What types of protection are available in the Philippines for a Patent Cooperation Treaty (PCT) application?
PCT applications may be filed for invention patent or utility model registration.
What are the requirements for entering the national phase of a PCT application?
To enter the national phase and get a date of entry, the PCT applicant must furnish the Intellectual Property Office (IPO), not later than thirty (30) months from the priority date under Art. 22 (as amended by IPO Office Order) or Art 39(1)(a), the following items:
- Request for National Phase Entry;
- English translation of the international application if it was filed in another language or a copy of the international application in English as filed if the applicant has not yet received Form PCT/IB/308; and
- Copy of the amendments under Article 19 and/or Article 34 (if applicable) in English.
Is there an extension of time for entering the national phase for PCT applications?
Yes. The 30-month deadline for entering the national phase for a PCT application may be extended by one (1) month subject to the payment of an extension fee.
Is payment of the national fee a requisite for getting a date of entry in the national phase?
Yes, payment of the national fee is a requisite for getting a date of entry in the national phase. Under IPOPHL Memorandum Circular No. 2024-006 issued on 21 November 2023, an international application entering into the national phase within thirty (30) months, the filing fee, publication fee (PCT Listing Publication) and claim for priority or multiple priorities, if any, prescribed in the IPOPHL fee structure shall be subject to full payment upon filing of the application. If the applicant fails to pay in full, the fees as herein provided, the application shall be deemed a failed application in the Philippines.
An international application, which claims priority of an earlier filed Philippine application is exempted from the payment of the filing fee and any other fees which were already paid during the earlier application.
What documents must be submitted at the national phase entry?
- A duly accomplished National Phase Entry Application Form;
- Description (including title of the invention) must be in English;
- Claims as filed (must be in English);
- Abstract;
- Amendments to the claims under PCT Art. 19, where applicable, must be in English;
- Amendments to the description, claims or drawings under PCT Art. 34, as contained in the annexes to the international preliminary examination report, where applicable, must be in English;
- Drawings, as filed, if any;
- Form PCT/IB/304 (if with right of priority);
- Mandatory Appointment of an Agent or Representative, if the applicant is not a resident of the Philippines upon whom notice or process for judicial or administrative procedure relating to the application for patent/registration or the patent/registration may be served. Failure of an applicant who is not a resident of the Philippines to appoint a Philippine resident agent within one (1) month from the issuance by the Office of an action directing the appointment of such agent, shall cause the application to be deemed withdrawn.
What are the important time limits that one needs to observe for PCT applications?
Six (6) months from the date of entry into the national phase
Priority document
Priority document of a claimed earlier application must be submitted to the International Bureau (IB) within sixteen (16) months from the priority date.
If it has not been submitted to the IB within the said time period, it must be submitted to the Philippine Intellectual Property Office (IPO), together with payment of fee for extension of time to submit priority document plus surcharge provided for in the IPO Fee Structure, within six (6) months from the date of entry into the national phase without need of notice. Failure of the applicant to comply shall be grounds to disregard the priority claim.
Request for substantive examination
The application shall be deemed withdrawn if the request for substantive examination is not made and the substantive examination fee is not paid within six (6) months from the date of entry into the national phase.
Four (4) years from the date of the international publication
Annual fee of a patent registration shall be due and payable on the expiration of four (4) years from the date of the international publication, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.
Annual fee of a divisional patent registration shall be due and payable on the expiration of four (4) years from the date of the international publication of the parent application, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.
Can one extend the time limit for filing a response to office action?
The time limit to respond to office action 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 the response is due. The Examiner may grant a maximum of two (2) extensions, provided that the aggregate period granted inclusive of the initial period allowed to file the response, shall not exceed six (6) months from the mailing date of the official action requiring such response. The Examiner may grant only one (1) request for extension for a maximum period of two (2) months.
What should the applicant do if the international application entering the national phase claims priority of an earlier Philippine national application?
The applicant should elect which one of the two applications shall be prosecuted. If applicant does not elect at the date of entry, the IPO will invite the applicant to make the election within two (2) months from the date of the invitation, or within a longer period, but not to exceed six (6) months from the date of entry into the national phase.
Is the submission of priority documents required for purposes of entering into the national phase?
No. The submission of priority documents is not required for purposes of entering into the national phase. The submission of priority documents is required by the IPO in certain cases as provided by the rules.
Can amendments regarding the specification, claims and drawings be done after the patent application has already entered the national phase?
Yes. During the national phase, and at any time before a patent is granted or refused on the international application, the applicant may present amendments to the description, claims and drawings in accordance with the Intellectual Property Code and its implementing rules and regulations.
Is an international application subject to publication in the IPO Gazette?
National phase applications based on PCT International Applications are published in the form of listing only (List of PCT cases that entered the national phase) but are NO longer published (entire application) for purposes of laying-open/disclosing the same to the public. A patent application in the Philippines based on a PCT international application is considered published as of the international publication date.
When should annual fees be paid for international applications?
The first annual fee must be paid on the expiration of four (4) years from the date of publication of the international application regardless of the language of publication. Payment may be made within three (3) months before the due date. Subsequent annual fees shall be due on each subsequent anniversary of such date.
Is the filing of a separate request for substantive examination required for international applications?
No, however, payment of the substantive examination fee must be made at the date of entry into national phase or within six (6) months thereafter. The international application shall be considered withdrawn if the substantive examination fee is not paid on time.
What law governs the processing of international applications at the national phase?
The applicable provisions of the Intellectual Property Code and its implementing rules and regulations, the applicable provisions of the Patent Cooperation Treaty, PCT Regulations, and PCT Administrative Instructions, govern international applications that have entered the national phase.
What is the term of a patent issued to an application filed through the PCT?
The term is twenty (20) years from the international filing date of the application.
What is the term of registration for a utility model in the Philippines?
A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application.
What are the PCT regulations that do not apply in the Philippines?
- Rule 26bis.3 (j), 49ter.1 (g), 49ter.2(h) Restoration of Right of Priority
- Rule 49.6 (f) Reinstatement of Rights after Failure to Perform the Acts referred to in Article 22 (national phase entry)