IPO OFFICE ORDER NO. 09, S. 2000, May 12, 2000
AMENDMENTS TO THE RULES AND REGULATIONS ON UTILITY MODELS AND INDUSTRIAL DESIGNS
and Section 8.1 of R. A. 8293, the Rules and Regulations on Utility
Models and Industrial Designs published on December 3, 1998 and took
effect on December 18, 1998, are hereby amended as follows:
SECTION 1. A new rule is hereby added to provide a title for each reference as follows:
“Rule 10. These Regulations shall be known as the “Utility Model and Design Regulations “.
SECTION 2. Rule 201 is hereby amended to read as follows:
“Rule 201 . Statutory classes of Utility Models. — A utility model may be, or may relate to:
|
(a) a useful machine; |
(d) a method or process; or |
|
(b) an implement or tool; |
(e) an improvement of any of the foregoing.” |
|
(c) a product or composition; |
|
SECTION 3. Rule 203 is hereby amended to read as follows:
“Rule 203 . Filing Date of Utility Model Application.
— The filing date of a utility model application shall be the date on
which the Office received the following requirements:a) A properly filled-out request form for registration as prescribed by the Bureau;
b) A description of the Utility Model;
c) Claim or claims; and
d) Drawings or a pictorial representation disclosing completely the utility model, if there is/are any.”
SECTION 4 . Rule 205 is hereby amended to read as follows:
“Rule 205 . Registration of Utility Model.
— A utility model application shall be registered without substantive
examination provided all fees such as filing, excess claims and
publication fees are paid on time, and all formal requirements set forth
in these Regulations are filed.”
SECTION 5 . Rule 206 is hereby amended to read as follows:
“Rule 206. Formality Examination of Utility Model Application.
— The utility model application shall be classified and examined as to
the completeness of the formal requirements prescribed in these
Regulations, and a report thereon shall be transmitted to the
applicant.” The formality examination shall take into account the parts
of these Regulations on: (a) the right to a utility model registration,
(b) who may apply for a utility model registration, (c) filing date
requirements, and (d) other formality requirements.”
SECTION 6. Rule 207 is hereby amended to read as follows:
“Rule 207. Applicant’s action on the
Formality Examination Report. — Within two (2) months from the mailing
date of the formality examination report, the applicant may: (1)
voluntarily withdraw the application, (2) amend the application, (3)
convert the application to an application for an invention patent, or,
(4) upon payment of the required fee, request for a registrability
report.
SECTION 7. Rule 207.2 is hereby amended to read as follows:
“Rule 207.2 . Amended Applications. —
The amended application shall be classified and subjected to formality
examination. Report thereon shall be submitted to the applicant within
two (2) months from receipt of the amended application. Within two (2)
months from the mailing date of the formality examination report on the
amended application, the applicant may: (1) withdraw the application;
(2) convert the same to an application for an invention patent; or (3)
upon payment of the required fee, request for a registrability report.
SECTION 8. Rule 207.4 is hereby amended to read as follows:
“Rule 207.4 No action on the part of applicant where formal requirements are complete
. — Where the application meets all the formal requirements for
registrability and the Bureau fails to receive any action from the
applicant, the utility model shall be deemed registered upon the
expiration of two (2) months from the mailing date of the formality
examination report, provided the issuance, publication and all required
fees have been fully paid.”
SECTION 9. Rule 207.6 is hereby amended to read as follows:
“Rule 207.6.Registrability Report. — The
report shall contain citations of relevant prior art documents with
appropriate indications as to their degree of relevance which will serve
as an aid to the applicant in the determination of the validity of the
utility model claim(s) in respect to newness. The registrability report
shall be given to the applicant within two (2) months from receipt of
the request from the applicant.”
SECTION 10. A new Rule 207.7 is hereby added as follows:
“Rule 207.7.Non-Payment of Issuance and Publication Fees.
— Where the application meets all the formal requirements for
registrability and the applicant fails to pay the issuance and
publication fees within the prescribed period, the utility model
application shall be deemed withdrawn.”
