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POST GRANT/ REGISTRATION LAW,
PROCEDURE, PRACTICE AND COMPUTERIZATION OF THE INTELLECTUAL
PROPERTY OFFICE (PHILIPPINES) AND THE JAPAN PATENT OFFICE
by
Honorie B. de Vera
A research paper submitted in fulfillment of the requirements for
the
Long Term Fellowship Program
World Intellectual Property Organization Funds in
Trust/Japan Patent Office
April 23 to October 22, 2003
October 14, 2003 Tokyo, Japan
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ACKNOWLEDGMENTS
The author wishes to thank the following people for without them the
paper would never have been made or it would be just a simple scrap
of paper:
Mr. Narendra Sabharwal ,Senior Director, Cooperation for Development for Asia and the Pacific, World Intellectual Property Office for approving the author’s nomination to the Fellowship Course;
Ms. Mayako Oe, Consultant, WIPO for the proper coordination before and during the course;
Atty. Emma Francisco, Director General, Intellectual Property Office,Philippines, for approving the recommendation on the nomination made by Director, Corazon Marquezes;
Mr. Shingo Tsuji, Director General, APIC, and his staff who provided for the facilities and resources for research during the six months period;
Mr, Ota and Mr. Imai, former and present Commissioner, respectively,
Japan Patent Office, for officially receiving and issuing to the author
the Fellowship certificate ;
Mr. Kanji Kudo, as the sensei/adviser for his discerning lectures on the Japan registration laws and comments on the paper;
Mr. Masao Sakai, Manager, as the APIC coordinator for his tireless and immediate provisions of the needs of the author;
Ms. Yuka Tsukamoto, Assistant Director, International Affairs Division, as the JPO counterpart for the appropriate coordination of the resource persons, materials and physical requirements of author aside from the cozy and sincere friendship;
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Mr. Hiroo Takaki, Deputy Director, International Affairs Division, as the immediate supervisor of Ms. Tsukamoto, gave warm, full support and care by giving immediate and commendable decisions for the necessities of the author aside from providing data (together with Mr. Toru Yamasaki, Asst. Director) on the Philippine computerization portion of the paper;
The JPO Registration Office and the IPO PTASD for giving lectures and demonstration for the author to better understand the JPO registration system; and sending via the internet important data for the research and their prayers, respectively;
Mr. Mike Ortega, Marketing Communication Manager, Emirates National Oil Company, Dubai, UAE, for reading and editing via the net 80% of the paper, thus giving confidence to the author that the paper could be more understood by non-IP readers;
My family, Tommy, my husband and Meliza, my daughter, for their love and understanding;
To God Almighty, His unspeakable greatness, faithfulness and love enabled and sustained the author during the research period. Truly, to God be the glory great things He has done.
Table of Contents I. Introduction ---------------------------------------------------------------- 1 II. The Philippine Post grant/registration Industrial Property---------- 2 A. Historical Background ---------------------------------------------- 2 B. The Philippine Post Grant/Registration Laws--------------------- 4 1. The Invention patent right------------------------------------ 4
a. The old law ------------------------------------------------ 4 b. The new law ---------------------------------------------- 5 2. The Utility Model and Industrial Design right------------- 5
a. The old law ----------------------------------------------- 5 b. The new law ---------------------------------------------- 6
3. The Trademark right ---------------------------------------- 7 a. The old law ---------------------------------------------- 7 b. The new law ---------------------------------------------- 7
4. Assignments and other transmissions of rights --------- 8 a. Patent rights---------------------------------------------- 8 b. Trademark rights----------------------------------------- 9
C. The Procedure-------------------------------------------------------- 10 1. Historical background----------------------------------------- 10 2. Inventions------------------------------------------------------ 11 3. Utility Models and Industrial Designs------------------------ 12 4. Trademarks------------------------------------------------------ 13 5. Assignments and other transmissions of rights----------- 15
a. Invention, UM and ID----------------------------------- 15 b. Trademarks----------------------------------------------- 16
D. The Practice --------------------------------------------------------- 17 E. The Computerization----------------------------------------------- 19 1. Historical background---------------------------------------- 19 2. The PTASD (Registry) portion of PACSYS Phase two--- 21 a. PTAS Annual Fee Payment Processing (new law)--- 21 b. PTAS Certification Processing-------------------------- 24
c. Processing of Petition for Extension of Term-------- 26 d. Processing of Changes in Granted Patents----------- 28 e. Processing of Changes for Pending Applications---- 30
3. Flowchart of PTASD Module------------------------------- 32 F. Philippine post grant/registration Schedule of Fees----------- 32 III. The Japanese Post grant/registration------------------------------- 37 A. Historical Background---------------------------------------------- 37 B. The Term of I.P. Rights--------------------------------------------- 40 C. Japanese Registration Laws----------------------------------------- 41
1. Patent Right maintenance and management------------ 41 a. Registration of establishment of patent right------- 41 b. Issuance of certificate of patent----------------------- 43
c. Payment of annual fees-------------------------------- 43 d. Registration of extension of term of patent right--- 44 e. Transfers of patent right------------------------------- 44 f. Grant of licenses----------------------------------------- 44 g. Establishment of pledge-------------------------------- 45 h. Change of indication of title-holder in registration- 46 i. Registration of trial for invalidation of patent or
trial for correction--------------------------------------- 46 j. Extinguishment of patent right------------------------ 46
k. Patent register and inspection of documents------ 47 l. Request for inspection certification etc----------------- 47
m. Patent Gazette --------------------------------------------- 49 2. Trademark right maintenance and management ---------- 50
a. Registration of establishment of TM right--------------- 50 b. Time limit for payment of registration fee-------------- 50 c. Division of the trademarks------------------------------ 51 d. Registration of renewal of term--------------------------- 51 e. Registration of defensive marks--------------------------- 53 f. Application of patent law----------------------------------- 53
C. Practice and procedures for registration---------------------------- 53 1. Main Registers----------------------------------------------------- 54 2. Establishment of registration for invention, utility model, design and trademark rights------------------------------------ 55
a. Procedures for establishment of registration---------- 55 b. Procedures for annual fees ( extension of term)----- 56 c. Procedures for payment and its time limit-------------- 56 d. Procedures for registration of transfer after the establishment of right------------------------------ 57 e. Request process procedures------------------------------- 58 f. Request for registration of license and right to use--- 59 g. Office process for establishment, annual fees &transfer 59
• Summarized office process for establishment-- 59 • Summarized office process for annual fee------ 61 • Summarized office process for transfer------- 63
D. The Japanese registration computer system------------------------- 63 1. The Computer system configuration--------------------------- 64 2. The Computerization system operation----------------------- 64 3. Composition of a registration master file--------------------- 64 4. The Registration computer system flowchart---------------- 65 5. Subsystems 1 & 2 flowcharts establishment of patent
right subsystem and annual fee sub-system----------------- 66 6. The transfer patent right sub-system------------------------- 67
7. Cancellation of patent right sub-system----------------------- 67 8. Flowcharts---------------------------------------------------------- 68
IV. Comparison of the Japanese and Philippine Post grant IP-------------- 72 V. Recommendations----------------------------------------------------------- 76
G. Annex a. Philippine old and new laws and regulations---------- 81 H. Annex b. Flowchart of PTASD module pacsys-------------------- 101
VI. References--------------------------------------------------------------------- 106
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I. Introduction
Books and information on Philippine Intellectual Property Laws written by patent
practitioners, trademark Lawyers, or senior officers of the country’s Intellectual
Property office (IPO) focus mainly on rules and procedures of obtaining a patent or a
trademark. Not much has been said about registration or post grant laws, procedures
and practice. This research paper seeks to explain less-explored portion of laws,
procedures, practices and computerization of the post grant/post registration system of
the Philippines.
The paper aims to: (a) enlighten the readers on the Philippine and Japanese
scenario on post grant/registration of Inventions (I), Utility Models (UM), Industrial
Designs (ID) and Trademarks (TM); (b) disclose their similarities and differences; and
(c) ponder on possible ways to further improve the present administrative operations
of the IPO.
The terms old law, referring to the Republic Acts (R.A.) 165 and 166, and new
law, referring to the R.A. 9283, will be used often in the text as these are applied
depending on which laws the industrial property rights rest on.
The present registry still has many active patents (Is, UMs and IDs) and
trademark registrations acquired under the old law. About eighty percent (80%) are
old law patents and trademarks registration rights are in the registry. There are also
some Inventions and TM applications, filed before the effectivity of the new law, that
still await to be granted. They too will be dealt with using the old law post
grant/registration processing regulations.
The new law procedures will be applied when the industrial property rights
applicants/holders (those published December 14, 1999) file for their annual fees,
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renewal of term and declaration of actual use after the fifth anniversary of the date of
registration of the mark (for those registered in 1998).
II. The Philippine Post grant/registration Industrial Property
A. Historical Background
Patent system-related activities in the Philippines can be traced back to the
Spanish regime (1521-1898). Before the year 1862, patents were granted with a term
of five, ten or twenty years depending on the applicant’s desire. They were issued
without examining the novelty, inventiveness or utility of the patented matter.1
Trademarks were also protected through registration in 1888.
During the American era, which began December 10, 1898, all patent
applications were filed with the United States (U.S.) Patent Office where examinations
were carried out and issued in accordance with U.S. patent laws.
The Philippine Patent Office (PPO) was established based on R. A. 165 & 166
passed by the Philippine Congress on June 20, 1947. The legislations authorized PPO
to issue letters patents and trademark registrations. They also formed an independent
patent and trademark system. The laws put into practice most U.S. patent (first-to-
invent) and trademark (first-use) procedures.
The Patent law -- R.A. 165 -- repealed Acts. No.2235 and 2793 as amended.
R.A. 166 -- the Trademark law -- repealed Act. No. 666, approved March 6, 1903; Act.
No. 3070, approved March 16, 1923; and Act No. 3202, approved December 3, 1924.
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In 1951, an amendment -- R. A. 637 -- was enacted authorizing the conduct of
interference proceedings. Another amendment was added on June 16, 1953. R. A. 864,
patterned after the German patent regime, granted protection to utility models (U.M.).
Since 1965, the Philippines, through its accession to the Paris Convention Treaty
for the Protection of Industrial Property, allowed nationals of other member states to
enjoy the privilege of claiming the priority dates of their previously applied industrial
property rights applications. They were given the same protection and advantages
granted to Filipinos.
The provisions of compulsory licensing to patents were added through
Presidential Decree no. 1203 on December 14, 1977.
The Philippines’ ratification of the World Treaty Organization Agreement on
Trade-Related aspects of Intellectual Property Rights (TRIPS) on December 1994 and
the enactment of R. A. 8293, better known as the Intellectual Property Code (IP Code)
of the Philippines on June 6, 1997, expressed the country’s willingness to harmonize its
laws and system with the world. The IP Code further aimed to streamline the
administrative procedures in the grant of IP rights protection and in the enhancement
of its enforcement.
