Filing to grant
The government agency responsible for grant of patent rights in the Philippines is the Intellectual Property Office of the Philippines (IPO)
|Key prosecution event||Deadline|
|Paris Convention filing||12 months from earliest claimed priority|
|PCT national phase entry||30 months from earliest claimed priority|
|Substantive examination request||at national phase entry, or within 6 months from publication of Philippine Convention application|
|Divisional application||within 4 months of direction to divide claims becomes final, or if no direction, within four months from the date of grant or withdrawal of the parent or earlier divisional application|
Philippine national phase entry
Philippine national phase applications must be filed by 30 months from the earliest claimed priority date. This time limit can be extended by 1 month upon payment of an extension fee. At filing we require the PCT details, an English or Filipino translation of the full specification, including any Article 19 or Article 34 amendments. A Power of Attorney will be required after filing.
Philippine Convention applications
A Philippine Convention application can be validly filed within 12 months from filing a priority application filed according to the Paris Convention for Protection of Industrial Property. At filing we require an English or Filipino translation of the full specification, full details of applicant and inventor/s including nationalities. Any applicable priority details are required and a certified copy of the priority document will be required after filing together with a Power of Attorney.
Examination and acceptance of a Philippines patent application
An IPO examiner checks if the application satisfies the formal requirements needed for the grant of a filing date. The applicant will be given 2 months from the date on which the application was initially presented to the IPO to remedy any deficiencies with the application, otherwise the application is considered withdrawn.
A Convention application will be published after 18 months from the priority date, together with the results of a prior art search and the application’s patent classification.
The applicant must file a request for substantive examination and/or pay the substantive examination fee within a prescribed period as follows:
- for Convention applications, the applicant must file a request for substantive examination and pay the substantive examination fee within 6 months from date of publication of application; and
- for Philippine national phase entries, there is no need to file a separate request, but the substantive examination fee must be paid at the date of entry into the national phase or within 6 months after entry into the national phase.
The patent application is examined for novelty (absolute), inventive step, patentable subject matter and industrial application.
The following subject matter is not patentable:
- discoveries, scientific theories and mathematical methods;
- schemes, rules and methods of performing mental acts, playing games or doing business, programs for computers;
- methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body;
- plant varieties or animal breeds or essentially biological process for the production of plants or animals (although this provision does not apply to micro-organisms and non-biological and microbiological processes);
- aesthetic creations; and
- anything which is contrary to public order and morality.
The applicant has 2 months from the mailing date of the Office Action to file a response, otherwise the application is declared to be withdrawn. The time for reply may be extended.
An application deemed withdrawn for failure to prosecute may be revived as a pending application within 4 months from the mailing date of the notice of withdrawal if the applicant can satisfy the IPO that the failure was due to fraud, accident, mistake or excusable negligence.
Once the examiner is satisfied that there are no outstanding issues and all fees have been paid, the IPO will grant the patent.
Voluntary divisional applications must be filed within 4 months of the parent application being withdrawn or granted. A divisional application may also be filed in response to a lack of unity objection, provided that the divisional application is filed within 4 months after the examiner issues a final objection as to lack of unity.
The Philippines is a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. The deposit must be made before filing the application. If the depository institution and the file number of the culture deposit are not stated in the application at the time of filing the application, this information must be submitted within 2 months from a request by the examiner. The application will not be published until this information is submitted.
A utility model or petty patent is granted for inventions that are novel and industrially applicable, including products and processes. The term of protection is 7 years and cannot be extended.
While there is no formal pre-grant opposition procedure, a third party may make observations regarding the patent application. Within 6 months of the application being published or the request for substantive examination being filed (whichever comes later), any person may present observations in writing or request a conference at the IPO concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. Observations from third parties and any comments by applicant form part of the file wrapper and are taken into consideration during examination.
There is no patent term extension available in The Philippines, nor do they offer data exclusivity protection.