SECTION 11. A new Rule 207.8 is hereby added as follows:
“Rule 207.8 Final Action. — Where the
applicant fails to file a complete response to the formality examination
report, any subsequent formality examination report submitted to the
applicant shall be a final action which may be appealed to the Director
of Patents in a manner provided for in these Regulations.”
SECTION 12. Rule 208 is hereby amended to read as follows:
“Rule 208. Requirements for Applications for Utility Model.
— An application for Utility Model Registration and other
correspondences shall be in Filipino or English and must be addressed to
the Director of the Bureau of Patents.
The application shall contain the following:
a) A duly accomplished request for registration as prescribed by the Bureau,
b) Description containing the following:1. title
2. technical field
3. background of the Utility Model
4. brief description of the several views of the drawings, if any
5. detailed descriptionc) Claim or claims
d) Drawings, if any
e) Abstract of the Disclosure
SECTION 13. Rule 208.1 is hereby amended to read as follows:
“Rule 208.1 . Title. — The title should
be as short and specific as possible, and should appear as heading on
the first page of the specification. Fancy names are not permissible in
the title.”
SECTION 14. Rule 212 is hereby amended to read as follows:
“Rule 212. Term of registration of utility model.
— A utility model registration shall expire, without any possibility of
renewal, at the end of the seventh year after the date of filing of the
application.However, taking into account the first-to-file rule, the volume of
the pending applications as of the effectivity of the IP Code and the
time that has elapsed between the effectivity of the IP Code and the
effectivity of these Regulations:(a) The registration of Utility Model applications
pending at the effective date of, and proceeded with in accordance with,
the IP Code shall expire, without possibility of renewal, at the end of
seven (7) years from effectivity of these Regulations;(b) The registration of Utility Model applications
filed after the effectivity of the IP Code and pending upon the
effectivity of these regulations shall expire, without possibility of
renewal, at the end of seven (7) years from effectivity of these
Regulations.”
SECTION 15. Rule 301 is hereby amended to read as follows:
“Rule 301. Requisites for Registrability of Industrial Design.
— In order to be registrable, an industrial design must be any new or
original creation relating to the ornamental features of shape,
configuration, form, or combination thereof, an article of manufacture,
whether or not associated with lines, patterns or colors, which imparts
an aesthetic and pleasing appearance of the article. The design which is
embodied in any composition of lines, patterns or colors must be
inseparable from the article and cannot exist alone merely as a scheme
of surface ornamentation.
An article of manufacture is defined as anything which belongs to
the useful or practical art, or any part thereof, which can be made and
sold separately.
Industrial designs that are dictated essentially by technical or
functional considerations to obtain technical result or those that are
contrary to public order, health or morals, are not registrable.”
SECTION 16. Rule 306 is hereby amended to read as follows:
“Rule 306. Registration of Industrial Design.
— If the application meets the requirements of the IP Code and these
regulations, the Bureau shall effect the registration of the industrial
design: Provided that all the required fees are paid on time.
SECTION 17 . Rule 307 is hereby amended to read as follows:
“Rule 307 . Formality Examination of
Industrial Design Application. — The industrial design application shall
be classified and examined as to the completeness of the formal
requirements prescribed in these Regulations and a report thereon shall
be transmitted to the applicant. The formality examination shall take
into account the parts of these Regulations on: (a) the right to an
industrial design registration, (b) who may apply for an industrial
design registration, (c) filing date requirements and (d) other
formality requirements.”
SECTION 18. Rule 308 is hereby amended to read as follows:
“Rule 308. Applicant’s action on the Formality Examination Report.
— Within two(2) months from the mailing date of the formality
examination report, the applicant may: (1) voluntarily withdraw the
application, (2) amend the application, or, (3) upon payment of the
required fee, request for a registrability report.”
SECTION 19. Rule 308.2 is hereby amended to read as follows:
“Rule 308.2 . Amended Applications. —
The amended application shall be classified and subjected to formality
examination. Report thereon shall be submitted to the applicant within
two (2) months from receipt of the amended application. Within two (2)
months from the mailing date of the formality examination report on the
amended application, the applicant may: (1) withdraw the application,
or, (2) upon payment of the required fee, request for a registrability
report.”
