The Intellectual Property Office of the Philippines (IPOPHL) issued a Memorandum Circular No. 2022-016 on “Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs of 2022” (IRR’2022) which took effect from 20 September 2022.
A summary of the relevant amendments to the Rules and Regulations on patents are highlighted as follows.
1. Contents of the Description.
1.1 It is now a requirement to include “Summary of Invention” in the description of the application, failing which the application may be judged incomplete.
2. Excess Claims Fee
2.1 Any application comprising more than five (5) claims, independent or multiple/alternative dependent claims, at the time of filing, the excess claims fee shall be payable in full upon the filing of the application.
2.2 If the claims fee paid upon filing appears to be deficient, a notice pointing out the deficit in payment will be issued, and the deficit must be paid within a grace period of one (1) month from the notice.
2.3 The excess claim or claims concerned shall be deemed deleted if excess claims fee is not fully paid at the time of filing or within the time limit prescribed in 2.2 above.
2.4 Additionally, under the new IRR’2022, claims directed to genus, specie, or Markush type claims, shall incur payment of claims fee depending on the number of members or variations enumerated in said Markush type claims.
3. Late-filing of or Missing Drawings
3.1 If missing drawings are submitted beyond one (1) month from the filing of the application, IPOPHL 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 for a new filing date (when the missing drawings were filed) within one (1) month from such notice.
3.2 If missing drawings are not submitted, IPOPHL will issue a notice requiring the applicant to file the drawings within one (1) month from the notice. The Office shall inform the applicant that the application will be issued a new filing date which is the date on which the complete drawings is filed.
3.3 Under the old rules, the timelines for requesting a new filing date, or to submit missing drawings, was two (2) months from the date of the respective notices.
4. Divisional applications
4.1 Mandatory divisional application (i.e., divisional application divided out from the parent application due to restriction requirement) shall be filed within four (4) months after the requirement to divide becomes final, or within such additional time not exceeding two (2) months as may be granted by the examiner.
4.2 Applicants may appeal against the examiner’s decision in 4.1 above, and if an appeal is filed, the applicant may also file a request that the four (4) months period to file a mandatory divisional application will only begin once the appeal has been resolved, subject to payment of fees.
4.3 For succeeding mandatory divisional applications arising from an earlier divisional application, similar provisions apply as divisional application divided out from the parent application, wherein the deadline to file the mandatory divisional application is four (4) month from the date of election or from the date the requirement for divisional becomes final.
4.4 Voluntary divisional applications can be filed within four (4) months from the date of the parent application or the earlier divisional application is withdrawn or patented.
5. Request for Accelerated Substantive Examination
5.1 Accelerated examination is now possible after the application has been published and the request for substantive examination has been filed.
6. Filing an Appeal against the Examiner’s decision
6.1 Any appeal to the Director of IPOPH against the examiner’s decision should be filed within two (2) months (previously four (4) months) from the mailing date of the notice of Final Refusal and this time period is non-extendible.
7. Extension of time for filing a response to the Office Action
7.1 A one-time extension of two (2) months is allowed for filing a response to an Office Action (previously two (2) rounds of extensions of two (2) months each was allowed).
8. Revival of the Application
8.1 A withdrawn application may now be revived within a period of three (3) months, instead of four (4) months, from the mailing date of the Notice of Withdrawal.
9. Voluntary Withdrawal of the Application
9.1 A verified declaration of withdrawal filed by the applicant or assignee will now be published in the IPOPHL E-Gazette for the purposes of opposition.
9.2 Any person prejudiced by the withdrawal, may within fifteen (15) days from the date of publication of the declaration of withdrawal, file a written Opposition to the Withdrawal.
9.3 Applicant or assignee may appeal against Director’s decision to grant the opposition and refuse the withdrawal of the application.
10. Payment of Annual Fee Excess Claims Fee
10.1 Payment of renewal fee and claims in excess of five must be made in full within 3-months before the due date.
10.2 If only payment of annual fee is made, a notice to pay the deficit of the excess claims fee will be issued. Excess claims that remain unpaid within the prescribed time issued by the notice shall be cancelled during further prosecution or grant.
11. Time Period for Filing and Responding to Petition or Appeal
11.1 Any petition or appeal must be filed within the non-extendible period of two (2) months from the mailing date of the action subject of the petition or appeal.
11.2 In the case of appeal, the appellant has now a non-extendible period of thirty (30) days from the date of filing of the notice of appeal to file the Appellant’s brief.
11.3 The Examiner has also a shortened period of thirty (30) from the date of issuance of an order from the Director to submit the Examiner’s brief.
In general, majority of the time periods in responding to the requirements by the Registrar have now been shortened and applicants can expect an expeditious process from filing to grant.