Republic Act No. 9502

[ REPUBLIC ACT NO.
9502 ]
AN ACT PROVIDING FOR CHEAPER AND QUALITY MEDICINES, AMENDING
FOR THE PURPOSE REPUBLIC ACT NO. 8293 OR THE INTELLECTUAL
PROPERTY CODE, REPUBLIC ACT NO. 6675 OR THE GENERICS ACT OF
1988, AND REPUBLIC ACT NO. 5921 OR THE PHARMACY LAW, AND FOR
OTHER PURPOSES
Be it enacted by the Senate and House of Representatives of the Philippines in
Congress assembled:

CHAPTER 1 GENERAL PROVISIONS
SECTION 1. Short Title. This Act shall be known as the "Universally Accessible
Cheaper and Quality Medicines Act of 2008".
SEC. 2. Declaration of Policy. It is the policy of the State to protect public
health and, when the public interest or circumstances of extreme urgency so
require, it shall adopt appropriate measures to promote and ensure access to
affordable quality drugs and medicines for all.
Pursuant to the attainment of this general policy, an effective competition policy
in the supply and demand of quality affordable drugs and medicines is
recognized by the State as a primary instrument. In the event that full competition
is not effective, the State recognizes as a reserve instrument the regulation of
prices of drugs and medicines, with clear accountability by the implementing
authority as mandated in this Act, as one of the means to also promote and
ensure access to quality affordable medicines.
SEC. 3. Construction in Favor of Protection of Public Health. All doubts in the
implementation and interpretation of the provisions of this Act, including its
implementing rules and regulations, shall be resolved in favor of protecting public
health.
SEC. 4. Definition of Terms. For purposes of this Act, the following terms are to
mean as follows:
(a) Compulsory License is a license issued by the Director General of the
Intellectual Property Office to exploit a patented invention without the permission
of the patent holder, either by manufacture or through parallel importation;
(b) Drug outlet refers to drugstores, pharmacies, and any other business
establishments which sell drugs and medicines;
(c) Drugs and medicines refers to any chemical compound or biological
substance, other than food, intended for use in the treatment, prevention or
diagnosis of disease in humans or animals, including but not limited to:
(1) any article recognized in the official United States Pharmacopoeia-National
Formulary (USP-NF), official Homeopathic Pharmacopoeia of the United States,
Philippine Pharmacopoeia, Philippine National Drug Formulary, British
Pharmacopoeia, European Pharmacopoeia, Japanese Pharmacopoeia, Indian
Pharmacopoeia, any national compendium or any supplement to any of them;
(2) any article intended for use in the diagnosis, cure, mitigation, treatment, or
prevention of disease in humans or animals;
(3) any article other than food intended to affect the structure or any function of
the human body or animals;
(4) any article intended for use as a component of any articles specified in
clauses (1), (2), and (3) not including devices or their components, parts, or
accessories; and
(5) herbal and/or traditional drugs which are articles of plant or animal origin used
in folk medicine which are:
(i) recognized in the Philippine National Drug Formulary;
(ii) intended for use in the treatment or cure or mitigation of disease symptoms,
injury or body defects in humans;
(iii) other than food, intended to affect the structure or any function of the human
body;
(iv) in finished or ready-to-use dosage form; and
(v) intended for use as a component of any of the articles specified in clauses (i),
(ii), (iii), and (iv);
(d) "Essential drugs list or national drug formulary" refers to a list of drugs
prepared and periodically updated by the Department of Health on the basis of
health conditions obtaining in the Philippines as well as on internationally
accepted criteria;
(e) "Importer" refers to any establishment that imports raw materials, active
ingredients and finished products for its own use or for distribution to other drug
establishments or outlets;
(f) "Manufacture" includes any process or part of a process for making, altering,
finishing, packing, labeling, breaking or otherwise treating or adapting any drug
with a view to its sale and distribution, but does not include the compounding or
dispensing of any drug in the ordinary course of retail business;
(g) "Manufacturer" refers to any establishment engaged in the operations
involved in the production of a drug with the end view of storage, distribution, or
sale of the product;
(h) "Multisource pharmaceutical products" refers to pharmaceutically equivalent
or pharmaceutically alternative products that may or may not be therapeutically
equivalent. Multisource pharmaceutical products that are therapeutically
equivalent are interchangeable;
(i) "Retailer" refers to a licensed establishment carrying on the retail business of
sale of drugs and medicines to customers;
(j) "Trader" refers to any licensed establishment which is a registered owner of a
drug product that procures the materials and packaging components, and
provides the production monographs, quality control standards and procedures,
but subcontracts the manufacture of such products to a licensed manufacturer;
(k) "TRIPS Agreement" or Agreement on Trade-Related Aspects of Intellectual
Property Rights refers to the international agreement administered by the WTO
that sets down minimum standards for many forms of intellectual property
regulation; and
(l) "Wholesaler' refers to a licensed establishment or drug outlet who acts as
merchant, broker or agent, who sells or distributes for resale or wholesale drugs
and medicines.
CHAPTER 2
AMENDMENTS TO REPUBLIC ACT NO. 8293, OTHERWISE KNOWN AS THE
INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES
SEC. 5. Section 22 of Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, is hereby amended to read as follows:
"SEC. 22. Non-Patentable Inventions. The following shall be excluded from
patent protection:
"22.1. Discoveries, scientific theories and mathematical methods, and in the case
of drugs and medicines, the mere discovery of a new form or new property of a
known substance which does not result in the enhancement of the known
efficacy of that substance, or the mere discovery of any new property or new use
for a known substance, or the mere use of a known process unless such known
process results in a new product that employs at least one new reactant.
"For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations,
and other derivatives of a known substance shall be considered to be the same
substance, unless they differ significantly in properties with regard to efficacy;
"22.2. x x x;
"22.3. x x x;
"22.4. x x x;
"22.5. x x x; and
"22.6. x x x;
"SEC. 26. Inventive Step. 26.1. 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 of the application claiming the invention. (n)
"26.2. In the case of drugs and medicines, there is no inventive step if the
invention results from the mere discovery of a new form or new property of a
known substance which does not result in the enhancement of the known
efficacy of that substance, or the mere discovery of any new property or new use
for a known substance, or the mere use of a known process unless such known
process results in a new product that employs at least one new reactant."
"SEC. 72. Limitations of Patent Rights. The owner of a patent has no right to
prevent third parties from performing, without his authorization, the acts referred
to in Section 71 hereof in the following circumstances:
"72.1. Using a patented product which has been put on the market in the
Philippines by the owner of the product, or with his express consent, insofar as
such use is performed after that product has been so put on the said market:
Provided, That, with regard to drugs and medicines, the limitation on patent rights
shall apply after a drug or medicine has been introduced in the Philippines or
anywhere else in the world by the patent owner, or by any party authorized to
use the invention: Provided, further, That the right to import the drugs and
medicines contemplated in this section shall be available to any government
agency or any private third party;
"72.2. Where the act is done privately and on a non-commercial scale or for a
non-commercial purpose: Provided, That it does not significantly prejudice the
economic interests of the owner of the patent;
"72.3. Where the act consists of making or using exclusively for experimental use
of the invention for scientific purposes or educational purposes and such other
activities directly related to such scientific or educational experimental use;
"72.4. In the case of drugs and medicines, where the act includes testing, using,
making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information
and issuance of approvals by government regulatory agencies required under
any law of the Philippines or of another country that regulates the manufacture,
construction, use or sale of any product: Provided, That, in order to protect the
data submitted by the original patent holder from unfair commercial use provided
in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the Intellectual Property Office, in
consultation with the appropriate government agencies, shall issue the
appropriate rules and regulations necessary therein not later than one hundred
twenty (120) days after the enactment of this law;
"72.5. Where the act consists of the preparation for individual cases, in a
pharmacy or by a medical professional, of a medicine in accordance with a
medical shall apply after a drug or medicine has been introduced in the
Philippines or anywhere else in the world by the patent owner, or by any party
authorized to use the invention: Provided, further, That the right to import the
drugs and medicines contemplated in this section shall be available to any
government agency or any private third party;
"72.2. Where the act is done privately and on a non-commercial scale or for a
non-commercial purpose: Provided, That it does not significantly prejudice the
economic interests of the owner of the patent;
"72.3. Where the act consists of making or using exclusively for experimental use
of the invention for scientific purposes or educational purposes and such other
activities directly related to such scientific or educational experimental use;
"72.4. In the case of drugs and medicines, where the act includes testing, using,
making or selling the invention including any data related thereto, solely for
purposes reasonably related to the development and submission of information
and issuance of approvals by government regulatory agencies required under
any law of the Philippines or of another country that regulates the manufacture,
construction, use or sale of any product: Provided, That, in order to protect the
data submitted by the original patent holder from unfair commercial use provided
in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the Intellectual Property Office, in
consultation with the appropriate government agencies, shall issue the
appropriate rules and regulations necessary therein not later than one hundred
twenty (120) days after the enactment of this law;
"72.5. Where the act consists of the preparation for individual cases, in a
pharmacy or by a medical professional, of a medicine in accordance with a
medical
"74.3. All cases arising from the implementation of this provision shall be
cognizable by courts with appropriate jurisdiction provided by law. "No court,
except the Supreme Court of the Philippines, shall issue any temporary
restraining order or preliminary injunction or such other provisional remedies that
will prevent its immediate execution.
"74.4. The Intellectual Property Office (IPO), in consultation with the appropriate
government agencies, shall issue the appropriate implementing rules and
regulations for the use or exploitation of patented inventions as contemplated in
this section within one hundred twenty (120) days after the effectivity of this law."
SEC. 9. Section 76.1 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, is hereby amended to read as
follows:
"SEC. 76. Civil Action for Infringement. 76.1. The making, using, offering for
sale, selling, or importing a patented product or a product obtained directly or
indirectly from a patented process, or the use of a patented process without the
authorization of the patentee constitutes patent infringement: Provided, That, this
shall not apply to instances covered by Sections 72.1 and 72.4 (Limitations of
Patent Rights); Section 74 (Use of Invention by Government); Section 93.6
(Compulsory Licensing); and Section 93-A (Procedures on Issuance of a Special
Compulsory License under the TRIPS Agreement) of this Code.
"76.2. x x x;
"76.3. x x x;
"76.4. x x x;
"76.5. x x x; and
"76.6. x x x;
SEC. 10. Section 93 of Republic Act No. 8293, otherwise known as the
follows:
SEC. 93. Grounds for Compulsory Licensing. The Director General of the
Intellectual Property Office may grant a license to exploit a patented invention,
even without the agreement of the patent owner, in favor of any person who has
shown his capability to exploit the invention, under any of the following
circumstances:
93.1. National emergency or other circumstances of extreme urgency;
93.2. Where the public interest, in particular, national security, nutrition, health or
the development of other vital sectors of the national economy as determined by
the appropriate agency of the Government, so requires; or
93.3. Where a judicial or administrative body has determined that the manner of
exploitation by the owner of the patent or his licensee is anti-competitive; or
93.4. In case of public non-commercial use of the patent by the patentee,
without satisfactory reason;
93.5. If the patented invention is not being worked in the Philippines on a
commercial scale, although capable of being worked, without satisfactory reason:
Provided, That the importation of the patented article shall constitute working or
using the patent; (Secs. 34, 34-A, 34-B, R.A. No. 165a) and
93.6. Where the demand for patented drugs and medicines is not being met to
an adequate extent and on reasonable terms, as determined by the Secretary of
the Department of Health.
SEC. 11. A new Section 93-A is hereby inserted after Section 93 of Republic Act
No. 8293, otherwise known as the Intellectual Property Code of the Philippines,
to read as follows:
SEC. 93-A. Procedures on Issuance of a Special Compulsory License under the
TRIPS Agreement. 93-A.1. The Director General of the Intellectual Property
Office, upon the written recommendation of the Secretary of the Department of
Health, shall, upon filing of a petition, grant a special compulsory license for the
importation of patented drugs and medicines. The special compulsory license for
the importation contemplated under this provision shall be an additional special
alternative procedure to ensure access to quality affordable medicines and shall
be primarily for domestic consumption: Provided, That adequate remuneration
shall be paid to the patent owner either by the exporting or importing country.
The compulsory license shall also contain a provision directing the grantee the
license to exercise reasonable measures to prevent the re-exportation of the
products imported under this provision.
The grant of a special compulsory license under this provision shall be an
exception to Sections 100.4 and 100.6 of Republic Act No. 8293 and shall be
immediately executory.
No court, except the Supreme Court of the Philippines, shall issue any
temporary restraining order or preliminary injunction or such other provisional
remedies that will prevent the grant of the special compulsory license.
93-A.2. A compulsory license shall also be available for the manufacture and
export of drugs and medicines to any country having insufficient or no
manufacturing capacity in the pharmaceutical sector to address public health
problems: Provided, That, a compulsory license has been granted by such
country or such country has, by notification or otherwise, allowed importation into
its jurisdiction of the patented drugs and medicines from the Philippines in
compliance with the TRIPS Agreement.
93-A.3. The right to grant a special compulsory license under this section shall
not limit or prejudice the rights, obligations and flexibilities provided under the
TRIPS Agreement and under Philippine laws, particularly Section 72.1 and
Section 74 of the Intellectual Property Code, as amended under this Act. It is also
without prejudice to the extent to which drugs and medicines produced under a
compulsory license can be exported as allowed in the TRIPS Agreement and
applicable laws.
follows:
SEC. 94. Period for Filing a Petition for a Compulsory License. 94.1. A
compulsory license may not be applied for on the ground stated in Subsection
93.5 before the expiration of a period of four (4) years from the date of filing of
the application or three (3) years from the date of the patent whichever period
expires last.
94.2. A compulsory license which is applied for on any of the grounds stated in
Subsections 93.2, 93.3, 93.4, and 93.6 and Section 97 may be applied for at any
time after the grant of the patent. (Sec. 34(1), R. A. No. 165)
follows:
SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms.
95.1. The license will only be granted after the petitioner has made efforts to
obtain authorization from the patent owner on reasonable commercial terms and
conditions but such efforts have not been successful within a reasonable period
of time.
95.2. The requirement under Subsection 95.1 shall not apply in any of the
following cases:
(a) Where the petition for compulsory license seeks to remedy a practice
determined after judicial or administrative process to be anti-competitive; (b) In
situations of national emergency or other circumstances of extreme
urgency; (c) In cases of public non-commercial use; and (d) In cases where
the demand for the patented drugs and medicines in the Philippines is not being
met to an adequate extent and on reasonable terms, as determined by the
Secretary of the Department of Health.
95.3. In situations of national emergency or other circumstances of extreme
urgency, the right holder shall be notified as soon as reasonably practicable.
95.4. In the case of public non-commercial use, where the government or
contractor, without making a patent search, knows or has demonstrable grounds
to know that a valid patent is or will be used by or for the government, the right
holder shall be informed promptly. (n)
95.5. Where the demand for the patented drugs and medicines in the Philippines
is not being met to an adequate extent and on reasonable terms, as determined
by the Secretary of the Department of Health, the right holder shall be informed
promptly.
follows:
SEC. 147. Rights Conferred. 147.1. Except in cases of importation of drugs
and medicines allowed under Section 72.1 of this Act and of off-patent drugs and
medicines, the owner of a registered mark shall have the exclusive right to
prevent all third parties not having the owners consent from using in the course
of trade identical or similar signs or containers for goods or services which are
identical or similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be
presumed.
There shall be no infringement of trademarks or tradenames of imported or sold
patented drugs and medicines allowed under Section 72.1 of this Act, as well as
imported or sold off-patent drugs and medicines: Provided, That, said drugs and
medicines bear the registered marks that have not been tampered, unlawfully
modified, or infringed upon, under Section 155 of this Code.
147.2. x x x.
follows:
SEC. 159. Limitations to Actions for Infringement. Notwithstanding any other
provision of this Act, the remedies given to the owner of a right infringed under
this Act shall be limited as follows:
159.1. x x x;
159.2 x x x;
159.3 x x x; and
159.4 There shall be no infringement of trademarks or tradenames of imported
or sold drugs and medicines allowed under Section 72.1 of this Act, as well as
imported or sold off-patent drugs and medicines: Provided, That said drugs and
medicines bear the registered marks that have not been tampered, unlawfully
modified, or infringed upon as defined under Section 155 of this Code.
SEC. 16. Implementing Rules and Regulations on Amendments to Republic Act
No. 8293, otherwise known as the Intellectual Property Code of the Philippines.
Unless otherwise provided herein, the Intellectual Property Office, in coordination
with the Department of Health and the Bureau of Food and Drugs, shall issue
and promulgate, within one hundred twenty (120) days after the enactment of this
Act, the implementing rules and regulations to effectively implement the
provisions of this Act that relate to Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines.

CHAPTER 3 DRUGS AND MEDICINES PRICE REGULATION
SEC. 17. Drugs and Medicines Price Regulation Authority of the President of the
Philippines. The President of the Philippines, upon recommendation of the
Secretary of the Department of Health, shall have the power to impose maximum
retail prices over any or all drugs and medicines as enumerated in Section 23.
The power to impose maximum retail prices over drugs and medicines shall be
exercised within such period of time as the situation may warrant as determined
by the President of the Philippines. No court, except the Supreme Court of the
Philippines, shall issue any temporary restraining order or preliminary injunction
or preliminary mandatory injunction that will prevent the immediate execution of
the exercise of this power of the President of the Philippines.
SEC. 18. Drugs and Medicines Price Monitoring and Regulation Authority of the
Secretary of the Department of Health. To implement the policies of this Act
under this Chapter, the Secretary of the Department of Health is hereby
authorized to establish and initiate a price monitoring and regulation system for
drugs and medicines within one hundred twenty (120) days after the enactment
of this Act. The Secretary of the Department of Health may also create such
bodies, consultative councils, from which advice may be sought in the
implementation of a drug or medicine price monitoring and regulation policy.
Such bodies or consultative councils created by the Secretary of the Department
of Health shall coordinate its efforts together with other government agencies.
SEC. 19. Functions and Responsibilities of the Secretary of the Department of
Health. Pursuant to Section 18 of this Act, the Secretary of the Department of
Health shall have the following powers:
(A) Power to Recommend the Maximum Retail Price of Drugs and Medicines
Subject to Price Regulation
(1) Upon application or motu proprio when the public interest so requires, the
Secretary of the Department of Health shall have the power to determine the
maximum retail prices of drugs and medicines which shall be recommended to
the President of the Philippines for approval. In order that affordable prices of
drugs and medicines from the different manufacturers, importers, traders,
distributors, wholesalers, or retailers shall be made available to the public, the
Secretary of the Department of Health, as he/she may deem fit and after a proper
determination, shall have such approved maximum retail prices of drugs and
medicines published;
(2) In recommending the maximum retail price, the Secretary of the Department
of Health shall consider the following factors:
(a) Retail prices of drugs and medicines that are subject to regulation in the
Philippines and in other countries;
(b) The supply available in the market;
(c) The cost to the manufacturer, importer, trader, distributor, wholesaler or
retailer of the following, but not limited to:
(i) The exchange rate of the peso to the foreign currency with which the drug or
any of its component, ingredient or raw material was paid for;
(ii) Any change in the amortization cost of machinery brought about by any
change in the exchange rate of the peso to the foreign currency with which the
machinery was bought through credit facilities;
(iii) Any change in the cost of labor brought about by a change in minimum wage;
or
(iv) Any change in the cost of transporting or distributing the medicines to the
area of destination;
(d) Such other factors or conditions which will aid in arriving at a just and
reasonable maximum price; and
(3) No retailer shall sell drugs and medicines at a retail price exceeding the
maximum retail price approved by the President of the Philippines as provided in
Section 17 of this Act: Provided, That, the Secretary of the Department of Health
shall immediately undertake a study on the prevailing prices of drugs and
medicines subject to price regulation and provide an initial list of drugs and
medicines, which maximum retail prices he/she shall recommend to the
President of the Philippines.
(B) Power to Include Other Drugs and Medicines in the List Subject to Price
Regulation Upon application or motu proprio when the public interest so
requires and after proper determination, the Secretary of the Department of
Health may order the inclusion of drugs and medicines to the list subject of price
regulation under Section 23 hereof.
(C) Power to Implement Cost-Containment and Other Measures
(1) The Secretary of the Department of Health shall have the power to implement
the fair price of drugs and medicines for purposes of public health insurance and
government procurement based on the order of the President of the Philippines
imposing maximum retail prices; and
(2) The Secretary of the Department of Health shall have the power to implement
any other measures that the government may avail of to effectively reduce the
cost of drugs and medicines that shall include, but not limited to, competitive
bidding, price volume negotiations, and other appropriate mechanisms that
influence supply, demand and expenditures on drugs and medicines.
(D) Power to Impose Administrative Fines and Penalties After due notice and
hearing, the Secretary of the Department of Health shall have the power to
impose administrative fines against any person, manufacturer, importer, trader,
distributor, wholesaler, retailer, or any other entity, in such amount as it may
deem reasonable, which in no case shall be less than Fifty thousand pesos
(Php50,000.00) nor more than Five million pesos (Php5,000,000.00) for
violations of the maximum retail price approved by the President of the
Philippines pursuant to the provisions of this Chapter.
(E) Power to Deputize Government Entities The Secretary of the Department of
Health shall have the power to call upon and deputize any official, agent,
employee, agency, or instrumentality of the national and local government for
any assistance that it may deem necessary to carry out the purposes of this
Chapter.
(F) Other Powers Necessary to Implement Provisions of this Chapter The
Secretary of the Department of Health shall exercise such powers and functions
as may be necessary to implement and enforce the provisions of this Chapter of
this Act, including the power to require the production and submission of records,
documents, books of account, bills of lading, input documents, records of
purchase and sale, financial statements, and such other documents, information
and papers as may be necessary to enable the Secretary of the Department of
Health to carry out its functions, duties, and responsibilities. Accordingly, within
thirty (30) days from the effectivity of this Act and every December 31st of every
year thereafter, every manufacturer, importer, trader, distributor, wholesaler, and
retailer of a drug and medicine whether included in or excluded from the list of
drugs and medicines that are subject to price regulation shall furnish the
Secretary of the Department of Health a list, containing on the minimum the
corresponding prices and inventory, of all drugs and medicines it manufactures,
imports, trades, distributes, wholesales, or retails, data pertaining to the factors
enumerated under Section 19(A)(2), and any and all necessary information that
the Secretary of the Department of Health may require.
SEC. 20. Procedures for Inquiries, Studies, Hearings, Investigations, and
Proceedings. All inquiries, studies, hearings, investigations and proceedings
conducted by the Secretary of the Department of Health shall be governed by the
rules adopted by him/her, and in the conduct thereof shall not be bound by the
technical rules of evidence.
SEC. 21. Effectivity of the Decisions or Orders of the Secretary of the
Department of Health. All decisions or orders of the Secretary of the
Department of Health pursuant to Section 19 Paragraphs (A) Power to
Recommend the Maximum Retail Price of Drugs and Medicines Subject to Price
Regulation, (B) Power to Include Other Drugs and Medicines in the List Subject
to Price Regulation, (C) Power to Implement Cost-Containment and Other
Measures, (D) Power to Impose Administrative Fines and Penalties, (E) Power to
Deputize Government Entities, or (F) Other Powers Necessary to Implement
Provisions of this Chapter, shall be immediately operative.
SEC. 22. Review of the Decisions or Orders of the Secretary of the Department
of Health. A party adversely affected by a decision, order or ruling of the
Secretary of the Department of Health may, within thirty (30) days from notice of
such decision, order or ruling, or in case of a denial of a motion for
reconsideration thereof, within fifteen (15) days after notice of such denial, file an
appeal with the Court of Appeals, which shall have jurisdiction to review such
decision, order or ruling.
The filing of a petition for a writ of certiorari or other special remedies in the
Supreme Court shall in no case supersede or stay any decision, order or ruling of
the Secretary of the Department of Health, unless the Supreme Court shall so
direct, and the petitioner may be required by the Supreme Court to give bond in
such form and of such amount as may be deemed proper.
SEC. 23. List of Drugs and Medicines that are Subject to Price Regulation. The
list of drugs and medicines that are subject to price regulation shall include, inter
alia:
(a) All drugs and medicines indicated for treatment of chronic illnesses and life
threatening conditions, such as, but not limited to, endocrine disorders, e.g.,
diabetes mellitus; gastrointestinal disorders, e.g., peptic ulcer; urologic disorders,
e.g., benign prostatic hyperplasia (BPH); cardiovascular diseases, e.g.,
hypertension; pulmonary diseases, e.g., pulmonary tuberculosis (PTB), asthma;
auto-immune diseases, e.g., systemic lupus erythematosus (SLE); skin diseases,
e.g., psoriasis; neuro-psychiatric disorders; other infectious diseases, e.g.,
human immunodeficiency virus-acquired immune deficiency syndrome (HIV-
AIDS); and other conditions such as organ transplants and neoplasm;
(b) Drugs and medicines indicated for prevention of diseases, e.g., vaccines,
immunoglobulin, anti-sera;
(c) Drugs and medicines indicated for prevention of pregnancy, e.g., oral
contraceptives;
(d) Anesthetic agents;
(e) Intravenous fluids;
(f) Drugs and medicines that are included in the Philippine National Drug
Formulary (PNDF) Essential Drug List; and
(g) All other drugs and medicines which, from time to time, the Secretary of the
Department of Health determines to be in need of price regulation.
SEC. 24. Illegal Acts of Price Manipulation. Without prejudice to the provisions
of existing laws on goods not covered by this Act, it shall be unlawful for any
manufacturer, importer, trader, distributor, wholesaler, retailer, or any person
engaged in any method of disposition of drugs and medicines to engage in acts
of price manipulation such as hoarding, profiteering, or illegal combination or
forming cartel, as defined under Section 5 of Republic Act No. 7581, otherwise
known as the Price Act, and all other acts committed in restraint of trade.
SEC. 25. Penalty for Illegal Acts of Price Manipulation. Any person or entity
who commits any act of illegal price manipulation of any drug and medicine
subject to price regulation shall suffer the penalty of imprisonment for a period of
not less than five (5) years nor more than fifteen (15) years or shall be imposed a
fine of not less than One hundred thousand pesos (Php100,000.00) nor more
than Ten million pesos (Php10,000,000.00), at the discretion of the court. The
court may also order the suspension or revocation of its license to operate (LTO),
professional or business license.
Whenever any act of illegal price manipulation of any drug and medicine subject
to price regulation is committed by a juridical person, its officials or employees, or
in case of a foreign corporation or association, its agent or representative in the
Philippines who are responsible for the violation, shall be held liable therefor.
SEC. 26. Display of Maximum Retail Price Fixed and Approved by Order of the
President of the Philippines for Drugs and Medicines Subject to Price Regulation.