SECTION 20 . Rule 308.3 is hereby amended to read as follows:
“Rule 308.3. No action on the part of the applicant where the formal requirements are complete.
— Where the application meets all the formal requirements for
registrability and the Bureau fails to receive any action from the
applicant, the industrial design shall be deemed registered upon the
expiration of two months from the mailing date of the formality
examination report provided the issuance, publication and all the
required fees have been fully paid.
SECTION 21. In Rule 308.5 is hereby amended to read as follows:
“Rule 308.5 . Registrability Report. —
This report shall contain citations of relevant prior art documents with
appropriate indications as to their degree of relevance which will
serve as an aid to the parties concerned in the determination of the
validity of the industrial design claim in respect to newness. The
registrability report shall be given to the applicant within two (2)
months from receipt of the request from the applicant.”
SECTION 22. A new Rule 308.6 is hereby added as follows:
“Rule 308.6.Non-Payment of Issuance and Publication Fees. —
Where the application meets all the formal requirements for
registrability and the applicant fails to pay the issuance and
publication fees within the prescribed period, the industrial design
application shall be deemed withdrawn.”
SECTION 23. A new Rule 308.7 is hereby added as follows:
“Rule 308.7 Final Action. — Where the
applicant fails to file a complete response to the formality examination
report, any subsequent formality examination report submitted to the
applicant shall be a final action which may be appealed to the Director
in a manner provided for in these Regulations.”
SECTION 24. Rule 310 is hereby amended to read as follows:
“Rule 310 . Fees. — An application
for an industrial design shall be subject to the payment of the filing
fee. The application shall be deemed forfeited if the filing fee is not
paid within one (1) month from the date the application was received by
the Office.”
SECTION 25. Rule 317 is hereby amended to read as follows:
“Rule 317 . Cancellation of Design Registration.
— At any time during the term of the industrial design registration,
any person upon payment of the required fee, may petition the Director
of Legal Affairs of the Office to cancel the industrial design on any of
the following grounds:(a) If the subject matter of the industrial design is
not registrable within the terms of Sections 112 and 113 of the IP
Code;(b) If the subject matter is not new; or
(c) If the subject matter of the industrial design
extends beyond the contents of the application as originally filed.”
SECTION 26. Rule 402 is hereby amended to read as follows:
“Rule 402. Non-Prejudicial Disclosure.
— The disclosure of information contained in the industrial design
application during the six (6) months preceding the filing date or the
priority date of the application or during the twelve months preceding
the filing date or priority date in the case of utility model
application shall not prejudice the applicant on the ground of lack of
novelty if such disclosure was made by:(a) The Maker/Designer;
(b) A patent office and the information was contained
(i) in another application filed by the maker/designer and should have
not been disclosed by the patent office, or (ii) in an application filed
without the knowledge or consent of the designer by a third party which
obtained the information directly or indirectly from the
maker/designer; or(c) A third party which obtained the information directly or indirectly from the maker/designer .
For the purposes of this Rule “designer” also means any person who,
at the filing date of application, had the right to the industrial
design.”
SECTION 27 . Rule 408(a) is hereby amended to read as follows:
“Rule 408(a). All papers for an
application for a utility model and industrial design registration which
are to become part of the permanent records of the Office must be the
original copy only, and legibly written, typewritten, or printed in
permanent ink only on one side of the sheet. If necessary, only graphic
symbols and characters and chemical or mathematical formulas may be
written by hand or drawn. The typing-shall be 1½ spaced. All text matter
shall be in characters, the capital letters of which are not less than
0.21 cm. high, and shall be in dark, indelible color.”
SECTION 28. Rule 408(g) is hereby amended to read as follows:
“Rule 408(g). Each of the documents
making up the application (request for registration, description,
claims, drawings and abstract of the disclosure) shall commence on a
separate sheet. The separate sheets shall be filed in such a way that
they can easily be turned over, and joined together again.”
SECTION 29. A new Rule 408(j) is hereby added as follows:
“Rule 408(j). Paragraphs (d), (e) and (f) of this Rule shall only be applicable to utility model applications.”
