Utility Model and Design Patent in the Philippines

UTILITY MODEL REGISTRATION

What can be protected as a utility model under Philippine law?

A utility model sought for protection must be any technical solution of a problem in any field of human activity that is new and is industrially applicable. It may be, or may relate to, a product, process or any improvement thereof.

Can applications for patent and utility model registration be filed at the same time for the same invention?

No. The filing of parallel applications for a patent and utility model registration is prohibited under Section 111 of the Intellectual Property Code of the Philippines.

Can an application for invention patent be converted to an application for utility model registration or vice versa?

Yes. At any time before the grant or refusal of an invention patent and upon payment of the prescribed fee, the invention application may be converted into an application for utility model registration, which shall be accorded the filing date of the initial application. Likewise, a patent applicant may, at any time before the grant or refusal of a utility model registration and upon payment of the prescribed fee, convert his utility model application into an invention patent application, which shall be accorded the filing date of the initial application. An application may be converted only once.

Is substantive examination required to determine novelty for purposes of utility model registration?

No. Utility model applications are not subject to substantive examination but are only subject to formality examination.

What are the Routes available in filing a utility model application in the Philippines?

There are two (2) Routes available in filing a utility model application in the Philippines, namely:

Patent Cooperation Treaty (PCT) Route; and
Direct Route.

How can one register a utility model?

Utility model registration is now done through the eUMfile System (https://onlineservices.ipophil.gov.ph/eUMFile/).

What is the eUMfile System?

eUMfile system is an online filing system developed by the IPOPHL for filing and payment of new Utility Model applications without the need to physically go to IPOPHL or its satellite offices.

Who can file through the eUMfile System?

Any individual or juridical entity may file a UM application, provided that non-residents appoint a Resident Agent or Patent Attorney.

Does one need to submit a paper copy of the application?

No. The electronic application containing all the information and the attachments supplied by the applicant or the applicant’s representative will be automatically uploaded into the IPOPHL Database. Should any physical documents need to be filed, the applicant will be notified.

What is the filing date of an application filed electronically?

So long as the requirements under the IP Code are complied with, the filing date is the date when the application was filed electronically.

Patent Cooperation Treaty (PCT) Route

What are the requirements for entering the national phase of a utility model 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?

No, payment of the national fee is not a requirement for purposes of getting a date of entry. However, payment of the national fee is necessary in order for the international application to proceed to the national phase for processing. Non-payment of the national fee within one (1) month from the date of entry will result in the withdrawal of the international 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?

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).

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. However, the 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.

Direct Route

How can an applicant obtain a filing date for a utility model application filed via Direct Route?

To obtain a filing date, an applicant must submit the following:

Request for Registration of a Utility Model Application; and
Description, drawings (if any), one or more claims, and abstract.

If the priority of an earlier filed application is claimed, the details of the claim, i.e., filing date, file number and country of origin must be submitted.

How can one claim a priority in the utility model application?

A utility model application filed by any person who has previously applied for the same utility model in another country which by treaty, convention, or law affords similar privileges to citizens of the Philippines, shall be considered as filed as of the date of filing the foreign application, provided, that:

The local application expressly claims priority;
The Philippine application is filed within twelve (12) months from the date when the earliest application was filed; and
A certified copy of the foreign application together with an English translation thereof, if not in English, is filed within six (6) months from the date of filing in the Philippines.

What must be included in the utility model application?

The utility model application must contain the following:

Request for Registration of a Utility Model Application;
Description of the utility model;
Drawings necessary for the understanding of the invention (if any);
One or more claims; and
Abstract.

In what language must the Philippine patent application be presented?

The Philippine patent application must be presented in either the Filipino or English language.

What is the term of registration of utility model in the Philippines?

A registered utility model shall expire at the end of the seventh year after the date of filing of the application without any possibility of renewal.

What are the optional attachments that may be included in the online filing?

The following documents may be attached to the online application:

Priority Document/s and the English translation if the document is not in English;
Other documents that the applicant may provide to support the application, including the Special Power of Attorney and Deed of Assignment; and
Declaration of the applicant’s small entity status as required in Sec. 5.3 of IPOPHL Memorandum Circular No. 16-012 Series of 2016. (Effective 01 Jan 2017)

What is the average processing time of a UM application?

The average processing time of a UM application is 10-12 months depending on the completeness of the requirements submitted. However, the UM application may be directly recommended for publication within two (2) months (“UM in 2 months”) from the date of filing, provided that all the formality requirements are complied with upon filing of the application, and subsequently processed for registration if no adverse information is filed after the expiration of the opposition period as stated in Rule 1701 of the Revised IRR.

INDUSTRIAL DESIGN REGISTRATION

What can be protected as industrial design under Philippines Law?

An industrial design sought for protection must be any composition of shapes, lines or colors, or a combination thereof, or any three-dimensional form, whether or not associated with shapes, lines or colors, which produce an aesthetic and ornamental effect in their tout ensemble or when taken as a whole; provided that such composition or form gives a special appearance to or can serve as a pattern for an industrial product or handicraft. Industrial products include articles of manufacture that belong to the useful or practical art, or any part including thereof, which can be made and sold separately.

Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals are not protected.

How does an applicant obtain a filing date for an application for industrial design registration?

To obtain a filing date, an applicant must submit the following:

The application shall contain the following:

(a) A completely filled-out request for registration as prescribed by the Bureau containing the name and address of the applicant or where the applicant is not the designer, a statement indicating the origin of the right to the industrial design, and an indication of the kind of article of manufacture to which the design shall be applied;

(b) A description containing the following:

(1) Title;

(2) Brief description of the different views of the drawings;

(3) Characteristic-feature description of the design; and

(4) Claim.

(c) Drawings of the different views of the design showing the complete appearance thereof including the signature of the applicant or representative. The Bureau may also accept photographs or other adequate graphic representation of the design provided the same comply with the requirements of these Regulations regarding drawings of industrial designs.

Except for the request for registration, the documents making up the application filed in writing by post or directly to the Bureau shall be in four (4) copies.

If the priority of an earlier filed application is claimed, the details of the priority application, i.e., filing date, filing number and country of origin must be submitted.

Which drawings are required in an application for industrial design registration?

(a) The drawing must be signed by the applicant or his name may be on the drawing by his attorney or agent. The drawing must show every feature of the invention covered by the claims. The drawing(s) may consist of several views showing every feature of the invention to serve as aid in the complete understanding of the invention and each figure must be consecutively numbered and briefly described

as to its matter of presentation.

(b) When the invention relates to an improvement of the prior art, the drawing must exhibit, in one or more views, the novel or inventive improvement in relation with the old structure presented in dotted lines. Every element of the invention as shown in the drawing shall be designated with legible reference numeral or letter and, if appropriate, shall be accompanied by a pointing line directed to such particular element being referred to. The designated reference numeral or letter for a particular element shall be in conformity with what has been described or referred to in the detailed description.

(c) Each element of each figure shall be in proper proportion to each of the other elements in the figure except where the use of a different proportion is indispensable for the clarity of the figure.

(d) If the same part of the invention appears in more than one view of the drawing, it must always be represented by the same character and the same character must never be used to designate different parts.

Is substantive examination required to determine novelty for purposes of industrial design registration?

No. The Intellectual Property Code does not require that the application for registration of an industrial design undergo substantive examination to determine novelty. The purpose of this rule is to facilitate the processing of applications for industrial design registration.

Is there a protection for lay-out designs of integrated circuits in the Philippines?

Yes. Lay-out designs of integrated circuits in the Philippines are protected under Philippine law. Layout-design means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.

Can an Applicant apply for a design application covering graphic symbols, logos, surface patterns, screen displays, icons, graphical user interfaces and get-ups?

Yes.

What are graphic symbols, logos, surface patterns, screen displays, icons, graphical user interfaces and get-ups?

A graphic symbol is a visually perceptive figure with a particular meaning used to transmit information independently of language.
A logo is a graphic mark, emblem, or symbol commonly used by commercial enterprises, organizations, and even individuals to aid and promote instant public recognition.
Surface patterns are printed elements on the subject of graphics product, designs, textiles, and fine arts.
A screen display is a surface area upon which text or graphics are temporarily made to appear for human viewing.
An icon is a pictogram displayed on a computer screen in order to help the user navigate a computer system or mobile device.
A graphical user interface (GUI) is a type of user interface that allows users to interact with electronic devices through graphical icons and visual indicators such as secondary notation, instead of text-based user interfaces, types command labels or text navigation.
A get-up is a style or arrangement for the preparation of something such as interior design arrangement of gambling tables, inside portion of the mobile store, among others.

What is the term of protection for industrial design and lay-out design of integrated circuits?

Industrial designs are protected for a period of five (5) years from the filing date of the application. The registration may be renewed for not more than two (2) consecutive periods of five (5) years each by paying the renewal fee. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. However, a grace period of six (6) months may be granted for the payment of the fees after such expiration, upon payment of a surcharge.

Lay-out designs of integrated circuits are protected for a period of ten (10) years, without renewal, to be counted from the date of commencement of the protection accorded to the layout-design. The protection of a layout-design shall commence:

On the date of the first commercial exploitation, anywhere in the world, of the layout-design by or with the consent of the right holder; Provided, That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation; or
On the filing date accorded the application for the registration of the layout-design, if the layout design has not been previously exploited commercially anywhere in the world. (Sec. 118.5, R.A. No. 8293, as amended).

Can an industrial design be protected by copyright?

Yes. Section 172(h) of the Intellectual Property Code provides that original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art are protected by copyright. Copyright protection is conferred at the moment of creation of the original work.

Is there novelty grace period for industrial design in the Philippines?

Yes. The Philippine Law provides a novelty grace period of six months for disclosure of information contained in the application if such disclosure was made by:

The inventor;
A patent office and the information was contained in:

Another application filed by the inventor and should not have been disclosed by the office, or
A third party which obtained the information directly or indirectly from the inventor.