(a) Within a reasonable period as may be determined by the Secretary of the
Department of Health, and: Provided, That it conforms to existing drug product
labeling requirements, every manufacturer, importer, distributor, wholesaler,
trader, or retailer of a drug and medicine intended for sale shall display the retail
price which shall not exceed the maximum retail price approved by order of the
President of the Philippines. The maximum retail price shall be printed on the
label of the immediate container of the drug and medicine and the minimum pack
thereof offered for retail sale with the words RETAIL PRICE NOT TO EXCEED
preceding it, and UNDER DRUG PRICE REGULATION on a red strip.
(b) Within a period as may be determined by the Secretary of the Department of
Health from time to time, every manufacturer, importer, or trader shall issue a
price list to wholesalers, distributors, retailers and to the Secretary of the
Department of Health, indicating the retail price, the maximum retail price, and
such other information as may be required by the Secretary of the Department of
Health.
SEC. 27. Reports from Local Government Units (LGUs) and the Department of
Trade and Industry (DTI). All local government units and the Department of
Trade and Industry shall help ensure the implementation of pricing policies
provided under this Chapter by submitting quarterly price monitoring reports to
the Secretary of the Department of Health of drugs and medicines identified by
the latter, and any and all necessary information that the Secretary of the
Department of Health may require.
SEC. 28. Role of the Department of Health (DOH) and the Department of Trade
and Industry (DTI). The Department of Health and the Department of Trade
and Industry shall conduct independent periodic surveys and studies of the
selling prices of all drugs and medicines referred to in Section 23 of this Act all
over the country as well as their share or effect on the family income of the
different economic groups in the country for purposes of serving as data base for
government efforts to promote access to more affordable medicines, as well as
evaluating the effectivity of the measures undertaken to promote access to more
affordable medicines. The DTI shall always officially provide the Secretary of the
Department of Health copies of these independent reports.
SEC. 30. Reportorial and Public Notice Requirements.
(a) The Secretary of the Department of Health shall submit a bi-annual
Monitoring Report of its performance on the implementation of this Act to the
Office of the President. This report submitted to the Office of the President shall
be published in a newspaper of general circulation within thirty (30) days upon
submission.
(b) It shall also submit annually a report of its performance on the implementation
of this Act to both Houses of Congress, within fifteen (15) days from the opening
of the regular session. It shall also regularly report and comply immediately to
any order of the Congressional Oversight Committee.
(c) The order of the President of the Philippines imposing maximum retail prices
on drugs and medicines, including the conditions implementing it, shall be
published within fifteen (15) days from issuance in at least two (2) newspapers of
general circulation. All wholesalers, manufacturers, distributors, importers, or
traders shall have a copy of the order of the President of the Philippines and
provide the same to their clients and customers for every transaction.
(d) All drug outlets are required to post in a conspicuous area within its premises
a clear copy of the order of the President of the Philippines which shall be easily
accessible to the consuming public and updated regularly as the situation may
warrant.

CHAPTER 4 STRENGTHENING OF THE BUREAU OF FOOD AND DRUGS
SEC. 31. Strengthening of the Bureau of Food and Drugs (BFAD).
(a) For a more effective and expeditious implementation of this Act, the Director
or head of the Bureau of Food and Drugs shall be authorized to retain, without
need of a separate approval from any government agency, and subject only to
existing accounting and auditing rules and regulations, all the fees, fines,
royalties and other charges, collected by the Bureau of Food and Drugs under
this Act and other laws that it is mandated to administer based on the
immediately prior year of operations, for use in its operations, like upgrading of its
facilities, equipment outlay, human resource development and expansion, and
the acquisition of the appropriate office space, among others, to improve the
delivery of its services to the public. This amount, which shall be in addition to the
annual budget of the Bureau of Food and Drugs, shall be deposited and
maintained in a separate account or fund, which may be used or disbursed
directly by the Director or head.
(b) After five (5) years from the coming into force of this Act, the Director or head
of the Bureau of Food and Drugs shall, subject to the approval of the Secretary of
the Department of Health, determine if the fees and charges, mentioned in
Subsection (a) hereof, are sufficient to meet its budgetary requirements. If so, it
shall retain all the fees and charges it shall collect under the same conditions
indicated in said Subsection (a) but shall forthwith, cease to receive any funds
from the annual budget of the National Government; if not, the provisions of
Subsection (a) shall continue to apply until such time when the Director or head
of the Bureau of Food and Drugs, subject to the approval of the Secretary of the
Department of Health, certifies that the abovestated fees and charges the Bureau
of Food and Drugs shall collect are enough to fund its operations.
(c) The Bureau of Food and Drugs shall submit a yearly performance report to
the Quality Affordable Medicines Oversight Committee, as provided in Section 45
of this Act. The report shall itemize the use of such retained funds in the past
year up to the present and the budgeted use of the same in the succeeding
periods.
SEC. 32. Quality Assurance of Drugs. The Bureau of Food and Drugs shall
take the necessary steps to ensure that all drugs authorized for marketing in the
country shall conform to international standards for the content, purity and quality
of pharmaceutical products as established in the International Pharmacopoeia:
Provided, That imported products in finished dosage forms, should be certified
under the World Health Organization (WHO) certification scheme on the quality
of pharmaceutical products moving in international commerce: Provided, further,
That the registration for multisource pharmaceutical products should conform to
the WHO guidelines on registration requirements to establish interchangeability.

CHAPTER 5 NON-DISCRIMINATORY CLAUSE
SEC. 33. Non-Discriminatory Clause. It shall be unlawful for any retail drug
outlet to refuse to carry either by sale or by consignment, or offer for sale drugs
and medicines brought into the country, as allowed under Section 7 of this Act
which amends Section 72.1 of the Intellectual Property Code of the Philippines or
Republic Act No. 8293, by the government or authorized third party which have
been previously approved for distribution or sale by the Bureau of Food and
Drugs. For this purpose, the said products shall be displayed with equal
prominence as all other products sold in the establishment.
SEC. 34. Refusal to Sell Drugs and Medicines. No manufacturer, importer,
trader, distributor, wholesaler shall withhold from sale or refuse to sell to a
wholesaler or retailer any drug or medicine without good and sufficient reasons.
SEC. 35. Penalties. Any person or entity who shall refuse to carry or sell drugs
and medicines pursuant to the provisions of this Chapter shall be punished with a
fine of not less than One hundred thousand pesos (Php100,000.00) but not more
than Five hundred thousand pesos (Php500,000.00), at the discretion of the
court. For the succeeding offense, the penalties shall not be less than Five
hundred thousand pesos (Php500,000.00) but not more than One million pesos
(Php1,000,000.00), at the discretion of the court, and suspension or revocation of
its license to operate (LTO), business or professional license, as the case may
be.
SEC. 36. Implementing Rules and Regulations on the Non-Discriminatory
Clause. Within one hundred twenty (120) days from the effectivity of this Act,
the Department of Health, in consultation with the Department of Trade and
Industry, shall promulgate the rules and regulations necessary to effectively
implement the provisions of this Chapter.

CHAPTER 6 AMENDMENTS TO REPUBLIC ACT NO. 6675, OTHERWISE
KNOWN AS THE GENERICS ACT OF 1988
SEC. 37. Section 5 of Republic Act No. 6675, otherwise known as the Generics
Act of 1988, is hereby amended to read as follows:
SEC. 5. Posting and Publication. The Department of Health shall publish
annually in acceptable means of public dissemination in at least two (2)
newspapers of general circulation in the Philippines the generic names, and the
corresponding brand names under which they are marketed, of all drugs and
medicines available in the Philippines.
SEC. 6. Who Shall Use Generic Terminology.
(a) All government health agencies and their personnel as well as other
government agencies shall use generic terminology or generic names in all
transactions related to purchasing, prescribing, dispensing and administering of
drugs and medicines.
(b) All medical, dental and veterinary practitioners, including private
practitioners, shall write prescriptions using the generic name. The brand name
may be included if so desired.
(c) Any organization or company involved in the manufacture, importation,
repacking, marketing and/or distribution of drugs and medicines shall indicate
prominently the generic name of the product. In the case of brand name
products, the generic name shall appear prominently and immediately above the
brand name in all product labels as well as in advertising and other promotional
materials.
(d) Drug outlets, including drugstores, hospital and non-hospital pharmacies and
nontraditional outlets such as supermarkets and stores, shall inform any buyer
about any and all other drug products having the same generic name, together
with their corresponding prices so that the buyer may adequately exercise his
option. Within one (1) year after the approval of this Act, the drug outlets referred
to herein shall post in conspicuous places in their establishments a list of drug
products with the same generic name and their corresponding prices.
(e) There shall appear prominently on the label of a generic drug the following
statement: this product has the same therapeutic efficacy as any other generic
product of the same name. Signed: BFAD.
SEC. 8. Required Production. Subject to the rules and regulations
promulgated by the Secretary of Health, every drug manufacturing company
operating in the Philippines shall be required to produce, distribute and make
widely available to the general public an unbranded generic counterpart of their
branded product.
SEC. 11. Education Drive. The Department of Health jointly with the Philippine
Information Agency and the Department of the Interior and Local Government
shall conduct a continuous information campaign for the public and a continuing
education and training for the medical and allied medical professions on drugs
with generic names as an alternative of equal efficacy to the more expensive
brand name drugs. Such educational campaign shall include information on the
illnesses or symptoms which each generically named drug is supposed to cure or
alleviate, as well as in contraindications. The Department of Health with the
assistance of the Department of the Interior and Local Government and the
Philippine Information Agency shall monitor the progress of the education drive,
and shall submit regular reports to Congress.
SEC. 12. Penalty. (A) Any person who shall violate Section 6(a) or 6(b) of this
Act shall suffer the penalty graduated hereunder, viz:
(a) for the first conviction, he shall suffer the penalty of reprimand which shall be
officially recorded in the appropriate books of the Professional Regulation
Commission.
(b) for the second conviction, the penalty of fine in the amount of not less than
Ten thousand pesos (Php10,000.00) but not exceeding Twenty-five thousand
pesos (Php25,000.00), at the discretion of the court.
(c) for the third conviction, the penalty of fine in the amount of not less than
Twenty-five thousand pesos (Php25,000.00) but not exceeding Fifty thousand
pesos (Php50,000.00) and suspension of his license to practice his profession for
sixty (60) days at the discretion of the court.
(d) for the fourth and subsequent convictions, the penalty of fine of not less than
One hundred thousand pesos (Php100,000.00) and suspension of his license to
practice his profession for one (1) year or longer at the discretion of the court.
(B) Any juridical person who violates Sections 6(c), 6(d), 7 or 8 shall suffer the
penalty of a fine of not less than One hundred thousand pesos (Php100,000.00)
and suspension or revocation of license to operate such drug establishment or
drug outlet at the discretion of the court: Provided, That its officers directly
responsible for the violation shall suffer the penalty of fine of at least Forty
thousand pesos (Php40,000.00) and suspension or revocation of license to
practice profession, if applicable, and by imprisonment of not less than six (6)
months nor more than one (1) year or both fine and imprisonment at the
discretion of the court: and, a list of drug products with the same generic name
and their corresponding prices. Provided, further, That if the guilty party is an
alien, he shall be ipso facto deported after service of sentence without need of
further proceedings.
(C) The Secretary of Health shall have the authority to impose administrative
sanctions such as suspension or cancellation of license to operate or
recommend suspension of license to practice profession to the Professional
Regulation Commission as the case may be for the violation of this Act.
The administrative sanctions that shall be imposed by the Secretary of the
Department of Health shall be in a graduated manner in accordance with Section
12.A.
An administrative case may be instituted independently from the criminal case:
Provided, That, the dismissal of the criminal case or the withdrawal of the same
shall in no instance be a ground for the dismissal of the administrative case.
SEC. 42. Implementing Rules and Regulations to the Amendments to the
Generics Act of 1988. The Department of Health, in consultation with the
appropriate government agencies, shall, within one hundred twenty (120) days
from the effectivity of this Act, promulgate the rules and regulations necessary to
effectively implement the provisions of this Act that relate to Republic Act No.
6675, or the Generics Act of 1988.

CHAPTER 7 AMENDMENTS TO REPUBLIC ACT NO. 5921, AS AMENDED,
OTHERWISE KNOWN AS THE PHARMACY LAW
SEC. 43. Section 25 of Republic Act No. 5921, as amended, otherwise known as
the Pharmacy Law, is hereby amended to read as follows:
SEC. 25. Sale of medicine, pharmaceuticals, drugs and devices. No medicine,
pharmaceutical, or drug, except for those which are non-prescription or over-the-
counter, of whatever nature and kind or device shall be compounded, dispensed,
sold or resold, or otherwise be made available to the consuming public except
through a prescription drugstore or hospital pharmacy, duly established in
accordance with the provisions of this Act. Non-prescription or over-the-counter
drugs may be sold in their original packages, bottles, containers or in small
quantities, not in their original containers to the consuming public through
supermarkets, convenience stores and other retail establishments.
Pharmaceutical, drug or biological manufacturing establishments, importers and
wholesalers of drugs, medicines, or biologic products, shall not sell their products
for re-sale except only to retail drug outlets, hospital pharmacies or to other drug
wholesalers under the supervision of a registered pharmacist, and supermarkets,
convenience stores, other retail establishments for over-the-counter drugs, duly
licensed by the Bureau of Food and Drugs.
SEC. 44. Implementing Rules and Regulations to the Amendments to the
Pharmacy Law. The Department of Health, in consultation with the appropriate
government agencies, within one hundred twenty (120) days from the effectivity
of this Act, shall promulgate the rules and regulations necessary to effectively
implement the provisions of this Chapter.

CHAPTER 8 MISCELLANEOUS PROVISIONS
SEC. 45. Congressional Oversight Committee. For the effective implementation
of this Act, there shall be created a Congressional Oversight Committee,
hereinafter referred to as the Quality Affordable Medicines Oversight Committee,
to be composed of five (5) members from the Senate, which shall include the
Chairpersons of the Senate Committees on Trade and Commerce and Health
and Demography, and, five (5) members from the House of Representatives,
which shall include the Chairpersons of the House of Representatives
Committees on Trade and Industry and Health. The Quality Affordable Medicines
Oversight Committee shall be jointly chaired by the Chairpersons of the Senate
Committee on Trade and Commerce and the House of Representatives
Committee on Trade and Industry. The Vice-Chair of the oversight committee
shall be jointly held by the Chairpersons of the Senate Committee on Health and
Demography and the House of Representatives Committee on Health.
SEC. 46. Appropriations. For the initial implementation of this Act, the amount
of Twenty-five million pesos (Php25,000,000.00), in addition to the budget of the
Department of Health, shall be provided for the operations of the Office of the
Secretary of the Department of Health. The Quality Affordable Medicines
Oversight Committee shall be provided an initial budget of Five million pesos
(Php5,000,000.00) to perform its functions as mandated under this Act.
Thereafter, such sum as may be necessary for its continued implementation shall
be included in the annual General Appropriations Act.
SEC. 47. Separability Clause. Any portion or provision of this Act that may be
declared unconstitutional or invalid shall not have the effect of nullifying other
portions and provisions hereof as long as such remaining portion or provision can
still subsist and be given effect in their entirety.
SEC. 48. Repealing Clause. All laws, decrees, executive orders, proclamations
and administrative regulations or parts thereof inconsistent herewith are hereby
repealed or modified accordingly.
SEC. 49. Effectivity Clause. This Act shall take effect fifteen (15) days after its
publication in at least two (2) national papers of general circulation.

RULES AND REGULATIONS ON INVENTIONS
Whereas, the State recognizes that an effective industrial property system is vital
to the development of domestic creativity, facilitates transfer of technology,
attracts foreign investments and ensures market access for our products;
Whereas, it is the policy of the State to streamline administrative procedures in
granting patents and enhance the enforcement of intellectual property rights in
the Philippines;
Now, therefore, pursuant to the provisions of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, the following rules
and regulations on inventions are hereby promulgated:
PART 1
DEFINITIONS
Rule 100. Definitions. Unless otherwise specified, the following terms shall have
the meaning provided in this Rule:
(a) "Bureau" means the Bureau of Patents of the Office; (b) "Director" means
the Director of the Bureau of Patents; (c) "Director General" means the Head of
the Intellectual Property Office; (d) "Examiner" means any officer or employee
of the Bureau of Patents authorized to examine applications. The title or official
designation of such officer or employee may change as the structure of the Office
may be set; (e) "IP Code" means Republic Act No. 8293 otherwise known as
the Intellectual Property Code of the Philippines; (f) "IPO Gazette" means the
Intellectual Property Office's own publication where all matters required to be
published under the IP Code shall be published; (g) "Office" means the
Intellectual Property Office; and (h) "Regulations" means this set of rules and
regulations and such Rules of Practice as may be formulated by the Director of
Patents and approved by the Director General.
PART 2
PATENTABILITY
Rule 200. Patentable Inventions. - Any technical solution of a problem in any field
of human activity which is new, involves an inventive step and is industrially
applicable shall be patentable. (Sec. 21, IP CODE)
Rule 201. Statutory Classes of Invention. - An invention may be, or may relate to;
a) a useful machine; b) a product; c) or process or an improvement of any of
the foregoing; d) microorganism; and e) non-biological and microbiological
processes. (Sec. 21, IP CODE)
Rule 202. Non-Patentable Inventions. - The following shall be excluded from
patent protections:
(a) Discoveries, scientific theories and mathematical method; (b) Schemes,
rules and methods of performing mental acts, playing games or doing business,
and programs for computers; (c) Methods for treatment of the human or animal
body by surgery or therapy and diagnostic methods practiced on the human or
animal body. This provision shall not apply to products and compositions for use
in any of these methods; (d) Plant varieties or animal breeds or essentially
biological process for the production of plants or animals. This provision shall not
apply to microorganisms and non-biological and microbiological processes; (e)
Aesthetic creations; and (f) Anything which is contrary to public order or
morality. (Sec. 22, IP CODE)
Rule 203. Novelty. - An invention shall not be considered new if it forms part of a
prior art. (Sec. 23, IP CODE)

Rule 204. Prior Art. - Prior art shall consist of: (a) Everything made available to
the public by means of a written or oral disclosure, by use, or in any other way,
before the filing date or the priority date of the application claiming the invention.
Prior use which is not present in the Philippines, even if widespread in a foreign
country, cannot form part of the prior art if such prior use is not disclosed in
printed documents or in any tangible form.
(b) The whole contents of an application for a patent, utility model, or industrial
design registration, published under Sec. 44 of IP CODE, filed or effective in the
Philippines, with a filing or priority date that is earlier than the filing or priority date
of the application: Provided, That the application which has validly claimed the
filing date of an earlier application under Section 31 of IP CODE, shall be prior art
with effect as of the filing date of such earlier application: Provided further, That
the applicant or the inventor identified in both applications are not one and the
same, (Sec. 24, IP CODE):
Where two or more applications are independently filed with respect to the same
invention, and the later applications are filed before the first application or earlier
application is published, the whole contents of the first or earliest filed application
published in accordance with Sec. 44, IP CODE on or after the filing date or
priority date of the later filed application shall be novelty destroying with respect
to the later filed application.
Rule 205. Non-Prejudicial Disclosure. - The disclosure of information contained in
the application during the twelve (12) months preceding the filing date or the
priority date of the application shall not prejudice the applicant on the ground of
lack of novelty if such disclosure was made by:
(a) The Inventor; (b) A foreign patent office, the Bureau or the Office, and the
information was contained (a) in another application filed by the inventor and
should not have been disclosed by the office, or (b) in an application filed without
the knowledge or consent of the inventor by a third party which obtained the
information directly or indirectly from the inventor; or (c) A third party which
obtained the information directly or indirectly from the inventor.
For the purposes of subsection (a) "inventor" also means any person who, at the
filing date of application, had the right to the patent. (Sec. 25, IP CODE)
Rule 206. Inventive Step. - (a) 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 of the application claiming the invention. (Sec. 26,
IP CODE)
(b) Only prior art made available to the public before the filing date or priority date
shall be considered in assessing inventive step.
Rule 207. Person Skilled in the Art. - The person skilled in the art is presumed to
be an ordinary practitioner aware of what was common general knowledge in the
art at the relevant date. He is presumed to have knowledge of all references that
are sufficiently related to one another and to the pertinent art and to have
knowledge of all arts reasonably pertinent to the particular problems with which
the inventor was involved. He is presumed also to have had at his disposal the
normal means and capacity for routine work and experimentation.
Rule 208. Industrial Applicability. - An invention which can be produced and used
in any industry shall be industrially applicable. (Sec. 27, IP CODE)
PART 3
RIGHT TO A PATENT
Rule 300. Right to a Patent. - The right to a patent belongs to the inventor, his
heirs, or assigns. When two (2) or more persons have jointly made an invention,
the right to a patent shall belong to them jointly (Sec. 28, IP CODE).
Rule 301. Who may be Named in an Application as an Applicant. - The
application may be filed by the actual inventor(s) or in the name of his heirs, legal
representative or assigns.

