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 (1) 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:
(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 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 (2) 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.
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 (150) words. It must be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall merely serve for technical information. Each main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by a reference sign placed between parentheses.
Rule 412. Prohibited Matter – (a) The application shall not contain:
(i) a statement or other matter contrary to “public order” or morality;
(ii) statement disparaging the products or processes of any particular person 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, 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 Process, Required of Drawings. – The printing of the drawings in the IPO Gazette is done by the photolithographic process, and therefore the character of each original drawing must be brought as nearly as possible to a uniform standard of excellence suited to the requirements of the process, to give the best results, in the interests of the inventors, of the Office, and of the public. The following rules will therefore be strictly enforced, and any departure from them will be certain to cause delay in the examination of an application.
Rule 414.2. Paper and Ink. – Drawings must be made upon paper that is flexible, strong, white, smooth, non-shiny and durable. Two ply or three ply Bristol board is preferred. The surface of the paper should be calendered and of a quality which will permit erasure and correction with India ink. India ink, or its equivalent in quality, is preferred for pen drawings to secure perfectly black solid lines. The use of white pigments to cover lines is not permissible.
Rule 414.3. Size of Drawing Sheet; Imaginary Line. – The size of a sheet on which a drawing is made must be exactly 29.7 cm x 21 cm or the size of an A4 paper. The minimum imaginary margins shall be as follows: top 2.5 cm; left side 2.5 cm; right side 1.5 cm; bottom 1 cm. Within this imaginary margin all work and signatures must be included. One of the shorter sides of the sheet is regarded as its top, and, measuring downwardly from the imaginary line, a space of not less than 3 cm is to be left blank for the heading of title, name, number, and date.
Rule 414.4. Character and Color Lines. – All drawings must be made with the pen or by a photolithographic process which will give them satisfactory reproduction characteristics. Every line and letter (signatures included) must be absolutely black. This direction applies to all lines, however fine, to shading and to lines representing cut surfaces in sectional views. All lines must be clean, sharp, and solid, and they must not be too fine or crowded. Surface shading, when used, should be open. Sectional shading should be made by oblique parallel lines, which may be about 0.3 cm apart. Solid black should not be used for sectional or surface shading. Freehand work should be avoided whenever possible.
Rule 414.5. The Fewest Possible Number of Lines and Little or No Shading to be Used. – Drawings should be made with the fewest lines possible consistent with clearness. By the observance of this rule the effectiveness of the work after reduction will be much increased. Shading (except on sectional views) should be used sparingly, and may even be dispensed with if the drawing be otherwise well executed. The plane upon which a sectional view is taken should be indicated on the general view by a broken or dotted line, which should be designated by numerals corresponding to the number of the sectional view. Heavy lines on the shade sides of objects should be used, except where they tend to thicken the work and obscure letter of reference. The light is always supposed to come from the upper left hand corner of an angle of 45 degrees.
Rule 414.6. Scale to which Drawing is Made to be Large Enough. – The scale to which a drawing is made ought to be large enough to show the mechanism without crowding, and two or more sheets should be used if one does not give sufficient room to accomplish this end; but the number of sheets must never be more than what is absolutely necessary.
Rule 414.7. Letters and Figures of Reference. – The different views should be consecutively numbered. Letters and figures of reference must be carefully formed. They should, if possible, measure at least 32 millimeters in height, so that they may bear reduction to 10.6 millimeters; and they may be much larger when there is sufficient room. They must be so placed in the close and complex parts of drawings as not to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle with the lines. When necessarily grouped around a certain part, they should be placed at a little distance where there is available space, and connected by lines with the parts to which they refer. They should not be placed upon shaded surfaces, but when it is difficult to avoid this, blank space must be left in the shading where the letter occurs, so that it shall appear perfectly distinct and separate from the work. If the same part of an invention appears in more than one view of the drawing, it must always be represented by the same character, and the same character must never be used to designate different parts.
Rule 414.8. Signature, Where to be Placed. – The signature of the applicant should be placed at the lower right-hand corner within the imaginary margins of each sheet, but in no instance should they trespass upon the drawings.
Rule 414.9. Title of the Drawing. – The title should be written with pencil on the back of the sheet. The permanent name and title constituting the heading will be applied subsequently by the Bureau of Patents in uniform style.
Rule 414.10. Position on Drawing Sheets of Large Views. – All views on the same sheet must stand in the same direction and must, if possible, stand so that they can be read with the sheet held in an upright position. If views longer than the width of the sheet are necessary for the proper illustration of the invention, the sheet may be turned on its side. The space for heading must then be reserved at the right and the signatures placed at the left, occupying the same space and position as in the upright views and being horizontal when the sheet is held in an upright position. One figure must not be placed upon another or within the outline of another.
