exercise direct control, direction and supervision over the Examiners

but only general supervision, exercised through a review of the

recommendation they may make for the grant of patent and of other actions,

and through a review of their adverse decisions by petition or appeal.


Action of an Examiner on a Matter Not Subject to Appeal


requirement of the Examiner which is not subject to appeal and in other

appropriate circumstances. Such petition, and any other petition which

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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.

The mere filing of a petition will not stay the maximum period of six

months counted from the mailing date of the Examiner’s action subject

of the appeal for replying to an Examiner’s action nor act as a stay

of other proceedings.


Every applicant for the grant of a patent may, upon the final refusal

of the Examiner to grant the patent, appeal the matter to the Director.

Appeal may also be taken to the Director from any adverse action of

the Examiner in any matter over which these Regulations give original

jurisdiction to the Examiner. A second adverse decision by the Examiner

on the same grounds may be considered as final by the applicant,

petitioner, or patentee for purposes of appeal.


A final decision of an Examiner which is not appealed to the Director





If an application is considered abandoned for failure of the applicant

to respond to an action of the Examiner on the merits, the order declaring

the application as withdrawn which has become final shall likewise

have the effect of res judicata.



or a notice of appeal, as the case may be, and payment of the required

fee within two months from the mailing date of the action subject of

the petition or appeal, must specify the various grounds upon which

the petition or appeal is taken, and must be signed by the petitioner

or appellant or by his attorney of record. The period herein provided

shall, in no case, exceed the maximum period of six months from the

mailing date of the action subject of the petition or appeal.

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In case of an appeal, the appellant shall, within two months, without

extension, 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.






the Examiner.






















114

FINAL PROVISIONS



patentee/applicants and the Office or the Bureau:





(b) Personal attendance of applicants and other persons unnecessary.




(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.




application it shall state the name of the applicant, the title of

the invention, the application number and the filing date of the

application.

(f) Letters relating to granted patents. When the letter concerns a

granted patent, it shall state the name of the patentee, the title

of the invention, the patent number and date of issuance.


respond to inquiries as to the newness or inventive step of an alleged

invention desired to be patented in advance of the filing of an

application for a patent.

On the propriety of making an application for the grant of patent,

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

115

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








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 4 Repeals



particularly the Rules of Practice in Patent Cases, as amended, are

hereby repealed; Provided that all applications for patents pending

in the Bureau of Patents, Trademarks and Technology Transfer shall

be proceeded with and patents thereon granted in accordance with the

Acts under which said applications were filed, and said Acts are hereby

continued to be enforced, to this extent and for this purpose only.





116


Mr. Eduardo Joson, Records Officer II, is hereby directed to immediately

file three certified copies of these Regulations with the University

of the Philippines Law Center, and, one 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.




117

III. RULES AND REGULATIONS ON UTILITY MODELS AND INDUSTRIAL DESIGNS

(as amended by Order No. 61 series 2001 and Office Order No. 09 series

of 2000)

PART 1 DEFINITIONS

Rule 10

These regulations shall be known as the “Utility Model and Design

Regulations”. [As amended by Office Order No. 09 (2000)]




(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

Intllectual Property Code of the Philippines;

(f) “IPO Gazette” means the Intellectual Property Office’s own



(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

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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)]


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 properly 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.

119

Without need of any notice from the office, the filing fee shall be

paid within one month from the date of application was received by

the office, otherwise, the application shall be deemed forfeited. [As


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:


(b) it is filed within twelve months from the date the earliest foreign

application was filed; and



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 months from the mailing date of the formality examination

120

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)]


The application shall be deemed withdrawn and all files expunged from

the record of the Bureau upon receipt of the applicant’s voluntary

withdrawal.


The amended application shall be classified and subjected to formality

examination. Report thereon shall be submitted to the applicant within

two months from receipt of the amended application. Within two 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


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.


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 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)]


are not Complete

Where the application fails to meet any of the formal requirements

121

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 months from the mailing date of the formality

examination report. The Bureau may return to the applicant all the

files expunged from its records.


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 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)]



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)]


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.


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

122

12345

Bureau,

(b) Description containing the following:

. title

. technical field

. background of the Utility Model

. brief description of the several views of the drawings, if any

. detailed description

(c) Claim or claims

(d) Drawings, if any

(e) Abstract of the Disclosure. [As amended by Office Order No. 09

(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 of 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

123

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

Any utility model application comprising more than five 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 incurs payment of a claims fee. The claims

fee shall be payable within one 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 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

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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)]


Within two months from publication of the utility model application,

any interested party may request the Director for a registrability

report and/or furnish the Director with 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


Within two 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-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.


If the Director receives no adverse information within the two-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


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.

125

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 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 years from effectivity of these Regulations. [As amended by


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.

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Rule 216 Prohibition Against Filing of Parallel Applications

An applicant may not file two 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 is 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.”


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.

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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 months specified in Section

25 shall be six 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.


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:


(b) it is filed within six months from the earliest filing date of

the corresponding foreign application; and



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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 ofthe 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 design 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 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 months from the mailing date of the formality examination

report, the applicant may:

(1) voluntarily withdraw the application,

(2) amend the application, or,


report. [As amended Office Order No. 09 (2000)]


The application shall be deemed withdrawn and all files expunged from

the records of the Bureau upon receipt of the applicant’s voluntary

withdrawal.


The amended application shall be classified and subjected to formality

examination. Report thereon shall be submitted to the applicant within

two months from receipt of the amended application. Within two months

from mailing date of the formality examination report on the amended

application, the applicant may:

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(1) withdraw the application, or,


report. [As amended Office Order No. 09 (2000)]

Rule 308.3 No Action On The Part Of The Applicant Where Formal

Requirements are Complete


registrability and the Bureau fails to receive any action from the

applicant, the industrial design application shall be published upon

the expiration of two 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 months from the mailing date of the formality

examination report. The Bureau may return to the applicant all the

files expunged from its records.


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 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)]



registrability and the applicant fails to pay the issuance and

publication fee within the prescribed period, the industrial design

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application shall be deemed withdrawn.


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 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

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requirement shall be subject to the payment of the prescribed fee within

one 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

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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 Designs 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 patently 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)]


Within two months from publication of the industrial design application,

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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 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-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 two-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


Rule 315 Term of Industrial Design Registration

The terms shall be five years from the filing date of the application

and may be renewed for not more than two consecutive periods of five

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 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

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end five years from the effectivity of these Regulations.

Rule 316 The Renewal Fee

The renewal fee shall be paid within twelve months preceding the

expiration of the period of registration. A grace period of six 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 of 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,

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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 months preceding the filing date or the

priority date of the application or during the twelve 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 or more persons have jointly made a utility model

or industrial design, the right shall belong to them jointly.

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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 months from the filing date to submit

the priority claim.

Submission of priority claim after the filing of the application shall

137

be accompanied by a declaration of the applicant stating that the delay

in submitting the priority claim was unintentional.


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

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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 copies.

(j) Paragraphs (d), (e) and (f) of this Rule shall only be applicable

to utility model applications. [As amended Office Order No. 09 (2000)]


(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

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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

140

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


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,

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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

142

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.

Rule 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

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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

144

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 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


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.


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 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

145

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



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.


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.


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.

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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.


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


An application for utility model or an industrial design shall be

classified and a search conducted to determine the prior art. [As amended


Rule 442 Content of the Search Report

The Search Report is drawn up on the basis of the claims, description,

and the drawings as follows:

(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

147

industrial design within a maximum period of two 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


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.


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).


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.


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.

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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 months from registration prior to publication

of the registration in the IPO Gazette.


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 extensions, provided

that the aggregate period granted inclusive of the initial period

allowed to file the response, shall not exceed six 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

149

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.


An application deemed withdrawn for failure to prosecute may be revived

as a pending application within a period of four 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


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.

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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


In order to be acceptable for recording, the form of such other instrument,

including licenses, must conform with the requirements of the preceding

rule.


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

151

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.


in the Office


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

152

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.


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.


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 where 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 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.


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.

153

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 months from the date thereof,

or prior to the subsequent purchase or mortgage.


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

154

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 months from receipt of the request together with full payment of

the required fee.

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PART 7 PETITIONS AND APPEALS


Action of an Examiner on Matters of Form


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.


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, when it is not appealed to the Director







and payment of the required fee within two 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.

156






the Examiner.



























157

FINAL PROVISIONS



registrant/applicant and the Office or the Bureau:





(b) Personal Attendance of Applicants and Other Persons Unnecessary.




(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.




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.


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

158

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.


in Advance







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

159

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 be for a period of five

years from the effectivity of these Regulations, subject to renewal

as provided in the IP Code and these Regulations.





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



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

160

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.




shall not be effected thereby.




of the Philippines Law Center, and, one 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.




161

1234567

IV. RULES & REGULATIONS ON VOLUNTARY LICENSING

PART 1 DEFINITIONS

Rule 1 Definition of Terms



(a) “Amendatory Agreement” means an agreement that amends any of the

terms and conditions of the agreement;

(b) “Bureau” means the Documentation, Information and Technology

Transfer Bureau of the Intellectual Property Office;

(c) “Computer software developed for mass market” means computer

software that:

(i) is produced, made and marketed for a broad range of purposes and

users including end-users and commercial users;

(ii) is sold over the counter or via standard delivery mechanisms;

(iii) involves payments that are not based on royalty;

(iv) generally provides for an indefinite term for the use of the

software; and

(v) does not need any customization by the supplier or distributor.

(d) “Director” means the Director of the Documentation, Information

and Technology Transfer Bureau;


Office;

(f) “Intellectual Property Rights” means:

. Copyright and Related Rights;

. Trademarks and Service Marks;

. Geographic Indications;

. Industrial Designs;

. Patents;

. Layout-Designs (Topographies) of Integrated Circuits; and

. Protection of Undisclosed Information



(h) “IPO Gazette” means the Intellectual Property Office’s own



(i) “Mandatory Provisions” means provisions that shall be included

in voluntary license contracts as provided in Section 88 of the IP

Code and reproduced in rule 3 of these Regulations;

(j) “Office” means the Intellectual Property Office;

162

(k) “Prohibited Clauses” means provisions in Technology Transfer

Arrangements that are deemed prima facie to have an adverse effect

on competition and trade as provided in Section 87 of the IP Code and

reproduced in Rule 2 of these Regulations;

(l) “Regulations” means this set of rules and regulations and such

rules and regulations as may be formulated by the Director of the

Documentation, Information and Technology Transfer Bureau and approved

by the Director General;

(m) “Renewal Agreement” means any agreement that extends the term of

an agreement registered with the Office or with the former Technology

Transfer Registry of the former Bureau of Patents, Trademarks and

Technology Transfer, without any amendment or other modification of

any other provision of the previously registered agreement;

(n) “Technology Transfer Arrangements” shall mean contracts or

agreements involving the transfer of systematic knowledge for the

manufacture of a product, the application of a process, or rendering

of a service including management contracts; and the transfer,

assignment or licensing of all forms of intellectual property rights,

including licensing of computer software except computer software

developed for mass market.

The licensing of copyright is considered a technology transfer

arrangement only if it involves the transfer of systematic knowledge.

(o) “Undisclosed Information” shall mean information which:

(i) Is secret in the sense that it is not, as a body or in the precise

configuration and assembly of its components, generally known among

or readily accessible to persons within the circles that normally deal

with the kind of information in question;

(ii) has commercial value because it is secret; and

(iii) has been subject to reasonable steps under the circumstances

to keep it secret, by the person lawfully in control of the information.

Rule 2 Prohibited Clauses

Pursuant to Section 87 of the IP Code, the following provisions and

other clauses with equivalent effect shall be deemed prima facie to

have an adverse effect on competition and trade:

(1) Those which impose upon the licensee the obligation to acquire

from a specific source capital goods, intermediate products, raw

materials, and other technologies, or of permanently employing

personnel indicated by the licensor;

(2) Those pursuant to which the licensor reserves the right to fix

the sale or resale prices of the products manufactured on the basis

163

of the license;

(3) Those that contain restrictions regarding the volume and structure

of production;

(4) Those that prohibit the use of competitive technologies in a

non-exclusive technology transfer arrangement;

(5) Those that establish a full or partial purchase option in favor

of the licensor;

(6) Those that obligate the licensee to transfer for free to the licensor

the inventions or improvements that may be obtained through the use

of the licensed technology;

(7) Those that require payment of royalties to the owners of patents

for patents which are not used;

(8) Those that prohibit the licensee to export the licensed product

unless justified for the protection of the legitimate interest of the

licensor such as exports to countries where exclusive licenses to

manufacture and/or distribute the licensed product(s) have already

been granted;

(9) Those which restrict the use of the technology supplied after the

expiration of technology transfer arrangement, except in cases of early

termination of the technology transfer arrangement due to reason(s)

attributable to the licensee;

(10) Those which require payments for patents and other industrial

property rights after their expiration or termination of the technology

transfer arrangement;

(11) Those which require that the technology recipient shall not contest

the validity of any patents of the technology supplier;

(12) Those which restrict the research and development activities of

the licensee designed to absorb and adapt the transferred technology

to local conditions or to initiate research and development programs

in connection with new products, processes or equipment;

(13) Those which prevent the licensee from adapting the imported

technology to local conditions, or introducing innovation to it, as

long as it does not impair the quality standards prescribed by the

licensor;

(14) Those which exempt the licensor from liability for non-fulfillment

of his responsibilities under the technology transfer arrangement

and/or liability arising from third party suits brought about by the

use of the licensed product or the licensed technology.

Rule 3 Mandatory Provisions

Pursuant to Section 88 of the IP Code, the following provisions shall

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be included in voluntary license contracts:

(1) That the laws of the Philippines shall govern the interpretation

of the same and in the event of litigation, the venue shall be the

proper court in the place where the licensee has its principal office;

(2) Continued access to improvements intechniques and processes related

to technology shall be made available during the period of the technology

transfer arrangement;

(3) In the event the technology transfer arrangement shall provide

for arbitration, the Procedure of Arbitration of the Arbitration Law

of the Philippines or the Arbitration Rules of the United Nations

Commission on International Trade Law (UNCITRAL) or Rules of

Conciliation and Arbitration of the International Chamber of Commerce

(ICC) shall apply and the venue of arbitration shall be the Philippines

or any neutral country; and

(4) The Philippine taxes on all payments relating to the technology

transfer arrangement shall be borne by the licensor.

PART 2 REGISTRATION OF EXEMPT TECHNOLOGY TRANSFER ARRANGEMENTS

Rule 4 Application for Exemption

A sworn application for exemption from any of the Prohibited Clauses

and/or Mandatory Provisions of the IP Code may be filed with the Director

stating the exemption/s being requested, the justification for the

exemption/s, and that the agreement is not subject of any judicial,

administrative or other proceeding.

The application must be accompanied by a copy of the agreement, payment

of the appropriate fee/s, and other documents that may be required

by the Bureau to support and establish the merits of the request.

The applicant may submit either a draft or a duly executed and notarized

agreement.

Rule 5 Who May File

Any party to a technology transfer arrangement or his duly authorized

representative may file an application for exemption with the Director.

Rule 6 When to File

The application shall be filed in accordance with the following

schedule:

(a) New Agreements -- within thirty days from the date of execution

or effectivity, whichever is earlier;

(b) Renewal Agreements -- anytime prior to the expiration of the term

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of the existing technology transfer agreement; and

(c) Amendatory Agreements -- within thirty days from the date of

effectivity of such amendment or modification.

Rule 7 Filing Date

The date on which the applicant complies with the requirements of the

Bureau is the Filing Date which shall be duly recorded in the Filing

Date Entry Book. The Bureau shall issue to the applicant a Notice of

Filing Date which is also the date when evaluation of the request shall

commence.