Rule 302. Inventions Created Pursuant to a Commission. - The person who
commissions the work shall own the patent, unless otherwise provided in the
contract. (Sec. 30.1, IP CODE)
Rule 303. Inventions made in the course of employment. In case the employee
made the invention in the course of his employment contract, the patent shall
belong to:
(a) The employee, if the inventive activity is not a part of his regular duties even if
the employee uses the time, facilities and materials of the employer (b) The
employer, if the invention is the result of the performance of his regularly-
assigned duties, unless there is an agreement, express or implied, to the
contrary. (Sec. 30.2, IP CODE)
Rule 304. First to File Rule. - If two (2) or more persons have made the same
invention separately and independently of each other, the right to the patent shall
belong to the person who filed an application for such invention, or where two or
more applications are filed for the same invention, to the applicant who has the
earliest filing date or, the earliest priority date (Sec. 29, IP CODE).
Where two or more applications for the same invention made separately and
independently of each other have the same filing date, or priority-date the patent
will be issued jointly to the applicants of all such applications.
Rule 305. Right of Priority. - An application for patent filed by any person who
has previously applied for the same invention in another country which by treaty,
convention, or law affords similar privileges to Filipino citizens, shall be
considered as filed as of the date of filing of the foreign application: Provided,
That: (a) the local application expressly claims priority; (b) it is filed within twelve
(12) months from the date the earliest foreign application was filed and (c) a
certified copy of the foreign application together with an English translation is
filed within six (6) months from the date of filing in the Philippines (Sec. 31, IP
CODE).
This six (6) month-period may be extended by the Director for a maximum of six
(6) months upon showing of good cause or in compliance with treaties to which
the Philippines is or may become a member.
Rule 306.1. Multiple Priorities. - An application can claim more than one priority
even from different countries. If more than one patent priority is claimed, time
limits computed from the priority date will be based upon the earliest priority date.
Rule 306.2. If one or more priorities are claimed, the right of priority shall cover
only those elements of the application which are included in the application or
applications whose priority is claimed.
Rule 306.3. If certain elements of the invention for which priority is claimed do not
appear among the claims formulated in the previous application, priority may
nonetheless be granted, provided that the previous application as a whole
specifically disclose such elements.
Rule 306.4. Where an application could have claimed the priority of an earlier
application, but when filed, did not contain such priority, the applicant shall be
given two (2) months from the filing date to submit priority claim.
Submission of priority claim after the filing of the application shall be
accompanied by a declaration of the applicant stating that the delay in submitting
the priority claim was unintentional.
Rule 307. Certified Copy of the Foreign Applications. - The certified copy of
foreign applications mentioned in Rule 302 shall be the copy of the priority
application(s) as duly certified to be a true or faithful reproduction thereof by the
Industrial Property Office which received it or any other office which has official
custody of the foreign application.

PART 4
THE PATENT APPLICATION
Rule 400. The Patent Application. - An application for a patent shall be in Filipino
or English and shall be filed in writing either directly to the Bureau or by post and
must be addressed to the Director. The application shall contain the following:
(a) A request for the grant of a patent; (b) A description of the invention; (c)
Drawing(s) necessary for the understanding of the invention; (d) One or more
claims; and (e) An abstract.
Rule 401. Payment of Fees. - An application shall be subject to the payment of
the filing fee, the search fee and publication fee (1st publication) within one (1)
month after the filing date of the application.
The application shall be deemed forfeited for non-payment of these fees.
Rule 402. Marking of documents; acknowledgment. The Bureau shall mark the
documents making up the application with the date of the receipt. After receipt of
the full payment of the required fees, the Bureau may issue an acknowledgment
stating the application number, name of applicant and title of the invention.
Rule 403. Form of Request; Office Application Form. - The request shall be made
on a form drawn up by the Office. For the convenience of applicants, the Office
shall draw up and make available a standard application form which may be
reproduced at will by applicants and other persons at their own cost.
Rule 404. The Request. - The request shall contain the following:
(a) Petition for the grant of a patent; (b) Applicant's name and address; (c)
Title of the invention; (d) Inventor's name; (e) If with claim for convention
priority it shall contain the file number, country of origin and the date of filing in
the said country where the application was first filed; (f) Name and address of
the resident agent/representative (if any); and (g) Signature of the applicant or
resident agent/representative.
Rule 405. Disclosure and Description of the Invention. - The application shall
disclose the invention in a manner sufficiently clear and complete for it to be
carried out by a person skilled in the art.
Rule 406. Test for enabling Disclosure. - The test for enabling disclosure is
whether the persons to whom it is addressed could, by following the directions
therein, put the invention into practice.
Rule 407. Content of the Description. -
(1) The description shall: (a) Specify the technical field to which the invention
relates; (b) Indicate the background art which, as far as known to the applicant,
can be regarded as useful for understanding the invention, for drawing up the
search report and for the examination, and, preferably, cite the documents
reflecting such art; (c) Disclose the invention, as claimed, in such terms that the
technical problem (even if not expressly stated as such) and its solution can be
understood, and state any advantageous effects of the invention with reference
to the background art; (d) Briefly describe the figures in the drawings, if any;
(e) When there are drawings, there shall be a brief description of the several
views of the drawings and the detailed description of the invention shall refer to
its different parts, as shown in the views, by use of reference letters or numerals
(preferably the latter); (f) Describe in detail at least one way of carrying out the
invention claimed using examples where appropriate and referring to the
drawings, if any; and (g) Indicate explicitly, when it is not obvious from the
description or nature of the invention, the way in which the invention is capable of
exploitation in industry.
(2) The description shall be presented in the manner and order specified in
paragraph 1, unless because of the nature of the invention, a different manner or
a different order would afford a better understanding and a more economic
presentation.

Rule 408. Requirements of Applications Relating to Biological Materials and
Microorganisms. - Where the application concerns a microbiological process or
the product thereof and involves the use of a microorganism which cannot be
sufficiently disclosed in the application in such a way as to enable the invention
to be carried out by a person skilled in the art, and such material is not available
to the public, the invention shall only be regarded as being disclosed if:
(a) A culture of the microorganism has been deposited in a depositary institution
before filing the application; (b) The depositary institution and the file number of
the culture deposit are stated in the application. If this information is not yet
available at the time of filing the application, the said information shall be
submitted within two (2) months from request of the Examiner. Publication of the
application under Section 44, IP CODE shall be held pending submission of said
information; and (c) The application as filed gives relevant information as is
available to the applicant on the characteristics of the microorganism.
Rule 409. Requirements of Application Relating to Biological Materials and
Microorganisms before Allowance. - An application which concerns a
microbiological process or the product thereof and involves the use of any novel
strain of microorganism shall be allowed only when the following conditions are
met:
(a) A deposit was made in a recognized international depositary authority; (b)
Proof of such deposit together with the proper identification or deposit number
assigned by the depositary is submitted; and (c) That the depositary should be
under the contractual obligation to place the culture in permanent collection, and
to provide access to persons who shall have interest therein in regard to matters
relating to the patent application as published.
Rule 410. Title of the Invention. - The title of the invention should be as short and
specific as possible, and should appear as a heading on the first page of the
specification. All fancy names are not permissible in the title.
Rule 411. Abstract. - The abstract written in a separate sheet with a heading
"Abstract" shall consist of a concise summary of the disclosure of the invention
as contained in the description, claims and drawings in preferably not more than
one hundred fifty (150) words. It must be drafted in a way which allows the clear
understanding of the technical problem, the gist of the solution of that problem
through the invention, and the principal use or uses of the invention. The abstract
shall merely serve for technical information. Each main technical feature
mentioned in the abstract and illustrated by a drawing in the application shall be
followed by a reference sign placed between parentheses.
Rule 412. Prohibited Matter - (a) The application shall not contain:
(i) a statement or other matter contrary to "public order" or morality; (ii)
statement disparaging the products or processes of any particular person or
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; (iii) any statement or other matter obviously irrelevant or
unnecessary under the circumstances.
b) If an application contains prohibited matter within the meaning of this Rule, the
Bureau shall omit it when publishing the application, indicating the place and
number of words or drawing omitted.
Rule 413. (a) General Requisites for the Drawing. - The drawing must be signed
by the applicant or the name of the applicant may be signed on the drawing by
his attorney or agent. The drawing must show every feature of the invention
covered by the claims, and the figures should be consecutively numbered.
(b) Drawing for an Improvement. - When the invention consists of an
improvement of an old machine, the drawing must exhibit, in one or more views,
the invention itself, isolated from the old structure, and also, in another view, so
much only the old structure as will suffice to show the relation of the invention
therewith.

Rule 414.1. Uniform Standard of Excellence Suited to Photolithographic Process,
Required of Drawings. - The printing of the drawings in the IPO Gazette is done
by the photolithographic process, and therefore the character of each original
drawing must be brought as nearly as possible to a uniform standard of
excellence suited to the requirements of the process, to give the best results, in
the interests of the inventors, of the Office, and of the public. The following rules
will therefore be strictly enforced, and any departure from them will be certain to
cause delay in the examination of an application.
Rule 414.2. Paper and Ink. - Drawings must be made upon paper that is flexible,
strong, white, smooth, non-shiny and durable. Two ply or three ply Bristol board
is preferred. The surface of the paper should be calendered and of a quality
which will permit erasure and correction with India ink. India ink, or its equivalent
in quality, is preferred for pen drawings to secure perfectly black solid lines. The
use of white pigments to cover lines is not permissible.
Rule 414.3. Size of Drawing Sheet; Imaginary Line. - The size of a sheet on
which a drawing is made must be exactly 29.7 cm x 21 cm or the size of an A4
paper. The minimum imaginary margins shall be as follows: top 2.5 cm; left side
2.5 cm; right side 1.5 cm; bottom 1 cm. Within this imaginary margin all work and
signatures must be included. One of the shorter sides of the sheet is regarded as
its top, and, measuring downwardly from the imaginary line, a space of not less
than 3 cm is to be left blank for the heading of title, name, number, and date.
Rule 414.4. Character and Color Lines. - All drawings must be made with the pen
or by a photolithographic process which will give them satisfactory reproduction
characteristics. Every line and letter (signatures included) must be absolutely
black. This direction applies to all lines, however fine, to shading and to lines
representing cut surfaces in sectional views. All lines must be clean, sharp, and
solid, and they must not be too fine or crowded. Surface shading, when used,
should be open. Sectional shading should be made by oblique parallel lines,
which may be about 0.3 cm apart. Solid black should not be used for sectional or
surface shading. Freehand work should be avoided whenever possible.
Rule 414.5. The Fewest Possible Number of Lines and Little or No Shading to be
Used. - Drawings should be made with the fewest lines possible consistent with
clearness. By the observance of this rule the effectiveness of the work after
reduction will be much increased. Shading (except on sectional views) should be
used sparingly, and may even be dispensed with if the drawing be otherwise well
executed. The plane upon which a sectional view is taken should be indicated on
the general view by a broken or dotted line, which should be designated by
numerals corresponding to the number of the sectional view. Heavy lines on the
shade sides of objects should be used, except where they tend to thicken the
work and obscure letter of reference. The light is always supposed to come from
the upper left hand corner of an angle of 45 degrees.
Rule 414.6. Scale to which Drawing is Made to be Large Enough. - The scale to
which a drawing is made ought to be large enough to show the mechanism
without crowding, and two or more sheets should be used if one does not give
sufficient room to accomplish this end; but the number of sheets must never be
more than what is absolutely necessary.
Rule 414.7. Letters and Figures of Reference. - The different views should be
consecutively numbered. Letters and figures of reference must be carefully
formed. They should, if possible, measure at least 32 millimeters in height, so
that they may bear reduction to 10.6 millimeters; and they may be much larger
when there is sufficient room. They must be so placed in the close and complex
parts of drawings as not to interfere with a thorough comprehension of the same,
and therefore should rarely cross or mingle with the lines. When necessarily
grouped around a certain part, they should be placed at a little distance where
there is available space, and connected by lines with the parts to which they
refer. They should not be placed upon shaded surfaces, but when it is difficult to
avoid this, blank space must be left in the shading where the letter occurs, so
that it shall appear perfectly distinct and separate from the work. If the same part
of an 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.
Rule 414.8. Signature, Where to be Placed. - The signature of the applicant
should be placed at the lower right-hand corner within the imaginary margins of
each sheet, but in no instance should they trespass upon the drawings.
Rule 414.9. Title of the Drawing. - The title should be written with pencil on the
back of the sheet. The permanent name and title constituting the heading will be
applied subsequently by the Bureau of Patents in uniform style.

Rule 414.10. Position on Drawing Sheets of Large Views. - All views on the same
sheet must stand in the same direction and must, if possible, stand so that they
can be read with the sheet held in an upright position. If views longer than the
width of the sheet are necessary for the proper illustration of the invention, the
sheet may be turned on its side. The space for heading must then be reserved at
the right and the signatures placed at the left, occupying the same space and
position as in the upright views and being horizontal when the sheet is held in an
upright position. One figure must not be placed upon another or within the outline
of another.
Rule 414.11. Flow Sheets and Diagrams. - Flow Sheets and diagrams are
considered drawings.
Rule 414.12. Requisites for the Figure of the IPO Gazette. - As a rule, only one
view of each invention can be shown in the IPO Gazette illustrations. The
selection of that portion of a drawing best calculated to explain the nature of the
invention or its specific improvement would be facilitated and the final result
improved by judicious execution of a figure with express reference to the IPO
Gazette, but which must at the same time serve as one of the figures referred to
in the specification. For this purpose the figure may be a plan, elevation, section,
or perspective view, according to the judgment of the draftsman. All its parts
should be especially open and distinct, with very little or no shading, and it must
illustrate only the invention claimed, to the exclusion of all other details. When
well executed, it will be used without curtailment or change, but any excessive
fineness or crowding or unnecessary elaborateness of detail will necessitate its
exclusion from the IPO Gazette.
Rule 414.13. Reference Signs. - Reference signs not mentioned in the
description and claims shall not appear in the drawings and vice versa. The
same features, when denoted by reference signs, shall throughout the
application, be denoted by the same signs.
Rule 414.14. Photographs. - (a)Photographs are not normally considered to be
proper drawings. Photographs are acceptable for obtaining a filing date and
generally considered to be informal drawings. Photographs are only acceptable
where they come within the special categories as set forth in the paragraph
below. Photolitographs of photographs are never acceptable.
(b) The Office is willing to accept black and white photographs or
photomicrographs (not photolitographs or other reproduction of photographs
made by using screens) printed on sensitized paper in lieu of India ink drawings,
to illustrate the inventions which are incapable of being accurately or adequately
depicted by India ink drawings restricted to the following categories: crystalline
structures, metallurgical microstructures, textile fabrics, grain structures and
ornamental effects. The photographs or photomicrographs must show the
invention more clearly than they can be done by the India ink drawings and
otherwise comply with the rules concerning such drawings.
(c) 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 a surface described as smooth, tint, white, or be
photographs mounted on a proper sized Bristol board.
Rule 414.15. Matters not Permitted to Appear on the Drawings. - An agent's or
attorney's stamp, or advertisement or written address shall not be permitted on
the drawings.
Rule 414.16. Drawings not Conforming to Foregoing Rules to be Accepted Only
Conditionally. - A drawing not executed in conformity to the foregoing rules may
be admitted for purposes of examination if it sufficiently illustrates the invention,
but in such case, the drawing must be corrected or a new one furnished before
the application will be allowed. Applicants are advised to employ competent
draftsman to make their drawings.

Rule 415. Claim. - (a) The specification must conclude with a claim particularly
pointing out and distinctly claiming the part, improvement, or combination which
the applicant regards as his invention.
(b) The application may contain one (1) or more independent claims in the same
category, (product, process, apparatus or use) where it is not appropriate, having
regard to the subject matter of the application, to cover this subject matter by a
single claim which shall define the matter for which protection is sought. Each
claim shall be clear and concise, and shall be supported by the description.
(c) One or more claims may be presented in dependent form, referring back and
further limiting another claim or claims in the same application. Any dependent
claim which refers to more than one other claim ("multiple dependent claim")
shall refer to such other claims in the alternative only. A multiple dependent claim
shall not serve as a basis for any other multiple dependent claim. For fee
calculation purpose a multiple dependent claim will be considered to be that
number of claims to which direct reference is made therein. Furthermore, any
claim depending on a multiple dependent claim will be considered to be that
number of claims to which direct reference is made in that multiple dependent
claims. In addition to the other filing fees, any original application which is filed
with, or is amended to include, multiple dependent claims must have to pay the
prescribed additional fees. Claims in dependent form shall be construed to
include all the limitations of the claims incorporated by reference into the
dependent claim. A multiple dependent claim shall be construed to incorporate
by reference all the limitations of each of the particular claims in relation to which
it is being considered.
(d) The claim or claims must conform to the invention as set forth in the
description made in the specification, and the terms and phrases used in the
claims must find clear support or antecedent basis in the said description, so that
the meaning of the terms in the claims may be ascertainable by reference to the
description. Claims shall not, except where absolutely necessary, rely in respect
of the technical features of the invention, on references to the description or
drawings. In particular, they shall not rely on such references as: "as described in
part xxx of the description" or, "as illustrated in figure xxx of the drawings".
Rule 416. Form and content of the claims. - The claims shall define the matter for
which protection is sought in terms of the technical features of the invention.
Wherever appropriate the claims shall contain:
(a) a statement indicating the designation of the subject matter of the invention
and those technical features which are necessary for the definition of the claimed
subject matter but which, in combination, are part of the prior art;
(b) a characterizing portion preceded by the expression "characterized in that" or
"characterized by" - stating the technical features which, in combination with the
features stated in sub-paragraph (a), it is desired to protect; and
(c) If the application contains drawings, the technical features mentioned in the
claims shall preferably, if the intelligibility of the claim can thereby be increased,
be followed by reference signs relating to these features and placed between
parentheses. These reference signs shall not be construed as limiting the claim.
Rule 417. Claims incurring fee - (a) Any application comprising more than five (5)
claims, independent and/or multiple/alternative dependent claims at the time of
filing, or added claims after the filing date in respect of each claim over and
above five (5) incurs payment of a claims fee. The claims fee shall be payable
within one (1) month after the filing of the application. If the claim fees have not
been paid in due time, they may still be validly paid within a grace period of one
(1) month from notice pointing out the failure to observe the time limit. If the
claims fee is not paid within the time limit and the grace period referred to in this
Rule, the claim or claims concerned shall be deemed deleted.

Rule 418. Presentation of the Application Documents. - (a) All papers for an
application for an invention patent 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 1 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.
(b) The documents making up the application shall be on a 29.7 cm x 21 cm
paper or the size of an A4 paper which shall be pliable, strong, white, smooth,
matt and durable.
(c) The specification and claims of an invention patent must be written with the
lines numbered in sets of five and the number appearing on the left side margin.
(d) The description, the claims and the abstract may contain chemical or
mathematical formulas. The description and the abstract may contain tables. The
claims may contain tables only if their subject-matter makes the use of tables
desirable. Tables and chemical or mathematical formula may be placed sideways
on the sheet if they cannot be presented satisfactorily in an upright position
thereon; sheets on which tables or chemicals or mathematical formulas are
presented sideways shall be so presented that the tops of the tables or formula
are at the left side of the sheet.
(e) Physical values shall be expressed in the units recognized in international
practice, wherever appropriate in terms of the metric system using system
international (SI) units. Any data not meeting this requirement must also be
expressed in the units recognized in international practice. For mathematical
formula, the symbols in general use shall be employed. For chemical formula the
symbols, atomic weights and molecular formula in general use shall be
employed. In general, use should be made of the technical terms, signs and
symbols generally accepted in the field in question.
(f) The terminology and the signs shall be consistent throughout the application.
(g) Each of the documents making up the application (request for grant,
specification, claims, drawings and abstract) 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.
(h) Margins
The margins of the documents shall be within the following ranges: Top : 2 cm.
- 4 cm. Leftside : 2.5 cm. - 4 cm. Rightside : 2 cm. - 3 cm. Bottom : 2 cm. - 3
cm.
The margins of the documents making up the application must be completely
blank.
All the sheets making up the documents shall have their pages numbered
consecutively using Arabic numeral. The page numbers shall appear in the
central portions of either the top or bottom margins.
(i) The documents making up the application except the request for grant shall be
filed in four (4) copies.
Rule 419. Models, when Required. - A model may be required when the
invention sought to be patented cannot be sufficiently described in the
application. The Examiner shall notify the applicant of such requirement, which
will constitute an official action in the case. When a model has been received in
compliance with the official requirement, the date of its filing shall be entered on
the file wrapper. Models not required nor admitted will be returned to the
applicants. When a model is required, the examination may be suspended until it
shall have been filed.
Rule 419.1. Requisites for the Model. - The model, when required, must clearly
exhibit every feature of the machine which form the subject of a claim of
invention, but should not include other matter than that covered by the actual
invention or improvement, unless it be necessary to the exhibition of the
invention in a working model.
Rule 419.2. Material Required for the Model; Working Models. - The model must
be neatly and substantially made of durable material, but when the material
forms an essential feature of the invention, the model should be constructed of
that material.
A working model may be required if necessary to enable the office to fully and
readily understand the precise operation of the machine.

