Philippine Patent Rules and Regulations 1998

Definitions established by the rules

Rule 100(a) defines “Bureau” as the Bureau of Patents of the Office.
Rule 100(b) defines “Director” as the Director of the Bureau of Patents.
Rule 100(c) defines “Director General” as the Head of the Intellectual Property Office.
Rule 100(d) defines “Examiner” as any officer or employee of the Bureau of Patents authorized to examine applications.
Rule 100(e) defines “IP Code” as Republic Act No. 8293.
Rule 100(f) defines “IPO Gazette” as the IPO’s own publication where matters required to be published under the IP Code are published.
Rule 100(g) defines “Office” as the Intellectual Property Office.
Rule 100(h) defines “Regulations” as this set of rules and regulations and Rules of Practice formulated by the Director of Patents and approved by the Director General.

Patentability: what is eligible

Rule 200 provides that any technical solution of a problem in any field of human activity is patentable if it is new, involves an inventive step, and is industrially applicable.
Rule 201 recognizes statutory classes of invention as:
- a useful machine;
- a product;
- a process or an improvement of any of the foregoing;
- a microorganism; and
- non-biological and microbiological processes.
Rule 208 provides that an invention is industrially applicable if it can be produced and used in any industry.

Patentability: what is excluded

Rule 202 excludes patent protection for:
- discoveries, scientific theories, and mathematical method;
- schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
- methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body, except that this does not apply to products and compositions for use in any of these methods;
- plant varieties or animal breeds or essentially biological process for the production of plants or animals, except that this does not apply to microorganisms and non-biological and microbiological processes;
- aesthetic creations; and
- anything contrary to public order or morality.

Novelty and prior art rules

Rule 203 provides that an invention is not considered new if it forms part of prior art.
Rule 204(a) provides that prior art consists of everything made available to the public by written or oral disclosure, by use, or any other way before the filing date or the priority date of the application.
Rule 204(a) further provides that prior use not present in the Philippines, even if widespread abroad, cannot form part of prior art if it is not disclosed in printed documents or in any tangible form.
Rule 204(b) provides that prior art also includes the whole contents of an application for a patent, utility model, or industrial design registration published under Section 44 of the IP Code, filed or effective in the Philippines, with an earlier filing or priority date.
Rule 204(b) states a priority-based carve-in:
- the earlier application that validly claimed an earlier filing date under Section 31 of the IP Code is prior art effective as of the earlier application’s filing date; and
- this applies provided the applicant or inventor identified in both applications are not one and the same.
Rule 204 provides a novelty-destroying effect for independently filed same-invention applications:
- where two or more applications are independently filed for the same invention and the later applications are filed before the first/earlier application is published, the whole contents of the first or earliest filed application published under Section 44 on or after the filing or priority date of the later filed application are novelty destroying with respect to the later application.

Exceptions to novelty prejudice and inventive step

Rule 205 provides that disclosure of information contained in the application during the twelve (12) months preceding the filing date or priority date does not prejudice novelty if made by:
- the inventor;
- a foreign patent office, the Bureau or the Office, where the information was contained in another application filed by the inventor and should not have been disclosed by the office; or where the information was contained in an application filed without the knowledge or consent of the inventor by a third party who obtained it directly or indirectly from the inventor;
- a third party who obtained it directly or indirectly from the inventor.
Rule 205 provides that for purposes of the “inventor” exception, “inventor” also means any person who, at the filing date of the application, had the right to the patent.
Rule 206(a) provides that an invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date.
Rule 206(b) limits inventive step assessment to prior art made available to the public before the filing date or priority date.
Rule 207 presumes the person skilled in the art as an ordinary practitioner with common general knowledge, knowledge of sufficiently related references, and access to normal routine work and experimentation.
Rule 207 requires presumed knowledge of all references sufficiently related to each other and to the pertinent art, and knowledge of arts reasonably pertinent to the particular problems involved.