Rule 8 Notice of Additional Requirements

Should the Bureau find that the documents submitted are incomplete

or insufficient, the Bureau shall issue a notice to the applicant,

within six days from the Filing Date, requiring the applicant to submit

the additional documents. Failure of the applicant to comply with any

of the requirements within a period of fifteen days from the date of

receipt of the notice shall be construed as an abandonment of the

application without prejudice to refiling as a new application. Should

the applicant require additional time to comply with the requirements,

a final extension of fifteen days will be granted upon payment of the

required fee.

Rule 9 Scope of Evaluation

Requests for exemption shall be evaluated based on the adverse effects

of the terms and conditions of the technology transfer arrangement

on competition and trade. Exemption from the Prohibited Clauses and

Mandatory Provisions of the IP Code will be granted in exceptional

or meritorious cases where substantial benefits will accrue to the

economy, such as:

(a) high technology content;

(b) increase in foreign exchange earnings;

(c) employment generation;

(d) regional dispersal of industries;

(e) substitution with or use of local raw materials;

(f) pioneer status registration with the Board of Investments.

Rule 10 Acceptable Worldwide Industry Standards and Practices

As part of the evaluation procedure for requests for exemptions, the

Bureau shall take into account acceptable worldwide industry standards

and practices for licensing technology in the relevant sectors.

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Rule 11 Recognition of Valid Intellectual Property Rights

In the assessment of requests for exemptions involving clauses which

restrict the use of the technology supplied after the expiration of

the technology transfer arrangement under Section 87.9 of the IP Code,

the Bureau shall take into consideration the protection of valid patent,

copyright, trademark, trade secret or other intellectual property

rights subsisting even after the termination or expiration of the

technology transfer arrangement.

Rule 12 Payment of Taxes

In the evaluation of requests for exemption involving provisions which

do not require the licensor to pay Philippine taxes on all payments

relating to the technology transfer arrangement under section 88.4

of the IP Code (Rule 3(4) of these Regulations), the Bureau shall take

into consideration current laws, rules and regulations issued by the

Bureau of Internal Revenue regarding the liability for payment of such

taxes.

Rule 13 Decision

The Bureau shall decide whether or not to grant the application within

thirty-five days from the Filing Date.

Rule 14 Issuance of Certificate

The Bureau shall issue the Certificate of Registration within two days

from approval of the application.

If a draft agreement was submitted for evaluation, the Certificate

of Registration shall be issued two days after the submission of the

duly executed agreement provided it shall not contain any amendment

or any modification not authorized by the Bureau.

Rule 15 Certificate Registry Book

After the issuance of the Certificate of Registration, the title of

the technology transfer arrangement and parties thereto, its

registration number and the date of registration shall be entered in

the Certificate Registry Book.

Rule 16 Cancellation of Registration

Automatic cancellation of registration shall be made upon receipt of

a duplicate original or certified copy of the registered technology

transfer arrangement containing amendments or modifications that

violate the Prohibited Clauses and Mandatory Provisions of the IP Code

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without approval of the Bureau.

The Bureau may also cancel the registration of the technology transfer

arrangement if, after evaluation, the Bureau has established that the

justification for the grant of an exemption submitted by the applicant

does not exist or has ceased to exist. Such action will be made only

after the parties in whose names the Certificate of Registration was

issued are given an opportunity to be heard.

In both cases, the parties shall be required to surrender the Certificate

of Registration provided that the surrender of the Certificate shall

not be a pre-requisite to the cancellation of the registration.

PART 3 SUMMARY PROCEDURES

CHAPTER 1 TRADEMARK LICENSE AGREEMENT

Rule 17 Clearance Prior to Recordal with the Office

Prior to its recordal, any trademark license agreement covered by

Section 150.1 and Section 150.2 of the IP Code shall be filed with

the Bureau for clearance together with the proof of payment of the

filing fee.


Within a period of ten days, the Bureau shall determine whether such

agreement violates any of Prohibited Clauses or Mandatory Provisions

of the IP Code.

Rule 19 Certificate of Clearance

If an agreement submitted for clearance does not violate any of the

Prohibited Clauses or Mandatory Provisions of the IP Code, the Bureau

shall issue a certificate of clearance and the agreement shall be

recorded by the appropriate officer in the Office.

Rule 20 Notice to Comply

Should any provision of the agreement violate any of the Prohibited

Clauses or Mandatory Provisions of the IP Code, the Bureau shall issue

a notice to the parties in the agreement informing them of the violation

and requiring them to comply with pertinent provision of the IP Code

prior to recordal.

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CHAPTER 2 CERTIFICATE OF COMPLIANCE AND APPROVAL FOR LEGAL PURPOSES

Rule 21 Request for certification of compliance

The parties to a technology transfer arrangement may jointly file a

request for a certification to the effect that the technology transfer

arrangement conforms with the Prohibited Clauses and Mandatory

Provisions of the IP Code. The request shall be under oath, filed in

duplicate, state the purpose of the certification, and state that the

agreement is not subject of any judicial, administrative or other

proceeding. It shall be accompanied by a duplicate original copy of

the duly executed and notarized agreement, payment of the required

fees, and other documents that will be required by the Bureau to support

and establish the merit of the request.

Rule 22 Evaluation Period; Action on the request

The Bureau shall conduct a summary evaluation of the technology transfer

arrangement within ten days from filing. If the technology transfer

arrangement conforms with the Prohibited Clauses and Mandatory

Provisions of the IP Code, the Bureau shall issue a Certificate of

Compliance. Otherwise, the Bureau shall give the parties a notice

informing them of the violation and requiring them to comply with the

IP Code if they wish to obtain a Certificate of Compliance.

CHAPTER 3 PRELIMINARY REVIEW AND/OR PRE-CLEARANCE OF TECHNOLOGY

TRANSFER ARRANGEMENTS

Rule 23 Request for Preliminary Review

Any party to a technology transfer arrangement may file a request for

a preliminary review of a draft technology transfer arrangement to

determine conformance with the Prohibited Clauses and Mandatory

Provisions of the IP Code.


The Bureau shall conduct a summary evaluation of the draft technology

transfer arrangement within ten days from filing of the application

and upon payment of the required fees.

Rule 25 Notice of Findings

The Bureau shall issue a notice of its findings on the draft technology

transfer arrangement as submitted.

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Rule 26 Submission of the Agreement under Part 2

After the completion of the foregoing summary procedure, the technology

transfer arrangement may be submitted for registration under Part 2

of these Regulations.

PART 4 RECONSIDERATION AND APPEAL

Rule 27 Requests for Reconsideration

Requests for reconsideration of all actions or decisions rendered by

the Director shall be filed in writing stating clearly and concisely

the reasons therefor and shall, whenever relevant, be accompanied by

supporting documents. The request shall be filed with the Director

within fifteen days from receipt of the decision and shall be accompanied

with proof of payment of the required fee. The Director shall render

final decision within thirty-five days from the date of filing of the

request in accordance with this Section.


Appeal from a decision of the Director shall be filed with the Office

of the Director General in writing stating clearly and concisely the

reasons therefor and shall, whenever relevant, be accompanied by

supporting documents. The appeal to the Office of the Director General

shall be made within fifteen days from appellant’s receipt of the

decision of the Director and shall be accompanied with proof of payment

of the required fee.

Rule 29 Appeal to the Secretary of Trade and Industry

A decision or final order of the Director General shall be final and

executory unless an appeal is filed with the Secretary of Trade and

Industry within fifteen days from appellant’s receipt of the decision.

PART 5 MISCELLANEOUS PROVISIONS

Rule 30 Rights of Licensor

In the absence of any provision to the contrary in the technology transfer

arrangement, the grant of a license shall not prevent the licensor

from granting further licenses to third persons nor from exploiting

the subject matter of the technology transfer arrangement himself.

Rule 31 Rights of Licensee

The licensee shall be entitled to exploit the subject matter of the

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technology transfer arrangement during the whole term of the technology

transfer arrangement.

Rule 32 Technology Transfer Agreements Subject of Judicial Proceedings

The Bureau shall not take cognizance of any request for exemption,

clearance for legal purposes, and/or recordal of trademark license

agreement where the validity, enforceability, or any issue involving

such technology transfer arrangement has become the subject of a

judicial proceeding.

Rule 33 Publications

The Bureau shall cause to be published in the IPO Gazette all registered

technology transfer agreements. The publication shall contain the names

of the parties, title and subject of the agreement, and specific

exemption/s granted, if any.

Rule 34 Office Forms

For the convenience of applicants, the Office shall draw up and make

available a standard application form, and such other forms as may

be necessary or useful, which may be reproduced at will by applicants

and other persons at their own cost.

Rule 35 Coverage

These rules and regulations shall apply to:

(a) all applications, requests, exemption, and clearance prior to

recordal of a trademark license agreement covering new, renewal or

amendatory technology transfer arrangements filed on or after January

1, 1998 regardless of the date of execution or date of effectivity;

(b) all agreements extending the life of technology transfer agreements

with subsisting registration under the Rules of the Technology Transfer

Registry of the Bureau of Patents, Trademarks and Technology Transfer.

Minor changes, such as change in licensor/licensee, addition/deletion

of products, among others, affecting technology transfer agreements

with subsisting registration under the Rules of Practice of the

Technology Transfer Registry of the Bureau of Patents and Technology

Transfer may be submitted to the Bureau for notation purposes.

FINAL PROVISIONS



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Trademarks, and Technology Transfer as may be designated by the Director

General upon the recommendation of the Chief of the Technology Transfer

Registry of the Bureau of Patents Trademarks and Technology Transfer

heretofore designated as Officer-in-Charge or Caretaker of the

Documentation Information and Technology Transfer Bureau.

Section 2 Fees and Charges to be prepaid; Fees and charges Payable

in Advance




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 in advance of any service to be rendered.

Section 3 Repeal

All rules and regulations, memoranda, circulars and memorandum


particularly the Rules of Practice of the Technology Transfer Registry

of the Bureau of Patents, Trademarks and Technology Transfer (BPTTT),

as amended, are hereby repealed.








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V. RULES & REGULATIONS ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF

LAW INVOLVING INTELLECTUAL PROPERTY RIGHTS

RULE 1 DEFINITIONS, INTERPRETATION; RULES OF COURT


Unless otherwise indicated, the following terms shall be understood

as follows:

(a) “Answer” means a pleading in which the adverse party sets forth

the negative and affirmative defenses upon which he relies;

(b) “Bonds” and “Counterbonds” shall refer to cash bonds and cash

counterbonds in the form of cash, cashiers check or manager’s check,

excluding surety bonds and surety counterbonds;

(c) “Bureau” means the Bureau of Legal Affairs of the Intellectual

Property Office;

(d) “Chief Hearing Officer” means the officer within the Bureau who

exercises immediate supervision over any Hearing Officer. His title

or official designation may differ from the words “Chief Hearing

Officer” depending on the structure of the Office;

(e) “Complaint” means a concise statement of the ultimate facts

constituting the complainant’s cause or causes of action. It shall

specify the relief sought, but it may add a general prayer for such

further or other relief as may be just and equitable;

(f) “Court” means a court of general jurisdiction such as Regional

Trial Court;

(g) “Director General” means the head of the Intellectual Property

Office;

(h) “Director” means the Director of the Bureau of Legal Affairs;

(i) “False Designation of Origin” means the act of any person who,

on or in connection with any goods or services, or any container for

goods, uses in commerce any word, term, name, symbol, or device, or

any combination thereof, or any false designation of origin, false

or misleading description of fact, or false or misleading representation

of fact, which:

(i) is likely to cause confusion, or to cause mistake, or to deceive

as to the affiliation, connection, or association of such person with

another person, or as to the origin, sponsorship, or approval of his

or her goods, services, or commercial activities by another person;

or

(ii) in commercial advertising or promotion, misrepresents the nature,

characteristics, qualities, or geographic origin of his or her or

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another person’s goods, services or commercial activities,

shall be liable to a civil action for damages and injunction provided

in Sections 156 and 157 of the IP Code by any person who believes that

he or she is likely to be damaged by such act.

(j) “False or Fraudulent Declaration” means the act of any person who

shall procure registration in the Office of a mark by a false or fraudulent

declaration or representation, whether oral or writing, or by any false

means;

(k) “Hearing Officer” means the officer within the Bureau authorized

to exercise the functions of “Hearing Officer” in these Regulations.

The title or official designation of such officers may differ from

the words “Hearing Officer” depending on the structure of the Office;

(l) “Infringement of Copyright and Related Rights” means any violation

of the rights provided under Part IV of the IP Code and/or the applicable

IP Law, including the act of any person who at the time when copyright

subsists in a work has in his possession an article which he knows,

or ought to know, to be an infringing copy of the work for the purpose

of:

(i) selling, letting for hire, or by way of trade offering or exposing

for sale, or hire, the article;

(ii) distributing the article for purpose of trade, or for any other

purpose to an extent that will prejudice the rights of the copyright

owner in the work; or

(iii) trade exhibit of the article in public.

(m) “Infringement of Patent” means any violation of any of the rights

of patentees and holders of utility model patents and industrial design

registrations under Part II of the IP Code and/or the applicable IP

Law, including the act of making, using, offering for sale, selling,

or importing a patented product or a product obtained directly or

indirectly from a patented process, or the use of a patented process

without the authorization of the patentee;

(n) “Infringement of mark” means any violation of any of the rights

of the registered owner under Part III of the IP Code and/or the applicable

IP Law, including the act of any person who shall, without the consent

of the owner of the registered mark, and regardless of whether there

is actual sale of goods or services using the infringing material:

(i) use in commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark or the same container or a dominant

feature thereof in connection with the sale, offering for sale,

distribution, advertising of any goods or services including other

preparatory steps necessary to carry out the sale of any goods or services

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on or in connection with which such use is likely to cause confusion,

or to cause mistake, or to deceive; or

(ii) reproduce, counterfeit, copy or colorably imitate a registered

mark or a dominant feature thereof and apply such reproduction,

counterfeit, copy or colorable imitation to labels, signs, prints,

packages, wrappers, receptacles or advertisements intended to be used

in commerce upon or in connection with the sale, offering for sale,

distribution, or advertising of goods or services or in connection

with which such use is likely to cause confusion, or to cause mistake,

or to deceive;

(o) “Intellectual property rights” include:

(i) Copyright and Related Rights;

(ii) Trademarks and Service Marks;

(iii) Geographic Indications;

(iv) Industrial Designs;

(v) Patents;

(vi) Layout-Designs (Topographies) of Integrated Circuits; and

(vii) Undisclosed Information

(p) “IP Code” means Republic Act No. 8293 otherwise known as the


(q) “IP Law” means any law, in addition to the IP Code, involving

intellectual property rights;

(r) “Office” means the Intellectual Property Office;

(s) “Regulations” means this set of rules and regulations and such

Regulations as may be formulated by the Director of Bureau of Legal

Affairs and approved by the Director General.

(t) “Unfair Competition” means the act of any person who shall employ

deception or any other means contrary to good faith by which he shall

pass off the goods manufactured by him or in which he deals, or his

business, or services for those of the one having established such

goodwill, or who shall commit any acts calculated to produce said result.

The following shall likewise constitute unfair competition:

(i) the act of selling one’s goods and giving them the general appearance

of goods of another manufacturer or dealer, either as to the goods

themselves or in the wrapping of the packages in which they are contained,

or the devices or words thereon, or in any other feature of their

appearance, which would be likely to influence purchasers to believe

that the goods offered are those of a manufacturer or dealer, or the

act of clothing the goods with such appearance as shall deceive the

public and defraud another of his legitimate trade, or the act of

reselling the goods by any subsequent vendor with a like purpose.

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(ii) the act of employing any other means, by artifice or device,

calculated to induce the false belief that a person is offering the

services of another who has identified such services in the mind of

the public.

(iii) the act of making any false statement in the course of trade

or any act contrary to good faith of a nature calculated to discredit

the goods, business or services of another.

(u) “Violation of laws involving intellectual property rights mentioned

in Rule 2 Section 2” means violation of any law relating to the

intellectual property rights enumerated under Section 4 of Republic

Act No. 8293.