Rule 419.3. Models, when Returned to Applicant. - In all applications which have
been rejected or become abandoned, the model, unless it be deemed necessary
that it be preserved in the Office, may be returned to the applicant upon demand
and at his expense; and the model in any pending case may be returned to the
applicant upon the filing of a formal abandonment of the application signed by the
applicant in person and any assignee. Models belonging to patented cases shall
not be taken from the Office without the authorization by the Director.
Rule 419.4. Models filed as exhibits in contested cases. - Models filed as exhibits
in contested cases may be returned to the parties at their expense. If not claimed
within a reasonable time, they may be disposed of at the discretion of the
Director.
Rule 420. Employment of Attorney-at-Law or Agent Recommended. - An
applicant or an assignee of the entire interest may prosecute his own case, but
he is advised, unless familiar with such matters, to employ a competent attorney-
at-law or agent, as the value of patents depends largely upon the skillful
preparation of the specification and claims. The Office cannot aid in the selection
of an attorney-at-law or agent.
Rule 421. Appointment of Resident Agent or Representative. - An applicant who
is not a resident of the Philippines must appoint and maintain a resident agent or
representative in the Philippines upon whom notice or process for judicial or
administrative procedure relating to the application for patent or the patent may
be served.
(a) If there are two (2) or more agents appointed by the applicant, the Office shall
forward all actions to the last agent appointed. A substitute or associate attorney
may be appointed by an attorney only upon the written authorization of his
principal; but a third attorney appointed by the second will not be recognized.
(b) Revocation of Power of Attorney. - A power of attorney or authorization may
be revoked at any stage in the proceedings of a case upon proper notification to
the Director General, and, when revoked, the Office will notify the attorney or
agent of such revocation and shall communicate directly with the applicant or
with such other attorney or agent as he may later appoint.
Rule 422. (a) Decorum and Courtesy Required in the Conduct of Business. -
Applicants, their attorneys or agents are required to conduct their business with
the Office with politeness, decorum, and courtesy. Applicants who act or persist
in acting in violation of this rule, shall be required to be represented by attorney,
and papers presented containing matter in violation of this rule will be submitted
to the Director and returned to the sender, by his direct order.
(b) Complaints against Examiners to be on Separate Paper. - Complaints against
Examiners and other officers must be made in a communication separate from
other papers, and will be promptly investigated by or at the instance of the
Director.
PART 5
WHO MAY APPLY FOR A PATENT
Rule 500. - Who may apply for a patent. - Any person, natural or juridical, may
apply for a patent. If the applicant is not the inventor, the Office may require him
to submit proof of his authority to apply for a patent.
Rule 501. - When the applicant dies, becomes insane. - In case the applicant
dies, becomes insane or incapacitated, the legally appointed administrator,
executor, guardian, conservator, or representative of the applicant, may sign the
application papers and other documents, and apply for and obtain the patent in
the name of the applicant, his heirs or assignee.
Rule 502. Assigned invention and patents. - In case the whole interest in the
invention is assigned, the application may be filed by or in the name of the
assignee who may sign the application. In case the assignee is a juridical person,
any officer thereof may sign the application in behalf of the said person. In case
of an aliquot portion or undivided interest, any of the joint owners will sign the
application.
Rule 503. Juridical person - Definition. - A juridical person is a body of persons, a
corporation, a partnership, or other legal entity that is recognized by law which
grants a juridical personality separate and distinct from that of a share holder,
partner or member.

Rule 504. Proof of authority. - If the person who signs the application in behalf of
a juridical person is an officer of the corporation, no proof of authority to file the
said application will be required. However, if any other person signs for and in
behalf of a juridical person, the Bureau shall require him to submit proof of
authority to sign the application.
If the applicant appoints a representative to prosecute and sign the application,
the Bureau shall require proof of such authority.
Rule 505. Forms of signatures. - Where a signature is required, the Office may
accept: (a) A hand-written signature; or (b) The use of other forms of
signature, such as a printed or stamped signature, or the use of a seal, or thumb
marks, instead of a hand-written signature. Provided, That where a seal or a
thumbmark is used, it should be accompanied by an indication in letters of the
name of the signatory.
No attestation, notarization, legalization or other certification of any signature or
other means of self-identification referred to in the preceding paragraphs, will be
required, except, where the signature concerns the surrender of a letters patent.
PART 6
FILING DATE AND FORMALITY EXAMINATION
Rule 600. Filing Date Requirements. - The filing date of a patent application shall
be the date on which the Office received the following elements in English or
Filipino:
(a) An express or implicit indication that a Philippine patent is sought; (b)
Information identifying the applicant; and, (c) Description of the invention and
one (1) or more claims.
Rule 600.1. Incomplete application. - Where the application refers to a drawing or
drawings, it shall not be considered complete if the drawing or drawings are not
included in the application.
Rule 600.2. For purposes of obtaining a filing date, the Bureau may accept a
copy of the application received by the resident agent by telefax, subject to
submission of the original copy within two (2) months from the filing date.
Rule 601. According A Filing date. - The Office shall examine whether the patent
application satisfies the requirements for the grant of filing date as provided in
these Regulations. If the filing date cannot be accorded, the applicant shall be
given an opportunity to correct the deficiencies. If the application does not
contain all the elements indicated in these regulations, the filing date should be
that date when all the elements are received. If the deficiencies are not remedied
within two (2) months from the date on which the application was initially
presented to the Office, the application shall be considered withdrawn (Sec. 41,
IP CODE).
Rule 602. Late-filed or missing drawings. - (a) If the formality examination reveals
that the drawings were filed after the filing date of the application, the Bureau
shall send a notice to the applicant that the drawings and the references to the
drawings in the application shall be deemed deleted unless the applicant
requests within two (2) months that the application be granted a new filing date
which is the date on which the drawings were filed.
(2) If the formality examination reveals that the drawings were not filed, the
Bureau shall require applicant to file them within two (2) months and inform the
applicant that the application will be given a new filing date which is the date on
which the drawings are filed, or, if they are not filed in due time, any reference to
them in the application shall be deemed deleted.
(3) The new filing date shall be cited in all succeeding correspondences between
the Bureau and the applicant.

Rule 603. Formality Examination. - If a patent application has been accorded a
filing date and the required fee has been paid within one (1) month, compliance
with other requirements will be checked. Such other requirements may relate to
the following:
(a) contents of the request for grant of a Philippine patent; (b) Priority
documents if with claim of convention priority (i.e., file number, date of filing and
country of the priority applications); (c) Proof of authority, if the applicant is not
the inventor; (d) Deed of assignment; (e) Payment of all fees, (e.g. excess
claims) (f) Signatures of the applicants; (g) Identification of the inventor; and
(h) Formal drawings.
Rule 604. Unity of Invention. - (a) The application shall relate to one invention
only or to a group of inventions forming a single general inventive concept. (Sec.
38.1, IP CODE)
(b) If several independent inventions which do not form a single general inventive
concept are claimed in one application, the Director may require that the
application be restricted to a single invention. A later application filed for an
invention divided out shall be considered as having been filed on the same day
as the first application: Provided that the later application is filed within four (4)
months after the requirement to divide becomes final, or within such additional
time, not exceeding four (4) months, as may be granted. Provided further , That
each divisional application shall not go beyond the disclosure in the initial
application. (Sec. 38.2, IP CODE)
Rule 604.1. The fact that a patent has been granted on an application that did not
comply with the requirement of unity of invention shall not be a ground to cancel
the patent (Sec. 38.3, IP CODE).
Rule 605. Requirements for Unity of Invention - (a) The requirement of unity of
invention shall be fulfilled only when there is a technical relationship among those
inventions involving one or more of the same or corresponding special technical
features.
The expression "special technical features" shall mean those technical features
that define a contribution which each of the claimed inventions, considered as a
whole makes over the prior art.
(b) The determination whether a group of inventions is so linked as to form a
single general inventive concept shall be made without regard to whether the
inventions are claimed in separate claims or as alternative within a single claim.
(c) A plurality of independent claims in different categories may constitute a
group of inventions linked to form a single general inventive concept, the link
being e.g. that between a product and the process which produces it; or between
a process and an apparatus for carrying out the process.
(d) Three different specific combinations of claims in different categories which
are permissible in any one application are the following:
(1) in addition to an independent claim for a given product, an independent claim
for a process specially adopted for the manufacture of the product, and an
independent claim for a use of the product; or
(2) in addition to an independent claim for a given process, an independent claim
for an apparatus or means specifically designed for carrying out the process; or
(3) in addition to an independent claim for a given product, an independent claim
for a process specially adapted for the manufacture of the product, and an
independent claim for apparatus or means specifically designed for carrying out
the process.
Rule 606. Reconsideration for Requirement. - (a) If the applicant disagrees with
the requirement of division, he may request reconsideration and withdrawal or
modification of the requirement, giving the reasons therefor. In requesting
reconsideration, the applicant must indicate a provisional election of one
invention for prosecution, which invention shall be the one elected in the event
the requirement becomes final.
(b) The requirement for division will be reconsidered on such a request. If the
requirement is repeated and made final, the principal Examiner will, at the same
time, act on the claims of the invention elected.

Rule 607. Appeal from requirement for division. - After a final requirement for
division, the applicant, in addition to making any response due on the remainder
of the action, may appeal from the requirement. The prosecution on claims of the
elected invention may be continued during such appeal. Appeal may be deferred
until after final action on or allowance of the claims of the invention elected.
Appeal may not be allowed if reconsideration of the requirement was not
requested.
Rule 608. Subsequent presentation of claims for different invention. -If, after an
official action on an application, the applicant presents claim directed to an
invention divisible from the invention previously claimed, such claims, if the
amendment is entered, will be rejected and the applicant will be required to limit
the claims to the invention previously claimed.
Rule 609. Election of species. - In the first action on an application containing a
generic claim and claims restricted separately to each of more than one species
embraced thereby, the Examiner, if of the opinion, after a complete search on the
generic claim presented is allowable, shall require the applicant in his response
to that action to elect the species of his invention to which his claim shall be
restricted, if no generic claim is finally held allowable.
Claims directed neither to the species nor to the genus of the disclosed invention
maybe allowed. Markush type claims, i.e., claims which enumerate in alternative
manner, members or variations which are properly claimable as species claims
may likewise be allowed, provided that the amount of the fees payable by the
applicant/s shall be computed depending on the number of members or
variations enumerated in the Markush type claims.
Rule 610. Separate application for invention not elected. - The inventions which
are not elected after a requirement for division may be the subject of separate
applications which will be examined in the same manner as original applications.
However, if such an application is filed before the original application is patented
or withdrawn, and if it is identical and the papers constituting an exact copy of the
original papers which were signed and executed by the applicant, signing and
execution of the applicant may be omitted; such application may consist of the
filing fee, a copy of the drawings complying with rules relating to drawings and
filed, together with a proposed amendment canceling the irrelevant claims or
other matters.
Rule 611. Divisional Application - (a) The applicant may file a divisional
application on a pending application before the parent application is withdrawn,
abandoned or patented, provided that the subject matter shall not extend beyond
the content of the parent application.
The divisional application shall be accorded the same filing date as the parent
application, and shall have the benefit of any right to priority.
Rule 612. Information Concerning Corresponding Foreign Application for
Patents. - The applicant shall, at the request of the Director, furnish him with the
date and number of any application for a patent filed by him abroad, hereafter
referred to as the "foreign application", relating to the same or essentially the
same invention as that claimed in the application filed with the Office and other
documents relating to the foreign application. (Sec. 39, IP CODE)
Rule 612.1. Other documents relating to the foreign application may consist of
the following: (a) A copy of the search reports in English on the corresponding
or related foreign application prepared by the European, Japanese or United
States Patent Offices, searching authorities under the Patent Cooperation Treaty
or by the office where the first patent application was filed. (b) Photocopy of the
relevant documents cited in the search report; (c) Copy of the patent granted to
the corresponding or related application; (d) Copy of the examination report or
decision on the corresponding or foreign related application; and (e) Other
documents which could facilitate adjudication of the application.
Rule 612.2. Non-compliance. - The application is considered withdrawn if the
applicant fails to comply with the requirement to furnish information concerning
the corresponding foreign application, within the specified period.

PART 7
CLASSIFICATION AND SEARCH
Rule 700. Classification and Search. - An application that has complied with the
formal requirements shall be classified and a search shall be conducted to
determine the prior art. (Sec. 43, IP CODE).
Rule 701. The Office shall use the International Patent Classification.
Rule 701.1. Content of the Intellectual Property Search Report. - The Intellectual
Property Search Report is drawn up 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 and inventive step of the
invention. (b) The search report shall distinguish between cited documents
published before the date of priority claimed, between such date of priority and
the date of filing, and on or after the date of filing. (c) The search report shall
contain the classification of the subject matter of the application in accordance
with the International Patent Classification. (d) The search report may include
documents cited in a search established in the corresponding foreign application.
PART 8
PUBLICATION AND REQUEST FOR EXAMINATION
Rule 800. Publication of Application. - (a) The application shall be published in
the IPO Gazette together with a search document established by or on behalf of
the Office citing any document or documents that reflect prior art, after the
expiration of eighteen (18) months from the filing date or priority date.
(b) The application will not be published if it has been finally refused or withdrawn
or deemed to be withdrawn before the termination of the technical preparation for
publication.
(c) The application to be published shall contain the bibliographic data, any
drawing as filed and the abstract.
(d) The Office shall communicate to the applicant the date and other information
regarding the publication of the application and draw his attention to the period
within which the request for substantive examination must be filed.
(e) After publication of a patent application, any interested party may inspect the
application documents filed with the Office.
(f) The Director General, subject to the approval of the Secretary of Trade and
Industry, may prohibit or restrict the publication of an application, if in his opinion,
to do so would be prejudicial to the national security and interests of the Republic
of the Philippines. (Sec. 44, IP CODE)
Rule 801. Confidentiality before Publication. - An application, which has not yet
been published, and all related documents, shall not be made available for
inspection without the consent of the applicant. (Sec. 45, IP CODE).
Rule 802. Observation of Third Parties. - Following the publication of the
application, any person may present observations in writing concerning the
patentability of the invention. Such observations shall be communicated to the
applicant who may comment on them. The Office shall acknowledge and put
such observations and comment in the file of the application to which it relates.
(Sec. 47, IP CODE)

Rule 803. Request for Substantive Examination. - The application shall be
deemed withdrawn unless within six (6) months from the date of publication
under these rules, a written request to determine whether a patent application
meets the requirements of Patentability as provided for by the IP CODE, and the
fees have been paid on time.
Rule 803.1. Withdrawal of the request for examination shall be irrevocable and
shall not authorize the refund of any fee. (Sec. 48, IP CODE)
Rule 804. Rights Conferred by an Application After Publication. - The applicant
shall have all the rights of a patentee under Sec. 76, of the IP CODE against any
person who, without his authorization, exercised any of the rights conferred
under Section 71 of said law in relation to the invention claimed in the published
application, as if a patent has been granted for that invention: Provided, That the
said person had: (a) Actual knowledge that the invention that he was using was
the subject matter of a published application; or (b) Received written notice that
the invention that he was using was the subject matter of a published application
being identified in the said notice by its serial number: Provided, That the action
may not be filed until after the grant of a patent on the published application and
within four (4) years from the commission of the acts complained of (Sec. 46, IP
CODE).
Rule 805. Citation and references. - Should domestic patents be cited, their
numbers and dates, the names of the patentees, and the classes of inventions
must be stated. Should foreign patents be cited, their nationality or country,
numbers and dates and the names of the patentees must be stated, and such
other data must be furnished as may be necessary to enable the applicant to
identify the patents cited. In citing foreign patents, in case part of the patent be
involved, the particular pages and sheets containing the parts relied upon must
be identified. Should non-patent publications be cited, the author (if any), title,
date, relevant pages or plates, and place of publication, or place where a copy
can be found, shall be given.
PART 9
THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN
THE EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL
CONSIDERATIONS
Rule 900. Applications prosecuted ex parte. - An application is prosecuted ex
parte by the applicant; that is, the proceedings are like a lawsuit in which there is
a plaintiff, but no defendant, the court itself acting as the adverse party.
Rule 901. Proceedings a contest between the Examiner and the applicant. - An
ex parte proceeding in the Bureau is a law contest between the Examiner,
representing the public and trying to give the inventor the least possible
monopoly in return for his disclosure, and the applicant or his attorney trying to
get as much monopoly as possible.
Rule 902. Applicant supposed to look after his interest. - The Bureau,
represented by the Examiner, is not supposed to look after the interests of an
applicant. The Examiners are charged with the protection of the interest of the
public, and hence must be vigilant to see that no patent issues for subject matter
which is not patentable, and is already disclosed in prior inventions and
accessible to the public at large.
Rule 903. Preliminary adverse actions of the Examiner valuable to applicant. -
The positive value of preliminary adverse actions of the Examiner should be fully
appreciated by the applicant and his attorney. A hard-fought application will
produce a patent much more likely to stand in court than a patent which has slid
through the Bureau easily. This is so for two reasons: first, the rejections have
given the applicant or his attorney suggestions of strengthening amendments so
that his claims have been made infinitely less vulnerable than would be otherwise
possible; secondly, every point raised by the Examiner and finally decided by the
Bureau in favor of the applicant will give him a prima facie standing on that point
in court. The Office is empowered by law to pass upon applications for patents
and, because of the authority vested in it, its decisions with respect to the
granting of an application or on any point connected with it will be presumed to
be correct by the courts.

Rule 904. A preliminary rejection should not be taken literally; Examiner is only
trying to be helpful. - A rejection by the Examiner is never to be taken literally. An
applicant should remember that the Examiner may not be actually rejecting his
invention. The Examiner may in fact be quite prepared to admit the invention
over the references to the prior art. He may be merely rejecting the applicant's
claims, that is, the way in which the applicant has expressed his invention.
An Examiner will frequently make a blanket rejection on some reference to the
prior art just to be helpful to the applicant - just to give the applicant a chance to
explain away some reference and make a change in his claims to avoid it, rather
than to wait until the patent is granted and is involved in a litigation, when it may
be too late to make the explanation.
Rule 905. The Examiners shall have original jurisdiction over all applications;
appeal to the Director. - The examination of all applications for the grant of
invention patents shall be under the original jurisdiction of the several Examiners;
their decisions, when final, shall be subject to petition, or appeal to the Director
within four (4) months from the mailing date of the notice of the decision. As
regards information on any specific technical or scientific matter pending final
action by the Bureau, the applicant may, upon payment of a fee, request in
writing for a conference with the Examiner specifying the query he would want to
propound to the Examiner but in respect of which the Examiner has the
discretion to grant the request or choose to reply to the query in writing.
Rule 906. Order of examination. - Applications filed in the Bureau and accepted
as complete applications are assigned for examination to the respective
Examiners handling the classes of invention to which the applications relate.
Applications shall be taken up for examination by the Examiner in the order in
which they have been filed.
Applications which have been acted upon by the Examiner, and which have been
placed by the applicant in condition for further action by the said Examiner
(amended application) shall be taken up for such action in the order in which they
have been placed in such condition (date of amendment).
Rule 907. Nature of examination, Examiner's action. - (a) On taking up an
application for examination, the Examiner shall make a thorough study thereof
and shall make a thorough investigation of the available prior art relating to the
subject matter of the invention sought to be patented. The examination shall be
complete with respect both to compliance of the application with the statutes and
rules and to the patentability of the invention as claimed, as well as with respect
to matters of form, unless otherwise indicated.
(b) The applicant will be notified of the Examiner's action. The reasons for any
adverse action or any objection or requirement will be stated and such
information or references will be given as may be useful in aiding the applicant to
judge the propriety of continuing the prosecution of his application.
Rule 908. Completeness of Examiner's action. - The Examiner's action will be
complete as to all matters, except that in appropriate circumstances, such as
restriction requirement, fundamental defects in the application, and the like, the
action of the Examiner may be limited to such matters before further action is
made. However, matters of form need not be raised by the Examiner until a claim
is found allowable.
Rule 909. Rejection of claims. - (a) If the invention is not considered patentable,
in any manner, all the claims will be rejected by the Examiner. If the invention is
considered patentable as claimed in certain of the claims, but unpatentable as
claimed in other claims, the latter claims will be rejected but will not result in the
refusal to grant a patent provided it is limited only to claims that have not been
rejected.
(b) In rejecting claims for want of novelty or for want of inventive step, the
Examiner must cite the references most relevant to the invention. When a
reference is complex or shows or describes inventions other than that claimed by
the applicant, the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not obvious, must be clearly
explained and each rejected claim specified.
(c) Claims may be rejected for non-compliance with Sec. 35.1 and Sec. 36.1, IP
CODE.

Rule 910. Unpublished, withdrawn and forfeited applications not cited. -
Unpublished, withdrawn and forfeited applications as such will not be cited as
references.
Rule 911. Reply by applicant. - (a) After the action of the Examiner, if the same
be adverse in any respect, the applicant, if he persists in his application for a
patent, must reply thereto and may request re-examination or reconsideration,
with or without amendment.
(b) In order to be entitled to re-examination or reconsideration, the applicant must
make a request therefor in writing, and he must distinctly and specifically point
out the supposed errors in the Examiner's action; the applicant must respond to
every ground of objection and rejection in the prior Examiner's action (except that
request may be made that objections or requirements as to form, not necessary
to further consideration of the claims, be held in abeyance until a claim is
allowed), and the applicant's action must appear throughout to be a bona fide
attempt to advance the case to final action. The mere allegation that the
Examiner has erred will not be received as a proper reason for such
reexamination or reconsideration.
(c) In amending an application in response to a rejection, the applicant must
clearly point out the patentable inventiveness and novelty which he thinks the
claims present, in view of the state of the art disclosed by the references cited or
the objections made. He must also show how the amendments avoid such
references or objections.
Rule 912. Re-examination and reconsideration. - After response by applicant, the
application will be re-examined and reconsidered, and the applicant will be
notified if claims are rejected, or objections or requirements made, in the same
manner as after the first examination. Applicant may respond to such Examiner's
action, in the same manner provided in these Regulations, with or without
amendment, but any amendments after the second Examiner's action must
ordinarily be restricted to the rejection or to the objections or requirements made,
and the application will be again considered.
Rule 913. Final rejection or action. - (a) On the second or any subsequent
examination or consideration, the rejection or other action may be made final,
where upon applicant's response is limited to appeal, in the case of rejection of
any claim or to amendment as specified in these Regulations. Petition may be
taken to the Director in the case of objections or requirements not involved in the
rejection of any claim as provided in these Regulations. Response to a final
rejection or action must include cancellation of, or appeal from the rejection of,
each claim so rejected; and, if any claim stands allowable, compliance with any
requirement or objection as to form.
(b) In making such final rejection, the Examiner shall repeat all grounds of
rejection then considered applicable to the claims in the case, clearly stating the
reasons therefor. The Examiner may not cite grounds that have not been raised
in the earlier communications to the applicant.
Rule 914. Conversion of Patent Applications or Applications for Utility Model. - (a)
At any time before the grant or refusal of a patent, an applicant for a patent, may,
upon payment of the prescribed fee convert his application into an application for
registration of a utility model, which shall be accorded the filing date of the initial
application. An application may be converted only once. (Sec. 110, IP CODE)
(b) At any time before the grant or refusal of a utility model registration, an
applicant for a utility model registration may, upon payment of the prescribed fee,
convert his application into a patent application, which shall be accorded the filing
date of the initial application. (Sec. 110, IP CODE)
Rule 915. Prohibition against Filing of Parallel Applications. - An applicant may
not file two (2) applications for the same subject, one for utility model registration
and the other for the grant of a patent whether simultaneously or consecutively.
(Sec. 111, IP CODE)

AMENDMENTS BY THE APPLICANT
Rule 916. Amendment by the applicant. - An applicant may amend the patent
application during examination: Provided, That such amendment shall not include
new matter outside the scope of the disclosure contained in the application as
filed. (Sec. 49, IP CODE)
Rule 917. Amendments after final action of the Examiner. - (a) After final
rejection or action, amendments may be made canceling claims or complying
with any requirement of form which has been made, and amendments presenting
rejected claims in better form for consideration on appeal may be admitted; but
any proceedings relative thereto, shall not operate to relieve the application from
its condition as subject to appeal or to save it from being considered withdrawn.
(b) Should amendments touching the merits of the application be presented after
final rejection, or after appeal has been taken, or when such amendment might
not otherwise be proper, they may be admitted upon a showing of good and
sufficient reasons why they are necessary and were not earlier presented.
Rule 918. Amendment and revision required. - The specification, claims and
drawing must be amended and revised when required, to correct inaccuracies of
description and definition or unnecessary prolixity, and to secure correspondence
between the claims, the specification and the drawing.
Rule 919. Amendment of disclosure. - No deletion or addition shall broaden the
disclosure of an application to include new matter after the filing date of the
application. All amendments to the specification, claims or drawing, and all
additions thereto made after the filing date of the application must conform to at
least one of them as it was as of the filing date. Matter not found in either,
involving a departure from or an addition to the original disclosure, cannot be
added to the application even though supported by a supplemental oath, and can
be shown or claimed only in a separate application.
Rule 920. Amendment of claims. - The claims may be amended by canceling
particular claims, by presenting new claims or by amending the language of
particular new claims (such amended claims being in effect new claims). In
presenting new or amended claims, the applicant must point out how they avoid
any reference or ground of rejection of record which may be pertinent.
Furthermore, in order to facilitate the processing of the examination of the
application , the applicant shall indicate in his response which form part in the
original disclosure constitutes the basis of the amendments.
Rule 921. Manner of making amendments. - Erasures, additions, insertions, or
alterations of the papers and records must not be made by the applicant.
Amendments by the applicant are made by filing a paper in accordance with
these Regulations, directing or requesting that specified amendments be made.
The exact word or words to be stricken out or inserted in the application must be
specified and the precise point indicated where the deletion or insertion is to be
made. The basis of the proposed amendments in the original application as filed
shall be indicated.
Rule 922. Entry and consideration of amendments. - (a) Amendments are
entered by the Bureau by making the proposed deletions by drawing a line in red
ink through the word or words cancelled, and by making the proposed
substitutions or insertions in red ink, small insertions being written in at the
designated place and larger insertions being indicated by reference.
(b) Ordinarily all amendments presented in a paper filed while the application is
open to amendment are entered and considered provided that amendments that
do not comply with this rule may not be accepted. Untimely amendatory papers
may be refused entry and consideration in whole or in part.
Rule 923. Amendments to the drawing. - (a) No change in the drawing may be
made except by permission of the Bureau. Request for changes in the
construction shown in any drawing may be made only upon payment of the
required fee. A sketch in permanent ink showing proposed changes to become
part of the record must be filed together with the search request. The paper
requesting amendments to the drawing should be separate from other papers.
The drawing may not be withdrawn from the Bureau except for signature.
Substitute drawings will not ordinarily be admitted in any case unless required by
the Bureau.