The IP Code brought together the Patent law, the Trademark Law and the
Copyright law into one. It has adopted the first-to-file rule for both Patents and
Trademarks and abolished the provision of interference proceedings. In trademark, the
requirement of prior use was done away with and an intention to use application was
instead deemed acceptable. No substantive examination will be made in case of utility
models (U.M.) and industrial designs (I.D.) which are now called UM or ID registrations.
Substantive examinations are required, however, for invention patents and trademark
registrations.
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B. The Philippine Post Grant/Registration Laws
The post grant provisions of the old laws (R.A. 165 and R.A. 166) (see Annex A)
are summarized as follows:
1. The Invention patent right
a. The old law
The term or life of an invention patent begins on the date of issue as indicated
on its letters patent and ends after 17 years. Its life, though, can be extinguished
sooner than what is allowed by the law. This happens when its owner, the Patentee or
Assignee, fails to pay his Invention’s annual fees within the fixed schedule or when
cancelled on other grounds in accordance with the Patent Law.
Acquiring a patent signals the beginning of the patentees’ obligation to maintain
and make the most of the advantages provided by law. The first annual fee must be
disbursed before or at the end of four years counted from the date of issue. From then
on, the owner has to remit his dues every year until before the expiration of the
patent’s 16th anniversary year to maintain the coming 17th year. Otherwise the patent
will be included in the Notice of Non-payment. The notice will be published in the
Official Gazette and the Patentee has six months to produce his delayed commitment
with a specific surcharge fee.
In case the owner still neglects to pay after the six months grace period, his
patent will again be published in the Official Gazette and included in the Notice of
Lapsed Patent list. The patent ceases to have effect at the end of the period set for the
payment of any annual fee if it is not handed out within that time.
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The old law allows a reinstatement of lapsed patent. An Invention patent, which
lapsed due to its annual fee nonpayment, can be restored within two years from the
date the first unpaid annual fee became due. It is required that all unpaid annual fees,
surcharge fees, reinstatement fees be remitted. The request for reinstatement must
include the following: (a) remittance of all due annual fees and the surcharge for
reinstatement, (b) satisfactory proof showed to the Director as to the reasons of
default (fraud, accident, mistake or excusable negligence) and (c) the reinstatement
will not discriminate the rights acquired by others while the patent was not in force.
b. The new law
The post grant provisions of the new law differ from the old law in terms of
patent right. It harmonizes with most countries by having a 20-year term counted from
the date of filing. The payment of annual fees starts within three months before the
end of four years reckoned from the date of first publication. It stops upon filing of the
fees on the end of 19th anniversary year. The yearly obligation ceases any time should
the applications be withdrawn, refused or the patent cancelled on other grounds aside
from neglect of payment.
The six months grace period given to the patentee or his assignee after he
failed in his commitment was retained. There’s also the publication of withdrawn or
lapsed patent on the IPO Gazette and its removal or end will be recorded in the IPO
register. There is no reinstatement given to withdrawn applications or lapsed patents.
2. The Utility Model and Industrial Design right
a. The old law
The applicants who filed under the old law were given a choice to decide under
which law they wanted their applications to be processed. Hence there are
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registrations that were dealt with in the new law but were filed under the old law. The
old law processing involves substantive examination.
Utility Model and Industrial Design patents have a term of five years from the
date of grant. Before the five year term expires and upon payment of the required fee,
the term can be extended twice for five years each.
The owner of the patent can seek another term even after the five-year period.
He must carry it out within six months subsequent to the patent’s end. Surcharge fee
payment must be included in the delayed petition for extension of term.
The petition, whether it be the first or last extension, must include an affidavit
to establish the fact that the UM or ID is in commercial or industrial use in the
Philippines or reasonably explain its non-use. No annual payment is expected from the
UM or ID Patentee.
b. The new law
The Utility Model Registration has a life of seven years from the filing date of its
application. No renewal of registration is allowed. Likewise, no maintenance fees are
required after it is registered.
The Industrial Design Registration has a term of five years counted from the
application’s filing date. The Industrial Design owner is given the benefit of renewing
his registration twice. Unlike the old law which does not specify how long before the
end of the term the petition should be made, the renewal fee in the new law must be
paid within twelve (12) months before or within six months with surcharge fee after
the end of the term of registration.
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3. The Trademark right a. The old law
The trademark’s term is 20 years counted from the date of grant/issue unless
cancelled by the Director for reasons provided by law. The TM registrant, in order to
maintain his 20 years validity, must file his affidavit of use or non-use one year after
the fifth, tenth and fifteenth anniversary years. He must remit the required fee and file
an affidavit to show that the mark is still in use. In case he files an affidavit of non-use
he should give reasons and supplemental evidences as to the fact of its non-use.
b. The new law
The new law trademark registrations are those filed after December 31, 1997.
Their term of validity begins 30 days from the date of publication for opposition in the
IPO Gazette and ends 10 years later. The registrants need to file their declaration of
actual use within one year after the fifth anniversary year. Omission of filing the
declaration will result in its removal from the register moto propio.
Non-use of the mark can be excused on the basis of circumstances that
occurred independently of the will of the registrant or his assignees.
The use of the mark: (a) in the form different from the one registered as long as
its distinctive character is not changed, (b) in relation with one or more of the goods or
services belonging to the class claimed in the registration and (c) by a company
associated to the registrant or applicant are acceptable. Such use of the mark will not
cause its cancellation or removal from the register.
An additional filing of declaration of use is required to be submitted within three
years from its filing date. The filer can be an applicant in case the application has not
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yet been registered when it reached its third year. It is usually the registrant who files
the declaration of actual use.
4. Assignment and other transmissions of rights
a. Patent rights
The new and old laws on Patent rights (including Invention, Utility Models and
Industrial Design) and their applications are protected and given the same rights
(power, privilege or immunity secured to a person by law) as those properties under
the Philippine Civil Code. They can be assigned or transmitted by heritage or bequest
(act of giving by will or testament). The new law includes the possibility of them having
a license contract. An assignment may well be of the whole right, title or interest, or a
portion of an undivided share in which case the parties become joint owners. It can be
limited to a specified territory.
The assignment is required to be in writing. It must be acknowledged
(authenticated an instrument by showing it was the act of the person executing it)
before a notary public or other officer authorized to administer the oath and certified
under the hand and official seal of the notary or other authorized officer.
The Director, in the old law, or the Office, in the new law, records assignments,
licenses and other instruments related to any patent rights, patent applications, title or
interest. Applications should be filed in the prescribed form to the Office for inclusion in
books and records intended for it. Two copies should be filed, one original and the
other a signed duplicate. If the original is not available, an authenticated copy of it in
duplicate can be submitted.
After the recording, the Director will retain the duplicate and return the original
or authenticated copy to the one who made the request. The old law mentions that
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details of the proof of record will be marked on the submitted documents. A notice of
its recordation will be published in the Official Gazette (or BPTTT Gazette) in the old
law, or IPO gazette in the new law.
Such written legal documents will have no effect against succeeding buyer or
mortgagee for a valuable consideration (material to the interest of the parties) and
without notice, unless it is recorded in the office within three months from the date of
its execution or prior to the subsequent purchase of mortgage.
In case of joint owners or undivided shareholders, they can make, use or sell
the invention for their profit, subject it to any contract or agreement but they must do
so with the consent of the others or proportionately divide the proceeds to them.
b. Trademark rights
Assignments and transmission of Trademark rights in the old law require the
goodwill to be included in the transfer of the business to which the mark is used. The
new law allows the right to be conveyed even without the turn over of the business
using the mark.
Both laws require the assignment to be in writing but the old law requires the
acknowledgement be made before a notary public or other officer authorized to
administer the oath together with the certification and official seal. This is the same
requirement as that in Patent transmission. The new law does not mention any
acknowledgement but it requires the signature of the contracting parties. It expressly
provides that the transfers by merger or other forms of succession can be in any
document supporting such transfer.
A further provision in the new law states that an assignment or transfer will be
without binding force if it misleads the public with regard to the nature, source,
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manufacturing process, characteristics or suitability for their purpose of the goods or
services to which the mark is applied.
The laws maintained the need of the recordation of an assignment in the IPO
for it to have an effect against third parties or subsequent buyers. The old law requires
the transfer to be recorded in the office within three months from the date of
assignment or prior to any subsequent purchase. The new law mentions about the
payment of the prescribed fees. Further it provides for provisional recordation of
assignments and transfers on trademark applications to be made and when it is
registered, the mark will be in the assignee’ or transferee’s name.
C. The Procedure
1. Historical background
Since its establishment, the Philippine Patent Office has been an independent
attached agency of the Department of Commerce, then by the Ministry/Department of
Trade. When the government reorganized in 1982, the Philippines Patent Office
became more dependent on the Department of Trade and Industry, foregoing its own
personnel, finance and administrative divisions. The name was later changed to Bureau
of Patent Trademark and Technology Transfer with the inclusion of the Technology
Transfer Board in its fold.
During all those times, the procedures for Inventions, Utility Models and
Industrial Designs were written in one book called Patent Rules of Practice while that
of trademark was in a book called Trademark Rules of Practice. All the past Directors
had his own Rules of Practice books for they contained the changes in procedures
during their administration. The procedures were changed as often as needed. The
changes were made through memorandum circulars or Office Administrative Orders
issued by the Director.
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There were many changes made in the law, procedures and organizational
structure in the latest reorganization. The head of the Office is now a Director General
under the general supervision of first, the Secretary of Trade and Industry then later,
by the Executive Secretary of the Office of the President. The Office again has its own
administrative, personnel and finance divisions. There are six Directors, one each for
the Administration, Finance and Human Resource Development Bureau (AFHRDSB);
Documentation, Information, Technology Transfer Bureau (DITTB); Management
Information System and EDP Bureau (MISB); Bureau of Legal Affairs (BLA); Bureau of
Patents (BOP); and Bureau of Trademarks (BOT).
The Director General has greater powers and flexibility on her hands in terms of
operations and rule making as she is on the same level as an undersecretary. Any
change or enhancement in the procedure starts from the concerned Bureau, as
recommended by its Director and approved by the Director General.
As a standard procedure, changes in the Regulations are published in the daily
newspaper of general circulation, the IPO Gazette and the IPO website. The IPO record
officer is directed to file three certified copies of the Regulations with the University of
the Philippines Law Center, and one 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. There are Bulletin boards in the ground floor of
the IPO building where recent important procedure changes and memoranda are
posted.
2. Inventions
The old law Patent procedures give the patent’s Executive Examiner the
authority to consider and decide cases in the first instance of matters affecting the
processing of annual fees for invention patent, extending the UM and ID terms,
assignments and other forms of transmissions. His final decisions can be petitioned or
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appealed to the Patent Director. The patentee or his lawyer or agent must transact
exclusively with him and other officials designated by the Director to assist him.
