PART 7
Petitions and Appeals
RULE 700. Petition to the Director to Question the Correctness of the Action of an Examiner on Matters of Form. – Petition may be filed with the Director from any repeated action or 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.
RULE 701. Appeals to the Director. – 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 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.
RULE 704. Time and Manner of Appeal. – Any petition or appeal must be taken by filing the petition in duplicate and payment of the required fee within two (2) 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.
RULE 705. The Examiner’s Answer. – The Examiner shall furnish a written statement in answer to the petition or appellant’s brief, as the case may be, within two (2) 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.
RULE 706. 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 (1) month from the date copy of such answer is received by him.
RULE 707. Appeal to the Director General. – The decision or order of the Director shall become final and executory fifteen (15) 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 a 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.
RULE 708. Appellant’s Brief Required. – The appellant shall, within one (1) 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.
RULE 709. Director’s Comment. – The Director shall submit within one (1) month his comments on the appellant’s brief if so required by the Director General.
RULE 710. Appeal to the Court of Appeals. – 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
SECTION 1. Correspondence. – The following regulations shall apply to correspondence between registrant/applicant 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. 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 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.
(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 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.
(g) Subjects on which information cannot be given. The Office cannot 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 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.
SECTION 2. Fees and Charges to be Prepaid; Fees and Charges Payable in Advance. – Express charges, freight, postage, telephone, telefacsimile including 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. 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 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 for a period of five (5) years from the effectivity of these Regulations, subject to renewal as provided in the IP Code and these Regulations.
SECTION 5. Implementation. – 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 6. Repeals. – All rules and regulations, memoranda, circulars, and memorandum circulars and parts thereof inconsistent with these Regulations 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 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.
SECTION 7. Separability. – 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 effected thereby.
SECTION 8. Furnishing of Certified Copies. – Mr. Eduardo Joson, Records Officer II, is hereby directed to immediately file three (3) certified copies of these Regulations with the University of the Philippines Law Center, and, one (1) 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.
SECTION 9. Effectivity. – These rules and regulations shall take effect fifteen (15) days after publication in a newspaper of general circulation.
Done this 2nd day of December 1998.
(Sgd.) EMMA C. FRANCISCO
Director General