Section 2 Interpretation

These Regulations shall be liberally construed to carry out the

objectives of the IP Code and IP Laws and to assist the parties in

obtaining just and expeditious settlement or disposition of

administrative cases filed before the Office.


These Regulations shall primarily govern in the prosecution of

administrative complaints in the Bureau. The provisions of the Rules

of Court, however, shall apply in a suppletory character.

RULE 2 COMMENCEMENT OF ACTION

Section 1 Complaint, When and to Whom Filed

All administrative complaints for violation of the IP Code or IP Laws

shall be commenced by filing a verified complaint with the Bureau within

four years from the date of commission of the violation, or if the

date be unknown, from the date of discovery of the violation. A complaint

is verified by an affidavit that the affiant has read the pleading

and that the allegations therein are true and correct of his knowledge

and belief.

A pleading required to be verified which contains a verification based

on “information and belief” or upon “knowledge, information, and belief”

or lacks proper verification, shall be treated as an unsigned pleading.

The complaint shall include a certification that the party commencing

the action has not filed any other action or proceeding involving the

same issue or issues before any tribunal or agency nor such action

or proceeding is pending in other quasi-judicial bodies; Provided,

however, that if any such action is pending, the status of the same

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must be stated, and should knowledge thereof be acquired after the

filing of the complaint, the party concerned undertakes to notify the

Bureau within five days from such knowledge. Failure to comply with

the foregoing requirements shall not be curable by mere amendment of

the complaint or other initiatory pleading but shall be cause for

dismissal of the case without prejudice. The submission of a false

certification or non-compliance with any of the undertakings therein

shall constitute indirect contempt, without prejudice to the

corresponding administrative and criminal actions. If the acts of the

party or his counsel clearly constitute willful and deliberate forum

shopping, the same shall be ground for summary dismissal with prejudice

and shall constitute direct contempt.

Section 2 Original Jurisdiction

The Bureau shall have original jurisdiction in administrative actions

for violations of laws involving intellectual property rights where

the total damages claimed are not less than two hundred thousand pesos

(P 200,000.00); Provided however, that availment of the provisional

remedies may be granted in accordance with these Regulations and the

provisions of the Rules of Court; The Director shall coordinate with

local enforcement agencies for the strict and effective implementation

and enforcement of these Regulations.

The commencement of the action under these Rules and Regulations is

independent and without prejudice to the filing of any action with

the regular courts.

Section 3 Venue of Hearings

All hearings on actions covered by these regulations shall be held

within the premises of the Office.

Section 4 Formal Requirement

The Complaint shall be typewritten and addressed to the Bureau, and

shall contain the names and residences of the parties and a concise

statement of the ultimate facts constituting the complainant’s cause

or causes of action. It shall specify the relief/s sought, but it may

add a general prayer for such further or other relief/s as may be deemed

just or equitable. Every pleading filed shall likewise contain a caption

setting forth the name of the Office and the Bureau, the title of the

case, the case number, and the designation of the pleading.

No pleading shall be accepted by the Bureau unless it conforms to the

formal requirements provided by these Regulations and accompanied by

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the required filing fee.

Section 5 Partners, Named Individually

When two or more persons associated in any business, transact such

business under a common name, the associates may be sued under such

common name.

The associates of the business who are sued under a common name may

be named individually in the Answer filed by them or on their behalf

with their respective postal addresses.

Section 6 Payment of Filing Fee and Docketing

The complaint shall be filed in triplicate with the Bureau, which shall

issue an order for the payment of the required fee.

Upon payment of the required fee, the complainant, his counsel, or

representative shall submit to the Bureau a copy of the official receipt

and present the original copy thereof for comparison. Immediately after

the receipt of proof of payment of the required fee, the Records Officer

or any authorized officer of the Bureau shall acknowledge receipt of

the papers by assigning the Administrative Complaint Number, docket

the same, and raffle the case to any of the Hearing Officers.

Section 7 Representation and Confidentiality of Records

(a) The complaint may be prosecuted by the complainant by himself or

through counsel. The complainant and his counsel are required to conduct

their business with politeness, decorum and courtesy.

(b) It is strictly and absolutely forbidden for the Director, and other

employees of the Office to discuss the case or any phase thereof with

either counsel of record in the absence of the other or with any third

person not having any interest or legal standing before the Bureau.

Section 8 Summons

(a) Within three days from receipt of the complaint, the Staff Clerk

shall prepare, and the Process Server shall serve, the Summons or Notice

to Answer together with a copy of the complaint to the Respondent by

mail or by personal service. If the service is done through registered

mail, the return card shall be attached to the documents as evidence

of receipt. The proof of service of a summons shall be made in writing

by the server and shall set forth the manner, place and date of service;

shall specify any papers which have been served with the process and

the name of the person who received the same; and shall be sworn to

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when made by a person other than a sheriff or his deputy.

(b) If service cannot be made under the preceding paragraph, the office

and place of residence of the party being unknown, service may be made

by publication in a newspaper of general circulation, once a week for

three consecutive weeks and at the expense of the complainant. When

a party summoned by publication failed to appear in the action, final

orders or judgments against him shall be served upon him also by

publication at the expense of the prevailing party. If the service

has been made by publication, service may be proved by the affidavit

of the printer, his foreman or principal clerk, or of the editor, business

or advertising manager, to which affidavit a copy of the publication

shall be attached, and by an affidavit showing the deposit of a copy

of the summons and order for publication in the post office, postage

prepaid, directed to the party by registered mail to his last known

address.

(c) Any application for leave to effect service by way of publication

shall be made by motion in writing, supported by affidavit of the

complainant or some person on his behalf, setting forth the grounds

for the application.

(d) When the service has been completed, the server shall within five

days therefrom, serve a copy of the return, personally or by registered

mail, to the plaintiff’s counsel, and shall return the summons to the

Hearing Officer who issued it, accompanied by proof of service.

Section 9 Answer

(a) The summons shall require respondent to answer the complaint within

ten days from receipt thereof. The respondent shall answer the complaint

in writing, by either specifically denying the material allegations

of the complaint or alleging any affirmative defense.

If the respondent fails to answer within the time allowed therefor,

the Hearing Officer shall, motu proprio or upon motion of the complainant

with notice to the respondent, and proof of such failure, declare the

respondent in default. Thereupon, the Hearing Officer shall proceed

to render judgment granting the complainant such relief as his pleading

may warrant, unless the Hearing Officer in his discretion requires

the complainant to submit evidence. All such decisions or orders shall

comply with Rule 11 of these Regulations.

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(b) A party declared in default may, at any time after notice thereof

and before judgment, file a motion under oath to set aside the order

of default upon proper showing that his failure to answer was due to

fraud, accident, mistake or excusable negligence and that he has a

meritorious defense. In such a case, the order of default may be set

aside on such terms and conditions as the Hearing Officer may impose

in the interest of justice.

(c) A party in default shall not be entitled to notice of subsequent

proceedings, unless he files a motion to lift or set aside the order

of default.

Section 10 Answer to Amended Complaint

If the complaint is amended, the time fixed for the filing and service

of the answer shall, unless otherwise ordered, run from the service

of such amended complaint. The original answer shall be considered

as answer to the amended complaint unless a new answer is filed within

ten days from receipt or service of the amended complaint.

Section 11 Motion to Dismiss Not Allowed

No motion to dismiss on any of the grounds mentioned in the Rules of

Court and in any other law shall be allowed except on the ground of

prescription. Such grounds other than prescription shall instead be

pleaded as affirmative defenses, the resolution of which shall be made

in the decision on the merits. The Hearing Officer may, for good cause

shown, conduct a preliminary hearing on any of the affirmative defenses

if this will expedite the resolution of the case.


Upon joinder of issues, the pre-trial conference shall be set

immediately by the Hearing Officer. The notice of said pre-trial shall

be delivered by the Process Server within three days from receipt of

the answer or last pleading. The notice of pre-trial shall require

the parties to submit a pre-trial brief containing the following:

(a) A brief statement of the parties’ claims and defenses;

(b) Suggestions, if any, for simplification of issues;

(c) A list of documents they intend to produce as evidence, together

with appropriate markings as exhibits as well as the identification

of witnesses and a statement of the substance and purpose of their

testimony during the hearing on the merits. The originals of these

documents must be produced for comparison during the pre-trial

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conference without prejudice to the presentation of additional

documents during the trial if the party was prevented from producing

the same during the pre-trial on account of fraud, accident, mistake,

excusable negligence or such other reason which the Director or Hearing

Officer deems justifiable in the interest of justice and fair play;

(d) A statement whether they can stipulate on facts not covered by

admissions in their pleadings. If so, they should come up with drafts

of matters they are ready to stipulate on;

(e) The limitation on the number of witnesses;

(f) A statement whether they are open to the possibility of an amicable

settlement; and

(g) Such other matters as may aid in the prompt disposition of the

action.

Section 13 Effect of Failure to File Pre-Trial Brief or to Appear

The failure of the complainant to submit the Pre-Trial Brief within

the prescribed period or to appear at the pre-trial pursuant to these

Regulations shall be cause for dismissal of the action with prejudice

motu proprio or upon motion. A similar failure on the part of the

respondent shall be cause to declare respondent as in default motu

proprio or upon motion and to allow the complainant to present his

evidence ex-parte and the office to render judgment on the basis thereof.

Section 14 Appearance of the Parties

It shall be the duty of the parties and their counsel to appear at

the pre-trial. The non-appearance of a party may be excused only if

a valid cause is shown therefor or if a representative shall appear

on his behalf fully authorized in writing to enter into an amicable

settlement and to enter into stipulations or admissions of facts and

of documents.

Section 15 Effect of Failure to File Pre-trial Brief or to Appear in

the Pre-trial Conference

The failure of the complainant to submit the Pre-trial Brief within

the prescribed period or to appear at the pre-trial pursuant to these

Regulations shall be cause for dismissal of the action with prejudice

motu proprio or upon motion. A similar failure on the part of the

respondent shall be cause to allow the complainant to present his

evidence ex-parte and the Bureau to render judgment on the basis thereof.

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Section 16 Record of Pre-Trial Results

After the Pre-Trial, the Hearing Officer shall make an order which

recites the action taken at the conference, the amendments allowed

to the pleadings, and the agreements made by the parties as to any

of the matters considered. Such order shall limit the issues for trial

to those not disposed of by admissions or agreements of counsel and

when entered, controls the subsequent course of the action, unless

modified before trial to prevent manifest injustice.

Section 17 Pre-Trial Calendar

The Hearing Officer shall cause to be prepared a pre-trial calendar

of cases for consideration as above provided. After preparing Notice

of Pre-Trial, it shall be the duty of the designated clerk of the Bureau

to place such case in the pre-trial calendar.

RULE 3 POWERS OF HEARING OFFICERS

Section 1 Powers of Hearing Officers

(a) A Hearing Officer conducting the hearing and investigations shall

be empowered to administer oaths and affirmations; issue subpoena and

subpoena duces tecum to compel attendance of parties and witnesses

and the production of any book, paper, document, correspondence and

other records which are material to the case; grant provisional remedies

in accordance with these Regulations and the Rules of Court; and make

preliminary rulings on questions raised at the hearings, with the

ultimate decision on the merits of all the issues involved being left

to the Director.

(b) Furthermore, a Hearing Officer as alter ego of the Director, shall

have the power to cite a party or counsel or any person in contempt

in accordance with these Regulations.

(c) The Hearing Officer shall likewise have the power to pass upon

and approve bonds and counterbonds that may be posted by the parties;

the bond or counterbond shall be in the form of cash, cashier’s or

manager’s check issued in the name of the Intellectual Property Office.

Section 2 Service of Subpoena

Service of Subpoena shall be made at least three calendar days before

the scheduled hearing so as to allow the witness reasonable time for

preparation and travel to the place of attendance.

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Section 3 Quashing a Subpoena Duces Tecum

The Hearing Officer, upon motion made before the time specified in

a subpoena duces tecum for compliance therewith, may quash the subpoena

if it is unreasonable or the relevance of the books, papers, documents,

correspondence and other records does not appear, or if the person

on whose behalf the subpoena is issued fails to advance the reasonable

cost of the production thereof.

RULE 4 PRELIMINARY ATTACHMENT

Section 1 Grounds Upon Which Attachment May Issue

At the commencement of the action or at any time before entry of judgment,

a complainant or any proper party may have the property of the adverse

party attached as security for the satisfaction of any judgment that

may be recovered in the following cases:

(a) In an action against a party who has been guilty of fraud in procuring

the registration of a mark in the Office by false or fraudulent

declaration or representation, whether oral or in writing, or by any

false means;

(b) In an action against a party who has employed deception or any

other means contrary to good faith by which he shall pass off the goods

manufactured by him or in which he deals or his business or services

for those of the one having established such goodwill, or who shall

commit any act calculated to produce said result whether or not a mark

is involved;

(c) In an action against a party who does not reside and is not found

in the Philippines, or on whom summons may be served by publication;

(d) In an action for the recovery of a specified amount of money or

damages on a cause of action arising from a violation of the IP Code

against a party who is about to depart from the Philippines with intent

to evade the execution of judgment; or

(e) In an action against a party who has removed or disposed of his

property, or is about to do so, with intent to defraud the aggrieved

party.

Section 2 Issuance and Contents of Order

An order of attachment may be issued either ex-parte or upon motion

with notice and hearing conducted by the Hearing Officer. The Hearing

Officer shall determine whether the attachment sought is meritorious

or not. Should an order of attachment be issued by the Hearing Officer,

he shall sign and forward the order to the Director who shall direct,

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without delay, the officer or such other designated employee of the

Bureau to attach so much of the property in the Philippines of the

party against whom it is issued, not exempt from execution, as may

be sufficient to satisfy the applicant’s demand, unless such party

makes deposit or gives a bond as hereinafter provided in an amount

equal to that fixed in the order, which may be the amount sufficient

to satisfy the applicant’s demand or the value of the property to be

attached as stated by the applicant, exclusive of costs.

Section 3 Affidavit and Bond Required

An order of attachment shall be granted only when it appears by the

affidavit of the applicant, or of some other person who personally

knows the facts, that a sufficient cause of action exists, that the

case is one of those mentioned in Section 1 hereof, that there is no

other sufficient security for the claim sought to be enforced by the

action, and that the amount due to the applicant, or the value of the

property the possession of which he is entitled to recover, is as much

as the sum for which the order is granted above all legal counterclaims.

The affidavit and the receipt evidencing payment of the bond must be

duly filed with the Hearing Officer and forwarded to the Office of

the Director before the order issues.

Section 4 Condition of Applicant’s Bond

The party applying for the order must give a bond executed to the adverse

party in the amount fixed by the Hearing Officer in his order granting

the issuance of the writ, conditioned that the applicant will pay all

the costs which may be adjudged to the adverse party and all damages

which he may sustain by reason of the attachment, if the Hearing Officer

shall finally adjudge that the applicant was not entitled thereto.

Section 5 Manner of Attaching Property

The officer enforcing the writ shall, without delay and with all

reasonable diligence, attach, to await judgment and execution in the

action, only so much of the property in the Philippines of the party

against whom the writ is issued, not exempt from execution, as may

be sufficient to satisfy the applicant’s demand, unless the former

files a counterbond, in an amount equal to the bond fixed by the Hearing

Officer in the order of attachment or to the value of the property

to be attached, exclusive of costs. No levy on attachment pursuant

to the writ shall be enforced unless it is preceded, or accompanied

by service of summons, together with a copy of the complaint, the

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application for attachment, the applicant’s affidavit and bond, and

the order and writ of attachment on the defendant within the Philippines.

The requirement of prior or contemporaneous service of summons shall

not apply where the summons could not be served personally or by

substituted service despite diligent efforts, or the defendant is a

resident of the Philippines temporarily absent therefrom, or the

defendant is a non-resident of the Philippines.

Section 6 Sheriff’s Return

(a) After enforcing the writ, the sheriff must likewise, without delay,

make a return thereon to the Hearing Officer from whom the writ issued,

with a full statement of his proceedings under the writ and a complete

inventory of the property attached, together with any counterbond given

by the party against whom attachment is issued, and serve copies thereof

on the applicant.