Rule 414.11. Flow Sheets and Diagrams. – Flow Sheets and diagrams are considered drawings.
Rule 414.12. Requisites for the Figure of the IPO Gazette. – As a rule, only one view of each invention can be shown in the IPO Gazette illustrations. The selection of that portion of a drawing best calculated to explain the nature of the invention or its specific improvement would be facilitated and the final result improved by judicious execution of a figure with express reference to the IPO Gazette, but which must at the same time serve as one of the figures referred to in the specification. For this purpose the figure may be a plan, elevation, section, or perspective view, according to the judgment of the draftsman. All its parts should be especially open and distinct, with very little or no shading, and it must illustrate only the invention claimed, to the exclusion of all other details. When well executed, it will be used without curtailment or change, but any excessive fineness or crowding or unnecessary elaborateness of detail will necessitate its exclusion from the IPO Gazette.
Rule 414.13. Reference Signs. – Reference signs not mentioned in the description and claims shall not appear in the drawings and vice versa. The same features, when denoted by reference signs, shall throughout the application, be denoted by the same signs.
Rule 414.14. Photographs. – (a)Photographs are not normally considered to be proper drawings. Photographs are acceptable for obtaining a filing date and generally considered to be informal drawings. Photographs are only acceptable where they come within the special categories as set forth in the paragraph below. Photolitographs of photographs are never acceptable.
(b) The Office is willing to accept black and white photographs or photomicrographs (not photolitographs or other reproduction of photographs made by using screens) printed on sensitized paper in lieu of India ink drawings, to illustrate the inventions which are incapable of being accurately or adequately depicted by India ink drawings restricted to the following categories: crystalline structures, metallurgical microstructures, textile fabrics, grain structures and ornamental effects. The photographs or photomicrographs must show the invention more clearly than they can be done by the India ink drawings and otherwise comply with the rules concerning such drawings.
(c) Such photographs to be acceptable must be made on photographic paper having the following characteristics which are generally recognized in the photographic trade: paper with a surface described as smooth, tint, white, or be photographs mounted on a proper sized Bristol board.
Rule 414.15. Matters not Permitted to Appear on the Drawings. – An 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 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 (1) 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 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 – (a) Any application comprising more than five (5) claims, independent and/or multiple/alternative dependent claims at the time of filing, or added claims after the filing date in respect of each claim over and above five (5) incurs payment of a claims fee. The claims fee shall be payable within one (1) month after the filing of the application. If the claim fees have not been paid in due time, they may still be validly paid within a grace period of one (1) month from notice pointing out the failure to observe the time limit. If the claims fee is not paid within the time limit and the grace period referred to in this Rule, the claim or claims concerned shall be deemed deleted.
Rule 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 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 formula may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position thereon; sheets on which tables or chemicals or mathematical formulas are presented sideways shall be so presented that the tops of the tables or formula are at the left side of the sheet.
(e) Physical values shall be expressed in the units recognized in international practice, wherever appropriate in terms of the metric system using system international (SI) units. Any data not meeting this requirement must also be expressed in the units recognized in international practice. For mathematical formula, the symbols in general use shall be employed. For chemical formula the symbols, atomic weights and molecular formula in general use shall be employed. In general, use should be made of the technical terms, signs and symbols generally accepted in the field in question.
(f) The terminology and the signs shall be consistent throughout the application.
(g) Each of the documents making up the application (request for 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.
(h) Margins
The margins of the documents shall be within the following ranges:
Top : 2 cm. – 4 cm.
Leftside : 2.5 cm. – 4 cm.
Rightside : 2 cm. – 3 cm.
Bottom : 2 cm. – 3 cm.
The margins of the documents making up the application must be completely blank.
All the sheets making up the documents shall have their pages numbered consecutively using Arabic numeral. The page numbers shall appear in the central portions of either the top or bottom margins.
(i) The documents making up the application except the request for grant shall be filed in four (4) copies.
Rule 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 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.
Rule 420. Employment of Attorney-at-Law or Agent Recommended. – An applicant or an assignee of the entire interest may prosecute his own case, but he is advised, unless familiar with such matters, to employ a competent attorney-at-law or agent, as the value of patents depends largely upon the skillful preparation of the specification and claims. The Office cannot aid in the selection of an attorney-at-law or agent.
Rule 421. Appointment of Resident Agent or Representative. – An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for judicial or administrative procedure relating to the application for patent or the patent may be served.
(a) If there are two (2) 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.
Rule 422. (a) Decorum and Courtesy Required in the Conduct of Business. – Applicants, their attorneys or agents are required to conduct their business with the Office with politeness, decorum, and courtesy. Applicants who act or persist in acting in violation of this rule, shall be required to be represented by attorney, and papers presented containing matter in violation of this rule will be submitted to the Director 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.