Right to a patent and related ownership rules

Rule 300 provides that the right to a patent belongs to the inventor, his heirs, or assigns.
Rule 300 provides that when two (2) or more persons jointly make an invention, the right belongs to them jointly.
Rule 301 provides that the application may be filed by the actual inventor(s) or in the name of his heirs, legal representative, or assigns.
Rule 302 provides that for inventions created pursuant to a commission, the person who commissions the work owns the patent unless otherwise provided in the contract.
Rule 303 provides employment invention allocation:
- the employee owns the patent if the inventive activity is not part of the employee’s regular duties, even if the employee uses the time, facilities, and materials of the employer; and
- the employer owns the patent if the invention results from the performance of the employee’s regularly-assigned duties, unless there is an express or implied agreement to the contrary.
Rule 304 establishes the First to File rule:
- if two or more persons independently make the same invention, the right belongs to the person who filed first, or to the applicant with the earliest filing date or earliest priority date.
Rule 304 provides joint issuance when the competing applications have the same filing date or priority date.
Rule 305 provides a right of priority based on foreign application filings under treaty/convention/law afforded similar privileges to Filipino citizens, if:
- the local application expressly claims priority;
- it is filed within twelve (12) months from the earliest foreign application; and
- a certified copy with an English translation is filed within six (6) months from Philippine filing.
Rule 305 grants Director discretion to extend the six (6) month period by up to six (6) months upon showing of good cause or compliance with treaties the Philippines is or may become a member of.
Rule 306.1 allows multiple priorities even from different countries, computing time limits from the earliest priority date.
Rule 306.2 provides that priority covers only the elements included in the application(s) whose priority is claimed.
Rule 306.3 provides that priority may still be granted even if certain elements for which priority is claimed do not appear among the claims, provided the earlier application as a whole specifically discloses those elements.
Rule 306.4 provides a correction mechanism if an application could have claimed an earlier priority but did not:
- the applicant must submit a priority claim within two (2) months from the filing date; and
- submission after filing must include a declaration that the delay was unintentional.
Rule 307 defines the certified copy requirement as a true or faithful reproduction certified by the industrial property office that received it or has official custody, of the priority application(s).

Patent application requirements and contents

Rule 400 provides that a patent application must be in Filipino or English, filed in writing either directly to the Bureau or by post, and addressed to the Director.
Rule 400 requires the application to contain:
- a request for the grant of a patent;
- a description of the invention;
- drawing(s) necessary for understanding the invention;
- one or more claims; and
- an abstract.
Rule 401 requires payment of the filing fee, search fee, and publication fee (1st publication) within one (1) month after the filing date.
Rule 401 provides that non-payment results in forfeiture of the application.
Rule 402 requires the Bureau to mark the application documents with the date of receipt, and provides that after full payment the Bureau may issue an acknowledgment stating the application number, applicant’s name, and invention title.
Rule 403 requires use of the Office’s form and provides that a standard application form will be made available for reproduction at the applicants’ cost.
Rule 404 requires the request to include:
- petition for grant;
- applicant’s name and address;
- title;
- inventor’s name;
- if claiming convention priority: file number, country of origin, and the date of filing in the said country;
- resident agent/representative name and address (if any);
- signature of applicant or resident agent/representative.
Rule 405 requires disclosure sufficiently clear and complete for the invention to be carried out by a person skilled in the art.
Rule 406 defines the enabling disclosure test as whether the addressee could, by following directions, put the invention into practice.

