Patent

The first annuity is due four (4) years from the date the application was published.  Further, on each subsequent anniversary of such date, payment may be made within three (3) months before the due date.

The term of a patent shall be twenty (20) years from the filing date of the application.

The term of a utility model is seven (7) years, without any possibility of renewal.

The term of an industrial design is five (5) years from the filing date of the application. It may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee.

Under current practice, the Philippines Patent Office allows a 1 month extension to the stipulated 30th month national phase entry due date. No further extension shall be granted.

 

 

The request for accelerated examination via PPH should ideally be filed along with the request for examination proper, or shortly after. The Request for Substantive Examination (RSE) must be filed within six (6) months from the date of national phase entry.

In order to proceed with accelerated examination, the following documents are required:

• Copies of all office actions (relevant to substantial examination for patentability in the foreign patent office) which were issued for the corresponding applications relied upon by the foreign patent office;
• Copy of all claims determined to be patentable/allowable by the foreign patent office;
• Copies of references cited by the foreign patent office;
• Claim correspondence table.

Trademark

A registered trademark is valid and in force for a period of ten (10) years, and may be renewed at every ten (10) year interval. However, mark owners are required to submit a declaration of actual use (with supporting evidence) to demonstrate that the mark has been put to genuine use. Failure to comply with the requirement will result in the withdrawal of the registered mark. The declaration of actual use is due to be filed within:

  1. three (3) years from the date of filing of the application; and
  2. one (1) year from the 5th anniversary of the date of registration of the mark.

However, if the trademark owner is unable to satisfy the declaration of actual use requirement on the basis of non-use of the mark, the Registry then permits the filing of a declaration of non-use of the mark to maintain registration.  The declaration of non-use may be filed if the following conditions are satisfied:

  • Where the applicant or registrant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of the services;
  • Where a restraining order or an injunction was issued by the Bureau of Legal Affairs, the courts or quasi-judicial bodies prohibiting the use of the mark; or
  • Where the mark is the subject of an opposition or cancellation case.

We generally recommend that colour not be claimed in a trademark, thus allowing the owner to use the trademark in the future in any combination of colours they see fit. However, if the colour or colours included in the trademark are the central, predominant and recognisable feature (more so than the design itself), claiming colour is recommended.

Only one Power of Attorney is required per applicant and the same can be used for multiple trademark applications.

 

We would require an executed Power of Attorney (no notarization or legalization required) at the time of filing the application. We may proceed with a scanned copy of the same, on the understanding that the original will be provided as soon as possible (preferably within 3 months).