Title
Optional Registration Rules for IP Agents
Law
Ipo Office Order No. 129, S. 2003
Decision Date
Dec 17, 2003
The Patent and Trademark Agents Regulations enhance the capabilities of individuals practicing before the Intellectual Property Office of the Philippines, with specific requirements for registration and representation in inter partes cases.

Law Summary

Voluntary Registration and Practice

  • Registration under these rules is voluntary, not mandatory for appearing before the IPOPhil.
  • Only members of the Philippine Bar in good standing may appear as counsel in inter partes cases or IP violations before IPOPhil or Bureau of Legal Affairs.

Key Definitions

  • "Agent": Registered Trademark Agent, Patent Agent, or Patent & Trademark Agent.
  • "Bureau": Various IPOPhil bureaus including Legal Affairs, Patents, Trademarks, Documentation, and others.
  • "Director General": Head of IPOPhil.
  • "Examiner": Intellectual Property Rights Specialist in patents or trademarks bureaus.
  • "Fees": As per IPOPhil fee regulations.
  • "IP Code": Republic Act No. 8293, the Intellectual Property Code.
  • "IPOPhil" or "Office": Intellectual Property Office of the Philippines.
  • "Representative": Registered Resident Representative.

Registries Established

  • Trademark Agent Registry
  • Patent Agent Registry
  • Patent and Trademark Agent Registry
  • Resident Representative Registry
  • Registries include web-based and off-line listings showing names, permanent codes, and other relevant data.

Disqualifications from Registration

  • Employees and certain former employees of IPOPhil disqualified.
  • Relatives up to fourth degree of consanguinity or affinity of disqualified employees also barred.
  • Juridical entities involving such individuals are disqualified.

General Qualification for Registration

  • Applicants must be resident or domiciled in the Philippines.
  • Must complete at least 40 hours of IPO-organized or sponsored training within the two years prior.
  • For juridical entities, at least one senior officer must meet the training requirement.

Specific Qualification Requirements

  • Trademark Agent:
    • Natural persons: Members of the Philippine Bar in good standing.
    • Juridical entities: Must have at least one registered Trademark Agent as senior officer.
  • Patent Agent:
    • Natural persons:
      • Education: Bachelor's or postgraduate degrees in specified science or engineering fields.
      • Training: Minimum 12 months technical patent training including formality exam and patent search.
      • Experience: At least 6 continuous years handling patent processing, subdivided into formality examination, patent search, and substantive examination.
    • Juridical entities: Must have at least one registered Patent Agent as senior officer.
  • Patent and Trademark Agent:
    • Natural persons: Must fulfill qualifications of both Trademark and Patent Agents.
    • Juridical entities: Must have senior officers registered respectively as Trademark Agent, Patent Agent, or combined Agent.

Use of Permanent Codes

  • Registered Agents and Representatives receive permanent codes.
  • These codes must be indicated in all official communications and filings before IPOPhil.

Application and Re-enlistment Procedures

  • Applicants submit completed forms, relevant certificates of good standing, training completion certificates, and service records (if applicable) to the Documentation, Information and Technology Transfer Bureau (DITTB).
  • Re-enlistment occurs annually before January 20 with payment of fees and submission of updated documents.
  • Failure to re-enlist by deadline results in removal from the registry listings effective January 21.
  • Failure to re-enlist for three consecutive years requires re-registration complying with all initial requirements.
  • Flexibility allowed in moving between web-based and off-line listings upon payment of corresponding fees.

Role and Responsibilities of Key IPOPhil Bureaus

  • DITTB:
    • Maintains registries and permanent code assignments.
    • Organizes or sponsors seminars, training, workshops.
    • Coordinates resource persons from other bureaus.
    • Implements regulations and related programs.
  • Bureau of Patents (BOP), Bureau of Legal Affairs (BLA), Bureau of Trademarks (BOT):
    • Provide specialized training opportunities with a minimum of 32 hours annually.
    • Collaborate with DITTB for data sharing and implementation.
  • Management Information Systems and EDP Bureau (MIS-EDPB):
    • Develops automated systems.
    • Uploads web-based listings on IPOPhil website.

Transitional Provisions for Previously Registered Resident Representatives

  • Previously registered resident agents who complied with fees and requirements for 2004 automatically included in non-web-based listings.
  • Can apply for registration in other registries before March 31, 2004, without 40-hour training requirement.
  • After the deadline, training certificate requirement applies.

Repeals and Separability Clause

  • All inconsistent rules and orders are repealed.
  • Invalidity of any provision does not affect the remainder of the rules.

Administrative and Effectivity Provisions

  • Certified copies of the rules are filed with key government bodies (UP Law Center, Office of the President, Congress, Supreme Court, National Library).
  • IPOPhil website to post the order.
  • The regulations take effect on January 16, 2004, after publication in a newspaper of general circulation no later than December 31, 2003.

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