PART 7
CLASSIFICATION AND SEARCH
Rule 700. 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.
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 if there is any:
(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 (18) 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(b) The application will not be published if it has been finally refused or withdrawn or deemed to be withdrawn before the termination of the technical preparation for publication.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 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 (6) 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 (4) years from the commission of the acts complained of (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 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.
Rule 904. A preliminary rejection should not be taken literally; Examiner is only trying to be helpful. – 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 (4) 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.
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 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.
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)
Rule 915. Prohibition against Filing of Parallel Applications. – An applicant may not file two (2) 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
Rule 916. Amendment 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.
Rule 918. Amendment and revision required. – 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 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.
Rule 921. Manner of making 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.
Rule 922. Entry and consideration of amendments. – (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.
Rule 923. Amendments to the drawing. – (a) 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 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 (2) 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 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 (2) extensions, provided that the aggregate period granted inclusive of the initial period allowed to file the response, shall not exceed six (6) 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.
Rule 930. Revival of application. – An application deemed withdrawn for failure to prosecute may be revived as a pending application within a period of four (4) 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.
Rule 931. Express withdrawal of application. – 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.