Aside from pointing out what is in the law, the Patent Rules of Practice indicate
a specific amount of fees in pesos. The Rules also state when a letters patent lapses --
the day after the six-month’s grace period. Further, it identifies the Patent Office as the
payee to whom the fees must be paid.
The reinstatement regulation of lapsed patents comes in two parts. One is as
provided in the law which is already discussed. The other is when the notice of non-
payment publication took place after more than a year since the unpaid fee became
due. The two-year period within which a lapsed patent can be restored must be
counted from the expiration of six months following release of the BPTTT Gazette that
contained the notice of non-payment.
The annual fee regulation in the new law highlights the provisions of the law.
The exact date the annual fee is deemed withdrawn or lapsed is clarified as the day
following the one when annual fees became due. The date of release for circulation of
the IPO Gazette is designated as the publication date of the application is.
3. Utility Models and Industrial Designs
The exact time of filing the extension of term of the old law regulation is not
specified but it is deemed to be any time before the cessation of the term along with
filing and publication fees or extra time afterwards but not to exceed six months
together with surcharge. The extension, if granted, will be made public in the Official
Gazette.
The new law regulations on industrial design (ID) made clear when the term
ends taking into consideration the number of applications pending when the IP Code
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went into effect, and the time that elapsed between the effect date of the IP Code and
the regulations. The first term of ID registrations: (a) filed before the date of the Code
became effective and the applicant chose to be processed therein; and (b) those filed
under Code and in anticipation of registration at the time the regulations became
operational will end five years from the effective date of the regulations.
4. Trademarks
The old law regulation identifies the Executive examiner as the person who
must have the original jurisdiction on affidavit of use or non-use examination and
trademark assignments and other forms of transmissions. His final decisions can be
appealed to the Director. The registrant or his attorney or agent can deal on such
matters with the Executive Examiner or other official or employees designated by the
Director to assist him. The new law regulation does not mention about the Executive
examiners for they are now called intellectual property rights specialists.
The regulations state that in filing an affidavit of non-use, the registrant or his
assignee must not have any intention to abandon the use of the mark. The special
circumstance to excuse non-use must show that the registrant evidently had no control
over the situation – as when the government prohibits the sale of the goods carrying
the mark or the services being offered. A presumption is expressly provided that the
mark is considered abandoned if not largely used continuously for five years.
The Affidavit must:
1. refer to only one TM registration
2. be personally signed by the registrant or his assignee. His attorney
or agent cannot sign for his behalf.
3. identify the mark, registration no. and its registration date
enumerate the establishments in the Philippines and their addresses
where the mark is used or sold.
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4. contain a statement on the nature of its use. In case of its non-use, the reasons
of its inability of use or the special circumstances that could excuse its non-use must
be stated.
An acknowledgement of the receipt of the affidavit will be made by the
Executive Examiner for the Director. If found satisfactory and fulfills all requirements,
the registrant will receive the acceptance. Otherwise, he will be notified why it was
refused. A request for reconsideration, which states its reasons or basis, can be made
within three months from the mailing date of the notice.
The cancellation of the trademark registration will be recommended by the
Executive examiner. A notice of such cancellation will be sent to the registrant if no
affidavit was filed. The trademark registration will be cancelled by the Director after
the end of the 6th, 11th or 16th anniversary years. The order of its cancellation after it
has become executable will be published in the Official Gazette. If the affidavit was
filed but refused, its cancellation will be held pending for further proceedings.
The new law requires a declaration of actual use instead of an affidavit. The
same requirements are applied except for an additional requirement of submitting five
labels. The labels serve as its proof of use as the new law trademark application does
not require filing of labels as part of the additional documents needed. The fact that
the mark was used is not declared in the application as the basis of filing is not prior-
use but first-to-file. The old law applications require their submission on the onset
except if it was filed on the basis of prior application or registration of foreign Paris
Convention members.
Similar requirements as those of the old law are provided. Payment of the fee is
explicitly provided. Lack of funds as reason for non-use is expressly declared as an
unacceptable excuse. The three types of uses of the mark identified in the new law are
reiterated in the regulations for emphasis.
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A declaration of use is filed twice before its renewal: one is within three years
from its filing date and the other after the fifth year counted from registration date.
The one filed within three years is given a one-time extension of six months to file a
declaration. Failure to do so would result in refusal or withdrawal of the application if it
is still pending or removal from the register by the Director moto propio.
5. Assignments and other transmissions of rights
a. Invention, UM and ID
The procedures for recording assignment in the old law enumerate the
requirements for it to be accepted by the Office. They are:
1. in English language. If not, there must be a verified English translation
2. acknowledgement by a notary or officer authorized to administer oath
3. an appointment of resident agent (ARA) is necessary if the assignee is not
domiciled in the Philippines
4. give the title, letters patent number and date if already granted, or application
number and filing date if it is still pending;
5. state the name of inventor, designer or maker and the title of the invention, UM
or ID.
6. the recordation request must come with a recording and publication fees
The assignment, translation and ARA when executed in a foreign country must
be proved by a Philippine diplomatic or consular officer’ certificate or other officer
representing Philippine interest in the foreign country.
Other instruments (written documents that records an act or agreement and
that formal expressions provide evidences) affecting the title to a patent right or
application, including licenses to be acceptable must conform to the preceding
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requirements. The recording date is the day it was received at the Office in proper
form and full recording fee paid.
The new law has the same requirements as in the old law except for the
language where the Filipino language is acceptable and does not need any translation.
It discarded the requirement of proof of authority of foreign notary by a Philippine
representative protecting the country’s interest in the foreign land. If an assignment
was recorded before the patent right ripened the letters patent may be issued to the
assignee.
b. Trademarks
The old law requirements for recordation on the register are as follows:
1. in writing and in English language or else there must be a verified English
translation of the document, acknowledgement of a notary or of an officer with
authority to administer oath. If the documents were executed in a foreign country his
authority must be proved by a certificate of a diplomatic or consular officer.
2. identify the mark, registration number and issue date if registered, serial
number and filing date if it is still pending
3. publication fee.
The assignment document must be filed in duplicate and if the original is not
available, two authenticated copies to take its place. After its recordation, the original
or one of the authenticated copies will be returned to the filer with the notation of fact
of recording marked on the sheets. The date of the recording is the date of its receipt
at the Office in proper form and the recording fee fully paid. A new registration
certificate may be issued to the assignee upon his request. Remittance of the fee is
necessary.
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The new law transmission of rights regulation stressed the provisions of the law.
It included the notarization requirement and the submission in duplicate of the
documents. It discarded the requirement of proof of authority of foreign notary by a
Philippine representative protecting the country’s interest in the foreign land. If an
assignment was recorded before the trademark right ripened the trademark
registration may be issued to the assignee. The issuance of new certificate to the
assignee is also made available.
D. The Practice
The processing or examination of post grant/registered maintenance
requirement and recordation of assignments or other transmissions of rights used to be
done in the Legal Division of the Patent Office. When the Office was reorganized to
become the Bureau of Patents, Trademarks and Technology Transfer, a separate
Division called Patent and Trademark Registry and EDP Division was created to
perform all the post grant/registration processing, recordation of changes of title or
ownership as well as electronic data processing and computer systems development.
At the latest reorganization of the Office, the EDP part was separated to become
a bureau. The registry became the Patents, Trademarks Administrative Services
Division (PTASD) under the Administrative, Finance, Human Resource Development
Services Bureau. The Division has 10 mandated positions but since the volume is work
is large, four detailed employees have been added to the PTASD manpower. Everybody
uses computers but the newly developed computer applications software ( PACSYS for
Patents and Enhanced TEAMS for Trademarks) are still not in operable at the time of
writing. PTASD still maintains the big books where the assignments or transmissions,
affidavits filings, extension of terms, annual fee filings are contained. Since the files are
still on paper, PTASD has to wait for the documents and filewrappers to be on hand.
The sources of the dossiers are from the BOT, BOP, BLA, Publication Division and the
IPO Records room.
18
The post grant/registration processing begins by filing in paper the annual fee
payment, the renewal/extension of term, the declaration/affidavit of use and requests
for assignment or other transmissions of rights. The Order of payment must be
secured first with the PTASD personnel before any payment could be made. The fees
can be paid in cash or checks. After being issued an official receipt by the IPO cashier,
the documents will be stamped received in the receiving section of AFHRDSB. The
receipt of the documents will be recorded before being handed out to PTASD for
processing.
In case of assignments or transmissions of pending applications the documents
will be sent to the concerned Bureau where the filewrappers are located. The request
documents together with pertinent papers inside the filewrapper in case of the Bureau
of Patents or the whole filewrapper in the case of Bureau of Trademarks will be
transferred to PTASD for processing.
All Intellectual Property Specialists examine and evaluate each and every
document to decide whether to accept or reject whatever request, affidavit, petition
and payment for eventual recommendation for review and signature of the Division
Chief or any designated PTASD personnel. If the requirements of the law are not
satisfied, the IPO specialists will issue action letters for the filers, registrants, patentees
or their lawyers or agents to reply.
When all requirements of the law and regulations are satisfied, the actual
recording on the big books or register is made and the database in computer is
updated. A copy of the documents submitted is returned to the applicant, patentee,
registrant, their lawyers or agents.
19
Requests for recordation of licenses are handed over to DITTB for their review
before actual recording is made. DITTB fees are separate from PTASD fees. The public
will be properly notified by the specialists in case of any deficiency.
E. The Computerization
1. Historical background
In the late 80 s computerization was initiated with the WIPO UNDP project that
resulted with the provision of a developed application software called the STAR system
(System for trademark administration registration) and hardware, a Microvax mini
computer system and a number of computer terminals. Though the STAR system was
made as a trademark administration system it was never used as such. Only the
transmittal of cancellation notices of trademark registrations and the system for
preparing the Cancellation Order worked well for sometime since the trademark
register database was built and updated- hence the registry module was utilized and
trademark search could be done.
As the number of trademark registrations in the database grew and as the
administration system was set to be made in operation the slow response time became
the apparent problem. There was a hardware and software deficiency. The outsourced
developer had organizational problems- its computer experts were swiftly pirated by
more lucrative jobs abroad consequently there was an insufficient preparation of
operational manuals on system operations, standards for data input and so forth (in
short, it was easier to build a new software program rather than debug and then
rebuild or rework another programmer’s work). The Patent Office, likewise, had
bureaucratic budgetary and organizational structure constraints: (a) to be able to
acquire the needed hardware and software requirement ASAP; and (b) to obtain
enough number and higher-paid computer (I.T. experts) positions in order to recruit
20
and retain more personnel knowledgeable on the existing the software and hardware
in placed, respectively.