Description, abstract, and prohibited matter

Rule 407(1) requires the description to:
- specify the technical field;
- indicate background art useful for understanding, search report, and examination, preferably citing documents;
- disclose the claimed invention in terms enabling understanding of the technical problem and its solution, including advantageous effects with reference to background art;
- briefly describe figures in drawings, if any;
- when drawings exist, provide brief descriptions of views and refer to parts using reference letters or numerals (preferably numerals);
- describe in detail at least one way of carrying out the invention using examples where appropriate and referring to drawings, if any; and
- explicitly indicate how the invention is capable of exploitation in industry when not obvious from description or nature of the invention.
Rule 407(2) provides that the description must follow the specified manner and order unless the nature of the invention requires a different manner or order for better understanding and more economic presentation.
Rule 408 provides special enabling disclosure rules for microbiological processes/products using microorganisms that cannot be sufficiently disclosed and are not available to the public:
- the microorganism culture must be deposited in a depositary institution before filing;
- the depositary institution and file number must be stated in the application, and if not yet available, must be submitted within two (2) months from request of the Examiner, with publication held pending submission; and
- the application must give relevant information available on the microorganism’s characteristics.
Rule 409 provides allowance conditions for novel strains of microorganisms in microbiological processes/products:
- deposit must be made in a recognized international depositary authority;
- proof of deposit with identification/deposit number must be submitted; and
- the depositary must be under contractual obligation to place culture in permanent collection and provide access to interested persons regarding matters relating to the published patent application.
Rule 410 requires a title to be short and specific, appearing as a heading on the first page, and prohibits fancy names.
Rule 411 requires an abstract in a separate sheet titled “Abstract”:
- it must be a concise summary preferably not more than one hundred fifty (150) words;
- it must explain the technical problem, gist of the solution, and principal use(s);
- it must serve only technical information; and
- each main technical feature mentioned and illustrated by a drawing must be followed by a reference sign between parentheses.
Rule 412(a) prohibits including in the application:
- statements or other matter contrary to public order or morality;
- disparaging statements about products/processes of any person other than the applicant, or about merits/validity of any other person’s applications or patents (mere comparison with prior art is not disparaging per se);
- statements or other matter obviously irrelevant or unnecessary.
Rule 412(b) provides that prohibited matter is omitted by the Bureau when publishing the application, indicating the place and number of words or drawings omitted.

Drawings and claim drafting requirements

Rule 413(a) requires drawings to be signed by the applicant or for the applicant’s name to be signed by attorney/agent, and mandates drawings showing every feature covered by the claims.
Rule 413(a) requires consecutively numbered figures.
Rule 413(b) requires special drawing treatment for improvements:
- drawings must exhibit the invention isolated from the old structure, and also show enough of the old structure to show relation.
Rule 414.1 provides that IPO Gazette printing uses photolithographic process and requires uniform standard suited to that process; departures cause delay in examination.
Rule 414.2 requires drawings on flexible, strong, white, smooth, non-shiny, durable paper; it prefers two ply or three ply Bristol board; and requires India ink (or equivalent) for pen drawings with perfectly black solid lines, disallowing white pigments to cover lines.
Rule 414.3 fixes sheet size at 29.7 cm x 21 cm (A4) with minimum margins: top 2.5 cm, left side 2.5 cm, right side 1.5 cm, bottom 1 cm, and leaves not less than 3 cm blank for heading and identifiers.
Rule 414.4 requires absolutely black lines and letters; lines must be clean, sharp, and solid; shading and sectional shading must follow the prescribed line methods; it disallows solid black for sectional/surface shading and requires proper assumptions on light direction.
Rule 414.5 requires use of the fewest lines consistent with clarity, sparing shading, indicates sectional view plane by broken/dotted line with matching numerals, and governs line thickness and shading direction.
Rule 414.6 requires scale large enough to show mechanism without crowding, allowing more than one sheet but limiting sheets to what is absolutely necessary.
Rule 414.7 governs reference letters/figures: they must be consistently used for the same parts across views and never reused for different parts; must be placed to avoid interference; must not be on shaded surfaces when avoidable; and must maintain distinct separation.
Rule 414.8 requires the applicant’s signature at the lower right-hand corner within imaginary margins.
Rule 414.9 requires the title of the drawing written with pencil on the back of the sheet, while Bureau headings are applied later.
Rule 414.10 requires consistent orientation so views read upright; allows side rotation for wide views, preserving reserved heading space and signature placement rules.
Rule 414.11 treats flow sheets and diagrams as drawings.
Rule 414.12 prescribes IPO Gazette figure selection rules:
- only one view per invention illustration is generally shown in the IPO Gazette;
- the chosen figure must explain the claimed invention/improvement and serve as one figure referred to in the specification;
- it must be especially open/distinct with very little or no shading and illustrate only the invention claimed to the exclusion of other details.
Rule 414.13 requires reference signs only where mentioned in the description and claims, and forbids mismatch between drawings and claims/descriptions.
Rule 414.14 provides rules for photographs:
- photographs are not normally proper drawings and are only acceptable in special categories;
- photolitographs of photographs are never acceptable;
- black-and-white photographs/photomicrographs may be accepted on sensitized paper for inventions incapable of accurate depiction in India ink drawings, limited to categories including crystalline structures, metallurgical microstructures, textile fabrics, grain structures, and ornamental effects, and subject to compliance with drawing rules.
Rule 414.15 prohibits an agent’s/attorney’s stamp, advertisements, or written addresses on the drawings.
Rule 414.16 provides conditional acceptance of non-conforming drawings for examination if they sufficiently illustrate the invention, but requires correction or a new drawing before the application will be allowed.
Rule 415(a) requires the specification to conclude with at least one claim that particularly points out and distinctly claims the part/improvement/combination regarded as the invention.
Rule 415(b) permits one or more independent claims in the same category (product, process, apparatus or use) where appropriate, requiring clarity and conciseness and support by the description.
Rule 415(c) governs dependent claims:
- dependent claims must refer back and further limit;
- multiple dependent claims may refer to other claims only in the alternative;
- multiple dependent claims cannot serve as the basis for other multiple dependent claims;
- fee calculation depends on the number of claims to which direct reference is made;
- original applications filed with, or amended to include, multiple dependent claims must pay prescribed additional fees;
- dependent claims include incorporated limitations by reference.
Rule 415(d) requires claims to conform to the invention disclosed in the description, use terms supported by antecedent basis in the description so meanings can be ascertained, and forbids relying on mere references to parts of description or drawings for technical features except where absolutely necessary.