(b) The sheriff shall submit a report to the Hearing Officer on the

action taken on all writs and processes assigned to them within twenty

days from receipt of said process or writ. Said report shall form part

of the records of the case.

(c) At the end of every month, said Hearing Officer shall submit a

report to the Director indicating therein the number of writs and

processes issued and served, as well as the number of writs and processes

unserved during the month and the names of the sheriffs who executed

each writ. Unserved writs and processes shall be explained in the report.

Section 7 What May be the Subject of Attachment and the Manner of Executing

the Same

The following properties may be the subject of attachment:

(a) Real Properties -- Real properties, or the machineries that may

be found inside the premises belonging to the party against whom the

writ is issued, or any interest therein, by filing with the Registry

of Deeds a copy of the order, together with a description of the property

attached, and a notice that it is attached, and by leaving a copy of

such order, description, and notice with the occupant of the property,

if any, or with such other person or his agent if found within the

city or province where the property is located. The Registrar of Deeds

must index attachments filed under this section in the name of the

applicant, the adverse party, or the person by whom the property is

held or in whose name it stands in the records. If the attachment is

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not claimed on the entire area of the land covered by the certificate

of title, a description sufficiently accurate for the identification

of the land or interest to be affected shall be included in the

registration of such attachment.

(b) Personal Properties. -- Those personal properties capable of manual

delivery, by taking such properties after issuing the corresponding

receipt therefore. The sheriff shall thereafter deliver the attached

properties to the complainant or proper party who shall be responsible

for the custody, safekeeping, preservation, and the inventory and return

of said properties to the other party or proper party upon termination

of the case.

(c) Shares of Stocks -- Shares of stocks or an interest in shares of

stocks of any corporation or company, by leaving with the president

or managing agent thereof, a copy of the writ, and a notice stating

that the stock or interest of the party against whom the attachment

is issued is attached in pursuance of such writ.

Section 8 When Attached Property May Be Sold After Levy on Attachment

and Before Entry of Judgment

Whenever it shall be made to appear to the Hearing Officer, upon hearing

with notice to both parties, that the property attached is perishable,

or that the interests of all the parties to the action will be subserved

by the sale thereof, the Hearing Officer may order such property to

be sold at public auction in such manner as he may direct, and the

proceeds of such sale to be deposited as the Director may prescribe

to await the judgment in the action.

Section 9 Discharge of Attachment Upon Giving Counterbond

After a writ of attachment has been enforced, the party whose property

has been attached, or the person appearing on his behalf, may move

for the discharge of the attachment wholly or in part on the security

given. The Hearing Officer shall, after due notice and hearing, order

the discharge of the attachment if the movant makes a cash deposit,

or files a counterbond with the Office of the Director in an amount

equal to that fixed by the Hearing Officer in the order of attachment,

exclusive of costs. But if the attachment sought to be discharged is

with respect to a particular property, the counterbond shall be equal

to the value of that property as determined by the Hearing Officer.

The cash deposit or the counterbond shall secure the payment of any

judgment that the attaching party may recover in the action. A notice

of the deposit shall forthwith be served on the attaching party. Upon

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the discharge of an attachment in accordance with the provisions of

this section, the property attached, or the proceeds of any sale thereof,

shall be delivered to the party making the deposit or filing the

counterbond, or to the person appearing on his behalf, the deposit

or counterbond aforesaid standing in place of the property so released.

Should such counterbond for any reason be found to be or become

insufficient, and the party furnishing the same fails to file an

additional counterbond, the attaching party may apply for a new order

of attachment.

Section 10 Discharge of Attachment on Other Grounds

The party whose property has been ordered attached may file a motion

with the Hearing Officer before whom the case is pending, before or

after levy or even after release of the attached property, for an order

to set aside or discharge the attachment on the ground that the same

was improperly or irregularly issued or enforced, or that the bond

is insufficient, or that the property being attached is exempt from

execution. If the attachment is excessive, the discharge shall be

limited to the excess. If said motion be made on an affidavit, the

attaching party may oppose the same by a counter-affidavit or other

evidence in addition to that on which the attachment was made. After

due notice and hearing, the Hearing Officer shall order the setting

aside or the discharge of the attachment if it appears that it was

improperly or irregularly issued or enforced, or that the bond is

insufficient, or that the attachment is excessive, and the defect is

not cured forthwith, or the property being attached is exempt from

execution.

Section 11 When the Property Attached is Claimed by Third Person

If the property attached is claimed by a person not a party to the

proceeding, and such person makes an affidavit of his title thereto,

or right to the possession thereof, and serves such affidavit upon

the sheriff and a copy thereof upon the attaching party, the sheriff

shall not be bound to keep the property under attachment unless the

attaching party or his agent, on demand of the sheriff shall file a

bond approved by the Hearing Officer to indemnify the third party

claimant in a sum not less than the value of the property levied upon.

In case of disagreement as to such value, the same shall be decided

by the Director. No claim for damages for the taking or keeping of

the property may be enforced against the bond unless the action therefor

is filed within sixty days from the date of the filing of the bond.

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The sheriff shall not be liable for damages for the taking or keeping

of such property, to any such third party claimant, if such bond shall

be filed. Nothing herein contained shall prevent such claimant or any

third person from vindicating his claim to the property, or prevent

the attaching party from claiming damages against a third party claimant

who filed a frivolous or plainly spurious claim, in the same or in

a separate action.

Section 12 Satisfaction of Judgment out of Property Attached; Sheriff’s

Return

If judgment be recovered by the attaching party and execution issue

thereon, the sheriff may cause the judgment to be satisfied out of

the property attached, if it be sufficient for that purpose in the

following manner:

(a) By paying to the judgment obligee the proceeds of all sales of

perishable or other property sold in pursuance of the order of the

Bureau, or so much as shall be necessary to satisfy the judgment;

(b) If any balance remains due, by selling so much of the property,

real or personal, as may be necessary to satisfy the balance, if enough

property remain in the sheriff’s hands for that purpose, or in those

of the Office of the Director.

The sheriff shall forthwith make a return to the Hearing Officer of

his proceedings under this Section and furnish the parties with copies

thereof.

Section 13 Balance Due Collected Upon an Execution; Excess Delivered

to Judgment Obligor

If after realizing upon all the property attached, and applying the

proceeds to the satisfaction of the judgment, less the expenses of

proceedings upon the judgment, any balance shall remain due, the sheriff

must proceed to collect such balance as upon ordinary execution.

Whenever the judgment shall have been paid, the sheriff, upon reasonable

demand, must return to the judgment obligor the attached property

remaining in his hands, and any proceeds of the sale of the property

attached not applied to the judgment.

Section 14 Disposition of Money Deposited

Where the party against whom attachment had been issued has deposited

money, it shall be applied under the direction of the Director to the

satisfaction of any judgment rendered in favor of the attaching party,

and after satisfying the judgment the balance shall be refunded to

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the depositor or his assignee. If the judgment is in favor of the party

against whom attachment was issued, the whole sum deposited must be

refunded to him or his assignee.

Section 15 Disposition of Attached Property Where Judgment is for Party

Against Whom Attachment was Issued

If judgment be rendered against the attaching party, all the proceeds

of sales and money collected or received by the sheriff, under the

order of attachment and all property attached remaining in such

officer’s hands, shall be delivered to the party against whom attachment

was issued, and the order of attachment discharged.

Section 16 Claim for Damages on Account of Improper, Irregular or

Excessive Attachment

An application for damages on account of improper, irregular or

excessive attachment must be filed with the Director before the trial

or before appeal is perfected or before the judgment becomes executory,

with due notice to the attaching party, setting forth the facts showing

his right to damages and the amount thereof. Such damages may be awarded

only after proper hearing and shall be included in the judgment on

the main case.

If, on appeal, the judgment of the Director-General be favorable to

the party against whom the attachment was issued, the latter may claim

damages sustained during the pendency of the appeal by filing an

application in the Office of the Director-General, with notice to the

party in whose favor the attachment was issued, before the judgment

of the Director-General becomes executory. The Director-General may

remand the application to the Bureau for hearing and decision.

Nothing herein contained shall prevent the party against whom the

attachment was issued from recovering in the same action the damages

awarded to him from any property of the attaching party not exempt

from execution should the bond or deposit given by the latter be

insufficient or fail to fully satisfy the award.

RULE 5 PRELIMINARY INJUNCTION

Section 1 Preliminary Injunction Defined; who may Grant

A preliminary injunction is an order granted at any stage of an action

or proceeding prior to the judgment or final order, requiring a party

to an administrative case or any third person to refrain from a particular

act or acts. It may also require the performance of a particular act

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or acts, in which case it shall be known as a preliminary mandatory

injunction.

A preliminary injunction may be granted by the Hearing Officer who

is hearing the case but no such power can be exercised as against a

concurrent court or other Office which has already acquired jurisdiction

over the subject matter.

Section 2 Grounds for Issuance of Preliminary Injunction

A preliminary injunction may be granted when it is established:

(a) That the applicant is entitled to the relief demanded, and the

whole or part of such relief consists in restraining the commission

or continuance of the act or acts complained of, or in requiring the

performance of an act or acts, either for a limited period or perpetually;

(b) That the commission, continuance or non-performance of the act

or acts complained of during the litigation would probably work

injustice to the applicant; or

(c) That a party or any person is doing, threatening, or is attempting

to do, or is procuring or suffering to be done, some act or acts probably

in violation of the rights of the applicant respecting the subject

of the action or proceeding and tending to render the judgment

ineffectual.

Section 3 Verified Application and Bond for Preliminary Injunction

or Temporary Restraining Order

A preliminary or temporary restraining order may be granted only when:

(a) The application in the action or proceeding is verified and shows

facts entitling the applicant to the relief demanded;

(b) Unless exempted, the applicant files with the Bureau a bond executed

to the party or person enjoined in an amount to be fixed by the Hearing

Officer, to the effect that the applicant will pay to such party or

person all damages which the latter may sustain by reason of the

injunction or temporary restraining order if the Hearing Officer should

finally decide that the applicant was not entitled thereto. Upon

approval of the requisite bond, a writ of preliminary injunction shall

be issued;

(c) When an application for a writ of preliminary injunction or a

temporary restraining order is included in a complaint or any initiatory

pleading, the case shall be raffled only after notice to and in the

presence of the adverse party or the person to be enjoined. In any

event, such notice shall be preceded, or accompanied by service of

summons, together with a copy of the complaint or initiatory pleading

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and the applicant’s affidavit and bond upon the adverse party in the

Philippines. However, where the summons could not be served personally

or by substituted service despite diligent efforts, or the adverse

party is a resident of the Philippines temporarily absent therefrom

or is a nonresident thereof, the requirement of prior or contemporaneous

service of summons shall not apply.

(d) The application for a temporary restraining order shall thereafter

be acted upon only after all the parties are heard in a summary hearing

which shall be conducted within twenty-four hours after the sheriff’s

return of service and/or the records are received by the Hearing Officer

to whom the case was raffled and to whom the records shall be transmitted

immediately.

If it shall appear from the facts shown that great or irreparable injury

would result to the applicant, the Hearing Officer to whom the

application for preliminary injunction was made, may issue a temporary

restraining order to be effective only for a period of twenty days

from service on the party or person sought to be enjoined, except as

herein provided. Within said twenty day period, the Hearing Officer

must order said party or person to show cause, at a specified time

and place, why the injunction should not be granted, determine within

the same period whether or not the preliminary injunction shall be

granted, and accordingly issue the corresponding order.

Section 4 Preliminary Injunction not Granted Without Notice; Exception

No preliminary injunction shall be granted without hearing and prior

notice to the party or person sought to be enjoined. Should the petition

be granted after compliance with the requirement of due process, the

Hearing Officer shall issue an order enjoining the party against whom

it is issued from further committing acts detrimental or injurious

to the applicant effective for a period of time not exceeding ninety

days as may be determined by the Hearing Officer with the concurrence

of the Director without prejudice to the filing of a counterbond as

provided in subsequent sections.

Section 5 Grounds for Objection to, or for Motion of Dissolution of,

Injunction or Restraining Order

The application for injunction or restraining order may be denied,

upon showing of its insufficiency. The injunction or restraining order

may also be denied, or if granted, may be dissolved, on other grounds

upon affidavit of the party or person enjoined, which may be opposed

by the applicant also by affidavit. It may further be denied, or, if

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granted, may be dissolved, if it appears after hearing that although

the applicant is entitled to the injunction or restraining order, the

issuance or continuance thereof, as the case may be, would cause

irreparable damage to the party or person enjoined while the applicant

can be fully compensated for such damages as he may suffer, and the

former files a bond in an amount fixed by the Hearing Officer conditioned

that he will pay all damages which the applicant may suffer by the

denial or the dissolution of the injunction or restraining order. If

it appears that the extent of the preliminary injunction or restraining

order granted is too great, it may be modified.

Section 6 When Final Injunction Granted

If after the trial of the action it appears that the applicant is entitled

to have the act or acts complained of permanently enjoined, the Hearing

Officer shall grant a final injunction perpetually restraining the

party or person enjoined from further commission of the act or acts

or confirming the preliminary mandatory injunction.

RULE 6 CONTEMPT

Section 1 Direct Contempt Punished Summarily

A person guilty of misbehavior in the presence of or so near the Director

or Hearing Officer as to obstruct or interrupt the proceedings before

him, including disrespect toward the Director or Hearing Officer,

offensive personalities toward others, or refusal to be sworn to or

answer as a witness, or to subscribe to an affidavit or deposition

when lawfully required to do so, may be summarily adjudged in contempt

by the Director or Hearing Officer and punished by fine not exceeding

Two Thousand Pesos (P 2,000.00) or imprisonment not exceeding ten days,

or both.

Section 2 Indirect Contempt to be Punished After Charge and Hearing

After a charge in writing has been filed, and an opportunity given

to the respondent to be heard by himself or counsel, a person guilty

of any of the following acts may be punished for contempt by the Director:

(a) Disobedience of or resistance to a lawful writ, process, order,

judgment, or command of the Hearing Officer, or injunction granted

by him;

(b) Any abuse of or unlawful interference with the process or proceedings

of the Bureau, not constituting direct contempt under Section 1 of

this Rule;

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(c) Any improper conduct tending, directly or indirectly, to impede,

obstruct, or degrade the administration of justice or the performance

of the Bureau’s proper function;

(d) Failure to obey a subpoena duly served;

(e) The rescue, or attempted rescue, of a person or property in the

custody of an officer by virtue of an order or process of a court held

by him; or

(f) The submission of a false certification, without prejudice to the

filing of the appropriate civil and/or criminal action, or

non-compliance with any undertaking regarding commencement of actions.

But nothing in this section shall be so construed as to prevent the

Director from issuing process to bring the respondent party into or

before the Bureau, or from holding him in custody pending such

proceedings.

Section 3 Contempt Proceedings

Proceedings for indirect contempt may be initiated motu proprio by

the Bureau by an order or any other formal charge requiring the respondent

to show cause why he should not be punished for contempt.

In all other cases, charges for indirect contempt shall be commenced

by a verified petition with supporting particulars and certified true

copies of documents or papers involved therein, and upon full compliance

with the requirements for filing initiatory pleadings for civil actions.

If the contempt charges arose out of or are related to principal action

pending in the Bureau, the petition shall be docketed, heard, and decided

separately, unless the Bureau in its discretion orders the consolidation

of the contempt charge and the principal action for joint hearing and

decision.

Section 4 Hearing; Release on Bail

If the hearing is not ordered to be had forthwith, the respondent may

be released from custody upon filing a bond, in an amount fixed by

the Director or Hearing Officer, for his appearance to answer the charge.

On the day set for the hearing, the Director or Hearing Officer shall

proceed to investigate the charge and consider such answer or testimony

as the respondent may make or offer.