Rule 924. Amendment of amendments. - When an amendatory clause is to be
amended, it should be wholly rewritten and the original insertion cancelled, so
that no interlineations or deletions shall appear in the clause as finally presented.
Matter cancelled by amendment can be reinstated only by a subsequent
amendment presenting the cancelled matter as a new insertion.
Rule 925. Substitute specification. - If the number or nature of the amendments
shall render it difficult to consider the case, or to arrange the papers for printing
or copying, the Examiner may require the entire specification or claims, or any
part thereof, to be rewritten. A substitute specification will ordinarily not be
accepted unless it has been required by the Examiner. A substitute specification
may be required within two (2) months from grant of the patent prior to
publication of the patent in the IPO Gazette.
Rule 926. Numbering of claims. - The original numbering of the claims must be
preserved through the prosecution. When claims are cancelled, the remaining
claims must not be renumbered. When claims are added by amendment or
substituted for cancelled claims, they must be numbered by the applicant
consecutively beginning with the number next following the highest numbered
claim previously presented (whether entered or not). When the application is
ready for allowance, the Examiner, if necessary, will renumber the claims
consecutively in the order in which they appear or in such order as may have
been requested by applicant.
Rule 927. Petition from refusal to admit amendment. - From the refusal of the
Examiner to admit an amendment, in whole or in part, a petition will lie to the
Director under these Regulations.
Rule 928. Interviews with the Examiners: when no interview is permitted -
Interviews with the Examiner concerning an application pending before the
Bureau can be held only upon written request specifying the query the applicant
would want to propound and after payment of the required fee, but in respect of
which the Examiner has the jurisdiction to grant interview or instead reply to the
query in writing. The interview shall take place within the premises of the Bureau
and during regular office hours as specified by the Examiner. All interviews or
conferences with Examiners shall be reduced to writing and signed by the
Examiner and the applicant immediately after the conference. Such writing shall
form part of the records of the Bureau. Interviews for the discussion of pending
applications shall not be held prior to the first official action thereon.
TIME FOR RESPONSE BY APPLICANT;
WITHDRAWAL OF APPLICATION
Rule 929. Withdrawal of application for failure to respond within 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 (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 mailing date of the official action requiring such
response.
(c) Prosecution of an application to save it from withdrawal 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 930. 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.
Rule 931. Express withdrawal of application. - An application may be expressly
withdrawn by filing in the Bureau a written declaration of withdrawal, signed by
the applicant himself and the assignee of record, if any, and identifying the
application.
PART 10
GRANT OF PATENT
Rule 1000. Grant of Patent. - If the application meets the requirements of the IP
CODE and these Regulations, the office shall grant the patent: Provided, That all
the fees are paid on time. If the required fees for grant and printing are not paid
in due time, the application shall be deemed withdrawn (Sec. 50, IP CODE)
Rule 1001. Contents of patent. - The patent shall be issued in the name of the
Republic of the Philippines under the seal of the Office and shall be signed by the
Director of Patents, and registered together with the description, claims, and
drawings, if any, in books and records of the Office. (Sec. 63, IP CODE)
Rule 1002. Publication upon Grant of Patent. - The grant of the patent together
with other information shall be published in the IPO Gazette within six (6)
months. (Sec. 52.1, IP CODE)
Rule 1003. Any interested party may inspect the complete description, claims,
and drawings of the patent on file with the Office. (Sec. 52.2, IP CODE)
PART 11
TERM OF PATENT
Rule 1100. Term of patent. - The term shall be twenty (20) years from the filing
date of the application (Sec. 54, IP CODE). However, a patent shall cease to be
in force and effect if any prescribed annual fees therefor is not paid within the
prescribed time or if the patent is cancelled in accordance with the provisions of
the IP CODE and these Regulations.
Rule 1101. Annual Fees. - The first annual fee on a patent shall be due and
payable on the expiration of four (4) years from the date the application is
published, 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. (Sec. 55, IP CODE)
Rule 1102. Date application is published. The application is published on the
date that the IPO Gazette containing the applications is released for circulation.
For example, if the IPO Gazette containing the application is released for
circulation on January 15, 1999, then the first annual fee shall be due and
payable on January 15, 2003.
Rule 1103. Non-payment of annual fees. If any annual fee is not paid within the
prescribed time, the application shall be deemed withdrawn or the patent
considered as lapsed from the day following the expiration of the period within
which the annual fees were due. A notice that the application is deemed
withdrawn or the lapse of a patent for non-payment of any annual fee shall be
published in the IPO Gazette and the lapse shall be recorded in the appropriate
register of the Office. (Sec. 55.2, IP CODE).
Rule 1104. Grace period. A grace period of six (6) months from the due date
shall be granted for the payment of the annual fee, upon payment of the
prescribed surcharge for delayed payment. (Sec. 55.3, IP CODE)

PART 12
OTHER PROCEEDINGS AFFECTING THE APPLICATION OR THE PATENT
Chapter 1. Recording of Assignment of Letters Patent, and of other Instruments
Affecting Title to Patents, Including Licenses
Rule 1200. Form of assignment of a patent or of an application for a patent. - To
be acceptable for recording, the assignment:
(a) must be in writing and if in a language other than English or Filipino, the
document must be accompanied by an English translation;
(b) must be acknowledged before a notary public or other officer authorized to
administer oaths and perform other notarial acts, and be certified under the hand
and official seal of the said notary or other officer;
(c) must be accompanied by an appointment of a resident agent, if the assignee
is not domiciled in the Philippines;
(d) so that there can be no mistake as to the patent or application intended, must
identify the letters patent involved by number and date, giving the name of the
patentee and the title of the invention as set forth in the patent; in the case of an
application for patent, the application number and filing date of the application
should be stated, giving also the name of the applicant, and the title of the
invention, set forth in the application, but if an assignment is executed
concurrently with or subsequent to the execution of the application but before the
application is filed, or before its application number is ascertained, it should
adequately identify the application, by its date of execution and name of the
applicant, and the title of the invention; and
(e) must be accompanied by the required recordal and publication fees.
Rule 1201. Form of other instruments affecting the title to a patent or application,
including licenses. - In order to be acceptable for recording, the form of such
other instrument, including licenses, must conform with the requirements of the
preceding rule.
Rule 1202. Assignment and other instruments to be submitted in duplicate. - The
original document together with a signed duplicate thereof, shall be submitted. If
the original is not available, an authenticated copy thereof in duplicate may be
submitted instead. After recording, the Office shall retain the signed duplicate or
one of the authenticated copies, as the case may be, and return the original or
the other authenticated copy to the party who filed the same, with a notation of
the fact of recording.
Rule 1203. Date of recording of assignment or other instrument or license
considered its date of filing. - The date of recording of an assignment or other
instrument is the date of its receipt at the Office in proper form and accompanied
by full payment of the required recording and publication fees.
Such instruments shall be void as against any subsequent purchaser or
mortgagee for a valuable consideration and without notice unless it is recorded in
the Office within three months from the date thereof, or prior to the subsequent
purchase or mortgage. (Sec. 106, IP CODE) Notice of the recording shall be
published in the IPO Gazette.
Rule 1204. Letters patent may be issued to the assignee in place of the
applicant. - In the case of the assignment of a pending application for patent, the
letters patent may be issued to the assignee of the applicant, provided the
assignment has been recorded in the Office before the actual issue of the patent.
Rule 1205. Action may be taken by assignee of record in any proceeding in the
Office. - Any action in any proceeding in the Office which may or must be taken
by a patentee or applicant may be taken by the assignee, provided the
assignment has been recorded.

Chapter 2. Surrender, Correction and Amendment of Patent
Rule 1206. Surrender of Patent. -(a) The owner of the patent, with the written and
verified consent of all persons having grants or licenses or other right, title or
interest in and to the patent and the invention covered thereby, which have been
recorded in the Office, may surrender his patent, any claim or claims forming part
thereof to the Office for cancellation. The petition for cancellation shall be in
writing, duly verified by the petitioner and if executed abroad shall be
authenticated. (Sec. 56, IP CODE)
(b) Any person may give notice to the Office of his opposition to the surrender of
a patent, and if he does so, the Bureau shall notify the proprietor of the patent
and determine the question.
(c) If the Office is satisfied that the patent may properly be surrendered, it may
accept the offer and, as from the day when notice of his acceptance is published
in the IPO Gazette, the patent shall cease to have effect, but no action for
infringement shall lie and no right compensation shall accrue for any use of the
patented invention before that day for the services of the government. (Sec. 56,
IP CODE)
Rule 1207. Correction of mistakes of the Office. - Upon written petition, in
duplicate, of the patentee or assignee of record, and upon tender to the Office of
the copy of the patent issued to the patentee, the Director shall have the power
to correct without fee any mistake in a patent incurred through the fault of the
Office when clearly disclosed by the records thereof, to make the patent conform
to the records. (Sec. 57, IP CODE)
Rule 1208. Correction of mistake in the application. - On request of any
interested person and payment of the prescribed fee, the Director is authorized to
correct any mistake in the patent of a formal and clerical nature, not incurred
through the fault of the Office. (Sec 58, IP CODE)
Rule 1209. Changes in patent. - (a) The owner of the patent shall have the right
to request the Bureau to make changes in the patent in order to:
(a) Limit the extent of the protection conferred by it; (b) Correct obvious
mistakes or to correct clerical errors; and (c) Correct mistakes or errors, other
than those referred to in letter (b), made in good faith; Provided, That were the
change would result in broadening of the extent of the protection conferred by the
patent, no request may be made after the expiration of two (2) years from the
grant of a patent and the change shall not affect the rights of any third party
which has relied on the patent, as published.
Rule 1210. Form and publication of amendment or corrections. - An amendment
or correction of a patent shall be accomplished by a certificate of such
amendment or correction, authenticated by the seal of the Office and signed by
the Director, which certificate shall be attached to the patent. Notice of such
amendment or correction shall be published in the IPO Gazette and copies of the
patent furnished by the Office shall include a copy of the certificate of the
amendment or correction. (Sec. 60, IP CODE)
Rule 1212. Assignment of inventions. - An assignment may be of the entire right,
title or interest in and to the patent and the invention covered thereby, or of an
undivided share of the entire patent and invention in which event the parties
become joint owners thereof. An assignment may be limited to a specified
territory. (Sec. 104, IP CODE)
Rule 1213. Rights of joint owners. - If two or more persons jointly own a patent
and the invention covered thereby either by the issuance of the patent in their
joint favor or by reason of the assignment of an undivided share in the patent and
invention or by reason of the succession in title to such share, each joint owner
shall be entitled to personally make, use, sell or import the invention for his own
profit: Provided, however, That neither of the joint owners shall be entitled to
grant licenses or to assign his right, title or interest or part thereof without the
consent of the other owner or owners, or without proportionately dividing the
proceeds with the other owner or owners. (Sec. 107, IP CODE)

PART 13
PETITIONS AND APPEAL
Rule 1300. Nature of the function of Examiners. The function of determining
whether or not an application for grant of patent should be allowed or denied
under the facts disclosed in the application and in the references consulted by
the Examiner and under the applicable law (statutory and decisional), is a quasi-
judicial function and involves the exercise of judicial discretion.
Thus, with respect to such function, the Director cannot lawfully exercise direct
control, direction and supervision over the Examiners but only general
supervision, exercised through a review of the recommendation they may make
for the grant of patent and of other actions, and through a review of their adverse
decisions by petition or appeal.
Rule 1301. Petition to the Director to question the correctness of the action of an
Examiner on a matter not subject to appeal. - Petition may be filed with the
Director from any repeated action or requirement of the Examiner which is not
subject to appeal and in other appropriate circumstances. Such petition, and any
other petition which may be filed, must contain a statement of the facts involved
and the point or points to be reviewed. Briefs or memoranda, if any, in support
thereof should accompany or be embodied in the petition. The Examiner, as the
case may be, may be directed by the Director to furnish a written statement
setting forth the reasons for his decision upon the matter averred in the petition,
supplying a copy thereof to the petitioner. The mere filing of a petition will not
stay the maximum period of six (6) months counted from the mailing date of the
Examiner's action subject of the appeal for replying to an Examiner's action nor
act as a stay of other proceedings.
Rule 1302. Appeals to the Director. - Every applicant for the grant of a patent
may, upon the final refusal of the Examiner to grant the patent, appeal the matter
to the Director. Appeal may also be taken to the Director from any adverse action
of the Examiner in any matter over which these Regulations give original
jurisdiction to the Examiner. A second adverse decision by the Examiner on the
same grounds may be considered as final by the applicant, petitioner, or
patentee for purposes of appeal.
Rule 1303. Effect of a final decision of an Examiner which is not appealed. - A
final decision of an Examiner which is not appealed to the Director within the time
permitted, or, if appealed, the appeal is not prosecuted, shall be considered as
final to all intents and purposes, and shall have the effect of res judicata in
respect of any subsequent action on the same subject matter.
If an application is considered abandoned for failure of the applicant to respond
to an action of the Examiner on the merits, the order declaring the application as
withdrawn which has become final shall likewise have the effect of res judicata.
Rule 1304. Time and manner of appeal. - Any petition or appeal must be taken
by filing the petition in duplicate or a notice of appeal, as the case may be, and
payment of the required fee within two (2) months from the mailing date of the
action subject of the petition or appeal, must specify the various grounds upon
which the petition or appeal is taken, and must be signed by the petitioner or
appellant or by his attorney of record. The period herein provided shall, in no
case, exceed the maximum period of six (6) months from the mailing date of the
action subject of the petition or appeal.
Rule 1305. Appelant's brief required. - In case of an appeal, the appellant shall,
within two (2) months, without extension, from the date of filing of the notice of
appeal, file a brief of the authorities and arguments on which he relies to maintain
his appeal. On failure to file the brief within the time allowed, the appeal shall
stand dismissed.

Rule 1306. The Examiner's answer. - The Examiner shall furnish a written
statement in answer to the petition or appellant's brief, as the case may be, within
two (2) months from the order of the Director directing him to submit such
statement. Copy of such statement shall be served on the petitioner or appellant
by the Examiner.
Rule 1307. Appellant's reply. - In case of an appeal, the appellant may file a reply
brief directed only to such new points as may be raised in the Examiner's
answer, within one (1) month from the date copy of such answer is received by
him.
Rule 1308. Appeal to the Director General. The decision or order of the Director
shall become final and executory fifteen (15) days after receipt of a copy thereof
by the appellant unless within the said period, a motion for reconsideration is filed
with the Director or an appeal to the Director General has been perfected by filing
a notice of appeal and payment of the required fee. Only one motion for
reconsideration of the decision or order of the Director shall be allowed.
Rule 1310. Director's comment. The Director shall submit within one (1) month
his comments on the appellant's brief if so required by the Director General.
Rule 1311. Appeal to the Court of Appeals. The decision of the Director General
shall be final and executory unless an appeal to the Court of Appeals is perfected
in accordance with the Rules of Court applicable to appeals from decisions of
Regional Trial Courts. No motion for reconsideration of the decision or order of
the Director General shall be allowed.
FINAL PROVISIONS
Section 1. Correspondence. The following regulations shall apply to
correspondence between patentee/applicants and the Office or the Bureau:
(a) Business to be transacted in writing. All business with the Office or Bureau
shall be transacted in writing. Actions will be based exclusively on the written
record. No attention will be paid to any alleged oral promise, stipulation, or
understanding. (b) Personal attendance of applicants and other persons
unnecessary. Unless otherwise provided, the personal attendance of applicants
and other persons at the Office is unnecessary. Their business can be transacted
by correspondence. (c) Correspondence to be in the name of the Director of
Patents. All Office letters with respect to matters within the jurisdiction of the
Bureau must be sent in the name of the Director of Patents. All letters and other
communications intended with respect to such matters must be addressed to him
and if addressed to any other officer, they will ordinarily be returned. (d)
Separate letter for each case. In every case, a separate letter shall be written in
relation to each distinct subject of inquiry. (e) Letter relating to applications.
When a letter concerns an application it shall state the name of the applicant, the
title of the invention, the application number and the filing date of the application.
(f) Letters relating to granted patents. When the letter concerns a granted
patent, it shall state the name of the patentee, the title of the invention, the patent
number and date of issuance. (g) Subjects on which information cannot be
given. The Office cannot respond to inquiries as to the newness or inventive step
of an alleged invention desired to be patented in advance of the filing of an
application for a patent.
On the propriety of making an application for the grant of patent, the applicant
must judge for himself or consult an attorney-at-law or patent agent. The Office is
open to him, and its records pertaining to all patents granted may be inspected
either by himself or by any attorney or agent he may call to his aid. Further than
this the Office can render him no assistance until his application comes regularly
before it in the manner prescribed by law and by these Regulations. A copy of
the law, rules, or circular of information, with a section marked, set to the
individual making an inquiry of the character referred to, is intended as a
respectful answer by the Office.
Examiners' digests are not open to public inspection.
The foregoing shall not, in any way, be interpreted to prohibit the Office from
undertaking an information dissemination activity in whatever format, to increase
awareness on the patent law.

Section 2. Fees and charges to be prepaid; Fees and charges payable in
advance. Express charges, freight, postage, telephone, telefacsimile including
cost of paper and other related expenses, and all other charges on any matter
sent to the Office must be prepaid in full. Otherwise, the Office shall not receive
nor perform any action on such matters. The filing fees and all other fees and
charges payable to the Office shall be collected by the Office in advance of any
service to be rendered.
Section 3. Implementation. In the interest of the service, until the organization of
the Bureau is completed, the functions necessary to implement these
Regulations shall be performed by the personnel of the former Bureau of
Patents, Trademarks and Technology Transfer as may be designated by the
Director General upon the recommendation of the Chiefs of the Chemical
Examining Division and the Mechanical and Electrical Examining Division of the
Bureau of Patents, Trademarks and Technology Transfer, or the Director of
Patents if one has been appointed and qualified or the Caretaker or the Officer-
in-Charge as the Director General may designate.
Section 4. Repeals. All rules and regulations, memoranda, circulars, and
memorandum circulars and parts thereof inconsistent with these Regulations
particularly the Rules of Practice in Patent Cases, as amended, are hereby
repealed; Provided that all applications for patents pending in the Bureau of
Patents, Trademarks and Technology Transfer shall be proceeded with and
patents thereon granted in accordance with the Acts under which said
applications were filed, and said Acts are hereby continued to be enforced, to this
extent and for this purpose only.
Section 5. Separability. If any provision in these Regulations or application of
such provision to any circumstance is held invalid, the remainder of these
Regulations shall not be affected thereby.
Section 6. 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.