Claim fees and procedural consequences

Rule 417(a) provides that any application comprising more than five (5) claims (independent and/or multiple/alternative dependent) at filing, or added claims after filing exceeding five (5) incurs payment of a claims fee.
Rule 417(a) requires claims fees to be paid within one (1) month after filing.
Rule 417(a) provides a grace period of one (1) month from notice pointing out failure to observe the time limit.
Rule 417(a) provides that if the claims fee is not paid within the time limit and grace period, the claim or claims concerned are deemed deleted.

Filing date, formality, and unity of invention

Rule 600 sets the patent application filing date as the date the Office received (in English or Filipino):
- an express or implicit indication that a Philippine patent is sought;
- information identifying the applicant; and
- a description of the invention and one (1) or more claims.
Rule 600.1 provides that when drawings are required, the application is not complete for filing date purposes if drawing(s) are not included.
Rule 600.2 allows the Bureau to accept a telefax copy for purposes of obtaining a filing date, subject to submission of the original copy within two (2) months from the filing date.
Rule 601 provides that the Office examines whether filing date requirements are satisfied; if not, the applicant must be given an opportunity to correct deficiencies.
Rule 601 provides that if deficiencies are not remedied within two (2) months from initial presentation, the application is considered withdrawn.
Rule 602(a) provides that if drawings were filed after the filing date, the Bureau deems drawings and related references deleted unless the applicant requests within two (2) months for a new filing date corresponding to the date the drawings were filed.
Rule 602(b) provides that if drawings were not filed, the Bureau requires filing within two (2) months, otherwise the application receives a new filing date and references to missing drawings are deemed deleted if not filed in due time.
Rule 602(c) provides that the new filing date is cited in all subsequent Bureau correspondences.
Rule 603 requires formality examination after filing date is accorded and required fee is paid within one (1) month; other requirements checked include request contents, priority documents, proof of authority if not inventor, deed of assignment, payment of all fees, signatures, inventor identification, and formal drawings.
Rule 604(a) provides unity of invention as one invention only or a group forming a single general inventive concept.
Rule 604(b) authorizes the Director to require restriction to a single invention if multiple independent inventions do not form a single general inventive concept.
Rule 604(b) provides the divisional timing rule:
- the divided-out invention later application is considered filed on the same day as the first application if filed within four (4) months after division becomes final, or within additional time not exceeding four (4) months as granted;
- the divisional application must not go beyond disclosure in the initial application.
Rule 604.1 provides that grant of a patent on an application that did not comply with unity of invention is not a ground to cancel the patent.