Section 5 Punishment for Indirect Contempt

If the respondent is thereupon adjudged guilty of indirect contempt

committed, he may be punished by a fine not exceeding Thirty Thousand

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Pesos (P 30,000.00) or imprisonment of not more than six months, or

both, and if the contempt consists in the violation of an injunction,

he may also be ordered to make a complete restitution to the party

injured by such violation.

Section 6 Imprisonment Until Order Obeyed

When the contempt consists in the omission to do an act which is yet

in the power of the respondent to perform, he may be imprisoned by

order of the Hearing Officer until he performs it.

Section 7 Proceedings When Party Released on Bail Fails to Answer

When a respondent released on bail fails to appear on the date fixed

for the hearing, the Hearing Officer may issue another order of arrest

or may order the bond for his appearance to be prosecuted, or both;

and, if the bond be prosecuted, the measure of damages shall be the

extent of the loss or injury sustained by the aggrieved party by reason

of the misconduct for which the contempt was prosecuted, and the costs

of the proceedings, and such recovery shall be for the benefit of the

party injured. But if there is no aggrieved party, the bond shall be

liable and disposed of as in criminal cases.

Section 8 Hearing Officer May Release Respondent

The Director or the Hearing Officer may discharge from imprisonment

a person imprisoned for contempt when it appears that public interest

will not suffer thereby.

Section 9 Review of Judgment or Order by the Director

The judgment or order of the Hearing Officer made in a case of direct

contempt punished after written charge and hearing may be reviewed

by the Director, but execution of the judgment or order shall not be

suspended until a bond is filed by the person in contempt, in an amount

fixed by the Hearing Officer conditioned that if the appeal be decided

against him he will abide by and perform the judgment or order.

RULE 7 CALENDAR AND ADJOURNMENTS

Section 1 Trial Calendar

The staff clerk shall have a trial calendar for the cases that have

passed pre-trial stage. Cases where there is a prayer for preliminary

mandatory injunction and/or attachment shall be given preference.

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Section 2 Notice of Trial

Upon entry of a case in the trial calendar, the staff clerk shall cause

a notice of the date of its trial to be served upon the parties within

three days by the process server.

Section 3 Continuous Trial

All hearings shall be continuous until the case is terminated subject

to exceptions provided under Section 2 of Rule 9.

Section 4 Raffle of Cases

Actions which are to be conducted before this Bureau shall be raffled

to the different Hearing Officers who shall thereafter handle the

proceeding from its commencement until its final resolution. However,

should the Hearing Officer to whom the case was raffled be unavailable

during any scheduled hearing, upon request of either counsel, the

Director shall designate an appropriate officer to preside or conduct

the proceedings.

RULE 8 DEPOSITIONS AND DISCOVERIES

Section 1 Deposition Pending Action

By leave of the Hearing Officer after the Answer has been filed, the

testimony of any person, whether a party or not, may be taken, at the

instance of any party, by deposition upon written interrogatories.

The attendance of witness through a subpoena may be compelled under

Section 2(d) of Rule VI.

Section 2 Effect of Taking Depositions

A party shall not be deemed to make a person his own witness for any

purpose by taking his deposition.

Section 3 Stipulations Regarding Taking of Depositions

If the parties so stipulate in writing, depositions may be taken before

any person authorized to administer oaths, at anytime or place, in

accordance with the Rules of Court, and when so taken may be used like

other depositions.

Section 4 Period Within Which to Submit Answers to Written

Interrogatories

Should a party request to take the deposition of a non-resident in

a foreign land, the answer to such written interrogatories must be

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submitted to the Hearing Officer handling the case within six months

from the date of issuance of the Letters Commission, without extension.

Failure to submit the same within the period shall result in the striking

off of said deposition and the affidavits of such deponent.

RULE 9 HEARING

Section 1 Trial of Cases

The Hearing Officer shall, as far as practicable, set the case for

successive and continuous daily hearing for the reception not only

of the evidence in chief but also on any provisional remedy prayed

for in the complaint or petition; Provided, however, that the hearing

of the case on the merits or the reception of evidence of the parties

shall be terminated within ninety days, thirty days to be allotted

to complainant’s or petitioner’s evidence, thirty days for respondent,

and thirty days for any rebuttal and surrebuttal evidence. In the case

of provisional remedies, the hearings or reception of evidence thereof

shall be terminated within thirty days.

Section 2 Postponement of Hearings

Postponement of hearings shall be allowed only on extremely meritorious

grounds provided, that the reception of evidence of the parties shall

not exceed the periods provided under the preceding section.

Section 3 Order of Trial

Unless the Hearing Officer, for special reasons, otherwise directs,

the order of trial shall be as follows:

(a) The complainant or petitioner must produce evidence in support

of his allegations in the complaint or petition. The affiants/witnesses

whose affidavits were submitted must be subject to a cross examination

by the opposing counsel on the basis of their affidavits.

(b) The respondent shall then offer evidence in support of his defense,

counterclaim, cross-claim, and third-party claim subject to

cross-examination by complainant or petitioner or his counsel.

(c) The third party-respondent, if any, shall introduce evidence of

his defense, counterclaim, cross-claim and third-party claim.

(d) The fourth party, and so forth, if any, shall introduce evidence

of the material facts pleaded by him.

(e) The parties against whom any counterclaim or cross-claim has been

pleaded shall introduce evidence in support of their defense, in the

order to be prescribed by the Hearing Officer.

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(f) The parties may then respectively offer rebutting evidence only,

unless the Hearing Officer, for good reasons, in the furtherance of

justice, permits them to offer additional evidence pertinent to the

original issue.

(g) When the presentation of evidence is concluded, the parties may

submit their respective memoranda within ten days from date of the

last hearing. Unless otherwise provided for by special laws, the

appropriate final pleadings required of the parties to be submitted

shall include a draft of the decision/resolution they seek, stating

clearly and distinctly the facts and the law upon which it is based.

The Hearing Officer may adopt, in whole or in part, either of the parties’

draft decisions/resolutions, or reject both. This requirement shall

likewise be applied to orders other than final judgment.

Section 4 Agreed Statements of Facts

(a) The complainant and the respondent may agree in writing upon the

facts involved in the action, and ask judgment upon the facts agreed

upon, without the introduction of evidence. The Hearing Officer shall

immediately prepare the decision and submit it to the Division Chief

of the Administrative Complaints Division who shall recommend the same

to the Director for his approval, if the agreed statement of facts

is sufficient to support a decision.

(b) If the parties can agree only on some of the facts in issue, a

hearing shall be held as to the others.

Section 5 Period for Resolving Cases

Unless a different period is fixed by special laws, all contested cases

or any incident thereof shall be decided or resolved within thirty

calendar days from submission for decision or resolution by the Bureau.

Section 6 Consolidation

When actions involving a common question of law or fact are pending

before the Bureau, the Hearing Officer may order a joint hearing or

trial on any or all the matters in issue in the actions. It may order

all the actions consolidated and it may make such orders concerning

proceedings therein as may tend to avoid unnecessary costs or delay.

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RULE 10 EVIDENCE

Section 1 Evidence Required

Substantial evidence shall be sufficient to support a decision or order.

A fact may be deemed established if it is supported by substantial

evidence. It means such relevant evidence which a reasonable mind might

accept as adequate to support or justify a conclusion.

Section 2 Documentary Evidence

Documentary evidence may be received in the form of copies or excerpts,

if the original is not readily available. Upon request, the parties

shall be given opportunity to compare the copy with the original. If

the original is in the custody of a public officer, a certified copy

thereof may be accepted.

Section 3 Director or Hearing Officer not Bound by Technical Rules

of Evidence

The Director or Hearing Officer shall receive relevant and material

evidence, rule on offer of evidence and exclude all irrelevant matters,

and shall act according to justice and fairness. The Bureau, in the

exercise of its power to hear cases within its jurisdiction shall not

be strictly bound by the technical rules of evidence. The Bureau shall,

however, take judicial cognizance of the official acts of the

legislative, executive and the judicial departments of the Philippines,

the laws of nature, scientific facts as published in treatises,

periodicals, or pamphlets and other facts which are of public knowledge

or general knowledge as would enable the Director or Hearing Officer

to rule upon the technical issues in the case.

Section 4 Burden of Proof in Process Patents

If the subject matter of a patent is a process for obtaining a product,

any identical product shall be presumed to have been obtained through

the use of the patented process if the product is new or there is

substantial likelihood that the identical product was made by the

process and the owner of the patent has been unable despite reasonable

efforts, to determine the process actually used. In ordering the

defendant to prove that the process to obtain the identical product

is different from the patented process, the Director shall adopt

measures to protect, as far as practicable, his manufacturing and

business secrets.

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Section 5 Power to Stop Further Evidence

The Hearing Officer may stop the introduction of further testimony

upon any particular point when the evidence is already so full that

more witness to the same point cannot be reasonably expected to be

additionally persuasive. The Hearing Officer, however, should exercise

this power with caution so as not to cause manifest injustice to the

parties.

Section 6 Equitable Principles to Govern Proceedings

In all cases involving intellectual property rights, the equitable

principles of laches, estoppel, and acquiescence where applicable,

may be considered and applied.

RULE 11 DECISIONS AND ORDERS

Section 1 Rendition of Decisions

(a) The case is deemed submitted for resolution upon termination of

the period for reception of evidence provided in Section 1 of Rule

9 and the evidence formally offered. Whether or not the parties submit

a final pleading such as memorandum, the case shall be decided by the

Bureau within thirty calendar days from submission as provided herein.

All decisions determining the merits of cases shall be in writing,

stating clearly and distinctly the facts and law on which they are

based and signed by the Director.

(b) Decisions and final orders shall be served by mail, personal service

or publication as the case may require.

RULE 12 ADMINISTRATIVE PENALTIES AND SANCTIONS

Section 1 Administrative Penalties Imposable

After formal investigation, the Director, may impose one or more of

the following administrative penalties:

(a) Issuance of a cease and desist order which shall specify the acts

that the respondent shall cease and desist from and shall require him

to submit a compliance report within a reasonable time which shall

be fixed in the Order;

(b) The acceptance of a voluntary assurance of compliance or

discontinuance as may be imposed. Such voluntary assurance may include

one or more of the following:

(i) An assurance to comply with the provisions of the Intellectual

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Property Law violated;

(ii) An assurance to refrain from engaging in unlawful and unfair acts

and practices subject of the formal investigations;

(iii) An assurance to recall, replace, repair or refund the money value

of defective goods distributed in commerce;

(iv) An assurance to reimburse the complainant the expenses and costs

incurred in prosecuting the case in the Bureau;

The Director may also require the respondent to submit periodic

compliance reports and file a bond to guarantee compliance of his

undertaking.

(c) The condemnation or seizure of products which are subject of the

offense. The goods seized hereunder shall be disposed of in such manner

as may be deemed appropriate by the Director, such as by sale, donation

to distressed local government units or to charitable or relief

institutions, exportation recycling into other goods, or any

combination thereof, under such guidelines as he may provide;

(d) The forfeiture of paraphernalia and all real and personal properties

which have been used in the commission of the offense;

(e) The imposition of administrative fines in such amount as deemed

reasonable by the Director, which shall in no case be less than Five

Thousand Pesos (P5,000.00) nor more than One Hundred Fifty Thousand

Pesos (P150,000.00). In addition, an additional fine of not more than

One Thousand Pesos (P1,000.00) shall be imposed for each day of

continuing violation;

(f) The cancellation of any permit, license, authority, or registration

which may have been granted by the Office, or the suspension of the

validity thereof for such period of time as the Director may deem

reasonable which shall not exceed one year;

(g) The withholding of any permit, license, authority or registration

which is being secured by the respondent from the Office;

(ga) The assessment and award of damages;

(h) Censure;

(i) Other analogous penalties or sanctions such as those provided under

Section 216 of Republic Act No. 8293.



A judgment or final order determining the merits of the case shall

be in writing, stating clearly and distinctly the facts and the law

on which it is based, signed by the Director, and filed with the

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appropriate Register of the Office.

Section 2 Entry of judgments and Final Orders

If no appeal is filed within the time provided in these Regulations,

the Director shall forthwith cause the entry of the judgment or final

order in the appropriate Register of the Office. The date of finality

of the judgment or final order shall be deemed to be the date of its

entry. The record shall contain the dispositive part of the judgment

or final order and shall be signed by the Director, with a certificate

that such judgment or final order has become final and executory.

Section 3 Order and Writ of Execution

As soon as a decision or order has become final and executory, the

Director shall, motu proprio or on motion of the interested party issue

an order of execution deputizing and requiring the appropriate officer

or personnel of the Office, or such other duly authorized government

agent, officer, or personnel, to execute and enforce said decision

or order.

Section 4 Execution Pending Appeal

On motion of the prevailing party with notice to the adverse party

or motu proprio and upon filing of an approved bond, the Director may,

in his discretion, order execution to issue even before the expiration

of the time to appeal, upon good reasons to be stated in the order.

The execution pending appeal may be stayed by the filing of an approved

counterbond in an amount to be fixed by the Director.

RULE 14 APPEAL

Section 1 Finality of Decision and Order

(a) The decision and order of the Director shall become final and

executory fifteen days after the receipt of a copy thereof by the party

affected unless within the said period an appeal to the Director General

has been perfected.

(b) Decisions of the Director-General shall be final and executory

unless an appeal to the Court of Appeals or the Supreme Court is perfected

in accordance with the Rules of Court applicable to appeals from decision

of Regional Trial Courts.

(c) Interlocutory orders shall not be appealable.

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(d) No motion for reconsideration of the decision of the Director General

shall be allowed.

Section 2 Appeal, How Perfected

Appeal may be perfected by filing a Notice of Appeal with the Director

General and the Director and a copy thereof served upon the adverse

party within fifteen days from receipt of the order or Decision and

upon payment of the corresponding docket fee.

FINAL PROVISIONS








of the Philippines Law Center, and one certified copy each to the Office

of the President, the Senate of the Philippines, the House of


Library.




202

VI. REVISED RULES AND REGULATIONS ON SETTLEMENT OF DISPUTES INVOLVING

TECHNOLOGY TRANSFER PAYMENTS AND THE TERMS OF A LICENSE INVOLVING THE

AUTHOR’S RIGHT TO PUBLIC PERFORMANCE OR OTHER COMMUNICATION OF HIS

WORK

Section 1 Title

These rules and regulations shall be referred to as “Rules on Dispute

Settlement”.



herein provided:

(a) “Author” means the natural person who has created the work;

(b) “Bureau” means the Documentation, Information and Technology

Transfer Bureau of the Intellectual Property Office;

(c) “Communication to the public” or “communicate to the public ”means

the making of a work available to the public by wire or wireless means

in such a way that members of the public may access these works from

a plcace and time individually chosen by them;

(d) “Director General” means the head of the Intellectual Property

Office;

(e) “Director” means the Director of the Documentation, Information

and Technology Transfer Bureau;

(f) “Dispute Settlement Division” means the division within the Bureau

primarily in charge of mediation proceedings;

(g) “Mediator” means any officer within the Bureau as the Director

may designate with respect to disputes involving technology transfer

payments and any officer in the Office as the Director General may

designate with respect to cases involving author’s right to public

performance or other communication of his work;

(h) “Office” means the Intellectual Property Office;

(i) “Public performance” means

(1) in case of a work other than an audiovisual work, the recitation,

playing, dancing, acting or otherwise performing the work, either

directly or by means of any device or process;

(2) in the case of an audiovisual work, the showing of its images in

sequence and the making of the sounds accompanying it audible; and

(3) in the case of a sound recording, the act of making the recorded

sounds audible at a place or at places where persons outside the normal

circle of a family and that family’s closest social acquaintances are

or can be present, irrespective of whether they are or can be present

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at the same place and at the same time, or at different places and/or

at different times, and where the performance can be perceived without

the need for communication within the meaning of “communication to

the public” or “communicate to the public”.

