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.
Rule 501. – When the applicant dies, becomes insane. – 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.
Rule 503. Juridical person – Definition. – 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.
Rule 504. Proof of authority. – 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.
Rule 505. Forms of signatures. – 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 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 (1) 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 (2) months from the filing date.
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 (2) 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. – (a) 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 (2) 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 (2) 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 (1) 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
(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 (4) months after the requirement to divide becomes final, or within such additional time, not exceeding four (4) 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.
(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 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 of the opinion, after a complete search on 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 maybe 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 and 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 – (a) 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.
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.