In spite of the previous inadequacies, IPO continued to acquire more personal
computers and provided computer training to its employees. The Bureau of Patents
Trademarks and Technology Transfer requested JICA to investigate and analyze the
system in 1993. The Tashiro and Ito sans’ mission resulted in the provision of 15 more
computers for the Office and a request for more technical assistance.
In March 1995, JPO/JICA provided technical cooperation for the Trademark
Search System. This involved construction of database and creation of a word search
system and it was completed in March 1997. Because of the rapid development of
technology, the two (2) year's period was too short for the expert to develop a more
comprehensive system for Trademark search. In 1996, trademark administration
system was cooperatively designed till its completion in May 1998. The 1998 was the
year the new law became effective and it brought two important benefits for
forthcoming modernization projects (a) the establishment of a new bureau – the
Management Information Services and EDP Bureau which allowed a much greater
number of IT personnel to be recruited for the office and (b) the permission to retain
its income for its operation.
On May 1999 the project type technical cooperation started the modernization
of the administration of Patents- The Patent Administration Computerized System
(PACSYS). It was a custom-built intranet application developed to assist the different
divisions of the Intellectual Property Office (IPO) to process and track patent
applications. The development of the system is divided into three (3) parts: Phase 1, 2
and 3.
Phase 1 is the initial development of the IPO Administrator and IPO Web of
PACSYS. IPO Administrator handles the file/control maintenance while the IPO Web
21
handles the Receiving/Mailing, Invention, Utility Model/Industrial Design, Common
Functions, Issuance of Certificate and Inquiry/Statistics modules.
Phase 2 is the enhancement of Phase 1 and addition of 2 major modules to
PACSYS namely: Patent/Trademarks Administration Services Division (PTASD) and
Bureau of Legal Affairs (BLA) modules.
Phase 3 is the enhancement of Phase 1 and 2 and the addition of 3 major
modules to PACSYS namely: Scanning, Publication and Search by Reference modules.
Phase 3 will be divided into 2 subsystems: Document and Old Law. Under the
Document Subsystem, there will be scanning of application requirements/amendments,
publication of the IPO Official Gazette and searching by reference. Under the Old Law
Subsystem, there will be Phase 1 and 2 system enhancements and encoding and
processing of old law applications into the IPO Backlog Data Entry System.
PACSYS was developed using Active Server Pages (ASP). Server O/S is Windows
NT 4.0. Database used is Oracle 8i.
2. The PTASD ( Registry) portion of Pacsys Phase two
a. PTAS Annual Fee Payment Processing (new law)
The PTAS Annual Fee Payment is process through the PTASD. Following are the
pertinent details required for the PTAS annual fee payment processing:
• First payment of PTAS Annual Fee at the expiration of four (4) years from the
date of the 1st publication, then each succeeding anniversary payments of such
date.
• Notice will be sent to the applicant/patentee for payment.
22
Basic Fee +
No. of Claims (in excess of
five)
Subtotal
+ 1% legal research
Basic Fee +
No. of Claims (in
excess of five)
(Subtotal * 1.20)
+ 1% legal research
• Annual payment must be made three (3) months before the due date. Non-
payment within this period, a 20% surcharge will be added to the annual fee to
be paid within six (6) months.
• Non-payment of annual fee within six (6) months after the due date, patent will
become lapsed with no revival chances.
• Fees to be paid will be based on the number of claims following the
computation below:
In case of payment during the grace period, the following computation should be
followed:
23
IPR Specialist determines if the correct payments have been made or if
applicant/patentee is the applicant/patentee on record. Prepares action letter if
necessary for discrepant payments or if the applicant/patentee is not the
applicant/patentee on record.
• System to be developed must be able to track or determine application/granted
patent’s annual payments due date.
• Annual payments are applicable to both the pending and registered patents.
Basis will be the date of 1st publication.
• Record of payment should be available for verification and payment tracking.
• Responses to actions for annual fee processing are given 60 days period to reply.
• Non-response to annual fee processing first action will result to a second final
action for 30 days period. Non-response to final action will result to inclusion in
the notice of order of non-payment.
Document(s) Needed: Annual payment form
Process Flow
• Annuity Payor request for Order of Payment from the PTASD • PTASD receives request for Order of Payment from the payor • Duty Officer verifies the patent information details (patent number, date
filed, title of invention, patentee/assignee, date 1st published, annual fee year due to be paid, total no. of claims, amount due, entity, origin)
• Duty Officer issues Order of Payment to the payor • Annuity Payor receives Order of Payment from the PTASD • Annuity Payor submits Order of Payment and Annuity Payment to the
Receiving Section • Receiving Section receives Order of Payment and Annuity Payment /or
Communication Response from the payor • Receiving Section encodes payment details then generates Official Receipt • Receiving Section encodes response/communication details • Receiving Section generates List of Response/Communication Received and
Forwarded then submit to the PTASD • PTASD receives List of Response/Communication Received and Forwarded
from the Receiving Section • PTASD encodes receiving annuity details (Payor / Atty address, Proposed
24
change in Number of Claims if there’s any, Change of ownership if there’s any)
• PTASD assigns annuity payment and responses to IPR Specialist • PTASD encodes assignment details • IPR Specialist evaluates annuity payment details • If payment/response is complete, IPR Specialist performs the following:
o Forwards the document to the supervisor for signing o Supervisor reviews document for approval o Stamps date of acceptance o Encodes date of acceptance o Generates List of Annual Payment and Signed/Accepted Payment
Form then forwards it to the Messenger • If payment details/response is incomplete or has discrepancies, IPR Specialist
performs the following: o Drafts action letter then forwards it to the Supervisor o Supervisor reviews Action Letter then forwards it to the IPR
Specialist for signing o In case the deletion of claims involves substantive examination of
complex interrelated claims then the payment evaluation will be elevated to the BOP
o After BOP evaluation and resolution on the number of claim is made, evaluation is returned to PTASD for final processing (acceptance)
o If communication is a request for extension to respond, IPRS will stamp the document with the number of days of approved extension then signed it
o Stamps mailing date to the Action Letter o Encodes mailing details o Generates Masterlist of Mailed Action/Communication (For
Registered/Pickup) o Forwards Action Letter and Masterlist of Mailed
Action/Communication to the Messenger for mailing • Messenger receives Masterlist of Mailed Action/Communication, List of Annual
Fee Payment, and signed Payment Form from the PTASD o Prepares return card o Dispatches Mail
b. PTAS Certification Processing
The Request for Certification is process through the PTASD. Following are the
pertinent details required for the request for certification processing:
25
Only those with granted patents can request for patent certification
Process Flow • Requester request for Order of Payment from the PTASD • PTASD receives request for Order of Payment from the requester • Duty Officer verifies the patent information details (patent number,
date filed, date signed, title, patentee/assignee, number of pages and drawing sheets, entity, origin, amount)
• Duty Officer issues Order of Payment to the requester • Requester receives Order of Payment from the PTASD • Requester submits Order of Payment and Request Letter to the
Receiving Section • Receiving Section receives Order of Payment and CTC Request /or
Communication Response from the requester • Receiving Section encodes payment details then generates Official
Receipt • Receiving Section encodes response/communication details • Receiving Section generates List of Response/Communication
Received and Forwarded then submit it to the PTASD • PTASD receives List of Response/Communication Received and
Forwarded from the Receiving Section • PTASD encodes receiving application details • PTASD retrieves filewrapper • PTASD assigns CTC Request and responses to IPR Specialist • PTASD encodes assignment details • IPR Specialist evaluates CTC Request • If document/response is complete, IPR Specialist performs the
following: • Generates CTC Certification, CTC ribboned and sealed • Forwards the document to the supervisor for signing • Supervisor reviews document for approval • Encodes date of fulfilled request • Generates List of Issued Patents with CTC/Certification Request,
Letters to Pick-up Requested CTC then forwards it to the Messenger • If document/response is incomplete, IPR Specialist performs the
following: • Drafts action letter then forwards it to the Supervisor • Supervisor reviews Action Letter then forwards it to the IPR Specialist
for signing
26
• If communication is a request for extension to respond, IPRS will stamp the document with the number of days of approved extension then signed it
• Stamps mailing date to the Action Letter • Encodes mailing details • Generates Masterlist of Mailed Action/Communication (For
Registered/Pickup) • Forwards Action Letter and Masterlist of Mailed
Action/Communication to the Messenger for mailing • Messenger receives Masterlist of Mailed Action/Communication (For
Registered/Pickup from the PTASD • Prepares return card • Dispatches Mail
Document(s) Needed: Request for CTC Certification, Photocopy of certificate/any
document needed in the certification
c. Processing of Petition for Extension of Term
The Petition for Extension of Term is process through the PTASD. Following are the
pertinent details required for the petition processing:
• responses to actions for petition for extension of term are given 60 days period
to reply.
• Petition for extension of term is for industrial designs only.
• Registration coverage is for five years but can be extended twice for another
five years (Design Only).
Process Flow • Petitioner request for Order of Payment from the PTASD • PTASD receives request for Order of Payment from the Petitioner • Duty Officer verifies the patent information details (patent number,
date filed, date signed, title, patentee/assignee, term due for extension, amount, entity, origin)
• Duty Officer issues Order of Payment to the Petitioner • Petitioner receives Order of Payment from the PTASD • Petitioner submits Order of Payment and Petition for Extension
27
Document to the Receiving Section • Receiving Section receives Order of Payment and Request for
Extension Document /or Communication Response from the Petitioner• Receiving Section encodes payment details then generates Official
Receipt • Receiving Section encodes response/communication details • Receiving Section generates List of Response/Communication
Received and Forwarded then submit to the PTASD • PTASD receives List of Response/Communication Received and
Forwarded from the Receiving Section • PTASD encodes receiving petition details (date received by PTASD) • PTASD retrieves filewrapper • PTASD assigns petitions and responses to IPR Specialist • PTASD encodes assignment details • IPR Specialist evaluates petition • If document/response is complete, IPR Specialist performs the
following: • Forwards the document to the supervisor for signing • Supervisor reviews document for approval • Generates List of Petitions • List of Petitions forwarded to the Bureau of Patents Assistant Director
for approval and signature • Encodes petition details, update/amend if there’s any • Bureau of Patents receives the list of petitions and file wrapper • Bureau of Patents encodes details • Bureau of Patents Assistant Director reviews, approves, then
signs the petition • List of approved and signed petitions to be forwarded to the PTASD • PTASD encodes effective date of approval • PTASD forwards two (2) Lists of approved and signed petitions,
Letter to Pickup. One to the Messenger for mailing and the other to the Publication Division
• If document/response is incomplete, IPR Specialist performs the following:
• Drafts action letter then forwards it to the Supervisor • Supervisor reviews Action Letter then forwards it to the IPR Specialist
for signing • If communication is a request for extension to respond, IPRS will
stamp the document with the number of days of approved extension then signed it
• Stamps mailing date to the Action Letter • Encodes mailing details • Messenger receives Masterlist of Mailed Action/Communication (For
Registered/Pickup from the PTASD
28
• Prepares return card • Dispatches Mail
Document(s) Needed: Notarized Petition, Special Power of Attorney when needed,
Owner’s Copy of Patent or a Certified Patent Copy
d. Processing of Changes in Granted Patents
The Request for Changes in Granted Patents is process through the PTASD. Following
are the pertinent details required for the granted patents change request processing:
Responses to actions change in title or ownership are given 90 days period to reply.