(j) “Technology Transfer Arrangements” shall mean contracts or

agreements, including renewals thereof, involving the transfer of

systematic knowledge for the manufacture of a product, the application

of a process, or rendering of a service including management contracts;

and the transfer, assignment or licensing of all forms of intellectual

property rights, including licensing of computer software except

computer software developed for mass market.

The licensing of copyright is considered a technology transfer

arrangement only if it involves the transfer of systematic knowledge.

Section 3 Jurisdiction of the Director General

The Director General exercises original jurisdiction to resolve

disputes relating to the terms of a license involving the author’s

right to public performance or other communication of his work.

Section 4 Jurisdiction of the Director

The Director shall exercise quasi-judicial jurisdiction in the

settlement of disputes between parties to a technology transfer

arrangement arising from technology transfer payments, including the

fixing of appropriate amount or rate of royalty.

Section 5 Who may File a Complaint

Any aggrieved party may file a complaint with the Bureau upon payment

of the required filing fee.

Section 6 Contents of Complaint

The complaint shall be in writing and shall state the following:

(a) Name and address of the complainant and the name and address of

the respondent;

(b) Brief statement of the nature of the complaint;

(c) The demands or reliefs sought for.

Section 7 Escrow

Should any party elect to avail of the provisions of the Civil Code

of the Philippines on consignation with respect to the royalty or any

sum of money that may be involved in the dispute, the complainant shall

submit to the Bureau a certified copy of the Contract of Escrow.

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Section 8 Mediation Process

Within one day from receipt of the complaint and payment of the required

fees, the Bureau shall docket the complaint and the Director shall

refer the same to the Dispute Settlement Division for mediation.

Section 9 Notice to Settle

Within five days from the docketing of the complaint, the Mediator

shall call the parties to a Mediation Conference by sending each party

a Notice to Settle, stating the date, time and venue of the conference,

and attaching thereto a copy of the complaint for the respondent. The

Mediation Conference shall be set within ten days from date of the

said notice.

Section 10 Mediation Conference

During the mediation conference, the Mediator shall encourage the

parties to arrive at a fair and mutually beneficial compromise that

will resolve the dispute. The Mediator shall explain the mediation

proceedings stressing the benefits of an early settlement of the dispute

and shall attempt immediate settlement.

If no settlement is reached, another session shall be set within ten

days therefrom to consider various options proposed by the Mediator

to resolve the dispute. If necessary, the Mediator may hold separate

conferences with each party before the next session to explore

alternative points of agreement between the parties.

Section 11 Appearance of Parties

It shall be the duty of the parties to appear at the Mediation Conference.

During the conference, presence of counsel is not necessary and is

even discouraged.

Section 12 Effect of Failure to Appear at Mediation Conference

The failure of the complainant to appear at the Mediation Conference

shall be cause for the dismissal of the complaint. The dismissal shall

be with prejudice, unless otherwise ordered by the Mediator. A similar

failure on the part of the respondent shall be cause to allow the

complainant to submit his affidavit within ten days therefrom and the

complaint shall be deemed submitted for resolution.

However, within ten days from receipt of the order of dismissal or

default, the concerned party or parties may file a motion to set aside

said order, if the failure to appear was by reason of fraud, accident,

mistake or excusable negligence.

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Section 13 Venue of the Mediation Conference

The Mediation Conference and any session thereof shall be held within

the premises of the Office. However, upon written request and payment

of the required fee, the Director may authorize that the Mediation

Conference or any session thereof be held outside the premises of the

Office provided that the same is necessary and will enhance the

proceedings and the other party, if the request was made by only one

party, agrees thereto. The parties shall not unreasonably withhold

their consent to such request. The total cost to hold the Mediation

Conference or any session thereof outside the premises of the Office,

including air transportation, accommodation and per diem, shall be

borne by the party requesting; and, if the request was made by all

parties, the total cost shall be shared by them equally or in such

other proportion as they may state in their request.

Section 14 Proceedings in case of Successful Settlement

If the mediation is successful, the parties shall submit the original

Compromise Agreement to the Mediator within five days from date of

the last conference. The Mediator shall, within one day from receipt

thereof, review and determine whether the compromise agreement is in

accordance with law and public interest, and shall submit the compromise

agreement together with his recommendations, to the Director General

or Director who shall, within fifteen days therefrom, issue a judgment

by compromise which shall be immediately executory.

Section 15 Confidentiality of Records

To encourage the spontaneity that is conducive to effective

communication and successful mediation efforts, the mediation

proceedings and all incidents thereto shall be kept strictly

confidential including any admissions, statements, or other evidence

adduced therein. Any notes taken by the Mediator during the proceedings

shall be disposed of after the resolution of the dispute.

Section 16 Proceedings in case of Failure of Mediation

If the mediation is not successful, the Mediator shall declare failure

of mediation and direct the parties to submit their respective affidavit,

with supporting documents, if any, within a non-extendible period of

ten days from the last mediation conference. The mediator shall issue

the corresponding “Certificate of Failed Mediation” and directive.

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Section 17 Clarificatory Hearing

If necessary, the Mediator may, within five days from receipt of the

last affidavit, call the parties to a clarificatory hearing.

Section 18 Decision of Director General or Director

Within thirty days after receipt of the last affidavit or after the

clarificatory hearing, the Mediator shall submit his findings including

a draft decision to the Director General or the Director who shall

consider the same for approval, disapproval or other actions within

thirty days therefrom.


The decision or final order of the Director on disputes involving

technology transfer payments shall become final and executory fifteen

days after receipt of a copy thereof by the parties 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 filing a

notice of appeal and payment of the required fee.


Director shall be allowed. If the motion is denied, the movant shall

file his appeal within the balance of the period prescribed above to

which he was entitled at the time of serving his motion.

Section 20 Appellant’s brief required





Section 21 Director’s comment

The Director shall submit his comments on the appellant’s brief within

one month from receipt of the order of the Director General requiring

him to comment.

Section 22 Appeal to the Secretary of Trade and Industry

The decision of the Director General shall be final and executory fifteen

days after receipt of a copy thereof by the parties unless an appeal

to the Secretary of the Department of Trade and Industry is perfected

by filing a notice of appeal and payment of the required fee. No motion

for reconsideration of the decision or order of the Director General

shall be allowed.

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FINAL PROVISIONS


These rules and regulations shall primarily govern the settlement of

disputes before the Bureau. However, relevant provisions of the Rules

of Court shall apply suppletorily.

Section 24 Amendment

All rules and regulations, office orders, memoranda, circulars and

memorandum circulars and parts thereof inconsistent with these rules

are hereby amended.







file three certified copies of these rules with the University of the

Philippines Law Center, and one certified copy each to the Office of

the President, the Senate of the Philippines, the House of


Library.




208

VII. REGULATIONS ON INTER PARTES PROCEEDINGS (Petitions for

Cancellations of a Mark, Patent, Utility Model, Industrial Design,

Opposition to Registration of a Mark & Compulsory Licensing)

RULE 1 DEFINITION OF TERMS


Unless otherwise indicated, the following terms shall be understood

as follows:

(a) “Bureau” means the Bureau of Legal Affairs of the Intellectual

Property Office;

(b) “Chief Hearing Officer” means the officer within the Bureau who

exercises immediate supervision over any Hearing Officer. His title

or official designation may differ from the words “Chief Hearing

Officer” depending on the structure of the Office;

(c) “Court” means a court of general jurisdiction such as Regional

Trial Court;

(d) “Director” means the Director of the Bureau of Legal Affairs;


Office;

(f) “Hearing Officer” means the Officer within the Bureau authorized

to exercise the functions of “Hearing Officer” in these Regulations.

The title or official designation of such officers may differ from

the words “Hearing Officers” depending on the structure of the Office;



(h) “Office” means the Intellectual Property Office;

(i) “Regulations” means this set of rules and regulations and such

Regulations as may be formulated by the Director of the Bureau of Legal

Affairs and approved by the Director General.

RULE 2 INTER PARTES PROCEEDINGS, THE PARTIES TO THE PROCEEDINGS;

JURISDICTION; PROCEDURE; EVIDENCE

Section 1

The contested or inter partes proceedings are:

1.1 Patent Cases

(a) Petition to cancel an invention patent, utility model registration,

industrial design registration, or any claim or parts of a claim;

(b) Petition for Compulsory Licensing or a license to exploit a patented

invention.

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1.2 Trademark Cases

(a) Opposition against the registration of a mark published for

opposition; and

(b) Petition to cancel the registration of a mark.

Section 2 Parties in Inter Partes Proceedings

The Petitioner in a cancellation proceeding and in a compulsory

licensing proceeding and the Opposer in an opposition proceeding shall

be deemed to be in the position of a plaintiff while the Respondent

in a cancellation, compulsory licensing or opposition proceeding shall

be in the position of defendant, with respect thereto. The Petition

for Cancellation, Petition for Compulsory Licensing and Notice of

Opposition shall correspond to the Complaint, while the Answer thereto

shall correspond to the Answer. The taking of testimony orally before

the Director or any Hearing Officer, the introduction of documentary

evidence during the hearings and the submission of briefs or memoranda,

shall correspond to trial.

Section 3 Original Jurisdiction over Inter Partes Proceedings

The Director shall have original jurisdiction over inter partes

proceedings. Such inter partes proceedings shall be heard before the

Director, any Hearing Officer or other ranking official of the Bureau

designated by the Director but all decisions and final orders shall

be signed by the Director.

Section 4 Right of Foreign Corporation to Sue in Trademark or Service

Mark Enforcement Action

Any foreign national or juridical person whether or not engaged in

business in the Philippines may bring a petition for opposition,

cancellation or compulsory licensing: Provided, that the country of

which he or it is a national, or domiciled, or has a real and effective

industrial establishment is a party to any convention, treaty or

agreement relating to intellectual property rights or the repression

of unfair competition, to which the Philippines is also a party, or

extends reciprocal rights to nationals of the Philippines by law.

Section 5 Jurisdiction of the Courts in Patent Cancellation

The courts shall have jurisdiction over petition for the cancellation

of the patent where such petition is based on the grounds enumerated

in Section 67 or Section 68 of Republic Act No. 8293. However, where

any of the grounds in Sections 67 or 68 has been raised together with

210

the grounds for cancellation stated in Sections 49, 61, 109 or 120

in a petition for cancellation of a patent, utility model or industrial

design or where any of such grounds or issues has been raised in an

administrative case for violation of laws involving intellectual

property rights, all parties in the petition or administrative case

shall be prohibited from instituting a separate action in court based

on Section 67 or Section 68 of Republic Act No. 8293.

Section 6 Rules of Procedure to be Followed in the Conduct of Hearing

of Inter Partes Cases

In the conduct of hearing of inter partes cases, the rules of procedure

herein contained shall be primarily applied. The Rules of Court, unless

inconsistent with these rules, may be applied in suppletory character,

provided, however, that the Director or Hearing Officer shall not be

bound by the strict technical rules of procedure and evidence therein

contained but may adopt, in the absence of any applicable rule herein,

such mode of proceedings which is consistent with the requirements

of fair play and conducive to the just, speedy and inexpensive

disposition of cases, and which will give the Bureau the greatest

possibility to focus on the technical grounds or issues before it.

Section 7 Powers of Hearing Officer

A Hearing Officer designated to conduct hearings and investigation

shall be empowered to administer oaths and affirmations, issue subpoena

and subpoena duces tecum to compel attendance of parties and witnesses

and the production of any book, papers, correspondence and other records

which are material to the case, and to make preliminary rulings on

questions raised at the hearings, with the ultimate decision being

left to the Director or any final order.

Section 8 Workflow/Procedure in Inter Partes Proceedings

(a) The Petition for Cancellation, Compulsory Licensing or Notice of

Opposition shall be filed with the Bureau which shall check if the

complaint is in due form and thereafter, shall issue an order for the

payment of the required fee.

(b) After payment of the required fee, the petitioner, his counsel

or representative shall submit to the Bureau a copy of the official

receipt and present the original thereof for comparison. Within twenty

four hours from receipt of the proof of payment of the required fee,

the Assistant Director of the Bureau shall acknowledge receipt of the

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papers by assigning the Inter Partes Case Number, docket the same and

then assign the case to any of the Hearing Officers through raffle

under the rules promulgated by the Director General.

(c) Within three working days from receipt of the petition by the Bureau,

the Hearing Officer to whom the petition is assigned shall immediately

prepare and send, in the name of the Director, to all parties required

to be notified in the IP Code and these Regulations the necessary orders,

notice of publication, summons, and other notices, either by registered

mail or by personal delivery.

Section 9 Summons and Answer

The summons shall require respondent to answer the petition (and not

to file a motion to dismiss) within fifteen days from service of the

summons.

(a) Answer -- The respondent shall answer the petition in writing,

either by denying specifically the material allegations of the petition

or by alleging any lawful defense. He shall file his answer together

with the sworn statements and documentary evidence and serve copies

thereof upon the petitioner or opposer.

(b) Amended, the time fixed for the filing and service of the answer

shall, unless otherwise ordered, run from receipt of notice of the

order admitting the amended petition or opposition from service of

such amended petition. The original answer shall be considered as answer

to the amended petition unless a new answer is filed within ten days

from notice or service.

(c) No motion to dismiss -- No motion to dismiss shall be entertained.

Instead, all grounds for dismissal shall be pleaded as affirmative

defenses, the resolution of which shall be made in the decision on

the merits. The Hearing Officer may, for good cause shown, conduct

a hearing on any of the affirmative defenses if this will promote

expediency in the resolution of the pending case.


Upon joinder of issues, the designated clerk of the Bureau shall prepare

the Notice of Pre-Trial upon receipt of invitation from the Hearing

Officer setting the date of the pre-trial conference. The pre-trial

conference shall be set within two months but not earlier than one

month from receipt of the Answer or other pleading. The notice of

pre-trial shall be delivered by personal delivery or registered mail

within two days from the date on which instruction was given to the

212

clerk. The notice of pre-trial shall require the parties to submit

a pre-trial brief containing the following:

(a) A brief statement of the parties’ claims and defenses;

(b) Suggestions, if any, for simplification of issues;

(c) A list of documents they intend to produce as evidence, together

with appropriate markings as exhibits as well as the identification

of witnesses and a statement of the substance and purpose of their

testimony during the hearing on the merits. These documents must be

produced for examination during the pre-trial conference without

prejudice to the presentation of additional documents during the trial

if the party was prevented from producing the same during the pre-trial

on account of fraud, accident, mistake, excusable negligence or such

other reason which the Director or Hearing Officer deems justifiable

in the interest of justice and fair play;

(d) A statement whether they can stipulate on facts not covered by

admissions in their pleadings. If so, they should come with drafts

of matters they are ready to stipulate on;

(e) A statement whether they are open to the possibility of an amicable

settlement; if so, they should be prepared on the pre-trial date to

submit their minimum demands for purposes of settlement; and

(f) Such other matters as may aid in the prompt disposition of the

action.

Each party shall file with the Bureau and serve on the adverse party

said pre-trial briefs at least three days before the date of pre-trial

conference fixed in the notice.

As counsel needs the consent of his client for purposes of accepting

an offer of compromise, the attendance not only of the attorneys of

record but also of the parties themselves, is required for the pre-trial

conference. Presence of any party may be dispensed with if his counsel

is provided with a notarized power of attorney or the appropriate

corporate authorization to make admissions and/or to accept and approve

compromise proposals.

The failure of the petitioner/opposer to appear when so required shall

be cause for dismissal of the action with prejudice. A similar failure

on the part of the respondent shall be cause to allow the

petitioner/opposer to present his evidence ex parte and the Director

to render judgment on the basis thereof.

Section 11

(a) Dismissal for failure to prosecute. -- If the petitioner/opposer

does not appear at the time and place designated in the Notice of Pre-trial

213

Conference or a Notice of Hearing or in a subsequent order, or failed

to prosecute his case for an unreasonable length of time, or fail to

comply with these Regulations or any order of the Bureau, the petition

or notice of opposition, as the case may be, may be dismissed for failure

to prosecute and judgment rendered for the respondent to recover his

costs from the petitioner/opposer, provided, however, that the Bureau

may cancel the patent or trademark registration where it finds evidence

independent of the petitioner’s submission. Within fifteen days after

receipt of the Order of Dismissal, the petitioner/opposer may file

a motion to set aside such order if his failure to appear was by reason

of fraud, accident, mistake or excusable negligence.

