PATENTS

Patent Cooperation Treaty

What is the Patent Cooperation Treaty (PCT)?

The Patent Cooperation Treaty (PCT) is an international patent law treaty which provides a unified procedure for filing patent applications. It assists applicants in seeking patent protection internationally for their inventions, helps patent offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries, including the Philippines.

What is the time limit for entry into the national phase in the Philippines?

Entry into the national phase in the Philippines must be made within thirty (30) months from the earliest priority date or international filing date (if the international application has no priority claim) of the international application. Subject to the payment of an extension fee for late entry equal to 50% of the filing fee prescribed in the IPO Philippines Fee Structure, the entry into the national phase may be extended by one (1) month.

What are the requirements for entering the national phase of a PCT application?

To enter the national phase in the Philippines, the applicant must file with the IPOPHL, not later than thirty (30) months from the priority date, the following:

  • Request for National Phase Entry (IPOPHL prescribed form is recommended);
  • English translation of the international application if it was filed in another language or a copy of the international application in English as filed if the applicant has not yet received Form PCT/IB/308; and
  • Description, including title of the invention (must be in English);
  • Claims as filed (must be in English)
  • Abstract;
  • Amendments to the claims under PCT Art. 19, where applicable (must be in English);
  • Amendments to the description, claims or drawings under PCT Art. 34, as contained in the annexes to the international preliminary examination report, where applicable (must be in English);
  • Drawings, as filed, if any;
  • Form PCT/IB/304 (if with right of priority).
  • Power of Attorney appointing a resident agent if the applicant is not domiciled in the Philippines

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Is there an extension of time for entering the national phase for PCT applications?

The 30-month deadline for entering the national phase for a PCT application may be extended by one (1) month subject to the payment of an extension fee/late entry fee.

What are the important time limits that one needs to observe for PCT applications?

  1. Six (6) months from the date of entry into the national phase
  2. Four (4) years from the date of the international publication

Priority document

The priority document of a claimed earlier application must be submitted to the IB within sixteen (16) months from the priority date. If it has not been submitted to the IB within the said time period, it must be submitted to the IPO Philippines, together with payment of fee for extension of time to submit priority document plus surcharge provided for in the IPO Philippines Fee Structure, within six (6) months from the date of entry into the national phase without need of notice. Failure of the applicant to comply shall be ground to disregard the priority claim.

Request for substantive examination

The application shall be deemed withdrawn if the request for substantive examination is not made and the substantive examination fee is not paid within six (6) months from the date of entry into the national phase.

The annual fee of a patent application or patent shall be due and payable on the expiration of four (4) years from the date of the international publication, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.

Annual fee of a divisional patent application/registration shall be due and payable on the expiration of four (4) years from the date of the international publication of the parent application, and on each subsequent anniversary of such date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled.

What law governs the processing of PCT international applications at the national phase?

International applications that have entered the national phase are governed by the applicable provisions of the Philippine Intellectual Property Code and its implementing rules and regulations, the applicable provisions of the Patent Cooperation Treaty, PCT Regulations, and PCT Administrative Instructions.

Is there accelerated examination for PCT patent applications in the Philippines?

IPOPHL has existing Patent Prosecution Highway (PPH) program/agreement with USPTO, JPO, KIPO, and EPO. Hence, an applicant may request for accelerated examination under the PPH if the corresponding foreign applications in said countries/jurisdictions are indicated to be patentable/allowable.

An applicant may also opt to file a request for accelerated examination under the ASEAN Patent Examination Co-operation (ASPEC) Program in which Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Viet Nam are participating countries. ASPEC is a program for IP Offices from participating ASEAN member states (AMS) to utilize the search and examination (S&E) results from another participating AMS IP Office as reference in its own S&E work. Hence, applicant may request for accelerated examination under the ASPEC if the corresponding foreign applications in said countries are indicated to be patentable/ allowable.

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For PCT Route application

  • Request for Substantive Examination- In the case of a PCT patent application, there will be no local publication, and as such, substantive examination may be requested and paid for upon entry of the application into the National Phase or within six months from the National Phase entry.

What will it cost to enter the national phase in the Philippines?

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