Southeast Asia snapshot – Changes in patent practice in 2024

Case Law

1. Kyowa Hakko Bio Co., Ltd. v. Director of Bureau of Patents, Appeal No. 01-2022-0002, 21 February 2024

   Kyowa Hakko Bio Co., Ltd. ("Applicant") filed Patent Application No. 1-2015-501602 entitled "Agent for Elevating Nitric Oxide Concentration".

   An office action was issued by the examiner, and the applicant had requested two, separate two-month extensions, to submit a response, but the examiner only granted the first request, and a second single month extension.

   The applicant filed its response late by one month, and a Notice of Withdrawn Application was subsequently issued by the examiner. The applicant filed a petition to revive its patent application which was denied.

   The applicant appealed the Order denying its petition of revival, seeking to rely on “accident or excusable negligence”. It also submitted that administrative bodies exercising quasi-judicial functions may relax requisite rules in the interest of justice.

   The appeal was dismissed as it was maintained that it was erroneous of the applicant to rely on an automated docketing system since there is no guarantee that a full two month extension is always granted. It was also maintained that that the liberal interpretation of rules does not apply in patent cases due to adverse effects on third parties.

2. Société Des Produits v. Director of Bureau of Patents, Appeal No. 01-2023-0003, 15 March 2024

   Société Des Produits Nestlé S.A., ("Applicant") filed a request for the National Phase Entry Application of its invention entitled "Nutritional Compositions and Infant Formula for Promoting De Novo Myealination".

   An office action was issued and the applicant had requested two, separate two-month extensions, to submit a response, both of which were granted.

   However, the applicant was filed its response one day past the extended deadline. As a result, a Notice of Withdrawn Application was issued due to the applicant’s failure to submit the response within the extended period.

   The applicant filed a Petition for Revival of Withdrawn Application alleging that the response was inadvertently submitted late by one day and that it had no intention to abandon the patent application. The Petition was denied due to the lack of any reason for the failure to file a response in a timely manner.

   On appeal, the applicant raised the interest of substantial justice to request that the Rules be relaxed and the revival of its patent application be reconsidered. The applicant also submitted that since it was only able to give final instructions at the end of the day of the deadline, the applicant's agent inadvertently only acted on the instructions on the following morning. The applicant argued that such negligence on the part of the patent agent indicates excusable negligence that may be considered for the revival of the application.

   It was held that the agent’s failure to file a response on the due date did not constitute "excusable negligence". Such failure in monitoring deadlines is inexcusable negligence particularly since the original due date for filing a response was already extended twice at the request of the applicant. It was also pointed out that in view of IPOPHL’s 24-hour online filing system, the agent could have still filed the response on the same day it received instructions from the applicant.

   However, the appeal was allowed the patent application revived on the basis that the deadline was missed during the pandemic. Under the circumstances, it was ruled that applicant could be excused from strictly complying with the requirements of the office action.

3. F. Société Des Produits v. Director of Bureau of Patents, Appeal No. 01-2023-0004, 15 March 2024

   Société Des Produits Nestlé S.A., ("Applicant") has a parent patent application ("Parent Application") which had a Substantive Examination Report where a unity requirement was raised and the subject matter was categorised into Groups I-VI.

   The applicant elected Group I for prosecution and could include the non-elected claims in a divisional application by the deadline.

   The applicant filed a divisional application beyond the deadline and the divisional application was subsequently declared invalid.

   Thereafter, the applicant appealed on the basis that the time extension granted for filing a response for the parent application should also extends to the due date for filing a divisional application.

   The appeal was denied and it was ruled that a separate request to extend the deadline to file divisional application should be submitted. It was ruled that a request(s) for an extension of time to submit a response for the parent application was not a request to extend the filing date of the divisional application.

Procedure and/or Practice

• The Philippines adopted the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge (“Treaty“), which requires the disclosure of information in patent applications whose inventions are based on genetic resources and traditional medicine.
• Specifications of PCT applications that are filed into Philippines may be filed manually if their length exceeds 250 pages.
• A framework to provide a list of recognised patent representatives who may conduct business with IPOPHL has been implemented, and twenty four months have been provided for interested parties to comply with the framework for inclusion in the list.