(b) Effect of failure of respondent to answer. -- If the respondent

fails to answer within the period herein provided, the Hearing Officer

shall, upon motion of the petitioner/opposer or motu propio, declare

the respondent in default and forthwith receive evidence ex parte and

submit his recommendations, to the Director. No service of papers other

than substantially amended or supplemental pleadings and final orders

or decisions shall be necessary on a party in default unless he files

a motion to set aside the Order of Default within fifteen days from

receipt thereof on any of the grounds mentioned in the preceding

paragraph, in which event he shall be entitled to notice of all further

proceedings regardless of whether the order of default is set aside

or not.

Section 12 Conduct of hearings

Should the Hearing Officer be absent on any scheduled date of hearing,

the hearing shall automatically be conducted by his Chief Hearing

Officer or, upon instruction of the Director, by any other Hearing

Officer. All hearings shall be continuous until terminated and no

postponement of hearings, specially those scheduled by agreement of

the parties, shall be allowed over the objection of any party. However,

in extremely meritorious cases and upon written motion filed with the

Hearing Officer at least three days before the scheduled hearing with

proof of personal service upon the other party or parties, a postponement

may be granted.

Section 13 Order of trial

The following procedure shall be observed during the hearing of the

case:

(a) The petitioner shall submit to the Hearing Officer and serve on

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the adverse party the sworn statement of the witnesses (which shall

constitute the direct testimony of the affiants) and other documentary

evidence at least three days before the scheduled hearing and shall

make his witnesses available for cross-examination by respondent during

the scheduled hearing.

(b) The respondent shall then present the sworn statements of witnesses

(which shall constitute the direct testimony of the affiants) and other

documentary evidence and shall make his witnesses available for

cross-examination by petitioner during the scheduled hearing.

(c) The petitioner and the respondent may, in succession, present

rebuttal and surrebuttal evidence, with the direct testimony of witness

being reduced into affidavit form, as herein prescribed.

(d) If the testimony of the witness residing outside the Philippines

is to be taken, said witness may testify personally in his own behalf,

or the direct examination may be in the form of an authenticated affidavit

and be submitted within the period fixed by the Hearing Officer, and

the opposing party may cross-examine the witness through written

interrogatories in the manner prescribed by the Rules of Court. The

party presenting the witness shall bear the expenses pertaining thereto

and shall obtain the necessary approval for the deposition. Submission

of the Answer to cross interrogatories to the Bureau shall be made

within six months from the date of the issuance of the Letters Commission.

Said period may be extended once for very justifiable reasons. In no

case, however, shall the submission of said Answer exceed one year

from date of issuance of Letters Commission. Otherwise, the testimony

of said foreign witness shall be stricken out by the Hearing Officer,

motu propio or upon motion of the opposing party.

(e) Failure to present the sworn statement of the witnesses and

documentary evidence at the pre-trial shall be deemed a waiver of the

right to present evidence during the hearing.

Section 14 Demurrer to Evidence Not Allowed

No demurrer to evidence shall be entertained after the presentation

of petitioner’s evidence. Respondent shall forthwith present evidence

in its behalf.

Section 15 Director or Hearing Officer Not Bound by Technical Rules

of Evidence

The Director, Chief Hearing Officer or any Hearing Officer shall receive

relevant and material evidence, rule on offer of evidence and exclude

all irrelevant matter, and shall act according to justice and fairness.

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The Bureau in the exercise of its power to investigate and hear cases

within its jurisdiction shall not be strictly bound by the technical

rules of evidence. The Bureau shall, however, take judicial cognizance

of the official acts of the legislative, executive and judicial

departments of the Philippines, the laws of nature, scientific facts

as published in treatises, periodicals, or pamphlets and other facts

which are of public knowledge or general knowledge as would enable

the Director, Chief Hearing Officer or Hearing Officer to rule upon

the technical issues in the case.

Section 16 Judgment on the Pleadings

When an answer fails to tender an issue or otherwise admits the material

allegations of the adverse party’s pleading, the Director may, on motion

of said adverse party, render judgment on such pleadings.

Section 17 Summary Judgment

Any party seeking to recover upon a petition, a claim, counterclaim

or cross-claim or against whom a petition, claim, cross-claim or

counterclaim is asserted may, at any time after the issues are joined,

move with supporting affidavit, depositions or admissions of parties,

for a summary judgment in his favor as to all or any part thereof.

The motion shall be served at least ten days before the time specified

for the hearing. The adverse party may file with the Bureau and serve

opposing affidavits at least three days prior to the day of hearing.

After the hearing, the judgment sought shall be rendered forthwith

if the pleadings, depositions and admissions on file, together with

the affidavits, show that there is no genuine issue as to any material

fact and that the moving party is entitled to a judgment as a matter

of law.

Section 18 Transcript

The stenographer or such other personnel as may be authorized by the

Director shall take down notes of all the proceedings in the hearing.

At the end of each hearing, he shall immediately transcribe all notes

taken thereat and deliver said notes as well as the transcript thereof,

duly certified, initialled on each page and signed by him on the last

page, to the Hearing Officer, to be attached to the record of the case

at least ten days before the next hearing or the date of the first

day in a scheduled series of continuous hearings.

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Section 19 Introduction of Document Belonging to Another Case

Whenever a party in an inter partes proceeding desires to submit, as

his own evidence, a document filed in another case, separate from the

case being heard, he should, for such purpose, secure a certified copy

of such document, paying the required fee therefor.

Section 20 Case Not to be Discussed Informally unless in Presence of

Both Parties

It is strictly and absolutely forbidden for the Director or for any

Hearing Officer or any employee of the Bureau who may have anything

to do directly or indirectly with the hearing, decision, or preparation

of the decision, in any pending inter partes case, to discuss informally

the case or any phase thereof with any of the contending parties or

their attorneys, except in the presence of the adverse party or his

attorney.

Section 21 Equitable Principles may be Applied

In all inter partes proceedings, the equitable principles of laches,

estoppel and acquiescence, when applicable, may be considered and

applied.

Section 22 Submission of Memoranda and Draft Decision

Parties shall be required to submit their memoranda within one month

from receipt of the order of admissibility of exhibits. Unless otherwise

provided for by special laws, the appropriate final pleadings required

of the parties to be submitted shall include a draft of the

decision/resolution they seek, stating clearly and distinctly the facts

and the law upon which it is based. The Hearing Officer may adopt,

in whole or in part, either of the parties’ draft decisions/resolutions,

or reject both. This requirement shall likewise be applied to orders

other than the final judgment.

Section 23 Hearing Officer’s Report

Within one month from the date on which the case was submitted for

decision, the Hearing Officer, in consultation and coordination with

the Chief Hearing Officer, shall submit his report, findings and draft

of the decision through the Chief Hearing Officer who shall affix his

initial thereon for approval of the Director.

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RULE 3 CANCELLATION OF PATENTS

Section 1 Cancellation of Patents; -- Grounds

(a) Any interested party may, upon payment of the required fee, petition

to cancel the patent or any claim thereof, or parts of the claim, on

any of the following:

(i) that what is claimed as the invention is not patentable;

(ii) that the patent does not disclose the invention in a manner

sufficiently clear and complete for it to be carried out by any person

skilled in the art;

(iii) that the patent is contrary to public order or morality;

(iv) that the patent includes matters outside the scope of the disclosure

contained in the application as filed.

(b) Cancellation by person having right to the patent. A person declared

by final court order or decision as having the right to the patent

may, within three months after the decision has become final, seek

cancellation of the patent, if one has already been issued.

(c) Interested Party. -- A party interested in the patent shall include

any person including a person declared by final court order or decision

to be the true and actual inventor.


Where the grounds for the cancellation relate to some of the claims

or parts of the claim, cancellation may be effected to such extent

only in which case, the Office shall reissue the amended patent.

Section 3 Requirement of the Petition

The petition for cancellation shall be in writing, verified by the

petitioner or by any person in his behalf who knows the facts, specify

the grounds upon which it is based, include a statement of the facts

relied upon, and filed in triplicate with the Bureau. Copies of printed

publications or of patents of other countries, and other supporting

documents mentioned in the petition shall be attached thereto, together

with the translation thereof in English, if not in the English language.


The Hearing Officer shall serve in the name of the Director, notice

of the filing of the petition upon the patentee and all persons having

grants or licenses, or any other right, title or interest in and to

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the patent and the invention covered thereby, as appears of record

in the Office, and of notice of the date of hearing thereon on such

persons and the petitioner. Notice of the filing of the petition shall

be published in the IPO Gazette.

Section 5

(a) The Committee of Three. -- In cases involving highly technical

issues, on motion of any party, the Director may order that the petition

be heard and decided by a committee composed of the Director as chairman

and two members who have the experience or expertise in the field of

technology to which the patent sought to be cancelled relates.

(b) Cancellation of the Patent by the Committee. -- If the Committee

finds that a case for cancellation has been proved, it shall order

the patent or any specified claim or claims thereof cancelled.

(c) Amendment made by the Patentee during the Cancellation proceedings.

-- If the Committee finds that, taking into consideration the amendment

made by the patentee during the cancellation proceedings, the patent

and the invention to which it relates meet the requirement of the IP

Code, it may decide to maintain the patent as amended: Provided, that

the fee for printing of a new patent is paid within one month from

the date of the decision of the committee. If the fee for the printing

of the new patent is not paid in due time, the patent shall be revoked

at the expiration of the period for payment.

(d) Publication of the amended patent. If the patent is amended per

decision of the committee, the Bureau shall, at the same time as it

publishes the mention of the cancellation decision, publish the abstract,

representative claims and drawings indicating clearly what the

amendments consist of.

Section 6 Effect of Cancellation of Patent or Claim

The rights conferred by the patent or any specified claim or claims

cancelled shall terminate. Notice of the cancellation shall be published

in the IPO Gazette.

Section 7 Patent Found Invalid May be Cancelled

If, in an action for infringement filed before the court, the court

finds the patent or any claim to be invalid, it shall cancel the same.

Such order of cancellation shall be forwarded to the Director who shall

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cause the recording and publication of notice of such order in the

IPO Gazette upon receipt of the final judgment of cancellation by the

court. Such recording shall be made in the appropriate register of

the Office.

RULE 4 CANCELLATION OF UTILITY MODEL REGISTRATION

Section 1 Grounds for Cancellation of Utility Model Registration

At any time during the term of the utility model registration, any

person, upon payment of the required fee, may petition the Director

to cancel the utility model registration on any of the following grounds:

(a) That the claimed invention does not qualify for registration as

a utility model and does not meet the requirements of registrability,

in particular:

(1) if it is not new as provided in Sections 23 and 24 of the IP Code;

(2) if it is not industrially applicable as provided in Section 27

of the IP Code; or

(3) if it is excluded from patent protection as provided in Section

22 of the IP Code.

(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

invention has not been furnished;

(d) That the owner of the utility model registration is not the inventor

or his successor in title; or

(e) That the utility model registration extends beyond the content

of the application as originally filed.

Section 2 Procedure for the Cancellation of Utility Model

The procedure for the cancellation of patent shall apply mutatis

mutandis to the cancellation of utility model.

Section 3 Effect of Cancellation of Utility Model Registration

The rights conferred by the registration of the utility model shall

terminate upon the cancellation of such registration.

RULE 5 CANCELLATION OF DESIGN REGISTRATION

Section 1 Grounds for the Cancellation of Design Registration

At any time during the term of the industrial design registration,

any person upon payment of the required fee, may petition the Director

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to cancel the industrial design on any of the following grounds:

(a) that the industrial design does not give a special appearance to

and can not serve as pattern for an industrial product or handicraft;

(b) that the industrial design is not new or original;

(c) that the industrial design is dictated essentially by technical

or functional consideration to obtain a technical result;

(d) that the industrial design is contrary to public order, health

or morals; or

(e) that the subject matter of the industrial design extends beyond

the content of the application as originally filed.


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

Section 3 Procedure

The procedure prescribed by these Regulations in the cancellation of

patent and utility model registration shall be applied mutatis mutandis

in the cancellation of design registration.

Section 4 Effect of Cancellation

The rights conferred by the registration of a design shall terminate

upon the cancellation of such registration.

RULE 6 PETITION FOR COMPULSORY LICENSING

Section 1 Patents Subject to Proceedings for Compulsory Licensing

Invention patents, industrial design registration and utility model

registration are all subject to proceedings for compulsory licensing.

Section 2 Who may File Petition for compulsory Licensing; Time for

Filing the Petition

Upon the payment of the required fee, any person may file a petition

for compulsory licensing at any time after the grant of the patent

or registration of the industrial design or utility model. However,

if the petition is based on the ground that the patented invention

is not being worked in the Philippines on a commercial scale, although

capable of being worked, without any satisfactory reason, the petition

may be filed at any time after the expiration of a period of four years

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from the date of filing of the application or three years from the

date of the patent whichever period expires last.

Section 3 Grounds for Compulsory Licensing

The Director may grant a license to exploit a patented invention, even

without the agreement of the patent owner, in favor of any person who

has shown his capability to exploit the invention, under any of the

following circumstances:

(a) National emergency or other circumstances of extreme urgency;

(b) Where the public interest, in particular, national security,

nutrition, health or the development of other vital sectors of the

national economy as determined by the appropriate agency of the

Government, so requires; or

(c) Where a judicial or administrative body has determined that the

manner of exploitation by the owner of the patent or his licensee is

anti-competitive; or

(d) In case of public non-commercial use of the patent by the patentee,

without satisfactory reason;

(e) If the patented invention is not being worked in the Philippines

on a commercial scale, although capable of being worked, without

satisfactory reason; Provided, that the importation of the patented

article shall constitute working or using the patent.

Section 4 Requirement to Obtain a License on Reasonable Commercial

Terms

The license will only be granted after the petitioner has made efforts

to obtain authorization from the patent owner on reasonable commercial

terms and conditions but such efforts have not been successful within

a reasonable period of time.

Section 5 When a Petition for Compulsory Licensing may be Granted Even

without Efforts to Obtain Authorization from the Patent Owner

The requirement under the preceding section shall not apply in the

following cases:

(a) Where the petition for compulsory license seeks to remedy a practice

determined after judicial or administrative process to be

anti-competitive;

(b) In situations of national emergency or other circumstances of

extreme urgency;

(c) In cases of public non-commercial use.

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Section 6 Notice to the Right Holder

(a) In situations of national emergency or other circumstances of

extreme urgency, the right holder shall be notified as soon as reasonably

practicable.

(b) In the case of public non-commercial use, where the government

or contractor, without making a patent search, knows or has demonstrable

grounds to know that a valid patent is or will be used by or for the

government, the right holder shall be informed promptly.

Section 7 Compulsory Licensing of Patents Involving Semi-Conductor

Technology

In the case of compulsory licensing of patents involving semi-conductor

technology, the license may only be granted in case of public

non-commercial use or to remedy a practice determined after judicial

or administrative process to be anti-competitive.

Section 8 Compulsory License Based on Interdependence of Patents

If the invention protected by a patent, hereafter referred to as the

“second patent”, within the country cannot be worked without infringing

another patent, hereafter referred to as the “first patent”, granted

on a prior application or benefiting from an earlier priority, a

compulsory license may be granted to the owner of the second patent

to the extent necessary for the working of his invention, subject to

the following conditions:

(a) The invention claimed in the second patent involves an important

technical advance of considerable economic significance in relation

to the first patent;

(b) The owner of the first patent shall be entitled to a cross-license

on reasonable terms to use the invention claimed in the second patent;

(c) The use authorized in respect of the first patent shall be

non-assignable except with the assignment of the second patent; and

(d) The terms and conditions of Section 95 (Requirement to obtain a

license on reasonable commercial terms), Section 96 (Compulsory

Licensing of patents involving semi-conductor technology), Section

98 (Form and Contents of Petition), Section 99 (Notice of Hearing),

and Section 100 (Terms and Conditions of Compulsory License) of the

IP Code.

