IPOPHL ISSUES REVISED RULES ON PATENT COOPERATION TREATY

By Ma. Sophia Editha C. Cruz-Abrenica

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The Intellectual Property Office of the Philippines (IPOPHL) issued Memorandum Circular No.? ?2024-006 on the revised Philippine Rules on the Patent Cooperation Treaty (Pro-PCT) of 2024. The Pro-PCT is promulgated in view of the IPOPHL’s policy to streamline its administrative and examination procedure relative to PCT applications, and to align said procedures with updates in PCT regulations, IPOPHL’s role as an International Searching Authority and International Preliminary Examination Authority and the 2022 Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs.[i]

Part 1 of the Pro-PCT covers General Provisions such as Title, Definitions, Application of the PCT and PCT Regulations, Effect of An International Application, Prohibition Against Parallel Applications, Delivery Service and Appointment of Resident Agent or Representative.[ii]

Part 2 of the Pro-PCT deals with the International Phase of the Application and covers the following topics: IPOPHL as a Receiving Office, International Search and International Searching Authority, International Preliminary Examination and International Preliminary Examining Authority, Translation for Purposes of International Search, Documents and Correspondence, Records and Files, the International Application, Request, Description, Drawings and Abstract, Priority Claim and Physical Requirements, as well as Who May File an International Application, Where to File an International Application and Accordance of International Filing Date and Its Effect, Transmittal of the International Application, The International Publication and Its Effect.? It also provides rules on Demand for International Preliminary Examination, Manner of Making Corrections, Delays in Meeting Time Limits, Recordal of Changes, Withdrawals, and Certified Copies of the International Application and Priority Document.[iii]

Part 3 of the Pro-PCT deals with the National Phase of the Application and covers the following topics: the IPOPHL as a Designated or Elected Office, Entry into National Phase, Entry Into National Phase of an International Application Claiming the Priority of an Earlier Philippine National Application, Review by IPOPHL as a Designated Office, Timie Limit to Submit the Priority Document, Procedure for Grant of Patent, and Application of the IPOPHL Fee Structure. as well as Decorum and Courtesy Required in the Conduct of Business? and Complaints Against Examiners.[iv]

With regard to the Part 3 of the Pro-PCT on National Phase of the Application, the IPOPHL may act as a designated or elected office for processing of applications.? In such cases, the IPOPHL’s main functions shall include receiving various notifications during the international phase, and accepting compliant international applications for national phase examination.[v]

Rule 35 (a) provides that in order to enter into the national phase, the applicant must provide the IPOPHL a copy of the international application in English, unless it has already been transmitted by the International Bureau (IB) of the World Intellectual Property Office (WIPO).? If the application was filed in another language, its English translation must be submitted not later than thirty (30) months from the priority date.? The national phase entry may be extended by one (1) month, subject to payment of the extension fee for late entry equivalent to fifty percent (50%) of the filing fee indicated in the IPOPHL Fee Structure.? Rule 35 (f) states that an international application filed beyond the 31st month time limit shall be considered as an invalid entry application.

Rule 35 (b) states that the filing fee, publication fee, and claim for priority or multiple priorities, if any, as prescribed in the IPOPHL Fee Structure shall be subject to full payment upon filing of the application.? Non-payment of the fees shall result in the application being deemed as a failed application.

Rule 35 (c) states that national phase entry applications must be filed through the IPOPHL electronic filing system.? Manual filing directly with the IPOPHL is available for voluminous applications that exceed 250 pages.? Rule 35 (c) lists down the documentary requirements for a national phase entry application. ?Further, for applicants who are not residents of the Philippines, appointment of an agent or representative upon whom notice or process for administrative or judicial proceedings in relation to the application/patent may be served, is mandatory. ??Failure of a non-resident applicant to appoint a Philippine resident agent within one month from issuance of notice by the IPOPHL shall cause the application to be deemed withdrawn.

?Rule 35 (d) provides that an international application that has been filed in a language other than English, and if no English translation was filed upon national phase entry thereof, must submit an English translation, with or without notice from the IPOPHL, on or before expiry of the thirty first (31st ) month from the earliest claim of priority or from the international filing date, if there is no claim of priority.? Otherwise, the application shall be considered as an invalid entry application.

Rule 35 (g) provides that during the national phase and at any time before grant or renewal of the patent, amendments may be presented in relation to the Specifications, Claims and Drawings in accordance with the IP Code and the implementing rules and regulations.

The Restoration of Right of Priority for PCT applications is not compatible with the laws of the Philippines, as notified by the IPOPHL to the IB of the WIPO.? Hence, the restoration of right of priority granted by a receiving office does not apply in the Philippines.? As such, the claim of priority will be disregarded and the international filing date shall be considered as the effective filing date, in accordance with Rule 35 (h) of the Pro-PCT.

If the priority document is received by the IB not later than sixteen (16) months after the priority date, the IPOPHL will take into account such priority claim of an international application designating or electing the Philippines.? If the priority document is not submitted to the IB within the said period, the applicant may submit to the i\IPOPHL a certification from the national office stating details of the priority application.? Without need of notice, the certification, its English translation, fees for extension of time to submit priority document and late payment surcharge should be submitted within six (6) months from date of entry into the national phase.? Otherwise, the priority claim will be disregarded in accordance with Rule 39.2 of the Pro-PCT,? Note that neither the certification nor its English translation require legalization.?

If the validity of the priority claim is relevant to the determination of patentability of the invention, the applicant shall be required to submit the English translation of the priority document, as per Rule 39.3 of the Pro-PCT.

With regard to fees, the IPOPHL Fee Structure shall apply upon entry into national phase.? If priority of an earlier Philippine application is claimed, the international application will be exempt from fees already paid in connection with the Philippine application.? The date of international publication, regardless of the language of publication shall be the basis for computing the due date for payment of annuities.? If the substantive examination fee is not paid within six (6) months from date of national phase entry, the international application shall be deemed withdrawn.

Part 4 of the Pro-PCT covers Fees During the International Phase such as the Fees to be Collected by IPOPHL, Fees for the Benefit of the International Bureau (International Filing Fee), Due Dates and Extension of Time Limits for Payment of Fees Collected by IPOPHL, Fees for the Benefit of IPOPHL and those for the Benefit of IB and ISA, Fees Payable to IPEA, Refunds and Reductions in Fees.[vi]

Part 5 of the Pro-PCT covers the Final Provisions on Separability Clauses, Repeals and Effectivity.? The Pro-PCT was signed by IPOPHL Director General Rowel S. Barba.[vii]

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This article is intended for informational purposes only and should not be considered as legal advice.

[i] Whereas Clauses, Pro-PCT.

[ii] Rules 1 to 7, Pro-PCT.

[iii] Rules 8 to 33, Pro-PCT.

[iv] Rules 34 to 42, Pro-PCT.

[v] Rules 34.1 and 34.2, Pro-PCT.

[vi] Rules 43 to 49, Pro-PCT.

[vii] Rules 50 to 52, Pro-PCT.