SECTION 30. Rule 409(a)(ii) is hereby amended to read as follows:
“Rule 409(a)(ii) statement disparaging the
products or processes of any particular person other than the applicant,
or the merits or validity of applications or patents of any such
person. Mere comparison with the prior art shall not be considered
disparaging per se;”
SECTION 31. Rule 433 is hereby amended to read as follows:
“Rule 433 . Revocation of Power of Attorney.
— A power of attorney or authorization may be revoked upon proper
notification to the Director General, and, when revoked, the Office will
notify the attorney or agent of such revocation and shall communicate
with the latest attorney or agent appointed.”
SECTION 32. Rule 441 is hereby amended to read as follows:
“Rule 441. Classification and Search.
— An application for utility model or an industrial design shall be
classified and a search conducted to determine the prior art.”
SECTION 33. Rule 442 is hereby amended to read as follows:
“Rule 442. Content of the Search Report. — The Search Report is drawn on the basis of the claims, description, and the drawings if there is any:
(a) The search report shall mention those documents,
available at the Office at the time of drawing up the report, which may
be taken into consideration in assessing novelty.(b) The search report shall contain the
classification of the subject matter of the application in accordance
with the International Classification.(c) The search report may include documents cited in a search established in the corresponding foreign application.
Upon payment of the required fees, the Office shall
provide a copy of the Search Report with respect to any published
utility model and industrial design within a maximum period of two (2)
months from receipt of the request.”
SECTION 34 . A new Chapter 9 in Part 4 is hereby added as follows:
CHAPTER 9
TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION FOR FAILURE TO RESPOND WITHIN TIME LIMIT
Rule 452. Withdrawal of application for failure to
respond to the formality examination report and the notice of issuance
and publication fees within the prescribed time limit.(a) If an applicant fails to prosecute his
application within the required time as provided in these Regulations,
the application shall be deemed withdrawn.(b) The time for reply may be extended only for good
and sufficient cause, and for a reasonable time specified. Any request
for such extension must be filed on or before the day on which action by
the applicant is due. The Examiner may grant a maximum of two
extensions, provided that the aggregate period granted inclusive of the
initial period allowed to file the response, shall not exceed six (6)
months from mailing date of the official action requiring such response.(c) Prosecution of an application to save it from
being deemed withdrawn must include such complete and proper action as
the condition of the case may require. Any amendment not responsive to
the last official action shall not operate to save the application from
being deemed withdrawn.(d) When action by the applicant is a bona fide
attempt to advance the case to final action, and is substantially a
complete response to the Examiner’s action, but consideration of some
matter or compliance with some requirements has been inadvertently
omitted, opportunity to explain and supply the omission may be given
before the question of withdrawal is considered.(e) Prompt ratification or filing of a correctly
signed copy may be accepted in case of an unsigned or improperly signed
paper.Rule 453. Revival of application.
— An application deemed withdrawn for failure to prosecute may be
revived as a pending application within a period of four (4) months from
the mailing date of the notice of withdrawal if it is shown to the
satisfaction of the Director that the failure was due to fraud,
accident, mistake or excusable negligence.
A petition to revive an application deemed withdrawn must be
accompanied by (1) a showing of the cause of the failure to prosecute,
(2) a complete proposed response, and (3) the required fee.
An application not revived in accordance with this rule shall be deemed forfeited.”
SECTION 35. Furnishing of Certified Copies . — Mr.
Eduardo Joson, Records Officer II, is hereby directed to immediately
file three (3) certified copies of these Regulations with the University
of the Philippines Law Center, and, one (1) certified copy each to the
Office of the President, the Senate of the Philippines, the House of
Representatives, the Supreme Court of the Philippines, and the National
Library.
SECTION 36 . This Office Order shall take effect on 01 June 2000.
Adopted: 12 May 2000
|
Recommending Approval:
|
|
|
Approved:
|
|
|
(SGD.) ROSELLA L. FERNANDEZ |
(SGD.) EMMA C. FRANCISCO |