Revised IRR for patents, utility models and designs

The Intellectual Property Office of the Philippines (IPOPHL) in October 2019 released its proposed amendments to the revised implementing rules and regulations (IRR) for patents, utility models and industrial designs. Under the amended IRR, the following key changes are proposed:

(1) Introduction of accelerated substantive examination. In accordance with the current IRR, there is no accelerated substantive examination for patents unless the applicant files a special accelerated examination request under the Patent Prosecution Highway (PPH) or ASEAN Patent Examination Co-operation (ASPEC) programme. With the proposed amendment, applicants may directly file a request for accelerated examination (not under PPH or ASPEC), subject to payment of the prescribed fee, after the application has been published in the IPOPHL e-Gazette and the request for substantive examination has been filed. Granting of an accelerated examination is subject to the approval of the director of the Bureau of Patents (BOP).

(2) Shortening of extension period to file response to office action. During substantive examination, an applicant is given a maximum of two months from the mailing date of an office action to file a response. Under the current IRR, the time for response may be given a maximum of two extensions of two months each. With the amendment, it has been limited to maximum of two extensions of one month each. This is intended to encourage applicants to submit timely responses, thus improving the turnaround time.

(3) Shortening of period to file appeal with respect to final refusal. The final decision of an examiner in refusing applications during a substantive examination are subject to appeal to the director of the BOP. In accordance with the current IRR, the period to file a notice of appeal is within four months from the mailing date of the notice of final refusal. With the proposed amendment, the period to file a notice of appeal shall be within 30 days from the date of mailing the notice of final refusal.

(4) Formalization of annual fee due dates for divisional applications and memorandum on filing of succeeding divisional applications. BOP Memorandum Circular No. 14-002 provides that the annual fee payment for divisional applications is due and payable upon the expiration of four years from the date the parent application was published, and on each anniversary of that date. This circular is now formalized in the proposed IRR amendment, with a rule specifically covering annual fees of patents, including divisional applications.

Relating to divisional applications, although not incorporated in the proposed amendments to the revised IRR, applicants may now file divisional applications from an earlier filed divisional application. This is set out under BOP Memorandum Circular No. 18-003.

Utility model, design rules

(1) Introduction of motu proprio issuance of registrability report. In accordance with the current IRR, where an application for utility model or industrial design meets all the formal requirements for registrability, and the IPOPHL does not receive any adverse information from the concerned community after the expiration of the 30-day publication period, the IPOPHL grants the registration of the utility model or industrial design.

With the proposed amendment, after the expiration of the 30-day publication period, the director of the BOP will decide whether or not to register the utility model or industrial design. The director may issue a registrability report motu proprio. If it appears in the registrability report that prior art defeats the registrability of the application, the director may outright deny the registration of the utility model or industrial design. The director may also direct the applicant to amend the application to conform with the requirements of registrability. Amended applications shall be republished prior to registration.

If there is no relevant cited prior art in the registrability report that could defeat the application, the IPOPHL shall grant the registration of the utility model or industrial design.

(2) Formalization of deferment of publication for designs. Under BOP Memorandum Circular No. 14-004, it is provided that an applicant may request a deferment of publication of an industrial design simultaneously with the filing, or at any time prior to the, publication date, wherein the maximum period allowed for the deferred publication is 30 months from the filing date or the priority date of the application. This memorandum circular is now formalized in the proposed IRR amendment, with a rule specifically covering deferment of publication of industrial designs.

A public consultation on the proposed amendments was held on 16 October 2019. Also discussed were changes to other areas, such as: fees; rules and regulations on inter partes cases; IRR for patent agents; rules on expedited opposition; amendments to the IRR on trademarks, service marks, trade names, and marked or stamped containers; IRR on copyright for works of the government of the Philippines; and rules and regulations on the registration, conduct and practice of agents, attorneys-at-law and representatives before the IPOPHL.

The proposed amendments are expected to take effect by the end of 2020.

Ramon Emil T Olea is a patent specialist at Federis & Associates Law Office.

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