What are the requirements in order to renew an industrial design registration?

In order to renew an industrial design registration, a signed Petition for renewal of the design registration together with the renewal fee is required to be submitted with the Intellectual Property Office of the Philippines within twelve (12) months preceding the expiration date of the registration.

Is there a grace period for renewal of an industrial design registration?

Yes, a grace period of six (6) months is granted for payment of the fees after the expiration of the design registration, upon payment of a surcharge.

Is there a secret design system in the Philippines?

There is no secret design system in the Philippines. What is provided in the Philippine rules on design applications is the deferment of publication of an industrial design application. The applicant may opt to file a request for deferred publication simultaneously with the filing of the application or at any time prior to its publication. The maximum period allowed for the deferred publication of an industrial design application is 30 months from the filing date or priority date of the application. In case the request for the deferred publication is made after the filing of the application, the allowable period for the deferred publication will be the remaining time from the allowed 30 months deferred publication period. The applicant may request for a specific time to publish the application provided it does not go beyond the allowed deferment period of 30 months.

Is there a one design application system to cover multiple designs in the Philippines?

Yes, multiple designs in one application are acceptable provided there is unity of design, i.e. the designs are all of the same subclass of the International Classification or of the same set or composition of the articles.

Is it possible to file a single design application for multiple designs applied to the same product? Are there any disadvantages of doing so?

Yes, provided that a number of articles presented should not be patentably distinct from each other, and they should be of substantially similar dominant design features that are embodied in a single design concept. They must relate to the same subclass of the International Classification or the same set or composition of articles.

Since multiple designs are covered by a single design, the imitation by a third party of one part of the designs will not constitute an infringement of the entire article of manufacture and this is the disadvantage of filing single design for multiple designs.

Is there a partial design system in the Philippines?

Yes, partial designs are acceptable. In the Philippines, partial design sought to be protected must include an environment/outward form to be shown in broken lines where the partial design is attached.

Is it possible to file a Divisional Design application in the Philippines?

Yes, it is possible to file Divisional Design application in the Philippines and is entitled to keep the filing date and priority of the main (parent) application. The term of a divisional application is five (5) years from the filing date of the parent application and could be renewed for not more than two (2) consecutive periods of five (5) years each. To maintain the design registration, a renewal fee must be paid on or within one year before the expiration of the current term.

Are photographs in an industrial design application accepted by the Intellectual Property Office of the Philippines?

Yes, the applicant may submit photographs in lieu of the required format of the drawings. The photographs however should be printed on an A4 size paper as prescribed in the Regulations with figure numbers shown in black ink on the paper proximate the corresponding photographs. Such photographs to be acceptable must be made on photographic paper having the following characteristics which are generally recognized in the photographic trade: paper with surface described as smooth, tint, white, or be photographs printed on a proper sized sensitized paper or in at least substance 20 bond paper.

Are computer-aided drawings (CAD) in an industrial design application accepted by the Intellectual Property Office of the Philippines?

Yes, graphic representation of industrial designs such as computer-aided drawings (CAD) in lieu of the India ink drawings may be accepted, provided that such should be made in conformity with these Regulations particularly with respect to the special requirements for drawing of an industrial design.

Is it permissible to use dotted lines in a drawing of an industrial design application?

The use of dotted lines is required only if the applicant files a partial design application for an article of manufacture.

Is a Statement of Novelty required in filing an industrial design application?

No, statement of novelty is not required by the Intellectual Property Office of the Philippines.

Is a written description of any part of the design required in filing an industrial design application?

No, written description of any part of the design is not required. Only brief description of the several views of the drawings must be submitted.

Can a third-party file an opposition against an industrial design application?

No, there is no opposition against an industrial design application. However, a third party may file adverse information against an industrial design application. Within thirty (30) days from the date of publication of the industrial design application, any person may present written adverse information concerning the registrability of the industrial design including matters pertaining to novelty and industrial applicability while citing relevant prior art.

The adverse information shall be in the form of a sworn statement stating the personal information and circumstance of the affiant and the grounds for objecting to the registration. The sworn statement shall be substantiated by evidence or proof and a registrability report of the application may be attached thereto. The Office shall not consider any submission that fails to comply with the foregoing requirements. Additionally, a conference at the Office may be requested by the interested party to obtain a better understanding of the application, the registration process, and the registration system in general. For this purpose, the party shall indicate three possible dates within thirty (30) days from request when the party is available for the conference. The Office shall acknowledge the receipt of the request for the conference and may request for additional information or clarifications on the adverse information filed. Within ten (10) days after the conference, parties may file a supplemental Adverse Information, in the form of a sworn statement, to include new information. All adverse information shall be communicated to the applicant who may comment on them within thirty (30) days from the mailing date of the communication. Copies of any adverse information filed and comments thereto by the applicant shall form part of the file wrapper in the subject application.

Only the adverse information as filed in accordance with these Regulations shall be taken into consideration in deciding the registrability of the industrial applications. The Office shall notify the parties who have submitted adverse information of the decision of the Office involving the industrial design application.