Extension for responses is given 30 to 60 days period to reply.
Non-response to change in title or ownership action will mean no recordation of request and the file is returned to the record room
Data for changes are the following: ownership, name, address, merger
Changes in patent must be stored historically therefore no updating of current record
will be made. Changes in patents must retain multiple records.
Process Flow • Changes/Transfer Filer request for Order of Payment from the PTASD • PTASD receives request for Order of Payment from the Changes/Transfer
Filer • Duty Officer verifies the patent information details (application
no/patent number, date filed, title, patentee/assignee, amount, entity, origin)
• Duty Officer issues Order of Payment to the Changes/Transfer Filer • Changes/Transfer Filer receives Order of Payment from the PTASD • Changes/Transfer Filer submits Order of Payment and transfer
document to the Receiving Section • Receiving Section receives Order of Payment and Transfer Document
/or Communication Response from the Changes/Transfer Filer
29
• Receiving Section encodes payment details then generates Official Receipt
• Receiving Section encodes response/communication details • Receiving Section generates List of Response/Communication Received
and Forwarded then submit it to the PTASD • PTASD receives List of Response/Communication Received and
Forwarded from the Receiving Section • PTASD encodes receiving application details • PTASD assigns change documents and responses to IPR Specialist • PTASD encodes assignment details • IPR Specialist evaluates Request and documents • If document/response is complete, IPR Specialist performs the
following: • Forwards the document to the supervisor for signing • Supervisor reviews document for approval • Stamps date of recordation • Encodes recordation information and date • Generates two (2) List of Recordation then forwards one to the
Messenger Division and the other to the Publication Division • If document/response is incomplete, IPR Specialist performs the
following: • Drafts action letter then forwards it to the Supervisor • Supervisor reviews Action Letter then forwards it to the IPR Specialist for
signing • If communication is a request for extension to respond, IPRS will stamp
the document with the number of days of approved extension then signed it
• Stamps mailing date to the Action Letter • Encodes mailing details • Generates Masterlist of Mailed Action/Communication (For
Registered/Pickup) • Forwards Action Letter and Masterlist of Mailed Action/Communication to
the Messenger for mailing • Messenger receives Masterlist of Mailed Action/Communication and List
of Approved Transfer/Change Documents from the PTASD • Prepares return card • Dispatches Mail
30
e. Processing of Changes for Pending Applications
The Request for Changes in Pending Applications is process through the PTASD.
Following are the pertinent details required for the granted patents change request
processing:
Responses to actions change in title or ownership are given 90 days period to reply,
Extension for responses is given 30 to 60 days period to reply,
Non-response to change in title or ownership action will mean no recordation of
request and the file is returned to the record room,
Data for changes are the following: ownership, name, address,
Changes in pending applications must be stored historically therefore no
updating of current record will be made. Changes in pending applications must retain
multiple records.
Process Flow • Changes/Transfer Filer request for Order of Payment from the PTASD • PTASD receives request for Order of Payment from the Changes/Transfer
Filer • Duty Officer verifies the patent information details (application
no/patent number, date filed, title, patentee/assignee, amount, entity, origin)
• Duty Officer issues Order of Payment to the Changes/Transfer Filer • Changes/Transfer Filer receives Order of Payment from the PTASD • Changes/Transfer Filer submits Order of Payment and transfer
document to the Receiving Section • Receiving Section receives Order of Payment and Request for
Change/Transfer Document /or Communication Response from the Changes/Transfers Filer
• Receiving Section encodes payment details then generates Official Receipt
• Receiving Section locate actual location of filewrapper • Receiving Section encodes response/communication details/request for
transfer/changes details • Receiving Section encodes request details • Receiving Section forwards the List of Response/Communication
31
Received and Forwarded to the Bureau of Patents • Bureau of Patents receives List of Response/Communication Received
and Forwarded from the Receiving Section • Bureau of Patents encodes request details • Bureau of Patents inserts request documents and pertinent documents
needed for recordation to the filewrapper • Bureau of Patents encodes request forwarding details • Bureau of Patents generates List of Forwarded Applications • Bureau of Patents forwards List of Forwarded Applications and folder
containing pertinent documents and request for recordation to the PTASD• PTASD receives List of Response/Communication Received and
Forwarded from the Receiving Section or/ List of Forwarded Applications and folder from the Bureau of Patents
• PTASD encodes communication details and/or encodes receiving document details
• PTASD assigns pending patents and responses to IPR Specialist • PTASD encodes assignment details • IPR Specialist evaluates change/transfer request • If document/response is incomplete, IPR Specialist performs the
following: • Drafts action letter then forwards it to the Supervisor • Supervisor reviews Action Letter then forwards it to the IPR Specialist for
signing • If communication is a request for extension to respond, IPRS will stamp
the document with the number of days of approved extension then signed it
• Stamps mailing date to the Action Letter • Encodes mailing details • Generates Masterlist of Mailed Action/Communication (For
Registered/Pickup) • Forwards Action Letter and Masterlist of Mailed Action/Communication to
the Messenger for mailing • If document/response is complete, IPR Specialist performs the
following: • Reviews and signs recommendation for approval of the change/transfer
request by the Supervisor • Encode recordation information and date of recordation • Generates two (2) Lists of patents with approved transfer of changes, one
forwarded to Messenger and the other to the Publication Division • Publication Division prepares O.G. publication of pending patents with
approved transfer/change recordation • Messenger receives Masterlist of Mailed Action/Communication and List
of Approved Transfer/Change Documents from the PTASD
32
• Prepares return card • Dispatches Mail
3. Flowchart of PTASD module ( Please see Annex b.) F. The Philippine Post-grant/registration Schedule of Fee
The following are some observations on the Philippine IP post grant schedule of fees as found
below:
1. There is a specific amount for issuance of registration certificates, separate from the
annual fees.
2. The IP right owner is classified as either a big or small entity
3. The first assignment from small to big entity is bigger than succeeding assignments.
This means that if the IP owner filed their IP application as big entity their first
assignment fee is like that of any other assignment or related document affecting title.
4. The surcharge to any delayed fee is pegged to 20% of the required fee.
5. Annual fees are only for Invention application/patents. Renewal of term is for Industrial
Design (new law, Extension of term is for UM and ID old law patents) while Declaration
of use is for Trademarks
6. There’s a yearly increase on annual fees and the payment of claims is only on those in
excess of five.
GENERAL FEES
Php
Ref. Code TYPE OF FEE Big Small
101 1. CERTIFICATION FEE 280.00 plus cost of
reproduction/computer print-out 102 2. CERTIFIED TRUE COPY 350.00 175.00
plus cost of reproduction/computer print-out
33
107 7. PUBLICATION FEE 280.00
minimum; approximately 1/8 page
9. RECORDAL/ANNOTATION of:
9.1 Invention
109 9.1.1 1st Assignment of applicationfrom small to big entity
4,140.00 N/A
plus publication fee
110 9.1.2 1st Assignment of issued patentfrom small to big entity
5,520.00 N/A
plus publication fee
111 9.1.3 Any other Assignment or document affecting title
485.00 242.50
plus publication fee 9.2 Utility Model and Industrial Design
112 9.2.1 1st Assignment of application from small to big entity
2,070.00 N/A
plus publication fee
113 9.2.2 1st Assignment of issued patentfrom small to big entity
2,760.00 N/A
plus publication fee
114 9.2.3 Any other Assignment or document affecting title
240.00 120.00
Plus publication fee
9.3 Trademarks
115 9.3.1 1st Assignment of applicationfrom small to big entity
2,070.00 N/A
plus publication fee
34
116 9.3.2 1st Assignment of registered mark from small to big entity
3,450.00 N/A
plus publication fee
117 9.3.3 Any other Assignment or document affecting title
485.00 242.50
plus publication fee (if applicable)
118 9.3.4 Updating of data such as change of name, change of address
485.00 242.50
plus publication fee (if applicable)
119 9.4 Other documents not required by the Office
415.00 207.50
122 11. SURCHARGE for late payment of fees where applicable
20% of the required fee
3. POST-EXAMINATION 3.1 Issuance of Certificate
213 3.1.1 Letters Patent 690.00 345.00 4. ANNUAL FEES: Due and payable at the
beginning of the stated year reckoned from the date of first publication prior to substantive examination under Sec. 44 of RA 8293
218 5th year 2,070.00 1,035.00
219 6th year 2,760.00 1,380.00
220 7th year 3,450.00 1,725.00
221 8th year 4,140.00 2,070.00
222 9th year 5,520.00 2,760.00
35
224 11th year 8,910.00 4,455.00
225 12th year 11,040.00 5,520.00
226 13th year 13,110.00 6,555.00
227 14th year 15,870.00 7,935.00
228 15th year 18,630.00 9,315.00
229 16th year 21,390.00 10,695.00
230 17th year 24,150.00 12,075.00
231 18th year 28,980.00 14,490.00
232 19th year 34,780.00 17,390.00
233 20th year 41,730.00 20,865.00
234 5. Annual fee for each claim in excess of five
(5) [5th to 20th year]
250.00 125.00
235 6. Notice and publication of non-payment of annual fee
280.00
minimum; approximately 1/8 page
3. POST-EXAMINATION
3.1 Issuance of Certificate:
313 3.1.1Registration[Applies only to applications filed before effectivity of these rules]
500.00 250.00
plus publication fee
4. EXTENSION OF TERM (Industrial Design Registration per embodiment)
4.1 Petition for Extension of Term
318 4.1.1 First 1,380.00 690.00
plus publication fee
319 4.1.2 Second 2,760.00 1,380.00
plus publication fee
36
FOR APPLICATIONS PROSECUTED UNDER R.A. 165
Php
Ref. Code TYPE OF FEE Big Small 3. POST-EXAMINATION 3.1 Issuance of Certificate of Letters Patent
415 3.1.1 Invention 690.00 345.00 plus publication fee
416 3.1.2 Utility Model and Industrial Design 500.00 250.00 plus publication fee
417 3.2 Reinstatement of lapsed invention patent 2,760.00 1,380.00 plus publication fee 4. EXTENSION OF TERM (Utility Model and Industrial
Design) 4.1 Petition for -
418 4.1.1 1st Extension 1,380.00 690.00 plus publication fee
419 4.1.2 2nd Extension 2,760.00 1,380.00 plus publication fee 5. ANNUAL FEES Due and payable at th
beginning of the stated
year reckoned from the
date of issuance patent
420 5th year 2,070.00 1,035.00
421 6th year 2,760.00 1,380.00
422 7th year 3,450.00 1,725.00
423 8th year 4,140.00 2,070.00
424 9th year 5,520.00 2,760.00
425 10th year 6,900.00 3,450.00
426 11th year 8,910.00 4,455.00 427 12th year 11,040.00 5,520.00 428 13th year 13,110.00 6,555.00 429 14th year 15,870.00 7,935.00
37
431 16th year 21,390.00 10,695.00 432 17th year 24,150.00 12,075.00 433 6. Annual fee for each claim in excess of five (5) [5th
to 17th year]
250.00 125.00
434 7. Notice and Publication of non-payment of annual fee
280.00
5. FILING OF DECLARATION OF ACTUAL USE
5.1 Filed and registered under RA 8293
526 5.1.1 Within 3 years from filing date 1,200.00 600.00
527 5.1.2 Within 1 year from 5th year anniversary 1,380.00 690.00 5.2 Filed under RA 166
528 5.2.1 Within 3 years from December 2, 1998 1,200.00 600.00
Due and payable
until Dec. 1, 2001 5.3 Registered under RA 166 and expiring after June
3,
2004 529 5.3.1 Within 1 year from 5
th year anniversary 1,380.00 690.00
530 5.3.2 Within 1 year from 10th year anniversary 2,760.00 1,380.00
531 5.3.3 Within 1 year from 15th anniversary 4,140.00 2,070.00
532 5.4 Use of mark by a related company 1,200.00 600.00
533 5.5 Single extension of time to file Declaration of Use 2,400.00 1,200.00
III. The Japanese Post grant/registration
A. Historical Background
The first known provision regulating the registration procedure was the Grand
Minister’s Notification No. 13 of 1884. Here, the Trademark rights registration provision
was made available in Sec. 5 of the Application Procedure for Trademark Registration.