Section 9 Form and Contents of Petition

The petition for compulsory licensing must be in writing, verified

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by the petitioner and accompanied by payment of the required filing

fee. It shall contain the name and address of the petitioner as well

as those of the respondents, the number and date of issue of the patent

in connection with which compulsory license is sought, the name of

the patentee, the title of the invention, the statutory grounds upon

which compulsory license is sought, the ultimate facts constituting

the petitioner’s cause of action, and the relief prayed for.


Upon filing of a petition, the Director shall forthwith serve notice

of the filing thereof upon the patent owner and all persons having

grants or licenses, or any other right, title or interest in and to

the patent and invention covered thereby as appears on the record in

the Office, and of notice of the date of hearing thereon, on such persons

and petitioner. The resident agent or representative appointed in

accordance with Section 33 of the IP Code, shall be bound to accept

service of notice of the filing of the petition within the meaning

of this Section.

Section 11 Publication of Notice

In every case, the Director shall cause the notice to be published

in a newspaper of general circulation once a week for three consecutive

weeks and once in the IPO Gazette at the expense of the applicant.

Section 12 Grant of License

(a) If the Director finds that a grant of license under the preceding

sections has been made out, he shall, within six months from the date

the petition was filed, order the grant of an appropriate license.

(b) A compulsory license sought for public non-commercial use shall

be issued within six months from the filing of the proponent’s

application or receipt of the Board of Investment’s endorsement.

Section 13 Terms and Conditions of Compulsory License

The parties may agree on the basic terms and conditions including the

rate of royalties of a compulsory license. In the absence of agreement

between the parties, the Director shall fix the terms and conditions

including the rate of royalties of the compulsory license subject to

the following conditions:

(a) The scope and duration of such license shall be limited to the

purpose for which it was authorized;

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(b) The license shall be non-exclusive;

(c) The license shall be non-assignable, except with the part of the

enterprise or business with which the invention is being exploited;

(d) Use of the subject matter of the license shall be devoted

predominantly for the supply of the Philippine market: Provided, that

this limitation shall not apply where the grant of the license is based

on the ground that the patentee’s manner of exploiting the patent is

determined by judicial or administrative process to be

anti-competitive.

(e) The license may be terminated upon proper showing that circumstances

which led to its grant have ceased to exist and are unlikely to recur:

Provided, that adequate protection shall be afforded to the legitimate

interest of the licensee;

(f) The patentee shall be paid adequate remuneration taking into account

the economic value of the grant or authorization, except that in cases

where the license was granted to remedy a practice which was determined

after judicial or administrative process, to be anti-competitive, the

need to correct the anti-competitive practice may be taken into account

in fixing the amount of remuneration.

Section 14 Amendment of Compulsory License

Upon the request of the patentee or the licensee, the Director may

amend the decision granting the compulsory license, upon proper showing

of new facts or circumstances justifying such amendment.

Section 16 Surrender of the License by the Licensee

The licensee may surrender the license by a written declaration

submitted to the Office.

Section 17 Publication of the Amendment, Surrender, or Cancellation

of the License

The Director shall cause the amendment, surrender, or cancellation

to be recorded in the appropriate Register of the Office, notify the

patentee, and/or the licensee, and cause notice thereof to be published,

at the expense of the petitioner, in the IPO Gazette.

RULE 7 OPPOSITION TO APPLICATION FOR REGISTRATION OF MARKS

Section 1

(a) Who may oppose -- Any person who believes that he would be damaged

by the registration of a mark may, upon payment of the required fee

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and within one month after the publication of the application, file

with the Bureau a notice of opposition to the application.

(b) Notice of opposition -- The notice of opposition shall be in writing

and verified by the opposer or any person on his behalf who knows the

facts, and shall specify the grounds on which it is based and include

a statement of the facts relied upon.

Section 2

(a) Notice and Hearing -- Upon the filing of an opposition and payment

of the required fee, the Bureau shall serve notice of the filing on

the applicant, and of the date of the hearing thereof upon the applicant

and the oppositor and all other persons having any right, title or

interest in the mark covered by the application, as appear of record

in the Office.

(b) Notice in case of unverified notice of opposition -- The Bureau

may notify the applicant of the fact of filing of an unverified opposition.

The applicant, after payment of the required fee, may request for a

copy of the unverified opposition.

(c) The notice to answer will be sent to the applicant/respondent upon

the filing of the verified opposition.

(d) Dismissal of opposition -- The opposition will be dismissed motu

propio upon failure of the opposer to verify, in person or by any person

on his behalf who knows the facts, the notice of opposition within

two months from date of filing of the unverified opposition.

Section 3 Contents of the Notice of Opposition

Copies of certificates of registration of marks registered in other

countries or other supporting documents mentioned in the opposition

shall be filed with the opposition together with the translation in

English, if not in the English language.

Section 4 Extension of Period for Filing the Verified Opposition

For good cause shown and upon payment of the required surcharge, the

time for filing the verified opposition may be extended for an additional

one month by the Director upon the written request of the opposer.

Whenever an extension is granted, the Director shall cause the applicant

to be notified thereof. The petition for extension shall be filed in

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triplicate. However, in no case shall the period within which to file

the verified opposition exceed four months from the date of release

of the IPO Gazette publishing the mark being opposed. If the last day

for filing of the notice of opposition or the verified opposition falls

on a Saturday, Sunday, holiday, non-working holiday as may be declared

by the President of the Philippines or on a day when the Office or

the Bureau is closed for business as may be declared by the Director

General, the same shall be moved to the immediately following working

day.

Section 5 Filing of an Opposition in a Form Other than the Original

The party filing the opposition may submit an opposition in a form

other than the original such as a facsimile copy or photocopy provided:

(1) that such fax, photocopy or other form complies with the requirements

of these Regulations and is filed within the period to file the notice

of opposition or the verified opposition, or any extension thereof,

(2) that the original copy of the verified opposition is filed within

one month from submission of the fax, photocopy or other form and,

(3) that the original copy of the verified opposition is filed within

the maximum period of four months counted from the date of release

of the IPO Gazette publishing the mark being opposed. In all cases,

the notice to answer shall be sent to the applicant only upon the filing

of the original copy of the verified opposition.

RULE 8 CANCELLATION OF REGISTRATION OF MARKS

Section 1 Who may File a Petition for Cancellation

Any person who believes that he is or will be damaged by the registration

of a mark may file with the Bureau a petition to cancel such registration.

Section 2 When may a Petition be Filed

The petition for cancellation of the registration of a mark may be

filed:

(a) Within five years from the date of registration of the mark under

the IP Code;

(b) at any time, if the registered mark becomes the generic name for

the goods or services, or a portion thereof, for which it is registered,

or has been abandoned, or its registration was obtained fraudulently

or contrary to the provisions of the IP Code, or if the registered

mark is being used by, or with the permission of, the registrant so

as to misrepresent the source of the goods or services on or in connection

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with which the mark is used. If the registered mark becomes the generic

name for less than all of the goods or services for which it is registered,

a petition to cancel the registration for only those goods or services

may be filed. A registered mark shall not be deemed to be the generic

name of goods or services solely because such mark is also used as

a name of or to identify a unique product or service. The primary

significance of the registered mark to the relevant public rather than

purchaser motivation shall be the test for determining whether the

registered mark has become the generic name of goods or services on

or in connection with which it has been used. Evidence on purchaser

motivation shall not be admitted;

(c) At any time, if the registered owner of the mark without legitimate

reason fails to use the mark within the Philippines, or to cause it

to be used in the Philippines by virtue of a license during an

uninterrupted period of at least three years.

Section 3 Contents of Petition for Cancellation

The petition for cancellation shall give the name and address of the

petitioner as well as those of the necessary party or parties respondent;

and shall state the registration number and date of the registration

sought to be cancelled; the name of the registrant; the statutory ground

or grounds upon which cancellation is sought; the ultimate facts

constituting the petitioner’s cause or causes of action and the relief

sought.

Section 4 Verification of Petition

A petition for cancellation filed in triplicate shall be verified by

the petitioner or by any person in his behalf who knows the facts.

Section 5 Service of Petition and Notice of Hearing

Upon the filing of a petition for cancellation in proper form and payment

of the required fee, the Director shall cause a copy of such petition

to be served on the party or parties respondent, requiring such party

or parties to answer the petition. After the issues have been joined,

the Director will cause a date to be set for the hearing of the case,

which will be communicated to both parties.

Section 6 Power of the Bureau to Cancel the Mark in the Exercise of

Its Power to Hear and Adjudicate any Action to Enforce the Rights to

a Registered Mark

Notwithstanding the foregoing provisions, the court or the Bureau shall,

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in the exercise of its power to hear and adjudicate any action to enforce

the rights to a registered mark, likewise determine whether the

registration of said mark may be cancelled in accordance with the IP

Code.

Section 7 Effect of Filing of a Suit before the Bureau or with the

Proper Court

The filing of a suit to enforce the registered mark with the proper

court or Bureau shall exclude any other court or agency from assuming

jurisdiction over a subsequently filed petition to cancel the same

mark. On the other hand, the earlier filing of petition to cancel the

mark with the Bureau shall not constitute a prejudicial question that

must be resolved before an action to enforce the rights to same registered

mark may be decided.

Section 8 Cancellation of Registration

If the Bureau finds that a case for cancellation has been made out,

it shall order the cancellation of the registration. When the order

or judgment becomes final, any right conferred by such registration

upon the registrant or any person in interest of record shall terminate.

Notice of cancellation shall be published in the IPO Gazette.

RULE 9 RECONSIDERATION; APPEAL


(a) The decision or order of the Director or the Committee of Three

shall become final and executory fifteen days after receipt of a copy

thereof by the party affected unless within the said period, a motion

for reconsideration is filed with the Director or an appeal to the

Director General has been perfected.

(b) Interlocutory orders shall not be appealable.

Section 2 Grounds of and Period for Filing Motion for Reconsideration

Within the period for taking an appeal, the aggrieved party may move

for reconsideration upon the grounds that the evidence is insufficient

to justify the decision or final order, or that the decision or final

order is contrary to law.

Section 3 Contents of Motion for Reconsideration and Notice Thereof

The motion shall be made in writing stating the ground or grounds therefor,

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a written notice of which shall be served by the movant on the adverse

party.

A motion for reconsideration shall point out specifically the findings

or conclusions of the judgment or final order which are not supported

by the evidence or which are contrary to law, making express reference

to the testimonial or documentary evidence or to provisions of law

alleged to be contrary to such findings or conclusions.

A pro forma motion for reconsideration shall not toll the reglementary

period of appeal.

Section 4 Action upon Motion for Reconsideration

If the Director finds that the judgment or final order is contrary

to the evidence or law, he may amend such judgment or final order

accordingly.

Section 5 Resolution of Motion

A Motion for reconsideration shall be resolved within one month from

the time it is submitted for resolution.

Section 6 Second Motion for Reconsideration

No party shall be allowed a second motion for reconsideration of a

judgment or final order.

Section 7 Partial Reconsideration

If the grounds for a motion under this Rule appear to the Director

to affect the issues as to only a part, or less than all of the matter

in controversy, or only one, or less than all, of the parties to it,

he may grant reconsideration as to such issues if severable without

interfering with the judgment or final order upon the rest.

Section 8 Remedy against Order Denying a Motion for Reconsideration

An order denying a motion for reconsideration is not appealable, the

remedy being an appeal from the judgment or final order.

Section 9 Appeal to the Court of Appeals or Supreme Court

No motion for reconsideration of any decision or final order of the

Director General shall be entertained and, the decision or final order

of the Director General shall be final and executory unless an appeal

to the Court of Appeals or the Supreme Court is perfected in accordance

with Rule 41 of the Rules of Court applicable to appeals from decisions

of Regional Trial Courts.

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RULE 10 EXECUTION OF DECISIONS PENDING APPEAL

Section 1 Order of Execution

On motion of the prevailing party with notice to the adverse party,

and upon filing of the approved bond, the Director may, in his discretion,

order execution to issue even before the expiration of the time to

appeal, upon good reasons to be stated in the order. Such execution,

however, may be stayed by filing of an approved counterbond.

Section 2 Cancellation of Patent is Immediately Executory

Unless restricted by the Director, the decision or order to cancel

the patent, claim or part of a claim by the Director shall be immediately

executory even pending appeal.



A judgment or final order determining the merits of the case shall

be in writing, stating clearly and distinctly the facts and the law

on which it is based, signed by the Director, and filed with the

appropriate Register of the Office.

It is the filing of the decision, judgment or final order with the

Register, not the signing thereof, that constitute rendition or

promulgation.

Section 2 Entry of Judgments and Final Orders

If no appeal or motion for reconsideration is filed within the time

provided in these Regulations, the Director shall forthwith cause the

entry of the judgment or final order in the appropriate Register of

the Office. The date of finality of the judgment or final order shall

be deemed to be the date of its entry. The record shall contain the

dispositive part of the judgment or final order and shall be signed

by the Director, with a certificate that such judgment or final order

has become final and executory.

If no appeal or motion for reconsideration has been filed on time,

the judgment or final order rendered by the Director or the Director

General, as the case may be, becomes final and executory, and should

immediately be caused to be entered by the Director. To ensure this

action the prevailing party should file a motion for the entry (and

execution, if proper) of the judgment. The date of entry is the starting

point of the six months period for filing a petition of relief, as

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well as the five years period of prescription of judgments.

This rule corrects the erroneous practice of entering the judgment

or final order long after it had become final and executory. Even if

the physical act of entering the judgment or final order is done after

it had become final and executory, the date when it became final and

executory shall be deemed the date of its entry.

FINAL PROVISIONS

Section 1 Coverage

These rules and regulations shall apply to all inter partes cases pending

with the Bureau of Patents, Trademarks and Technology Transfer upon

the effectivity of the IP Code on January 1, 1998, including interference

proceedings declared prior to the effectivity of these Regulations

and all inter partes cases filed with the Office on and after the

effectivity of the IP Code.

Section 1.1

Trademark applications pending on effective date of the IP Code;

Opposition;Interference. The following procedure shall apply to

interfering applications for registration in the principal register

of marks under Republic Act No. 166, as amended, pending on the effective

date of the IP Code on January 1, 1998:

(a) In all cases where interference may be declared under Republic

Act No. 166, as amended, and its implementing rules and regulations,

as amended, the application which first meets the requirements for

registration shall be allowed and published for opposition in the IPO

Gazette by the Director of the Bureau of Trademarks in accordance with

the Rules and Regulations on Trademarks, Service Marks, Trade Names

and Marked or Stamped Containers dated 30 September 1998.

(b) The Director of Trademarks shall notify the other applicant or

applicants of the fact of allowance and publication with the advice

that said other applicant or applicants have the right to file with

the Bureau of Trademarks a notice of opposition, without need of paying

the filing fee, to determine whether or not any of the applicant/s

and or oppositor/s has the right to the registration of the mark including

all other issues such as the registrability of the mark.

(c) Within five days from receipt of a notice of opposition from the

other applicant or any of them if there be more than one other applicant,

the Director of Trademarks shall endorse all the files of the allowed

application and the application of the opposing applicant or applicants

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to the Bureau of Legal Affairs for prosecution in accordance with the

provisions of these Regulations governing oppositions.

(d) All other oppositors, if any, shall file their notice of opposition

with the Bureau of Legal Affairs in accordance with these Regulations.


In the interest of the service and in order to ensure the continued

hearing and disposition of all the cases before the Office, until the

organization of the Bureau of Legal Affairs 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

recommendation of the Chief of the Hearing Division of the Bureau of

Patents, Trademarks and Technology Transfer who was heretofore

designated as Officer-in-Charge or Caretaker of the Bureau of Legal

Affairs.








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