PATENTS
We enumerate hereunder the minimum filing requirements in Philippines.
Application/Request for Grant of Letter Patent (Invention) in Philippines:
(a) A duly signed Request for Grant of a Philippine Patent;
(b) English specification and claims;
(c) A simply signed Power of Attorney (POA);
(d) Formal drawings, if necessary; and
(e) A certified copy of the corresponding foreign patent application together with the verified English translation thereof, if claiming convention priority.
The duly signed POA and certified copy of the priority document [foreign patent application and verified English translation] may be filed within six (6) months after the lodgment of the patent application. The English translation need not be notarized.
Application/Request for National Phase Entry
1. Request for National Phase Entry form (can be accomplished at our end);
2. Specification, claims and abstract in English language;
3. Drawings, if necessary;
4. A simply signed Power of Attorney (POA);
5. Copy of Form PCT/IB/304 or certified copy of the priority document together with the verified English translation, if claiming priority; and
6. Filing fees (can be initially advanced at our end).
The POA and the PCT/IB/304 can be filed within six (6) months from the filing date of the national phase entry application.
Application/Request for Utility Model Registration
(a) A duly signed Request for Utility Model Registration (can be accomplished at our end);
(b) Description of utility model and claims;
(c) A simply signed Power of Attorney (POA);
(d) Formal drawings, if necessary; and
(e) A certified copy of the corresponding foreign application for utility model patent/registration together with the verified English translation thereof, if claiming convention priority.
The duly signed POA and certified copy of the priority document [foreign application for utility model patent/registration and verified English translation] may be filed within six (6) months after the lodgment of the application for registration of utility model. The English translation need not be notarized.
Application/Request for Industrial Design Registration
(a) A duly signed Request for Industrial Design Registration;
(b) English specification and claim;
(c) A simply signed Power of Attorney (POA);
(d) Formal drawings; and
(e) A certified copy of the corresponding foreign application for industrial design patent/registration together with the verified English translation thereof, if claiming convention priority.
Term of Industrial Design Registration. The term shall be five (5) years from the filing date of the application and may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee. (Sections 118.1 and 118.2, R.A. 8293).
Patents (Regular)
Initially, the Philippine application undergoes examination for completeness of formality requirements (“Formality Examination”). If the application satisfies the Formality Examination, the application is granted a filing date. After the Formality Examination, a search and the classification of the invention is conducted. Eighteen (18) months after the filing date or priority date, the application and the results of the search are published in the Intellectual Property Office (IPO) Gazette. After publication, third parties may present their observations concerning the patentability of the invention, to which the applicant may comment. Within six (6) months from the date of publication, a request for substantive examination must be filed. If no request is filed, the application is considered withdrawn. During the Substantive Examination, the application is assessed based on its patentability, novelty, inventive step and industrial applicability. Any rejection or refusal of the application based on the said grounds shall be communicated to the applicant or its representative through a Substantive Examination Report. A response to the Report containing arguments and/or amendments is thereafter filed. If there is no reason for refusal or rejection of the application, a decision to grant the parent registration is issued. The grant of patent and other information is published in the IPO Gazette within six (6) months.
The timeline from filing to grant as follows:
Mechanical subject matter – approximately 2 to 4 years; and
Chemical subject matter – approximately 3 to 6 years, both counted from date of entry in the Philippines.
In case of a final refusal of the application, the remedy of appeal is available to the applicant.
Please note that, if registered, the term of the patent in the Philippines is 20 years from the Philippine filing date.
Utility Model and Industrial Design
The Philippine Utility Model and Industrial design application undergoes a Formality Examination. A Formality Examination Report pertains to the submission of the specification, claims as well as the drawings drafted in accordance with the Patent Rules, which may include formality issues with submitted documents. Kindly note that the response to the Report must be filed within two (2) months from its mailing date. Please note that there is no substantive examination for utility model and industrial design application in the Philippine. In the Response, the applicant has the following options: (a) withdraw the application; (b) amend the application; (c) request for a registrability report; or (d) inaction. In case the application meets all the formal requirements, the Patent Office will issue a Notice of Issuance of Certificate of Registration and, accordingly, the UM or ID is deemed registered provided that all the required fees are paid. The registration of the UM or ID is published in the IPO Gazette within six (6) months after registration.
The timeline from filing to grant is seven to nine months.
The term of patent for UM is seven (7) years from the Philippine filing date. On the other hand, the term of patent for ID is five (5) years, renewable for two (2) consecutive terms of five (5) years each.
Deadline for Filing Philippine Patent Application/required documents:
1. Not later than twelve (12) months from the date the earliest foreign application was filed non-extendable;
2. Certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines;
3. Signed Power of Attorney must be filed two (2) months from the date of filing in the Philippines; and
4. Filing for the Request for Substantive Examination shall be filed within six (6) months from the date of publication in IPO egazette.