38
It states that in accordance with Sec. 8 of the Ordinance, the assignor and assignee of
full and partial assignments must jointly sign the two copies of application form and
submit them with the registration certificate, deed of assignment, registration fees and
the descriptions of the assignment (two copies and three copies for full and partial
assignments, respectively). After registration the partial assignment’s assignor and
assignee will receive their partial receipt certificates and the corresponding descriptions
separately. The full assignment assignor will be given his original registration and
description and he, after affixing the endorsement and inspection seal, will give them
to the assignee.
The law was passed that same year made the trademark term to last for 15
years. Then it was extended to 20 years under the Law of 1888.
The first patent registration procedure was laid down in Sec. 43 of the Patent
Registration Decree Regulation of1889. It declares that on the basis of Sec. 22 of the
Patent Ordinance Law, the party requesting for registration of purchase, assignment,
co-ownership or endorsement must submit: (a) the request form adhering to the
formality set in paragraph 10 and 11, (b) the register stamp attach to it, the amount of
which was prescribed in Sec. 30 of the Ordinance and (c) the deed of contract. When
all the requirements are fulfilled, the Director of Patents will record the deed in the
original contract register, attach the registration stamp on document and then dispatch
it to the party concerned.
After 1889, the registration procedure was placed in the Registration Law (a law
enacted for the registration of real estate). This law was repealed in 1899. On the
same year, the Real Estate Registration law was ratified the patent procedure was
separated from it and placed in Chapter 5 ( Section 60 to 74) of the Patent Law
Implementing Regulation ( Ministry of Agriculture and Commerce Degree No. 13). It
stipulated, among others, the registration of transfer, contents of the patent original
register, and registration of lapse of right.
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The Patent Law was revised in 1909. Patent Registration Decree was passed by
the Imperial Decree No. 294 on October 25 and made effective on November 1 of the
same year. This established the “original form” of the present Patent Registration
Decree. Registration Decrees for utility models, industrial designs and trademarks were
also enacted and each decree had a matching implementing rule. As such, the laws,
rules and regulations on registration of industrial property rights were completed.
The year 1921 saw another revision of the Patent Registration Decree and
Implementing Rule through Imperial Decree No. 461 of 1921 which was made effective
January 1, 1922. It abolished the license to use provision; allowed the possibility of
application made exclusively by registrant as an exception to joint application through
an appended consent from the one having an obligation for registration; removed the
necessity of attaching the patent certificate and registration certificate as documents
certifying the cause of registration; and created the new provision for registration
procedure on trust.
Cabinet Order No. 39 of 1960 resulted in another set of changes:
o the transfer of chief registration items to Patent Law ( Sec. 27)
o change of preparation method of original register from book-
style register to loose-leaf register
o formation of the closed register system
o creation of joint application
o abolition of restricted assignment and license
o establishment of exclusive and non-exclusive license
o formation of new register system handling request for
retrial of ruling on refusal
o possibility of unlimited trademark assignment
o creation of exclusive and non-exclusive license to use of
trademarks
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There have been many other changes since the 1960 revisions up to the present.
They are tabulated below per year the change was made:
1964 -the magnetic-tape patent original register was initiated
1985- the patent of addition was abolished
1987- the registration items in the patent original register was changed
due to the introduction of improved multiple claims
1990- the fee payment system by on-line and diskette and the provisional
registration of perpetuation were established;
- the erasure of registration after provisional injunction was
coordinated
1994- the post-grant opposition system in Patent Law was instituted
1996- the Patent agent registration system was removed
- the registration fee cash-payment system was launched
It is noteworthy to mention that Japan had revised its patent law about a dozen
times between 1945 and 1980. It has recently again amended its patents and
trademark laws in 1995 to comply with revisions in the TRIP agreement. All the
changes were done to keep in step with emerging technologies and their economic
development needs nationally and internationally. It kept an open ear to the needs of
the public and swiftly enacted laws to alleviate some sagging conditions. The country
did its best to harmonize with international standards.
B. The Term of I.P. Rights
All IP rights terms are:
Patent -20 years from filing date of application. Any agricultural chemical invention and
invention on medicine may have an extended term for a maximum of five years if,
because of the necessity of obtaining an approval or other disposition which is
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governed by provisions in Agricultural Chemicals Regulation Law and Pharmaceutical
Affairs Law, it was not applied on a commercial basis in two years or more.
Utility Model- 6 years from filing date of application
Design- 15 years from date of grant. The term of the associated design is co-terminus
with that of the principal design right except when the reasons for lost of right are
other than the expiration of term in which the associated design will continue to exist.
Trademark- 10 years from date of establishment of registration. The term is renewable
by filing a request for renewal of registration. The term of defensive mark is the same
as that of the principal register. The term of a defensive mark may be renewed by:
submitting a request for registration of renewal of term of defensive mark, examined
substantially, obtaining registration, and submitting an annual fee payment document
for registration of renewal of term of defensive mark.
C. Japanese Registration Laws
1. Patent Right maintenance and management
a. Registration of establishment of patent right
The Commissioner of the Patent Office will ex officio register the establishment
of a patent right in the Patent Register once the annual fees (from the first to the
third year) have been paid in lump sum within 30 days from the date of transmittal
of the examiner's decision or the trial decision that the patent is to be granted, or
when exemption or deferment of such payment is granted. Reduction, exemption or
deferment for the first three years of payment is granted upon the discretion of the
Commissioner when he recognizes that the inventor, etc. who is short of funds cannot
42
afford to pay the annual fees. The amount for Invention, Utility Model and Industrial
Design are specified in the law and tabulated below. The years 21st to 25th are for the
extended years as provided for in Section 67bis2.
Annual fee for patent
Basic fee + Number of
claims
Annual fee for patent
Basic fee + Number of
claims
Annual fee
for Design
Payment
year
Basic fee Add’nl fee
Per claim
Basic fee Add’nl fee
Per claim
Basic fee
1st 13,000 1,100 7,600 700 8,500
2nd 13,000 1,100 7,600 700 8,500
3rd 13,000 1,100 7,600 700 8,500
4th 20,300 1,600 15,100 1,400 16,900
5th 20,300 1,600 15,100 1,400 16,900
6th 20,300 1,600 15,100 1,400 16,900
7th 40,600 3,200 16,900
8th 40,600 3,200 16,900
9th 40,600 3,200 16,900
10th 81,200 6,400 16,900
11th 81,200 6,400 33,800
12th 81,200 6,400 33,800
13th 81,200 6,400 33,800
14th 81,200 6,400 33,800
15th 81,200 6,400 33,800
16th 81,200 6,400
17th 81,200 6,400
18th 81,200 6,400
19th 81,200 6,400
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20th 81,200 6,400
21st 81,200 6,400
22nd 81,200 6,400
23rd 81,200 6,400
24th 81,200 6,400
25th 81,200 6,400
*Notes: As for the Patent applications and the utility model applications filed before
December 31, 1987, and the utility model applications filed between January 1, 1988
and December 31, 1993, a different 31, 1993, a different annual fee system from the
system described above is applied, but it is omitted.
b. Issuance of certificate of patent
When the establishment of a patent right has been registered or when a ruling
or trial decision to the effect that the description, patent claims or drawings attached
to the request are to be corrected has become final and conclusive and such decision
has been registered, the Commissioner of the Patent Office shall issue the certificate of
patentee.
c. Payment of annual fees
For the annual fee for each year from the fourth and subsequent years, on the
basis of the date of the registration of the establishment (the date of the publication of
the application under the old law) the patentee must pay the annual fee for the next
year during the period for which the annual fee is already paid. He is allowed to pay
the annual fees behind schedule within six months from the expiration of that time
limit but a surcharge amounting to the same amount as that of the annual fee must be
remitted by patent revenue stamps. Otherwise, the patent right is deemed to have
been extinguished retroactively from the time of the expiration of the time limit. As
described above, if a patentee fails to pay the annual fees within six months following
44
the expiration of the said time limit, the patent right is deemed to have been
extinguished. But when the owner of the extinguished patent is unable to pay an
annual fee and surcharge belatedly within the time limit for late payment due to
reasons outside his control (extraordinary natural phenomenon, serious disease of the
patentee, etc.), he may pay the annual fee and surcharge within 14 days ( where he is
a resident abroad, within two months) from the date on which the reasons ceased to
be applicable but not later than six months following the expiration of the said time
limit. In this case, his patent right may be restored and deemed to have been
maintained retroactively.
Any interested person may pay the annual fees even against the will of the
person liable to pay and he/she can demand reimbursement of the expenditure to the
extent that the person liable to pay is actually making a profit.
d. Registration of extension of term of patent right
The term of the patent right can be extended, by applying for registration of an
extension, by a period not exceeding five years, for reasons that the patented
invention could not be worked for it needs to get an approval or other disposition as
required by law to ensure safety, etc.
e. Transfers of patent right
The transfers of a patent right, except those by inheritance, merger or other
general succession, will have no effect unless they are registered.
f. Grant of licenses
A patentee may grant an exclusive license or a non-exclusive license on his
patent right. An exclusive licensee has an exclusive right to commercially work the
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patented invention, the scope of which depends on the license contract. A pledge or
grant of a non-exclusive license on the exclusive license can also be instituted but with
the consent of the patentee. An exclusive license may be transferred jointly with the
business in which it is worked, or only with the consent of the patentee or in the case
of inheritance or other general succession.