PART 1
Registration of Trademarks and Service Marks
RULE 10. - Title. - These regulations shall be known as the "Trademark
Regulations". [As amended by Office Order No. 08 (2000)]
RULE 100. Definitions. - Unless otherwise specified, the following terms shall
have the meaning provided in this Rule:
(a) "Bureau" means the Bureau of Trademarks of the Intellectual Property Office;
(b) "Collective mark" means any visible sign designated as such in the
application for registration and capable of distinguishing the origin or any other
common characteristics, including the quality of goods or services of different
enterprises which use the sign under the control of the registered owner of the
collective mark; (c) "Competent authority" for purposes of determining whether
a mark is well-known, means the Court, the Director General, the Director of the
Bureau of Legal Affairs, or any administrative agency or office vested with quasi-
judicial or judicial jurisdiction to hear and adjudicate any action to enforce the
rights to a mark; (d) "Director" means the Director of the Bureau of Trademarks;
(e) "Director General" means the head of the Intellectual Property Office; (f)
"Examiner" means the trademark examiner or any official or employee of the
Bureau of Trademarks authorized to examine applications for registration or
renewals thereof; (g) "IP Code" means Republic Act No. 8293 otherwise known
as the Intellectual Property Code of the Philippines; (h) "IPO Gazette" means
the Intellectual Property Office's own publication where all matters required to be
published under the IP Code shall be published; (i) "Mark" means any visible
sign capable of distinguishing the goods (trademark) or services (service mark)
of an enterprise and shall include a stamped or marked container of goods; (j)
"Office" means the Intellectual Property Office; (k) "Regulations" means these
set of rules and regulations and such Rules of Practice in Trademarks and
Service Marks as may be formulated by the Director of Trademarks and
approved by the Director General; and (l) "Trade name" means the name or
designation identifying or distinguishing an enterprise, also known or referred to
as business identifier.
RULE 101. Registrability. - A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter which may
disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or
any of its political subdivisions, or of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of his widow, if any, except
by written consent of the widow; (d) Is identical with a registered mark
belonging to a different proprietor or a mark with an earlier filing or priority date,
in respect of:
(i) The same goods or services, or (ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause
confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be well-
known internationally and in the Philippines, whether or not it is registered here,
as being already the mark of a person other than the applicant for registration,
and used for identical or similar goods or services; Provided, That in determining
whether a mark is well-known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the
promotion of the mark; (f) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered well-known in accordance with the
preceding paragraph, which is registered in the Philippines with respect to goods
or services which are not similar to those with respect to which registration is
applied for: Provided, That use of the mark in relation to those goods or services
would indicate a connection between those goods or services, and the owner of
the registered mark: Provided, further, That the interests of the owner of the
registered mark are likely to be damaged by such use; (g) Is likely to mislead
the public, particularly as to the nature, quality, characteristics or geographical
origin of the goods or services. Geographical indications are indications which
identify a good as originating in the territory of a country which is a member of, or
a region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin. (h)
Consists exclusively of signs that are generic for the goods or services that they
seek to identify; (i) Consists exclusively of signs or of indications that have
become customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice; (j) Consists exclusively
of signs or of indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time or production of the
goods or rendering of the services, or other characteristics of the goods or
services; (k) Consists of shapes that may be necessitated by technical factors
or by the nature of the goods themselves or factors that affect their intrinsic
value; (l) Consists of color alone, unless defined by a given form; or (m) Is
contrary to public order or morality.
As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing
shall prevent the registration of any such sign or device which has become
distinctive in relation to the goods or services for which registration is requested
as a result of the use that has been made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that the mark has become
distinctive, as used in connection with the applicant's goods or services in
commerce, proof of substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for five (5) years before the date on
which the claim of distinctiveness is made.
The nature of the goods or services to which the mark is applied will not
constitute an obstacle to registration.
RULE 102. Criteria for determining whether a mark is well-known. - In
determining whether a mark is well-known, the following criteria or any
combination thereof may be taken into account:
(a) the duration, extent and geographical area of any use of the mark, in
particular, the duration, extent and geographical area of any promotion of the
mark, including advertising or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies; (b) the
market share, in the Philippines and in other countries, of the goods and/or
services to which the mark applies; (c) the degree of the inherent or acquired
distinction of the mark; (d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world; (f) the
exclusivity of registration attained by the mark in the world; (g) the extent to
which the mark has been used in the world; (h) the exclusivity of use attained
by the mark in the world; (i) the commercial value attributed to the mark in the
world; (j) the record of successful protection of the rights in the mark; (k) the
outcome of litigations dealing with the issue of whether the mark is a well-known
mark; and, (l) the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services and owned by
persons other than the person claiming that his mark is a well-known mark.

RULE 103. Trade Names or Business Names. - (a) A name or designation may
not be used as a trade name if by its nature or the use to which such name or
designation may be put, it is contrary to public order or morals and if, in
particular, it is liable to deceive trade circles or the public as to the nature of the
enterprise identified by that name.
(b) Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or without
registration, against any unlawful act committed by third parties. In particular, any
subsequent use of the trade name by a third party, whether as a trade name or a
mark or collective mark, or any such use of a similar trade name or mark, likely to
mislead the public, shall be deemed unlawful.
(c) The remedies provided for cancellation and infringement of marks in Sections
153 to 156 and Sections 166 and 167 of the IP Code shall apply to tradenames
mutatis mutandis.
(d) Any change in the ownership of a trade name shall be made with the transfer
of the enterprise or part thereof identified by that name. However, such transfer
or assignment shall be null and void if it is liable to mislead the public, particularly
as regards the nature, source, manufacturing process, characteristics, or
suitability for their purpose, of the goods or services to which the mark is applied.
PART 2
Right to a Mark
RULE 200. How Marks are Acquired. - The rights in a mark shall be acquired
through registration made validly in accordance with the law.
RULE 201. International Conventions and Reciprocity. - (a) Any person who is a
national or who is domiciled or has a real and effective industrial establishment in
a country which is a party to any convention, treaty or agreement relating to
intellectual property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the extent necessary to give
effect to any provision of such convention, treaty or reciprocal law, in addition to
the rights to which any owner of an intellectual property right is otherwise entitled
by the Intellectual Property Code.
(b) The registration of a mark of such person shall be independent of the
registration in the country of origin and the duration, validity or transfer in the
Philippines of such registration shall be governed by the IP Code and these
Regulations.
RULE 202. Priority Right; Basis for Claiming Priority Right. - (a) An application for
registration of a mark filed in the Philippines by a person referred to in Rule 201,
and who previously duly filed an application for registration of the same mark in
one of those countries, shall be considered as filed as of the day the application
was first filed in the foreign country.
(b) No registration of a mark in the Philippines by a person described in this rule
shall be granted until such mark has been registered in the country of origin of
the applicant.
(c) The country of origin of the applicant is the country in which he is a national,
domiciled, or has a bona fide and effective industrial or commercial
establishment.
(d) Nothing in this rule shall entitle the owner of a registration granted under this
rule to sue for acts committed prior to the date on which his mark was registered
in the Philippines; Provided, That, notwithstanding the foregoing, the owner of a
well-known mark, as defined in the IP Code and these Regulations, that is not
registered in the Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of its registration or sue
for unfair competition, without prejudice to availing himself of other remedies
provided for under the law.
(e) In like manner and subject to the same conditions and requirements, the
priority right may be based upon a subsequent regularly filed application in the
same foreign country: Provided, That any foreign application that was made the
basis of the priority right and filed prior to such subsequent application has been
withdrawn, abandoned, or otherwise disposed of, without having been laid open
to public inspection and without leaving any rights outstanding, and has not
served as a basis for claiming a right of priority shall not thereafter serve as a
basis for claiming a right of priority.

RULE 203. Requirements for Applications Claiming Priority Right.- An application
with claim of priority right must be filed within six (6) months from the date the
earliest foreign application was filed. Without need of any notice from the Office,
Bureau or examiner, the applicant shall file an English translation of a certified
copy of any of the following within three (3) months from the date of filing in the
Philippines:
a) Foreign application showing the date of filing b) Foreign registration
indicating the date of filing [as amended by Office Order No. 39 (2002)]
RULE 204. Declaration of Actual Use. - The Office will not require any proof of
use in commerce in the processing of trademark applications. However, without
need of any notice from the Office, all applicants or registrants shall file a
declaration of actual use of the mark with evidence to that effect within three
years, without possibility of extension, from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be removed from
the register by the Director motu proprio.
RULE 205. Contents of the Declaration and Evidence of Actual Use. - The
declaration shall be under oath, must refer to only one application or registration,
must contain the name and address of the applicant or registrant declaring that
the mark is in actual use in the Philippines, list of goods where the mark is
attached; list the name or names and the exact location or locations of the outlet
or outlets where the products are being sold or where the services are being
rendered, recite sufficient facts to show that the mark described in the application
or registration is being actually used in the Philippines and, specifying the nature
of such use. The declarant shall attach five labels as actually used on the goods
or the picture of the stamped or marked container visibly and legibly showing the
mark as well as proof of payment of the prescribed fee. [As amended by Office
Order No. 08 (2000)]
PART 3
Who May Apply for a Mark
RULE 300. The Applicant. - (a) Applicant may be a person or juridical person.
(b) Unless modified by this Chapter, all applications for a mark should be in the
name of the applicant(s) who may sign the application. If there are more than one
applicant, all of them should be named as applicant but anyone may sign the
application for and in behalf of all the applicants.
RULE 301. Assigned marks. - In case the whole interest in the mark is assigned,
the application may be filed in the name of the assignee who may sign the
application. In case the assignee is a juridical person, any officer thereof may
sign the application in behalf of the said person. In case of an aliquot portion or
undivided interest, each of the joint owners will sign the application.
RULE 302. Representation; Address for Service. - If the applicant is not
domiciled or has no real and effective commercial establishment in the
Philippines, he shall designate by a written document filed in the Office, the name
and address of a Philippine resident who may be served notices or process in
proceedings affecting the mark. The written document shall be submitted to the
Office within sixty (60) days from filing date without need of any notice from the
Office. Such notices or services may be served upon the person so designated
by leaving a copy thereof at the address specified in the last designation filed. If
the person so designated cannot be found at the address given in the last
designation, such notice or process may be served upon the Director. [As
amended by Office Order No. 08 (2000)]
RULE 303. Applicant may be represented by attorney. - The owner of a mark
may file and prosecute his own application for registration, or he may be
represented by any attorney or other person authorized to practice in such
matters by the Office. The Office shall not aid in the selection of an attorney or
agent other than the furnishing of the list of Attorneys or agents authorized to
practice before the Office.
RULE 304. Power of attorney or Authorization. - At the time of filing of an
application, no power of attorney or authorization is required. However, the Office
may require any attorney or other recognized person to submit within sixty (60)
days from notice a power of attorney or authorization before he will be allowed to
take an initial or further action in any application or registration.
A substitute or associate attorney may be appointed by an attorney only upon the
written authorization of his principal; but a third attorney appointed by the second
will not be recognized.
[As amended by Office Order No. 08 (2000)]

RULE 305. Death, insanity, incapacity of applicant. - When the applicant dies,
becomes insane or otherwise incapacitated, the legally appointed executor,
administrator, guardian, conservator or representative of the dead or insane or
incapacitated applicant may prosecute the application in behalf of the heirs and
successors-in-interest of the applicant.
RULE 306. Signature and other means of Self-identification. - (a) Where a
signature is required, the Office shall accept:
(1) A hand-written signature; or (2) The use of other forms of signature, such as
a printed or stamped signature, or the use of a seal, instead of a hand-written
signature: Provided, That where a seal is used, it should be accompanied by an
indication in letters of the name of the signatory.
(b) No attestation, notarization, authentication, legalization or other certification of
any signature or other means of self-identification referred to in the preceding
paragraphs, will be required, except, where the signature concerns the surrender
of a registration.
PART 4
Trademark Application
RULE 400. Requirements of application. - All applications must be addressed to
the Director and shall be in Filipino or English and shall contain the following:
(a) a request for registration; (b) the name and address of the applicant; (c)
the name of a State of which the applicant is a national or where he has domicile;
and the name of a State in which the applicant has a real and effective industrial
or commercial establishment, if any; (d) where the applicant is a juridical entity,
the law under which it is organized and existing; (e) the appointment of an
agent or representative, if the applicant is not domiciled in the Philippines; (f)
where the applicant claims the priority of an earlier application, a declaration
claiming the priority of that earlier application, together with an indication of: -
the name of the state with whose national Office the earlier application was filed
or if filed with an Office other than a national Office, the name of that Office; -
the date on which the earlier application was filed; and - where available, the
application number of the earlier application; (g) where the applicant wishes to
claim color as a distinctive feature of the mark, a statement to that effect as well
as the name or names of the color or colors claimed and an indication, in respect
of each color, of the principal parts of the mark which are in that color; (h)
where the mark is a three-dimensional mark, a statement to that effect; (i) a
reproduction of the mark and facsimiles thereof as provided in these Regulations;
(j) a transliteration or translation of the mark or of some parts of the mark, as
prescribed in these Regulations; (k) the names of the goods or services for
which the registration is sought, grouped according to the classes of the Nice
Classification, together with the number of the class of the said Classification to
which each group of goods or services belongs; (l) where the application is for
a collective mark, a designation to that effect; (m) a signature by, or other self-
identification of, the applicant or his representative; (n) Power of Attorney if the
filing is through a representative; and (o) sworn statement that the applicant is a
small entity if such be the fact.
RULE 401. Office Application Form. - For the convenience of applicants, the
Office shall draw up and make available a standard application form which may
be reproduced at will by applicants and other persons at their own cost.
RULE 402. Label. - The applicant may include the label as actually used or
intended to be used on the goods or a copy or duplicate made by photo
engraving or some similar process.
The mark must be bigger and more dominant than the generic term of goods
except in the case of medicine as required by law.

RULE 403. Drawing. - (a) The drawing of the mark shall be substantially exact
representation thereof as actually used or intended to be used on or in
connection with, the goods or services of the applicant.
(b) A typed drawing may be accepted by the Examiner if no special
characteristics have to be shown such as design, style of lettering, color,
diacritical marks, or unusual forms of punctuation. A computer print-out may also
be accepted by the Examiner if it substantially complies with the requirement that
it must be the exact representation of the mark.
(c) The provisions of this Rule shall, however be construed liberally in
determining whether the applications shall be considered complete for the
purpose of granting a filing date.
RULE 404. Drawing for a service mark may be dispensed with in certain cases. -
The drawing of a service mark may be dispensed with but the application must
contain an adequate description of such mark.
RULE 405. Drawing to be on Bristol board. - The Drawing must be made upon
pure white paper of a thickness of a Bristol board. The surface of the paper must
be calendered and smooth.
RULE 406. Size of board; "sight". - The size of a sheet on which a Drawing is
made must be exactly two hundred ten millimeters (210 mm) by two hundred
ninety-seven millimeters (297 mm) or the size of an A4 paper. Nineteen
millimeters (19 mm) from its edges, a single marginal line is to be drawn, leaving
the "sight" precisely one hundred seventy-two millimeters (172 mm) by two
hundred fifty-nine millimeters (259 mm). Within this margin all work and
signatures must be included. One of the shorter sides of the sheet should be
regarded as its top.
RULE 407. Drawing to be with the Pen or by other processing giving satisfactory
results. - If colors are not claimed, all Drawings must be made with pen only or by
a process which will give them satisfactory reproduction characteristics. Every
line and letter, signatures included, must be absolutely black. This direction
applies to all lines, however fine, and to shading. All lines must be clean, sharp,
and solid, and they must not be too fine or crowded. Surface shading, when
used, should be open.
RULE 408. The Name of the Owner to be within Marginal Lines. - The name of
the proprietor of the trademark or service mark trade name must be within the
marginal lines and should not encroach upon the drawing. It should be signed by
the owner or his Attorney of record. However, a printed or stamped signature or
the use of seal accompanied by an indication in letters of the name of signatory
is also accepted.
RULE 409. When board may be turned on its side. - When the view is longer
than the width of the sheet, the sheet should be turned on its side.
RULE 410. Manner of mailing the Drawing to the Bureau. - Drawing transmitted
to the Office should be sent flat, protected by a sheet of heavy binder's board, or
should be rolled for transmission in a suitable mailing tube. They should never be
folded.
RULE 411. Color. - Where color is a material feature of the mark as used or
intended to be used, the color or colors employed may be actually reproduced in
the drawings and facsimiles. Otherwise, a statement must be made giving the
name or names of the color or colors claimed indicating the principal part or parts
of the mark which are in such color or colors.
RULE 412. Informal Drawing. - A Drawing not executed in conformity with the
foregoing rules may be accepted for the purpose of examination, but the Drawing
must be corrected or a new one furnished, as may be required, before the mark
can be published for opposition or the application allowed. Substitute Drawings
will not be accepted unless they have been required by the Examiner or unless
correction of original Drawing would require that the mark or trade name be
substantially entirely redrawn.

RULE 413. Use of an old Drawing in a new application. - In an application filed in
place of an abandoned or rejected application, a new complete application is
required, but the old Drawing, if suitable, may be used. The application must be
accompanied by a request for the transfer of the Drawing, and by a permanent
photographic copy, or an order for such copy, of the Drawing to be placed in the
original file. A drawing so transferred or to be transferred cannot be amended.
RULE 414. The small facsimiles of the Drawing, how prepared. - The ten small
facsimiles of the Drawing must be printed in black ink or in color, if colors are
claimed, one facsimile on Bristol board and the other nine facsimiles on an
ordinary coupon bond paper and must be capable of being satisfactorily
reproduced when published in the IPO Gazette. The size of the sheet on which
these facsimiles are to be printed must be seventy millimeters (70 mm) long and
thirty-five millimeters (35 mm) wide.
RULE 415. Translation/Transliteration. - A translation or transliteration of the
mark or of some parts of the mark must accompany the application if the mark or
of some parts of the mark is/are foreign word(s), letter(s) and character(s), or
foreign sounding.
Transliteration is an act, process or instance of representing or spelling of words,
letters or characters of one language in the letters and characters of another
language or alphabet.
Translation is an act, process or instance of translating as rendering from one
language or representational system into another.
RULE 416. Nice Classification. - The applicant must indicate the names of the
goods or services for which the registration is sought, grouped according to the
classes of the Nice Classification, together with the number of the class of the
Nice Classification to which each group of goods or services belongs.
CLASSIFICATION OF GOODS
TITLE
Class
1 Chemical products used in industry, science, photography, agriculture,
horticulture, forestry; artificial and synthetic resins; plastics in the form of
powders, liquids or plates, for industrial use; manures (natural and artificial); fire
extinguishing compositions; tempering substances and chemical preparations for
soldering; chemical substances for preserving foodstuffs; tanning substances;
adhesive substances used in industry.
2 Paints, varnishes, lacquers, preservatives against rust and against
deterioration of wood; coloring matters; dyestuffs; mordants; natural resins;
metals in foil and powder form for painters and decorators
3 Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery; essential oils,
cosmetics, hair lotions, dentrifices
4 Industrial oils and greases (other than edible oils and fats and essential oils
);lubricants; dust laying and absorbing compositions; fuels (including motor spirit)
and illuminants; candles, tapers, nightlights and wicks
5 Pharmaceutical, veterinary and sanitary substances; infants'; and invalids'
foods; plasters, material for bandaging; material for stopping teeth, dental wax;
disinfectants; preparations for killing weeds and destroying vermin
6 Unwrought and partly wrought common metals and their alloys; anchors,
anvils, bells, rolled and cast building materials; rails and other metallic materials
for railway tracks; chains (except driving chains for vehicles); cables and wires
(non-electric); lock-smiths' work ; metallic pipes and tubes; safes and cash
boxes; steel balls; horseshoes; nails and screws; other goods in non-precious
metal not included in other classes; ores
7 Machines and machine tools; motors (except for land vehicles); machine
couplings and belting (except for land vehicles); large size agricultural
implements; incubators
8 Hand tools and instruments; cutlery, forks and spoons; side arms
9 Scientific, nautical, surveying and electrical apparatus and instruments
(including wireless), photographic, cinematographic, optical, weighing,
measuring, signalling, checking (supervision), life saving and teaching apparatus
and instruments; coin or counter-freed apparatus; talking machines; cash
registers; calculating machines; fire-extinguishing apparatus
10 Surgical, medical, dental and veterinary instruments and apparatus (including
artificial limbs, eyes and teeth)
11 Installations for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes
12 Vehicles; apparatus for locomotion by land, air or water
13 Firearms; ammunition and projectiles; explosive substances; fireworks
14 Precious metals and their alloys and goods in precious metals or coated
therewith ( except cutlery, forks and spoons); jewelry, precious stones;
horological and other chronometric instruments
15 Musical instruments (other than talking machines and wireless apparatus)
16 Paper and paper articles, cardboard and cardboard articles; printed matter,
newspaper and periodicals, books; bookbinding materials; photographs;
stationery, adhesive materials (stationery); artists' materials; paint brushes;
typewriters and Office requisites (other than furniture); instructional and teaching
material (other than apparatus);playing cards; (printers') type and cliches
(stereotype)
17 Gutta percha, india rubber, balata and substitutes, articles made from these
substances, and not included in other classes; plastics in the form of sheets,
blocks and rods, being for use in manufacturers; materials for packing, stopping
or insulating; asbestos, mica and their products; hose pipes (non-metallic)
18 Leather and imitations of leather, articles made from these materials, and not
included in other classes; skins, hides, trunks and travelling bags; umbrellas,
parasols and walking sticks; whips, harness and saddlery
19 Building materials, natural and artificial stone, cement, lime, mortar, plaster
and gravel; pipes of earthenware or cement; road-making materials; asphalt,
pitch and bitumen; portable buildings; stone monuments; chimney pots
20 Furniture, mirrors, picture frames; articles (not included in other classes) of
wood, cork, reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber,
mother-of-pearl, meerschaum, celluloid, substitutes for all these material, or of
plastic
21 Small domestic utensils and containers (not of precious metal, nor coated
therewith);combs and sponges; brushes (other than paint brushes);brush-making
materials; instruments and materials for cleaning purposes; steel wool; unworked
or semi-worked glass (excluding glass used in building); glassware, porcelain
and earthenware not included in other classes
22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and
stuffing materials (hair, capoc, feathers, seaweeds, etc.); raw textile materials
23 Yarns, threads
24 Tissues (piece goods); bed and table covers; textile articles not included in
other classes
25 Clothing, including boots, shoes and slippers
26 Lace and embroidery, ribbons and braids; buttons, press buttons, hooks and
eyes, pins and needles; artificial flowers
27 Carpets, rugs, mats and matting; linoleums and other materials for covering
existing floors; wall hangings (non-textile)
28 Games and playthings; gymnastic and sporting articles (except clothing);
ornaments and decorations for Christmas trees
29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams; eggs; milk and other dairy products; edible
oils and fats; preserves, pickles
30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and
preparations made from cereals; bread, biscuits, cakes pastry and confectionery,
ices; honey, treachel; yeast, baking-powder; salt mustard; pepper, vinegar,
sauces; spices; ice
31 Agricultural, horticultural and forestry products and grains not included in
other classes; living animals; fresh fruits and vegetables; seeds; live plants and
flowers; foodstuffs for animals, malt
32 Beer, ale and porter; mineral and aerated waters and other non-alcoholic
drinks; syrups and other preparations for making beverages.
33 Wines, spirits and liqueurs
34 Tobacco, raw or manufactured; smokers' articles; matches

(b) CLASSIFICATION OF BUSINESS OR SERVICES
35 Advertising and business
36 Insurance and financial
37 Construction and repair
38 Communication
39 Transportation and storage
40 Material treatment
41 Education and entertainment
42 Miscellaneous
RULE 417. Broad terms. - In any application, the use of broad terms in identifying
the goods, business or services shall be unacceptable. Applicants whose
application are based on foreign registration shall be required to specify the
goods covered by such foreign registration in all cases where the foreign
registration used broad terms in identifying the goods, business or services.
RULE 418. Single registration for goods and/or services. - One (1) application
may relate to several goods and/or services, whether they belong to one (1)
class or to several classes of the Nice Classification. Where goods and/or
services belonging to several classes of the Nice Classification have been
included in one (1) application, such an application shall result in one registration.
RULE 419. Division of Applications. - (a) Any application referring to several
goods or services referred to as the "initial application" may be divided by the
applicant into two (2) or more applications hereafter referred to as the "divisional
applications" by distributing among the latter the goods or services referred to in
the initial application.
(b) A single class shall not be subdivided. (c) The divisional applications must
be submitted before examination of the initial application or within two (2) months
from mailing date of the first action of the Bureau. (d) Upon receipt of the
divisional applications, the Office shall cancel the initial application together with
its application number. New application numbers shall be given to the divisional
applications but the filing date shall be the same as the filing date of the initial
application. The divisional applications shall likewise preserve the benefit of the
right of priority of the initial application.
PART 5
The Filing Date
RULE 500. Filing Date. - Subject to the provisions on priority right, the filing date
of an application shall be the date on which the Office received the payment for
the required fee and the following indications and elements in English or Filipino:
(a) An express or implicit indication that the registration of a mark is sought; (b)
The identity of the applicant; (c) Indications sufficient to contact the applicant or
his representative, if any; (d) A reproduction of the mark whose registration is
sought; and (e) The list of the goods or services for which the registration is
sought.