TRADEMARKS
Trademark Law in Philippines
RA 8293 entitled “Intellectual Property Code of the Philippines” was enacted on January 1st, 1998 and codifies the Philippine Laws on IP conformably with the WTO-TRIPS Agreement. It created the Intellectual Property Office (IPO) and repealed old IP and IP-related laws, insofar as the same are inconsistent with RA 8293, as for example RA 166 of June 29th, 1947.
The Philippines adhered to the Madrid Protocol effective July 25, 2012.
Trademark protection is obtained either by registration or local use prior to January 1st, 1998. Under RA 166, the trademark law in force before RA 8293, registration was merely a right or prerogative of the trademark owner, and was not a prerequisite to the enjoyment of rights. The passage of RA 8293 did not impair trademark rights arising from local use under RA 166.
Classification
Nice classification, 11th Edition as of January, 2019. Multiple-class applications are possible.
In order for us to proceed to file an application, we will require the following information in Philippines: -
(a) Name of the applicant;
(b) Registered address of the applicant;
(c) Citizenship/country of incorporation;
(d) Specification/Goods or services to be marketed under the trade mark;
(e) Class the application is to fall into in accordance with the Tenth Edition of the Nice Classification;
(f) Representation of the trade mark – A soft copy in JPEG format is preferred;
(g) Derivation of the trade mark i.e. please confirm if the is mark invented or if it has a meaning. If there is a meaning to the mark please advise on the same;
(h) If the mark is in a language other than English, please let us have a certified translation and transliteration of the trade mark; and
(i) Simply signed Power of Attorney (POA)
Trademark Registration procedure in Philippines:
* Filing of Trademark Application
* Examination of the trademark application
A. Formal Examination
B. Substantive Examination
If the Examiner finds any reason why the application should not be registered, the Examiner will issue an action paper requiring the applicant to respond to the objections or comply with additional requirements stated in the action paper.
If all the requirements for registration have been met, the Trademarks Office will issue the Notice of Allowance within 3 months from the filing of the application.
1 month to 2 months from filing date'
* Issuance of the Notice of Allowance and Publication for purposes of opposition
2 to 3 months from filing date
* Payment by the Applicant of the publication fee prescribed by the IPO
Please note that the applicant has the option to pay the Issuance and Second Publication Fee (for the issuance of the Certificate of Registration) simultaneously with the Publication Fee (for purposes of opposition) in order to expedite the issuance of the Certificate of Registration if no opposition to the registration of the mark is filed within thirty (30) days from the publication of the subject mark in the e-Gazette. However, if an opposition is filed, the Issuance and Publication Fee will not be refunded.
2 months from mailing date of notice of allowance
* Publication of the application in the eGazette for purposes of opposition
1 week to 3 weeks from payment of publication fee
* Filing of an opposition to the application by Persons who may be prejudiced by the registration of the subject mark
30 days from release of IPO’s Official Gazette
* Issuance of Notice of Issuance and Publication Fee, assuming no opposition is filed
1 to 2 months from publication of the application
* Payment of the issuance and publication fees prescribed by the Trademarks Office. Failure to pay the required fees would result in the abandonment of the subject application.
2 months from mailing date notice of issuance.
* Issuance of the Certificate of Registration
2-3 months from payment of issuance and publication fees.
Timeframe
To obtain a trademark registration in the Philippines, it will take about 8 to 12 months, if no objection or opposition is filed against the application.
Remarks of Trademark Registration Procedure in Philippines
The standard application form provided by IP Office of The Philippines (IPOPHIL), written in English or Filipino, is filed at the Bureau of Trademarks at the IPOPHIL
Once filed, the application will be assigned an application number and the date of filing will be stamped on the application. The application will thereafter be raffled to an Examiner.
The application process includes both a formal and a substantive examination, an examination of distinctiveness and a search for prior trademarks.
Should there be no objections raised by the Examiner, the mark will be allowed for publication. Prior to registration, the trademark application is published in the weekly official electronic gazette of the IPOPHIL on its official website for a period of thirty (30) days for opposition purposes. Upon certification by the Director of the Bureau of Legal Affairs that no verified notice of opposition, or motion for extension of time to file the same, has been filed within the opposition period, the office shall issue the certificate of registration. The issuance of the certificate of registration shall be published in the IPO gazette and shall be entered on the records of the office.
Priority
The priority documents must be submitted not later than three (3) months from the filing date of the Philippine application. Otherwise the claim of convention priority will be forfeited or rejected.
National Opposition Period
The opposition period is 30 days from publication date of the application in the eGazette. The period may be extended for three (3) additional thirty (30) day periods, upon motion due to meritorious grounds and payment of the appropriate fees.
Trademark Duration
A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.