The grant, transfer (except those by inheritance or other general succession),
modification or extinguishment including any restriction thereof (except those resulting
from a merger or the extinguishment of the patent right) of an exclusive license shall
be of no effect unless it be registered.
A patentee may grant a non-exclusive license on his patent right. The non-
exclusive licensee has the right to commercially work the patented invention to the
extent set in the Patent Law or as agreed upon on the license contract.
Once a non-exclusive license has been registered, the license will also be
effective against anyone who later acquire the patent right, the would-be exclusive
licensee or exclusive licensee on such a patent right. No transfer, modification,
extinguishment as well as restriction thereof on a non-exclusive license; or grant,
transfer, modification, extinguishment or restriction on disposal of a pledge relating to
a non-exclusive license will be effective against any third party unless it is registered.
g. Establishment of pledge
Each patentee, exclusive licensee or non-exclusive licensee may establish a
pledge on his right or license. However, the exclusive licensee can do so only with the
consent of the patentee and the non-exclusive licensee likewise needs the permission
of the patentee or the exclusive licensee. The exclusive licensee may also grant a non-
exclusive license on the exclusive license but he is required to get the consent of the
patentee.
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h. Change of indication of title-holder in
registration
When a patentee, etc. registered in the Register changes his name or, domicile
or residence, he can make a request for registration of the changed indication of a
title-holder in registration.
i. Registration of trial for invalidation
of patent or trial for correction
The Commissioner will ex officio register in case a trial for invalidation of patent
or a trial for correction has been demanded, or where a trial decision has become final
and conclusive.
j. Extinguishment of patent right
A patent right will be lost in any of the following grounds:
(a) it reaches the 20 year term
(b) failure to pay an annual fee, the patent right is deemed to have been extinguished
retroactively from the time of the expiration of the time limit prescribed by law
(c) registration of abandonment of a patent right
(d) surrender of patent right, etc., should there be an exclusive licensee, pledgee or
non-exclusive licensee the patentee may surrender his patent right only with the
consent of such person. Likewise, the exclusive licensee can surrender his license only
with the consent of the pledgee or non-exclusive licensee, if there is any, and the non-
exclusive licensee also needs to seek the approval of the pledgee if he intends to
surrender his license.
(e) absence of an heir - no person claiming to be an heir within the period prescribed
by Section 958 of the Civil Code makes a claim.
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(f) the final and conclusive trial decision that a patent is to be invalidated passes (the
patent right is deemed to have been extinguished retroactively from the time of
registration of establishment of the patent right or from the time when the patent first
fell under Paragraph (vii) of Section 123(1).)
k. Patent register and inspection of documents
The following matters are registered in the Patent Register and kept in the Patent
Office:
(a) establishment, extension of the term, transfer, extinguishment, restoration or
restriction on disposal, of a patent right;
(b) establishment, maintenance, transfer, modification, extinguishment or restriction
on disposal, of an exclusive or non-exclusive license;
(c) establishment, transfer, modification, extinguishment or restriction on disposal, of
rights in a pledge upon a patent right or an exclusive or non-exclusive license.
The register is in the form of magnetic tapes or other materials which can
accurately record the above transactions.
l. Request for inspection, certification etc
(1) Anyone may request the Commissioner of the Patent Office to:
(a) issue a certificate, a copy or an extract of documents
(b) permit the inspection or copying of documents or
(c) give out documents whose contents are recorded in the part of the Patent
Register prepared by magnetic tapes, where such documents relate to patents.
However, in the case of the following documents the Commissioner of the
Patent Office may consider it necessary to keep them secret:
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(i) a request or the specification, drawings or abstract attached to a request,
or a foreign language file or foreign language abstract or documents
concerning the examination of the patent application (except where the
establishment of the patent right has been registered or where the patent
application has been laid open), or the materials referred to in Section
67bis(2)
(ii) documents relating to a trial under Section 121(1) (except where the
establishment of the patent right has been registered or where the patent
application concerned has been laid open)
(iii) documents pertaining to a trial decision under Section 123(1) or Section
125bis(1) or a retrial of the final and conclusive trial decision, with respect to
which parties or intervenors concerned have given a notice that there has
been described a trade secret (trade secret as prescribed in Section 2(4) of
the Unfair Competition Prevention Law (Law No. 47 of 1993)) owned by the
parties or intervenors concerned
(iv) matters which would likely injure the reputation or peaceful existence
of an individual
(v) documents liable to contravene public order or morality
(2) Where a demand made regarding documents as set in the paragraphs of the
preceding subsection is accepted, the Commissioner of the Patent Office will notify a
person, who has submitted such documents to that effect with a reason thereof.
The Law Concerning Access to Information held by Administrative Organs (Law
No. 42 of 1999) will not be made to apply to the documents concerning patents and
the part of the Patent Register, which have been prepared by magnetic tapes.
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m. Patent Gazette
The Japan Patent Office shall publish the Patent Gazette and it shall contain:
(a) name and the domicile or residence of the patentee;
(b) number and the filing date of the patent application;
(c) name and the domicile or residence of the inventor;
(d) particulars stated in the specification and the contents of the drawings attached to
the request of the application;
(e) particulars stated in the abstract attached to the request;
(f) patent number and the date of registration of the establishment;
(g) other necessary particulars.
The Patent Office publishes the Patent Gazette. In addition to the matters
provided for in this Law, the Patent Gazette shall contain:
(a) decisions of refusal, or abandonment, withdrawal or dismissal of a patent
application after its laying open or withdrawal of an application for the registration of
an extension of the term of a patent right;
(b) successions to the right to obtain a patent after the laying open;
(c) amendments of the specification or drawings attached to the request under
Section 17bis(1) after the application has been laid open (in the case of an amendment
under each paragraph of the proviso to Section 17bis(1), limited to one by submitting a
written correction of mistranslation);
(d) extinguishment of patent rights (excluding that due to the expiration of a term and
that under Section 112(4) or (5)) or the restoration (limited to that under Section
112bis(2));
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(e) oppositions to the patents or demands for trials or retrials, or withdrawal thereof;
(f) final and conclusive rulings on the oppositions to the patents, trial decisions, or
rulings of retrials or retrial decisions (limited to patent applications with respect to
which the establishment of a patent right has been registered or which have been laid
open);
(g) particulars stated in the corrected specification and the contents of the drawings
(limited to those which a final and conclusive ruling or trial decision to correct has been
rendered);
(h) requests for an arbitration decision or withdrawals thereof and arbitration
decisions;
(i) final judgments in an action under Section 178(1) (limited to patent applications
with respect to which the establishment of a patent right has been registered or which
have been laid open).
2. Trademark right maintenance and management
a. Registration of establishment of TM right
The Commissioner of the Patent Office ex officio registers the establishment of a
trademark right in the Trademark Register after the registration fee has been paid on
the basis of the examiner’s decision or the trial decision.
b. Time limit for payment of registration fee
The registration fee of 66,000 yen per case or this amount multiplied by the
number of classes of the classification of goods and services (classes of the
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classification of goods and services should be paid within 30 days from the date of the
transmittal of the examiner’s decision or trial decision that the trademark registration is
to be effected).
A person who obtains registration of a trademark right may opt to pay the
registration fee in five yearly installments and then must pay the latter half of it by the
end of five years before the expiration of the term of the trademark right. As such, the
amount of 44,000 yen per case or this amount multiplied by the number of classes of
the classification of goods and services will be paid for each case within 30 days from
the date of the transmittal of the examiner's decision or trial decision that the
trademark is to be registered and also the amount of 44,000 yen per case or this
amount multiplied by the number of classes of the classification of goods and services
for each case by the end of five years before the expiration of the term of the
trademark right.
c. Division of the trademarks
A trademark right may be transferred separately for each such item where there
are two or more items of the designated goods or designated services.
d. Registration of renewal of term
The term of a trademark right (ten years) may be renewed with a request to renew
the registration from the owner of the trademark right.
A request for registration of renewal must be made within six months prior to the
date of expiration of the term.
Where the owner of a trademark right is unable to make a request for registration
of renewal within the time limit, he may still make such request within six months from
52
the expiration of that time limit. Otherwise, the trademark right will be deemed
extinguished retroactively from the time of the expiration of the term.
A trademark right may be restored where the fee is not paid due to reasons
outside his control within14 days (where he is a resident abroad, two months) from the
date on which the reasons ceased to be applicable but not later than six months
further from the expiration of that time limit.
A person who applies for registration of renewal of the term of a trademark
right must pay the amount of 151,000 yen per case or this amount multiplied by the
number of classes of the classification of goods and services covered as a registration
fee. The owner of a trademark right, however, may pay the fee of registration of
renewal in five yearly installments. The amount of 101,000 yen per case or this
amount multiplied by the number of classes of the classification of goods and services
must be paid for each case at the time of the request for registration of renewal and
then the amount of 101,000 per case or this amount multiplied by the number of
classes of the classification of goods and services by the end of five years before the
expiration of the term of the trademark right. When the renewal of trademark right
term is registered, the term is deemed to have been renewed on the expiration of the
first term.
In case of excess payment or payment by mistake it will be automatically
returned if the payment is made through an account set up at the JPO. However if it’s
a cash or revenue stamp payment a request for reimburstment must be submitted
within one year from payment. Otherwise no refund will be given. The Japanese
Government and other independent administrative institutions are exempted in paying
the renewal registration fee of their registered trademarks.
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e. Registration of defensive marks
The owner of a trademark right may obtain a defensive mark registration with
respect to the goods and/or services not similar to the designated goods or services
when his registered trademark in respect of goods has become well known among
consumers and when the use of the registered trademark or service mark is likely to
cause confusion between the designated goods or designated services and the goods,
not similar to the designated goods or services.
The registration of defensive mark shall be made in the same Register as the
registered trademark (for example: Registered No. 123456 as defensive mark No.1).
f. Application of patent law
The Patent law applies to trademark right on the following:
a) Transfers of trademark right
b) Grant of licenses
c) Establishment of pledge
d) Change of indication of title-holder in registration
e) Registration of trial for invalidation of trademark or
trial for correction
f) Extinguishment of trademark right
g) Trademark register and inspection of documents
h) Request for inspection certification.
C. Practice and procedure for registration
Japan uses the registration system as a measure of proclaiming the existence,
details, acknowledgment and transfer of the patent, utility model, design and
trademark rights in order to avoid unforeseen damage to a third party. Registration is a
54
series of commissioner’s administrative acts of granting industrial property rights, their
transmissions, and continuance in the patent register made available openly at the
Patent Office (JPO). The essential parts of the register are (a) specifications and
drawings of an invention, (b) drawings illustrating the design (c) documents in support
of the trademarks and (d) the original decision on establishing the right.
