Philippines – from filing to grant

Our patent attorneys are registered to practise before the Australian and New Zealand Patent Offices and they instruct patent attorneys registered before the Intellectual Property Office of the Philippines on all aspects of Filipino patent prosecution.

Philippines Patent Office (IPO)

The government agency responsible for grant of patent rights in the Philippines is the Intellectual Property Office of the Philippines (IPO).

Key prosecution events

  • Paris Convention filing: 12 months from earliest claimed priority
  • PCT National phase entry: 30 months from earliest claimed priority
  • Substantive examination request: at national phase entry, or within 6 months from publication of Philippine Convention application
  • Divisional application: within 4 months of direction to divide claims becomes final, or if no direction, before parent application is withdrawn, abandoned or granted

National phase entry

Philippine national phase applications must be filed by 30 months from the earliest claimed priority date. This time limit can be extended by 1 month upon payment of an extension fee for late entry into the national phase. View filing requirements for National phase applications in The Philippines.

Convention applications

A Philippine Convention application can be validly filed within 12 months from filing a priority application filed according to the Paris Convention for Protection of Industrial Property. View filing requirements for Convention applications in The Philippines.

Utility patents and 2nd tier protection

A utility model or petty patent is granted for inventions that are novel and industrially applicable, including products and processes. The term of protection is 7 years and cannot be extended.

Examination, divisional applications and acceptance

An IPO examiner checks if the application satisfies the formal requirements needed for the grant of a filing date. The applicant will be given 2 months from the date on which the application was initially presented to the IPO to remedy any deficiencies with the application, otherwise the application is considered withdrawn.

A Convention application will be published after 18 months from the priority date, together with the results of a prior art search and the application’s patent classification.

A Philippine national phase entry will be published if the international publication was in a language other than English.

Substantive examination does not occur automatically. The applicant must file a request for substantive examination and/or pay the substantive examination fee within a prescribed period as follows:

  • for Convention applications, the applicant must file a request for substantive examination and pay the substantive examination fee within 6 months from date of publication of application; and 
  • for Philippine national phase entries, there is no need to file a separate request for substantive examination, but the substantive examination fee must be paid at the date of entry into the national phase or within 6 months after entry into the national phase.

The patent application is examined for novelty (absolute), inventive step and industrial application.

The following subject matter is not patentable:

  • discoveries, scientific theories and mathematical methods;
  • schemes, rules and methods of performing mental acts, playing games or doing business, programs for computers;
  • methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body (although this provision does not apply to products and compositions for use in any of these methods);
  • plant varieties or animal breeds or essentially biological process for the production of plants or animals (although this provision does not apply to micro-organisms and non-biological and microbiological processes);
  • aesthetic creations; and
  • anything which is contrary to public order and morality.

There is a requirement to file search reports on corresponding applications prepared by European, Japanese or United States Patent and Trademark Offices, by the searching authorities under the PCT or by the office where the first patent application was filed; a copy of the documents cited, a copy of granted related/corresponding applications, a copy of any examination reports/decisions on corresponding applications, and other documents that could facilitate adjudication of the application.

If the examiner objects to the application on one or more grounds (eg the invention is not novel), the examiner issues an Office Action. The applicant can respond and have the application (with or without amendment) re-examined and reconsidered. The applicant has 2 months from the mailing date of the Office Action to file a response, otherwise the application is declared to be withdrawn. The time for reply may be extended only for good and sufficient cause and for a reasonable time specified. The examiner may grant up to 2 extensions for a total response period of 6 months.

An application deemed withdrawn for failure to prosecute may be revived as a pending application within 4 months from the mailing date of the notice of withdrawal if the applicant can satisfy the IPO that the failure was due to fraud, accident, mistake or excusable negligence.

On the second or any subsequent examination, the objection may be declared final by the examiner. The applicant may file an appeal within 4 months from the mailing date of the notice of final refusal.

Once the examiner is satisfied that there are no outstanding issues and all fees have been paid, the IPO will grant the patent. If the required fees for grant and printing are not paid in due time, the application shall be deemed to be withdrawn. The IPO issues and sends the Letters Patent to the applicant or their attorneys.

Before the grant or refusal of an application for a patent, the application may be converted to an application for registration for a utility model. Similarly, an application for a utility model can be converted into a patent application.

While there is no formal pre-grant opposition procedure, a third party may make observations regarding the patent application. Within 6 months of the application being published or the request for substantive examination being filed (whichever comes later), any person may present observations in writing or request a conference at the IPO concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. Observations from third parties and any comments by applicant form part of the file wrapper and are taken into consideration during examination.

Philippine divisional applications may be filed for subject matter disclosed but not claimed in a parent application, provided that the divisional application is filed before the parent application is withdrawn or granted. A divisional application may also be filed in response to a lack of unity objection, provided that the divisional application is filed within 4 months after the examiner issues a final objection as to lack of unity.

Micro-organisms

The Philippines is a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. The deposit must be made before filing the application. If the depository institution and the file number of the culture deposit are not stated in the application at the time of filing the application, this information must be submitted within 2 months from a request by the examiner. The application will not be published until this information is submitted.

There is no express statutory exclusion to patent eligibility of isolated nucleic acid molecules.

Renewals

For details on the renewal requirements in the Philippines, view South East Asia – Renewal Requirements.

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