RULE 501. Application Number and Filing Date. - (a) Before starting to examine
the registrability of a mark, the Examiner or such other personnel as the Director
may authorize, shall examine whether the application satisfies the requirements
for the grant of a filing date as provided in these Regulations. If the application
does not satisfy the filing date requirements, the Bureau shall notify the applicant
who shall, within a period of one (1) month from mailing date of the notice,
complete or correct the application as required; otherwise, the application shall
be considered withdrawn.
(b) If the application did not satisfy the requirements for grant of a filing date at
the time that the filing fee and other indications were received by the Office, the
filing date that was given shall be cancelled and a new filing date shall be
entered in the records of the Office. The new filing date shall be the date on
which the Office received the completed or corrected application as specified in
the notice to the applicant.
PART 6
Proceedings in the Examination of an Application for Registration
CHAPTER 1
Nature of the Proceedings
RULE 600. Application prosecuted ex parte; Protests. - An application for
registration is prosecuted ex parte by the applicant; that is, the proceedings are
like a lawsuit in which there is a plaintiff (the applicant) but no defendant, the
court itself (the Examiner) acting as the adverse party.
No attention shall be paid to ex parte statements or protests of persons
concerning pending applications to which they are not parties, unless information
of the pendency of these applications shall have been voluntarily communicated
by the applicants.
RULE 601. Proceedings a contest between Examiner and the Applicant. - An ex
parte proceeding in the Office for the registration of a mark is a law contest
between the Examiner, representing the interest of the public and the applicant
(or his attorney), representing his own private interests.
RULE 602. Applicant supposed to look after his own interests. - The Office,
represented by the Examiner, is not supposed to look after the interest of an
applicant. The law imposes that duty upon the applicant himself. The Examiner is
charged with the protection of the interests of the public and hence must be
vigilant to see that no registration issues for a mark contrary to law and these
Regulations.
RULE 603. Preliminary adverse action of the Examiner valuable to Applicant. -
The positive value of a preliminary adverse action of the Examiner should be fully
appreciated by the applicant or his attorney. A hard-fought application will
produce a registration much more likely to stand in court than a registration which
has slid through the Office easily. The reason for this is that every point raised by
the Examiner and finally decided by the Office in favor of the applicant will give
the applicant a prima facie standing on that point in court.
The Office is empowered by law to pass upon applications for registration and,
because of the authority vested in it, its decisions with respect to the grant of a
registration, or on any point connected with it, are presumed to be correct by the
courts.
RULE 604. A preliminary rejection should not be taken literally; Examiner is only
trying to be helpful. - A preliminary rejection by the Examiner is never to be taken
literally. An applicant should remember that the Examiner may not be actually
rejecting his application. The Examiner may in fact be quite prepared to admit the
application, and is only trying to give the applicant a chance to explain away
some reference or some difficulty rather than have him wait until the registration
is granted and become involved in a litigation, when it may then be difficult for
him to make the explanation.

CHAPTER 2
Manner of Examination of an Application for Registration; Action by the
Examiner; Response by the Applicant; Abandonment; Revival
RULE 605. Order of examination; priority of action. - (a) Applications shall be
examined for registrability in the order in which the complete requirements for
grant of filing date are received by the Office. Ordinarily, the order of the
application number assigned to them by the Office will be followed and no
application bearing a higher application number shall be examined in advance of
the applications with lower application numbers unless the filing date of the
application bearing the higher number is earlier than those bearing a lower
number. (b) Priority of action and/or examination may be granted upon petition
under oath with payment of fees and upon order of the Director, to trademark
applications falling under any of the following: 1. Re-filing by the same
registrant or assignee of a mark previously registered but cancelled for failure to
meet the maintenance requirement. 2. Re-filing by the same applicant of a
mark previously filed but abandoned and can no longer be revived. 3. An
application for registration of a mark, names or abbreviation of names, logos of
any nation, intergovernmental or international organizations. 4. An application
for registration of a mark, names, abbreviation of names, logos of any sports
competition conducted within a short period of time or when periodically
conducted, the TM registration is necessary to promote goodwill or image before
the commencement of the sports activity. 5. An application for registration of
mark, names, abbreviation of names, logos of product and services of applicants
introduced and/or participating in a trade mission and/or exposition local or
abroad and will be conducted within a short period of time. 6. An application for
registration of mark, names, abbreviations of names, logos of a religious, social
or charitable, educational activity the early registration of which is necessary to
achieve its purpose or objective. 7. Domain names (as service mark); and, 8.
Trademarks, servicemarks, and tradenames used or to be used in Information
and Communications Technology (ICT) infrastracture. [As amended by Office
Order No. 20 (2001)]
RULE 606. Jurisdiction of the Examiner. - The Examiners shall have original
jurisdiction over the examination of all applications for registration and over their
allowance for publication in the IPO Gazette for purposes of opposition. Their
decision, when final, shall be subject to petition and appeal to the Director.
Applicants, their attorneys or agents shall take up the problems arising from their
pending applications only with the respective Examiners in charge and with no
other person in the Office.
RULE 607. Examination of the application; Action by the Examiner. -
(a) If, after the examination, the applicant is found not entitled to registration for
any reason, he will be so notified by the Examiner. He will be advised of the
reasons therefor and of any formal requirements or objections, and he will be
given such information and references as may be helpful to him in the further
prosecution of his application.
(b) All Examiners are required to include all grounds of objection existing at the
time of the issuance of an action in that action. Piece meal action shall be
prohibited.

Rule 608. Disclaimers.
The basic purpose of disclaimers is to make of record, that a significant element
of a composite mark is not being exclusively appropriated apart from the
composite. The following portions of a mark when forming part of the composite
mark, must be disclaimed to permit registration, namely (a) a generic term; (b) a
descriptive matter in the composite mark; (c) a matter which does not function as
a trademark, or service mark or a trade name.
Such disclaimer shall not prejudice or affect the applicant's rights then existing
under some other law or thereafter arising in the disclaimed matter, nor shall
such disclaimer prejudice or affect the applicant's rights to registration on another
application of later date, where the disclaimed matter has become distinctive of
the applicant's goods, business or services.
Where the examiner determines that any portion of a mark contains unregistrable
matter which must be disclaimed, he shall communicate his finding to the
Applicant by means of an Action document. If the applicant fails to respond within
the time allowed under these Rules, the finding of the examiner shall become
final and the unregistrable matter shall be disclaimed.
[as amended by Office Order No. 39 (2002)]
RULE 609. Interview with the Examiners: when no interview is permitted. -
Interviews with Examiners concerning applications pending before the Office can
be held only upon written request specifying the query he would want to
propound and after payment of the required fee, but in respect of which the
Examiner has the discretion to grant the interview or instead reply to the query in
writing. The interview shall take place within the premises of the Office and
during regular office hours as specified by the Examiner. All interviews or
conferences with Examiners shall be reduced to writing and signed by the
Examiner and the applicant immediately after the conference. Such writing shall
form part of the records of the Office. Interviews for the discussion of pending
applications shall not be held prior to the first official action thereon.
RULE 610. Period for response, action by applicant. - The applicant has two (2)
months from the mailing date of any action of the Examiner to respond thereto.
Such response may be made with or without amendment and must include such
proper action by the applicant as the nature of the action of the Examiner and the
condition of the case may require. The period to respond may be extended upon
written request and upon payment of the required fee but in no case shall the
total period to respond exceed four (4) months from the mailing date of the
Examiner's action requiring the response.
RULE 611. Communications other than the original. - "Communication" shall
mean any response filed with the Office except compliance with filing date
requirements. The Office shall accept communications to it by telecopier, or by
electronic means. When communications are made by telefacsimile, the
reproduction of the signature, or the reproduction of the seal together with, where
required, the indication in letters of the name of the natural person whose seal is
used, must appear. Within twenty-four (24) hours from receipt of the telefacsimile
by a machine of the Office, the Examiner shall confirm the date of receipt of the
telefacsimile by means of a notice requiring the applicant to pay the cost, as may
be established by the Office from time to time, incurred by the Office to enable
the Office to receive such telefacsimile. The original copy such communication
and the payment of the cost herein provided must be received by the Office
within one (1) month from date of receipt of the telefacsimile. Otherwise, the
communication shall be deemed withdrawn and expunged from the records. In all
cases, the burden of proof lies on the applicant that such documents have been
received by the Office.
RULE 612. Re-examination. - After response by the applicant, the application will
be re-examined or reconsidered by the Examiner, and if the registration is again
refused or formal requirements insisted upon, but not stated to be final, the
applicant may respond again.
RULE 613. Final Action. - On the first or any subsequent re-examination or
reconsideration, the Examiner may state that the refusal of the registration or the
insistence upon a requirement is final. Thus, the applicant's recourse is limited to
an appeal to the Director or to a compliance with the requirement made by the
Examiner.
RULE 614. Abandonment; Incomplete Response. - If an applicant fails to
respond, or to submit a complete response, within the period given counted from
the mailing date of an action of the Examiner, the application shall be deemed
abandoned as of the day immediately following the last day of the aforesaid
period.

RULE 615. Revival of Abandoned Application. - (a) An abandoned application
may be revived as a pending application within three (3) months from the date of
abandonment, if it is shown to the satisfaction of the Director, and upon payment
of the required fee, that the delay was due to fraud, accident, mistake, or
excusable negligence.
(b) A request to revive an abandoned application must be accompanied by a
statement of the causes of the delay in submitting the complete response and by
the proposed response, unless the same has been previously filed. Any
application not revived within the specified time will be deemed forfeited upon the
expiration of the three-month period to revive.
(c) There shall be no revival of an abandoned application that has been revived
once before on the same issue.
RULE 616. Time less than four months; when request for extension should be
made. - (a) The applicant may be required to prosecute his application in a time
shorter than four months but not less than one (1) month from the mailing date of
the examiner's action whenever such shorter time is deemed necessary or
expedient. Unless the applicant is notified in writing that response is required in
less than four months, a maximum period of four months is allowed.
(b) The time for reply, when a time less than four months has been set, will 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 of the applicant is due. In all cases, the maximum time within which to
submit a response to an action shall not exceed four months from the mailing
date of the action.
RULE 617. Suspension of action by the Bureau. - Action by the Bureau may be
suspended upon written request of the applicant for good and sufficient cause,
for a reasonable time specified and upon payment of the required fee. The
Examiner may grant only one suspension, and any further suspension shall be
subject to the approval of the Director. An Examiner's action, which is awaiting a
response by the applicant, shall not be subject to suspension.
RULE 618. Provisional Allowance. - If the only issue remaining in an application
based on foreign application claiming priority right is the submission of a certified
copy of the foreign or home registration, the Examiner may provisionally allow
the application and suspend the submission of the certified copy of the foreign or
home registration for a period not exceeding twelve (12) months counted from
allowance. On request of the applicant and subject to the approval of the Director
and payment of the required fee, said twelve month period may be extended for
good cause by an additional period not exceeding twelve (12) months. Should
the applicant fail to submit the certified copy of the foreign or home registration
within the maximum period of twenty four (24) months counted from allowance,
the applicant may waive his claim to priority right in writing and request that the
application be considered based on intent to use. Said waiver and request shall
be filed within two (2) months, without extension, counted from the expiration of
the maximum twenty four (24) month period without need of any notice from the
Office. Otherwise, the application shall be deemed forfeited. After submission of
the request for conversion to intent to use and upon payment of the required
fees, the application shall be published by the Office for opposition. Furthermore,
the declaration of actual use shall be filed within three (3) years without extension
and without need of notice counted from the date of the filing of request for
conversion. Otherwise, the application shall be refused or the mark shall be
removed from the register by the Director motu proprio. [As amended by Office
Order No. 08 (2000)]
RULE 619. Express Abandonment. - An application may be expressly
abandoned by filing with the Bureau a written declaration of abandonment signed
by the applicant himself or by the assignee of record.

CHAPTER 3
Amendments to the Application; Response to Objections of the Examiner
RULE 620. Amendments to the Application. - The application may be amended
to correct formalities, to overcome objections made by the Examiner, or for other
reasons arising in the course of examination.
RULE 621. Amendments to Description or Drawing. - Amendments to the
description or drawing of the mark may be permitted only if warranted by the
mark as shown on the labels originally filed, but may not be made if the nature of
the mark is changed thereby.
RULE 622. Manner of Making the Amendment. - In every amendment the exact
word or words to be stricken out or inserted must be specified and the precise
point indicated where the erasure or insertion is to be made. All such
amendments must be on sheets of paper separate from the papers previously
filed, and written on only one side of the paper.
RULE 623. Prohibition against marking of papers or records of the Office by
applicants. - The applicant or his representative shall not make any erasure,
addition, insertion, or mutilations of any papers or records of the Office.
PART 7
Publication, Allowance And Issuance Of Certificate Of Registration
RULE 700. Publication in the IPO Gazette; end of jurisdiction of the Examiner. -
An application for registration is subject to opposition proceeding before issuance
of the certificate of registration. Thus, after examination or re-examination of an
application for registration, if it should appear to the Examiner in charge of the
examination thereof that the applicant is entitled to have his mark registered, the
mark will, upon the recommendation of said Examiner, be ordered by the Director
to be published in the IPO Gazette for opposition, and the applicant notified of
such action.
The jurisdiction of an Examiner over an application ceases after the Director has
ordered the mark to be published for opposition.
RULE 701. Examiner may Petition for the remand to his Jurisdiction, of an
allowed application. - After allowance and within one (1) month from publication
of the allowed application, the Examiner may again exercise jurisdiction over an
application upon petition by him to the Director on the ground of newly
discovered ex parte objections to the registration of the mark.
After an application has been remanded to the Examiner, any amendment
recommended by the Examiner may be approved by the Director and may be
made without withdrawing the allowance, provided the payment for the issuance
of the certificate has not been received by the Office.
RULE 702. Examiner to be in charge of Publication for Opposition; Applications
confidential prior to Publication. - The Examiner shall be in charge of all matters
relating to the publication for opposition of all marks and trade names ordered by
the Director to be published as provided in these Regulations.
Access to files of pending applications will not be given to anyone prior to
publication for opposition of the mark or trade name or name and other mark of
ownership stamped on containers, without the written authority of the applicant.
However, an index of pending applications stating the name and address of the
applicant, a description of the mark or trade name or name and other mark of
ownership, the goods, business or service or container with which the mark or
trade name or name or other mark of ownership is used, the class number, the
application number and filing date of the application will be available for public
inspection as soon as practicable after filing.
RULE 703. Allowance of application and Issuance of Certificate of Registration. -
(a) Upon certification by the Director of the Bureau of Legal Affairs that no notice
of opposition, whether or not verified and whether or not by means of the original
copy, has been filed within one (1) month from the date of release for circulation
of the IPO Gazette publishing the application for opposition, and upon payment
of the required fee, the office shall issue the certificate of registration. The
Director of the Bureau of Legal Affairs shall issue such certification within two (2)
months from the date of release for circulation of any IPO Gazette publishing
applications for opposition. The issuance of the certificate of registration shall be
published in the IPO Gazette and shall be entered on the records of the Office.
(b) If the application is deficient in any formal matter relating to form, documents,
or other papers necessary for the preparation and issuance of the certificate of
registration or for the publication of such registration, the Examiner shall send a
notice thereof to the applicant. The applicant shall complete such deficiency
within two (2) months from mailing date of the notice; otherwise the application
shall be declared abandoned. The abandoned application, however, may be
revived subject to the requirements of these Regulations.

PART 8
Effect and Notice of Registration
RULE 800. Rights Conferred. - (a) The owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the mark is
registered where such use would result in a likelihood of confusion. In case of the
use of an identical sign for identical goods or services, a likelihood of confusion
shall be presumed.
(b) The exclusive right of the owner of a well-known mark which is registered in
the Philippines, shall extend to goods and services which are not similar to those
in respect of which the mark is registered: Provided, That use of the mark in
relation to those goods or services would indicate a connection between those
goods or services and the owner of the registered mark: Provided further, That
the interests of the owner of the registered mark are likely to be damaged by
such use.
RULE 801. Duration. - A certificate of registration shall remain in force for ten
(10) years; Provided, That, without need of any notice from the Office, the
registrant shall file a declaration of actual use and evidence to that effect, or shall
show valid reasons based on the existence of obstacles to such use, as
prescribed by these Regulations, within one (1) year from the fifth anniversary of
the date of the registration of the mark. Otherwise, the Office shall remove the
mark from the Register. Within one (1) month from receipt of the declaration of
actual use or reason for non-use, the Examiner shall notify the registrant of the
action taken thereon such as acceptance or refusal.
RULE 802. Non-use of a Mark When Excused. - (a) Non-use of a mark may be
excused if caused by circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use of a mark.
(b) The special circumstances to excuse non-use in affidavits of non-use shall
not be accepted unless they are clearly beyond the control of the registrant such
as the prohibition of sale imposed by government regulation.
RULE 803. Use of a Mark in a different form. - The use of the mark in a form
different from the form in which it is registered, which does not alter its distinctive
character, shall not be ground for cancellation or removal of the mark and shall
not diminish the protection granted to the mark.
RULE 804. Use of a Mark for goods belonging to the class registered. - The use
of a mark in connection with one or more of the goods or services belonging to
the class in respect of which the mark is registered shall prevent its cancellation
or removal in respect of all other goods or services of the same class.
RULE 805. Use of a Mark by Related Company. - The use of a mark by a
company related with the registrant or applicant shall inure to the latter's benefit,
and such use shall not affect the validity of such mark or of its registration:
Provided, That such mark is not used in such manner as to deceive the public. If
use of a mark by a person is controlled by the registrant or applicant with respect
to the nature and quality of the goods or services, such use shall inure to the
benefit of the registrant or applicant.
RULE 806. Certificates of Registration; Records and copies in registered cases. -
A certificate of registration of a mark shall be prima facie evidence of the validity
of the registration, the registrant's ownership of the mark, and of the registrant's
exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate.
After a mark or trade name or name or other mark of ownership has been
registered, the statement, the drawings, and all documents relating to the case
are subject to general inspection, and copies will be furnished upon payment of
the required fees.

RULE 807. Contents of Certificate of Registration. - The certificate of registration
of a mark shall include a reproduction of the mark and shall mention its number,
the name and address of the registered owner and, if the registered owner's
address is outside the country, his address for service within the country; the
dates of application and registration; if priority is claimed, an indication of this
fact, and the number, date and country of the application, basis of the priority
claims; the list of goods or services in respect of which registration has been
granted, with the indication of the corresponding class or classes; and such other
data as the Regulations may prescribe from time to time.
RULE 808. Use of indications by Third Parties for Purposes Other than those for
which the Mark is Used. - Registration of the mark shall not confer on the
registered owner the right to preclude third parties from using bona fide their
names, addresses, pseudonyms, a geographical name, or exact indications
concerning the kind, quality, quantity, destination, value, place of origin, or time
of production or of supply, of their goods or services: Provided, That such use is
confined to the purposes of mere identification or information and cannot mislead
the public as to the source of the goods or services.
PART 9
Other Proceedings Affecting the Application or Registration
CHAPTER 1
Voluntary Surrender or Cancellation, Amendment, Disclaimer by the Registrant
or by Assignee of Record, Correction of Mistakes
RULE 900. Jurisdiction of the Examiner. - The Examiner shall have original
jurisdiction over all matters relating to voluntary surrender, voluntary cancellation,
voluntary amendment, and voluntary disclaimer of registration, and his decisions,
when final, shall be subject to appeal to the Director in the same manner that
final decisions of the Examiners in respect of applications for registration may be
appealed to the Director. In all such matters, registrants or assignees, their
attorneys or agents will deal with him exclusively, or with such other officials and
employees whom the Director may designate to assist him.
RULE 901. Cancellation upon Application by Registrant. - Upon application of the
registrant, the Office may permit any registration to be surrendered for
cancellation, and upon cancellation the appropriate entry shall be made in the
records of the Office. The application for cancellation of registration shall be
under oath and shall be duly authenticated or legalized if the registrant is a non-
resident.
RULE 902. Amendment or Disclaimer of Registration. - (a) Upon application of
the registrant and payment of the prescribed fee, the Office, for good cause, may
permit any registration to be amended or to be disclaimed in part: Provided, That
the amendment or disclaimer does not alter materially the character of the mark.
Appropriate entry shall be made in the records of the Office upon the certificate
of registration or, if said certificate is lost or destroyed, upon a certified copy
thereof.
(b) Upon application of the registrant and payment of the prescribed fee, a
replacement certificate may be issued by the Office stating on its face the fact
that it is a replacement and bearing the same entry regarding the amendment or
disclaimer that was made on the certified copy of a lost or destroyed certificate. A
duplicate original of such replacement certificate shall be kept in the records of
the Office.
RULE 903. Correction of Mistakes Made by the Office. - Whenever a material
mistake in a registration incurred through the fault of the Office is clearly
disclosed by the records of the Office, a certificate stating the fact and nature of
such mistake shall be issued without charge, recorded and a printed copy thereof
shall be attached to each printed copy of the registration. Such corrected
registration shall thereafter have the same effect as the original certificate; or in
the discretion of the Director of the Administrative, Financial and Human
Resource Development Service Bureau a new certificate of registration may be
issued in accordance with these Regulations and without charge. All certificates
of correction heretofore issued and the registration to which they are attached
shall have the same force and effect as if such certificates and their issuance had
been authorized by the IP Code.