Division, reconsideration, and election procedures

Rule 605 provides that unity of invention exists only when technical relationship exists among inventions with one or more same or corresponding special technical features defining a contribution over prior art.
Rule 605(b) provides the link test is made without regard to whether inventions are claimed separately or as alternative within a single claim.
Rule 605(c) permits multiple independent claims in different categories forming a single general inventive concept when linked, such as between product and process, or between process and apparatus.
Rule 605(d) allows three specific claim combination examples across categories in one application:
- product plus process specially adapted for manufacture plus use;
- process plus apparatus/means specially designed for carrying out the process;
- product plus process specially adapted for manufacture plus apparatus/means.
Rule 606(a) allows reconsideration of division requirement and requires a provisional election of one invention for prosecution if applicant disagrees.
Rule 606(b) provides that if the repeated requirement becomes final, the principal Examiner acts at the same time on the claims of the elected invention.
Rule 607 provides that after final division requirement, the applicant may appeal from the requirement, while prosecution of elected invention claims may continue during appeal; appeal may be deferred until after final action or allowance on elected claims; and appeal is not allowed if reconsideration was not requested.
Rule 608 provides that if, after official action, the applicant presents claims directed to a divisible invention, the amended claims are rejected and the applicant is required to limit claims to the invention previously claimed.
Rule 609 provides election of species procedure:
- when an application contains a generic claim and species claims restricted separately, the Examiner—if generic claim is allowable after complete search—requires election of the species to which claims shall be restricted if no generic claim is finally held allowable;
- claims directed neither to species nor genus may be allowed;
- Markush-type claims enumerating alternative members/variations as species may be allowed, with fees computed depending on the number of members/variations enumerated.
Rule 610 provides that inventions not elected after division may be the subject of separate applications examined as original applications; if filed before the original application is patented or withdrawn and copies of signed/executed papers are used, the applicant’s signing/execution may be omitted, and the filing may consist of filing fee, copies of drawings, and proposed amendments canceling irrelevant claims or matters.
Rule 611 allows filing of a divisional application on a pending application before the parent application is withdrawn, abandoned, or patented, provided subject matter does not extend beyond the parent’s content; divisional receives the same filing date and benefits of any priority.

Publication, confidentiality, observations, and substantive examination

Rule 800(a) requires publication of the application in the IPO Gazette together with a search document citing prior art after expiration of eighteen (18) months from the filing date or priority date.
Rule 800(b) provides that publication does not occur if the application has been finally refused or withdrawn or deemed withdrawn before termination of technical preparation for publication.
Rule 800(c) requires the published application to include bibliographic data, any drawing(s) as filed, and the abstract.
Rule 800(d) requires the Office to communicate to the applicant the date and other information regarding publication and draw attention to the period within which request for substantive examination must be filed.
Rule 800(e) provides that after publication, any interested party may inspect the documents filed with the Office.
Rule 800(f) authorizes the Director General, subject to Secretary of Trade and Industry approval, to prohibit or restrict publication if prejudicial to national security and interests of the Republic of the Philippines.
Rule 801 requires confidentiality before publication: unpublished applications and related documents must not be made available for inspection without the applicant’s consent.
Rule 802 provides that after publication any person may present written observations concerning patentability; observations are communicated to the applicant for comment; the Office acknowledges and places the observations and comments in the application file.
Rule 803 provides that the application is deemed withdrawn unless, within six (6) months from the publication date, a written request for determination whether the application meets patentability requirements is filed and fees are paid on time.
Rule 803.1 provides that withdrawal of the request for examination is irrevocable and does not authorize refund of any fee.
Rule 804 provides rights conferred after publication:
- the applicant has all rights of a patentee under Section 76 of the IP Code against any person who, without authorization, exercised rights conferred under Section 71 in relation to the invention claimed in the published application, as if a patent had been granted;
- the acts may be enforced only if the person had actual knowledge or received written notice identifying the invention by its serial number;
- the action must be filed only after grant of a patent on the published application and within four (4) years from commission of acts complained of.

Classification, search, and search report contents

Rule 700 requires that once formal requirements are met, the application is classified and a search is conducted to determine prior art.
Rule 701 mandates use of the International Patent Classification.
Rule 701.1 provides that the Intellectual Property Search Report is based on the claims, description, and drawings if any.