RULE 904. Corrections of Mistakes Made by Applicant. - (a) Whenever a mistake
is made in a registration and such mistake occurred in good faith through the
fault of the applicant, the Office may issue a certificate upon the payment of the
prescribed fee: Provided, That the correction does not involve any change in the
registration that requires republication of the mark.
(b) The application for correction must be under oath and must specify the
mistake for which correction is sought, the manner in which it arose and must
state that it occurred in good faith.
(c) A copy of the certificate of correction shall be attached to each copy of the
registration.
RULE 905. Surrender, cancellation, amendment, disclaimer, and correction to be
given publicity. - Notice of the cancellation, surrender, amendment, disclaimer,
and correction shall be published in the IPO Gazette. The cost of publication
shall be for the account of the registrant or assignee of record, except when the
notice of correction refers to a mistake of the Office.
CHAPTER 2
Recording of Assignments of Registration; or any other Instrument
Affecting the Title to any Registered Mark, Including Licenses Division of
Registration
RULE 906. Assignment and Transfer of Application and Registration. - An
application for registration of a mark, or its registration, may be assigned or
transferred with or without the transfer of the business using the mark. Such
assignment or transfer shall, however, be null and void if it is liable to mislead the
public particularly as regards the nature, source, manufacturing process,
characteristics, or suitability for their purpose, of the goods or services to which
the mark is applied.
RULE 907. Form of assignment or transfer. - (a) The assignment of the
application for registration of a mark, or of its registration, shall be notarized and
require the signature of the applicant, registrant or the assignee of record in case
of subsequent assignment. Transfers by mergers or other forms of succession
may be evidenced by the deed of merger or by any document supporting such
transfer.
RULE 908. Recordal of Assignment or Transfer. - Assignments and transfers
shall have no effect against third parties until they are recorded at the Office.
Assignments and transfers of registration of marks shall be recorded at the Office
on payment of the prescribed fee; assignment and transfers of applications for
registration shall, on payment of the same fee, be provisionally recorded, and the
mark, when registered, shall be in the name of the assignee or transferee.
RULE 909. Assignment, other instruments affecting the registration, or license,
and translation, to be submitted in duplicate. - The original document of
assignment, other instrument or license and its translation, together with a signed
duplicate thereof, shall be submitted. After recordal, the Office shall retain the
signed duplicate, and return the original to the party filing the instrument with a
notation of the fact of recording.
RULE 910. Date of receipt of instrument to be recorded considered its date of
recording. - The date of recording of an assignment, other document or license is
the date of its receipt at the Office in proper form and accompanied by the full
recording fee.
RULE 911. A new certificate of registration must be issued to assignee. - Upon
written request of an assignee of record, and upon payment of the required fee, a
new certificate of registration for the unexpired period of the registration must be
issued to the assignee.
RULE 912. Action may be taken by assignee of record in any proceeding in
Office. - Any action in any proceeding in the Office which may or must be taken
by a registrant or applicant may be taken by the assignee to the exclusion of the
original owner, registrant, applicant or earlier assignee, provided the assignment
has been recorded. Unless such assignment has been recorded, no assignee will
be recognized to take action.

RULE 913. Clearance of Trademark License Agreement prior to recordal. - Any
trademark license agreement shall be applied for clearance with the
Documentation Information and Technology Transfer Bureau (DITTB) of the
Office and shall be recorded only upon certification by the Director of the DITTB
that the agreement does not violate Sections 87 and 88 of the IP Code.
RULE 914. Division of Registration. - At any time during the life of a certificate of
registration, and upon payment of the required fee, the owner of the registered
mark may request in writing and under oath that the registration be divided. The
request must state the name and address of the owner of record or his
representative of record, the mark, the number and date of issuance of the
certificate to be divided, the goods and/or services into which the registration is to
be divided specifying the number of the class of said goods and/or services
according to the Nice Classification.
The Bureau may grant the request to divide the registration provided that the
division shall not involve any change in the registration that requires republication
of the mark and provided that a single class shall not be subdivided.
RULE 915. Cancellation of Original Certificate and issuance of transfer
certificates of registration. - Upon approval of the request to divide a registration
and payment of the required fee, the Director shall order that the original
certificate be cancelled and new certificates of registration be issued for the
remainder of the term covered by the original certificate.
RULE 916. Contents of transfer certificates of registration. - The transfer
certificates of registration shall include a reproduction of the mark and shall
mention their numbers, the name and address of the registered owner, and if the
registered owner's address is outside the country, his address for service within
the country; the name of the registered owner of the original certificate in case
the owner of the transfer certificate be a different person; the date of request for
division of the original registration; the date of the issuance of the transfer
certificate of registration; the date of filing and registration of the original
registration; if priority is claimed, an indication of this fact, and the number, date
and country of the application which is the basis of the priority claims; the list of
goods or services covered by the transfer certificate of registration with the
indication of the corresponding class or classes; and such other data as the
Regulations may prescribe from time to time.
CHAPTER 3
Renewal of Registration
RULE 917. Request for Renewal. - A certificate of registration may be renewed
for periods of ten (10) years at its expiration upon payment of the prescribed fee
and upon filing of a request. The request shall contain the following indications:
(a) An indication that renewal is sought; (b) The name and address of the
registrant or his successor-in-interest, hereafter referred to as the "right holder";
(c) The registration number of the registration concerned; (d) The filing date of
the application which resulted in the registration concerned to be renewed; (e)
Where the right holder has a representative, the name and address of that
representative; (f) The names of the recorded goods or services for which the
renewal is requested or the names of the recorded goods or services for which
the renewal is not requested, grouped according to the classes of the Nice
Classification to which that group of goods or services belongs and presented in
the order of the classes of the said Classifications; and (g) A signature by the
right holder or his representative. (h) In case there has been material variation
in the manner of display, five (5) sets of the new labels must be submitted with
the application.
RULE 918. When to file request for Renewal. - Such request shall be in Filipino
or English and may be made at any time within six (6) months before the
expiration of the period for which the registration was issued or renewed, or it
may be made within six (6) months after such expiration on payment of the
additional fee herein prescribed.

RULE 919. Jurisdiction of the Examiner. - The Examiner shall have original
jurisdiction over applications for renewal registration, and his decisions, when
final, are subject to appeal to the Director under the conditions specified in these
Regulations for appeals to the Director from the final decisions of the Examiners
in respect of applications for registration. If the Office refuses to renew the
registration, it shall notify the registrant of his refusal and the reasons therefor.
RULE 920. Need for appointing a resident agent. - If the registrant, assignee or
other owner of the mark which is the subject of a petition for renewal registration
is not domiciled in the Philippines, and if the petition for renewal is being filed by
a person who is not his representative or resident-agent of record, the power of
attorney appointing the person filing the petition as the representative of the
registrant must be filed and, upon payment of the required fee, must be recorded
before the Office can act upon the petition for renewal.
RULE 921. Renewal of prior Act registration; use and proof thereof, required. -
Marks registered under Republic Act No. 166 shall remain in force and effect but
shall be deemed to have been granted under the IP Code and shall be renewed
within the time and manner provided for renewal of registration by these
Regulations; provided, that marks whose registration have a remaining duration
as of January 1, 1998 of more than six and one-half (6 ) years shall be required
to submit the declaration and evidence of actual use prescribed in these
Regulations within one (1) year following the tenth and fifteenth anniversaries of
the registration or renewal registration under Republic Act No. 166; provided,
further, that marks whose registrations have a remaining duration of six and one-
half (6 ) years or less may no longer be subject to the requirement of
declaration and evidence of use but shall be renewed within the time and in the
manner provided for renewal of registration by these Regulations and, upon
renewal, shall be reclassified in accordance with the Nice Classification. The
renewal shall be for a duration of ten (10) years. Trade names and marks
registered in the Supplemental Register under Republic Act No. 166 whose
registration, including any renewal thereof, was subsisting as of January 1, 1998
shall remain in force but shall no longer be subject to renewal.
RULE 922. Prior Act certificate of registration to be surrendered. - With the
application for the renewal of a registration made under Republic Act No. 166 the
certificate of registration to be renewed must be surrendered to the Office, if the
official copy of such certificate of registration is not in the files of the Office. After
he has surrendered the certificate of registration granted under Republic Act No.
166, the applicant for renewal may, if he so desires, obtain a certified copy
thereof, upon payment of the usual fees.
RULE 923. Refusal of renewal registration; appeal to the Director. - The
application for renewal may be refused by the Examiner for any valid reason. The
application for renewal may then be completed or amended in response to the
refusal, or the case may be appealed to the Director if the refusal has become
final.
RULE 924. Certificate of renewal of Registration. - The Office may issue a
certificate of renewal of registration in all cases where the request for renewal is
approved and the registrant requests in writing and pays the required fee for the
issuance of said certificate. The certificate of renewal of registration shall contain
the number of the certificate of registration and the mark being renewed, the date
of original issuance thereof, the duration of the renewal registration, all the data
required to be contained in a certificate of registration provided in these
Regulations including any limitation contained in the order of the Director
approving the renewal of the registration.

PART 10
Registration of Stamped or Marked Container
RULE 1000. Rules or registration of Trademarks and Service Marks to apply. -
Unless otherwise provided by these Regulations, the registration of container
marks shall be the same as that of trademarks and service marks.
RULE 1001. "Stamped or marked container" defined. - "Stamped or marked
container" means, any container of goods upon which a mark is impressed or
molded which will give a distinctive effect, provided that the mark cannot be
deleted or removed from the container. The stamp or mark on the container must
be legible and visible for registration.
RULE 1002. No drawing required. - No drawing is required for this registration. In
lieu of the drawing, two (2) photographs of the container, duly signed by the
applicant or his representative, showing clearly and legibly the mark sought to be
registered, shall be submitted. The photographs shall be of the same size as
required for trademarks and service marks. No "sight" is required.
RULE 1003. No Labels required; Sample may be required. - If the Examiner so
requires, the applicant or his representative shall bring a sample of the container
to the Bureau on a date and time specified by the Examiner. The sample shall
not be left in the Office and shall be brought by the applicant or his representative
with him immediately after the viewing thereof by the Examiner.
PART 11
Petitions and Appeal
RULE 1100. Nature of the function of Examiners. - The function of determining
whether or not an application for registration or renewal thereof should be
allowed or denied under the facts disclosed in the application and in the
references consulted by the Examiner and under the applicable law (statutory
and decisional), is a quasi-judicial function and involves the exercise of judicial
discretion.
Thus, with respect to such function, the Director cannot lawfully exercise direct
control, direction and supervision over the Examiners but only general
supervision, exercised through a review of the recommendation they may make
for the grant of registration and of other actions, and through a review of their
adverse decisions by petition or appeal.
RULE 1101. Petition to the Director to question the correctness of the action of
an Examiner on a matter not subject to appeal. - Petition may be filed with the
Director from any repeated action or requirement of the Examiner which is not
subject to appeal and in other appropriate circumstances. Such petition, and any
other petition which may be filed, must contain a statement of the facts involved
and the point or points to be reviewed. Briefs or memoranda, if any, in support
thereof should accompany or be embodied in the petition. The Examiner, as the
case may be, may be directed by the Director to furnish a written statement
setting forth the reasons for his decision upon the matter averred in the petition,
supplying a copy thereof to the petitioner. The mere filing of a petition will not
stay the maximum period of four months counted from the mailing date of the
Examiner's action subject of the appeal for replying to an Examiner's action nor
act as a stay of other proceedings.
RULE 1102. Appeals to the Director. - Every applicant for the registration of a
mark or other mark of ownership may, upon the final refusal of the Examiner to
allow registration, appeal the matter to the Director. Appeal may also be taken to
the Director from any adverse action of the Examiner in any matter over which
these Regulations give original jurisdiction to the Examiner. A second adverse
decision by the Examiner on the same grounds may be considered as final by
the applicant, petitioner, or registrant for purposes of appeal.

RULE 1103. Effect of a final decision of an Examiner which is not appealed. - A
final decision of an Examiner which is not appealed to the Director within the time
permitted, or, if appealed, the appeal is not prosecuted, shall be considered as
final to all intents and purposes, and shall have the effect of res judicata in
respect of any subsequent action on the same subject matter.
If an application is considered abandoned for failure of the applicant to respond
to an action of the examiner on the merits e.g. citation of confusingly similar
marks, the order declaring the application as abandoned which has become final
shall likewise have the effect of res judicata.
RULE 1104. Time and manner of appeal. - Any petition or appeal must be taken
by filing the petition in duplicate or a notice of appeal, as the case may be, and
payment of the required fee within two (2) months from the mailing date of the
action appealed from, must specify the various grounds upon which the appeal is
taken, and must be signed by the petitioner or appellant or by his attorney of
record. The period herein provided shall, in no case, exceed the maximum period
of four (4) months from the mailing date of the action appealed from.
RULE 1105. Appellant's brief required. - In case of an appeal, the appellant shall,
within two (2) months, without extension, from the date of filing of the notice of
appeal, file a brief of the authorities and arguments on which he relies to maintain
his appeal. On failure to file the brief within the time allowed, the appeal shall
stand dismissed.
RULE 1106. The Examiner's answer. - The Examiner shall furnish a written
statement in answer to the petition or appellant's brief, as the case may be, within
two (2) months from the order of the Director directing him to submit such
statement. Copy of such statement shall be served on the petitioner or appellant
by the Examiner.
RULE 1107. Appellant's reply. - In case of an appeal, the appellant may file a
reply brief directed only to such new points as may be raised in the Examiner's
answer, within one (1) month from the date copy of such answer is received by
him.
RULE 1108. Appeal to the Director General. - The decision or order of the
Director shall become final and executory fifteen (15) days after receipt of a copy
thereof by the appellant unless within the said period, a motion for
reconsideration is filed with the Director or an appeal to the Director General has
been perfected by filing a notice of appeal and payment of the required fee. Only
one motion for reconsideration of the decision or order of the Director shall be
allowed.
RULE 1109. Appellant's brief required. - The appellant shall, within one (1) month
from the date of filing of the notice of appeal, file a brief of the authorities and
arguments on which he relies to maintain his appeal. On failure to file the brief
within the time allowed, the appeal shall stand dismissed.
RULE 1110. Director's comment. - The Director shall submit within one (1) month
his comments on the appellant's brief if so required by the Director General.
RULE 1111. Appeal to the Court of Appeals. - The decision of the Director
General shall be final and executory unless an appeal to the Court of Appeals is
perfected in accordance with the Rules of Court applicable to appeals from
decisions of Regional Trial Courts. No motion for reconsideration of the decision
or order of the Director General shall be allowed.

FINAL PROVISIONS
SECTION 1. Correspondence. - The following regulations shall apply to
correspondence between registrants/applicants and the Office or the Bureau:
(a) Business to be transacted in writing. All business with the Office or Bureau
shall be transacted in writing. Actions will be based exclusively on the written
record. No attention will be paid to any alleged oral promise, stipulation, or
understanding. (b) Personal attendance of applicants and other persons
unnecessary. Unless otherwise provided, the personal attendance of applicants
and other persons at the Office is unnecessary. Their business can be transacted
by correspondence. (c) Correspondence to be in the name of the Director of
Trademarks. All Office letters with respect to matters within the jurisdiction of the
Bureau must be sent in the name of the Director of Trademarks. All letters and
other communications intended with respect to such matters must be addressed
to him and if addressed to any other officer, they will ordinarily be returned. (d)
Separate letter for each case. In every case, a separate letter shall be written in
relation to each distinct subject of inquiry. (e) Letter relating to applications.
When a letter concerns an application it shall state the name of the applicant, the
mark or trade name or name or other mark of ownership sought to be registered,
the application number and the filing date of the application. (f) Letters relating
to registrations. When the letter concerns a registered mark, it shall state the
name of the registrant, the mark registered, the number and date of the
certificate of registration, and the classes of goods or services according to the
Nice Classification. (g) Subjects on which information cannot be given. The
Office cannot respond to inquiries as to whether or not a mark is acceptable for
registration in advance of the filing of an application.
On the propriety of making an application for the registration of a mark, the
applicant must judge for himself or consult an attorney-at-law. The Office is open
to him, and its records pertaining to all registrations granted may be inspected
either by himself or by any attorney or agent he may call to his aid. Further than
this the Office can render him no assistance until his application comes regularly
before it in the manner prescribed by law and by these Regulations. A copy of
the law, rules, or circular of information, with a section marked, set to the
individual making an inquiry of the character referred to, is intended as a
respectful answer by the Office.
Examiners' digests are not open to public inspection. The foregoing shall not, in
any way, be interpreted to prohibit the Office from undertaking an information
dissemination activity in whatever format, to increase awareness on the
trademark law.
SECTION 2. Fees and Charges to be Prepaid; Fees and Charges Payable in
Advance. - Express charges, freight, postage, telephone, telefacsimile including
cost of paper and other related expenses, and all other charges on any matter
sent to the Office must be prepaid in full. Otherwise, the Office shall not receive
nor perform any action on such matters. The filing fees and all other fees and
charges payable to the Office shall be collected by the Office in advance of any
service to be rendered.
SECTION 3. Applications pending on Effective Date of the IP Code. - The
following regulations shall apply to applications pending on the effective date of
the IP Code on January 1, 1998 (referred to in this Section as "pending
applications"):
SECTION 3.1. Amendment of Pending Applications. - On or before December
15, 1998, all pending applications may be amended, if practicable, to bring them
under the provisions of the IP Code. Accordingly, applicants with pending
applications for registration in the former Supplemental Register who wish to
pursue the grant of registration may amend their applications to comply with
requirements for registration under the IP Code.
SECTION 3.2. Filing Date of Pending Applications; Declaration of Actual Use.
Pending applications shall retain their priority date or original date of filing with
the Bureau of Patents Trademarks and Technology Transfer. Applicants which
elected to prosecute their applications under Republic Act No. 166 and its
Implementing Rules and Regulations under which they were required to submit
proof of use of the Mark, particularly with reference to applications for
registrations based on use in the Philippines, shall file the corresponding
declaration of actual use with evidence to that effect as prescribed by these
Regulations, without need of any notice from the Office, within three (3) years
from the effectivity of these Regulations, without possibility of extension.
Otherwise, the application shall be refused or the mark shall be removed from
the register by the Director motu prorio.[As amended by Office Order No. 17
(1998)]

SECTION 3.3. Processing of Pending Applications. - Pending applications
amended in accordance with this Section shall be proceeded with and
registration thereof granted in accordance with these Regulations. Where there
are no applicable provisions in the IP Code and these Regulations, pending
applications that are not amended in accordance with this Section shall be
proceeded with and registration thereof granted in accordance with the laws and
regulations under which they were filed. SECTION 3.3.1. Interference. - In all
cases where interference could have been declared under Republic Act No. 166,
as amended, and its implementing rules and regulations, as amended, but the
same can not be declared such as when one of the applications has been
amended and prosecuted under the IP Code while the other application or
applications were not, the application which first meets all the requirements for
registration shall be allowed and published for opposition in the IPO Gazette in
accordance with these Regulations. The other applicant or applicants shall have
the right to file a notice of opposition, without need of paying the filing fee, to
determine whether or not any of the applicant/s and or oppositor/s has the right
to the registration of the mark, and, all other issues including the registrability of
the mark.
SECTION 3.4. Duration of Registration. - A certificate of registration granted to
an application filed on or before December 31, 1997 and therefore pending on
the effective date of the IP Code on January 1, 1998 shall be subject to the same
conditions for maintenance as provided in these Regulations and shall have a
term of twenty (20) years or ten (10) years as follows:
(a) Twenty (20) years, in the case of pending applications published for
opposition prior to the effectivity of these Regulations with respect to which no
notice of opposition was filed within the prescribed period under Republic Act No.
166 of thirty (30) days from release for circulation of the corresponding Official
Gazette (BPTTT or IPO) as certified by the Caretaker/Officer-in-Charge or
Director of the Bureau of Legal Affairs. (b) Ten (10) years, in the case of
pending applications published for opposition after the effectivity of these
Regulations with respect to which no notice of opposition is filed as certified by
the Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs in
accordance with these Regulation. (c) Ten (10) years, in the case of pending
applications subject of opposition or any other proceeding before the Office.
SECTION 3.5. Duration of Renewal of Registration Granted Under Republic Act
No. 166. - The renewal of a registration granted under Republic Act No. 166 shall
have the same term of ten (10) years and shall be subject to the same
requirements for renewal as a registration granted under the IP Code.
SECTION 3.6. (a) Abolition of the Supplemental Register. - In compliance with
the state policy declared in the IP Code, the IPO shall endeavor to issue
certificates of registration that can stand up to scrutiny in infringement and other
cases. Considering that (i) marks or trade names that are not registrable on the
principal register under Republic Act No. 166 are registrable in the Supplemental
Register; (ii) marks or trade names not registrable on the said principal register
are not registrable under the IP Code; and , (iii) the Supplemental Register was
abolished by the IP Code, all applications for registration in the Supplemental
Register pending upon effectivity of the IP Code shall be examined in
accordance with the IP Code and such applications which do not meet
requirements for registration under the IP Code shall be rejected.
(b) Release of Certificates of Registration of Applications in the Supplemental
Register Allowed Prior to Effectivity of the IP Code. A Certificate of registration
may be released covering an application for registration in the Supplemental
Register provided that all the following requirements occurred prior to the
effectivity of the IP Code, i.e. on or before 31 December 1997 : (1) such
application had been allowed and the allowance was approved by Atty. Rosario
N.E. Macatangay, Chief of the Trademark Examining Division of the then Bureau
of Patents Trademarks and Technology Transfer as evidenced by the original
copy of the Allowance in the file wrapper of the application; (2) Notice of
Issuance of Certificate of Registration had been issued as evidenced by the
original copy of the Notice in the file wrapper of the application or the applicant's
original copy thereof, and (3) all the required fees were fully paid for by the
applicant as evidenced by the original copy of the Official Receipt, a photocopy of
which shall be submitted by the applicant to the Bureau for inclusion in the
corresponding file wrapper. The Registration shall remain in force for twenty (20)
years from the date of allowance, without possibility of renewal, and subject to
compliance with all the requirements for maintenance of the registration. The
mark shall be published in the IPO Gazette and may be subject to cancellation
on grounds provided under the law.

SECTION 3.7. Renewal of a Registration in the Supplemental Register. - The
following regulations shall apply to the renewal of a registration in the
Supplemental Register under Republic Act No. 166:
SECTION 3.7.1 Registrations Subsisting on January 1, 1998. - The registration,
or extension thereof, in the Supplemental Register under Republic Act No. 166 of
a trade name or mark which was subsisting on the effectivity of the IP Code on
January 1, 1998 shall remain in force for the entire term for which it was granted.
However, such registration shall no longer be subject to renewal.
SECTION 3.7.2 Registrations, or Extension Thereof, with Term Ending on or
Before December 31, 1997. - The renewal of a registration, or any extension
thereof, in the Supplemental Register whose term ended on or before December
31, 1997 may be granted as follows :
(a) The application for renewal of registration in the Supplemental Register was
seasonably filed including full payment of the required fee pursuant to Section 15
of Republic Act No. 166 and the applicable regulations; (b) Full compliance with
all the requirements for renewal shall have been made by the applicant on or
before December 31, 1998; (c) The renewal shall be for a term of twenty (20)
years counted from the date of expiration of the registration or renewal subject of
the application; and, (d) The renewal herein granted shall no longer be subject
to renewal.
SECTION 3.7.3. Notice to Comply. - For the effective implementation of Section
3.7.2 (b), all concerned examiners together with the Chief of the Trademark
Examining Division of the former Bureau of Patents Trademarks and Technology
Transfer have been directed to mail to the applicants the corresponding notice to
comply with requirements for renewal of registration, or extension thereof, on or
before October 31, 1998. Further, applicants who have not received said notice
may request for a copy thereof from the examiner concerned who shall issue
said copy within two (2) working days from receipt of the request.
SECTION 4. Repeals. - All rules and regulations, memoranda, circulars, and
memorandum circulars and parts thereof inconsistent with these Regulations
particularly the Rules of Practice in Trademark Cases, as amended, are hereby
repealed; Provided that such earlier rules or parts thereof shall be continued only
for the purpose of prosecuting applications for registration in the principal register
filed as of December 31, 1997 wherein the applicants expressly elected to
prosecute said applications under Republic Act No. 166; and, Provided, further,
that there are no applicable provisions in these Regulations.
SECTION 5. Separability. - If any provision in these Regulations or application of
such provision to any circumstance is held invalid, the remainder of these
Regulations shall not be affected thereby.
SECTION 6. Effectivity. - These rules and regulations shall take effect fifteen (15)
days after publication in a newspaper of general circulation.
Done this 29th day of October 1998.

Republic Act No. 9502

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Republic Act No. 9502

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