1. Main Registers
There are three main registers: In the Patent Registration Decree, these three
registers are (1) the register containing registration of patent, (2) the register of
requests for retrial of ruling on patent-related refusal and (3) the patent trust register.
JPO has registers of registration for each industrial property right. The registers
contain similar items differing mainly in their representation sections. All have:
Fee sections that record the fees paid, payment date, and issues on reduction,
moratorium or refund of such fees
Sections classified as A that keep information on grant and transfer of rights;
and their limitations on disposition.
Sections called B that track the exclusive license and pledges made on the
license
Sections labeled C that keep details on ordinary license and pledges made on it
Sections identified as D that take notice of pledges on the industrial property
rights.
The representation section of the original patent register keeps the information
on the rights, extension of duration, extinction or partial waiver of patent rights, claims
for trial and retrial, final trial decision, opposition to the right and final decision.
55
The representation section of the original utility model register records the
description of utility models, corrections made in the registration, extinction or partial
waiver, claims for trial and retrial and final decision.
The representation section of the original design register has separate records
for the principal and associated design. All the registration numbers of the associated
designs are kept in the record section of the principal design while the registration
number and registration date of the principal design, and the other associated designs
are noted in the associated design original register.
The first and second representation sections of the original trademark register
contains the principal and defensive mark registration, respectively.
The Closed Original Register contains the patent rights that were abolished.
When the lost of the patent right is registered, its file is transferred from its original
register of registration to the closed original register.
2. Establishment of registration for invention, utility
model, design and trademark rights
a. Procedures for establishment of registration
Invention/Patent right is effective upon the registration of its establishment. A
certified copy of the examiner’s decision or the trial decision to grant a
patent/registration must be transmitted. The procedures to pay annual fees are then
taken. Annual (registration) fees must be paid within 30 days from the submission date
of the certified copy of the decision to grant the patent. The Annual fees for utility
model are filed together with the application for utility model registration. There is a
prescribed payment form to use.
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There are three methods of payment to wit: (a) on-line, (b) written form and (c)
comprehensive. The on-line method makes use of the deposit system. The written
form scheme employs the deposit system or by simultaneous payment with the
application. The comprehensive payment is applied to those given the identification
numbers and deposit accounts. No submission of any form needed for payment and
payment is made automatically from the deposit account after the lapse of a certain
period from the date of submission of the certified copy.
After the registration of establishment of IP right is made, a certificate of patent
(registration) is issued to the IP owner. If the certificate is stained, damage or lost, the
person to whom it was issued may request for its re-issue.
b. Procedures for annual fees (extension of term)
The life of the Patent, Utility Model and Design rights continues as long as
annual fees are paid within the time limit as provided by law. This is the annual fee
system. Trademark right may be renewed for another term by a request for renewal of
registration.
c. Procedures for payment and it time limit
On the basis of the date of the registration of the establishment (the date of the
publication of the application under the old law) the patentee must pay the annual fee
of the next year during the period for which the annual fee of the next year during the
period for which the annual fee is already paid. The period spans from the date of
registration to the expiration date of paid annual fees. The holder of the right can pay
one or several years in lump sum. Late payment of annual fees is allowed however and
the right subsists as long as the required annual fees are paid with surcharge of the
same amount as the annual fee is remitted within six months from the expiration of
the time limit.
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The holder of the right can still restore the patent right if he still fails tender the
late payment for reasons not attributed to him. He is given 14 days from the date the
reasons ceases to exist (two months for foreign residents) but not later than six
months after the lapse of the time limit of the late payment. He is required to submit a
written statement declaring his inability to file the late payment of an annual fee for
reasons beyond his control and the explanation for the reasons alleged.
d. Procedures for registration of transfer
after the establishment of right
When changes occur in the title of the registered holder, a request for
registration of change must be made by the parties concerned to correct the
registration. The transfer must be jointly applied but an independent request will have
to be made when it is obvious that the genuineness of the registration can be
preserved.
The request must state the patent number, representation of rights, name and
address of the applicant, name and address of the attorney, nationality if a foreigner,
purpose of registration, scope of exclusive license, and consideration or payment
procedure for exclusive license (optional). The other documents that must be
submitted are the certificate of cause of registration and certificate of a third party’s
authorization, permission, consent or approval. Finally the payment of registration
licensing tax must be made.
e. Request Process procedures
The request document can be filed at the counter of the Application Division of
JPO or by registered mail. When the request is received, an acceptance number and
date is assigned to it and they are indicated in the order of receipt sent to the
58
requester. A request is required to convey only one subject matter but application for
plural matters is allowed when the reason and the object of the registration is the
same.
In the formality check, the request is examined to determine its acceptability
and to find out if the documents comply with the formality requirements of the Patent
Registration Order, if there is complete payment of the registration license tax and if
the request matter is capable of being registered. The registrable request is then
recorded in the original register. When the process of registration is completed a notice
of completion of registration is mailed to the requester. Otherwise, a rejection of the
request is sent with the reasons for such rejection.
In case there are changes in the name or address, a request application for
registration of change is needed to modify them. If there are errors or omissions in the
title of the right holder, then a request application for registration of revision is
essential to correct or add the omitted matter.
The request for registration of transfer is of two kinds. One is the transfer by
inheritance and other general successions. The other is by assignment and other
specific successions. The first is effective even if not registered but the latter requires
that a request be made to clarify the relations of the right.
f. Request for registration of license and right to use
A license is the right to commercially work others patented inventions,
registered devises or registered designs. A right to use is the right to use others’
registered trademarks on chosen goods or services.
In essence, the patent holder has the exclusive right to work his patented
invention. A patented invention can be 1) voluntarily licensed to a person who desires
59
to work the patent by paying a proper amount of payment to the patent holder; and 2)
involuntarily to another when the law so provides as in the case of employees
invention, prior use, and when the Ministry of Economics, Trade and Industry or Japan
Patent Office so orders on the basis of public interest and policy. Such scheme
balances the IP holders’ rights and public welfare.
Licenses are of two categories: exclusive licenses and non-exclusive licenses. An
exclusive license allows the licensee to solely -- even the licensor is excluded -- market
or manufacture the patented inventions within the scope of the agreement. The
exclusive licensee may, as in the case of a patent holder, claim an injunction to stop
the unauthorized use of the invention by a third party and demand compensation for
damage caused by such use provided that the establishment of exclusive license is
registered with the JPO.
A non-exclusive licensee is allowed to work the patent with other licensees
including the patentee. The license contracts can overlap with one another. A non-
exclusive license must be registered for it to be effective against anyone subsequently
acquiring the patent right or the exclusive license on such a patent.
Other requests for registration include registering pledges and extinction of
rights. A patent holder or a licensee may not only gain profits through exploitation of
the invention but also by making it the subject of a pledge. In other words, a patent
holder or licensee may borrow money on security of the patent right or exclusive/non-
exclusive license.
g. Office process for establishment, annual
fees and transfer
• Summarized office process for establishment
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The information (i.e. the application date, number, applicant’s name) needed for
registering establishment will be taken out from the application master file and the
judgment master file to prepare the administrative files.
Upon presenting the payment form in writing or online, the information (i.e.
application number, applicant’s name, the year from which fees are paid, amount of
money paid) appearing therein will be transformed into an electronic form and, with
the payment form submitted online, an acceptance file will be prepared. At the time of
the examination, if a package payment system is utilized, an acceptance file will be
prepared automatically in a short time. This system is use only for payment of patent
fees for establishment.
There are three methods for collecting fees: (a) Simultaneous payment (only by
presentation in writing) - A payment form is presented with a patent stamp affixed
thereon, (b) Prepayment System - The applicant deposits beforehand an anticipated
sum of money for the fees by presenting patent stamps and the JPO allocates them for
needed fees for each procedure relying on to the request of the applicants. It is
available through online, floppy disk, documents or through an agent in his own name
for the applicant; and, (c) Cash Payment System - Cash is paid in JPO through Bank of
Japan (including its agents) and a receipt will be presented to JPO
The administrative files for registration and the acceptance files for
establishment are mechanically inspected for errors in the application. Both files are
checked with each other and, if there are any errors, a list of errors together with the
payment form will be printed out. Afterwards a visual formality check will be made on
the online information and application documents in which a registration special list will
be produced. Through the visual formality check, the application is classified into
registration, order for supplement and notification of reasons for refusal. In order to be
registered the administrative file or the acceptance file must be modified.
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When no errors are found in the two formality checks the application will be
automatically registered. Here, the patent/registration number is assigned and the
following will be prepared: (1) original register of the patent/registration, (2) the
certificate and (3) the notice of registration . Then the certificate will be issued to the
payer.
When errors are present in the application a written order for supplement or a
notice of reasons for refusal will be made and sent to the payer. When the required
documents are produced and full compliance with the order resolve the reasons for
dismissal are made, the payment form be accepted and registered.
The reasons for dismissal are: (1) failure to submit on time a written correction
or explanation as ordered by JPO, and (2) unresolved notice of reasons for dismissal.
The payment form is dismissed when it falls under any of above-noted reasons.
When no payment is presented within 30 days after the delivery of a copy of the
decision, the application on hand will be automatically dismissed.
• Summarized office process for annual fee
Upon presenting the annual fee payment form to maintain the
patent/registration, the information (i.e. patent number, patent holder’s name, the
year from which fees are paid, amount of money paid) written therein will be
transformed into an electronic form and an acceptance file of annual fees will be made.
For patent fees collection and formality check the same procedures with that of
establishment are carried out.
When no errors are found in the two formality checks then the payment form is
accepted and the following data will be automatically entered in the column of fees in
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the original register of patent: (1) the year for which the fees are paid, (2) date of
submitting the payment form, and amount of payment. After those data are recorded,
a receipt will be produced. If there is a request for registration of renewal of
trademarks, the registration of renewal, will be recorded.
After the registration of the payment, the receipt will be dispatched to the payer.
For supplement and notification of reasons for dismissal order and final
dismissal the same procedures as that of establishment are done.
When no payment form is presented to maintain the rights within the required
time to file including the restoration period, then the rights are extinguished. The loss
of the right retroacts to the deadline of payment. The right will be extinguished by the
expiration of the term, abandonment of the right, absence of heir, final and conclusive
trial decision to invalidate the right, or revocation of the right by the provisions of Act
concerning Prohibition of Private Monopoly and Maintenance of Fair Trade.
• Summarized office process for transfer
When the written application is presented the information contained therein
(document’s name, reference number, Patent number, name of applicant, registration
licensing tax, etc) will be changed to electronic form and an acceptance file of the
application will be made.
Duplicate prints will be generated using the application files and the registration
master file. A Register printout will also be prepared from the registration master file.
A visual check will be performed using the written application, duplicate files and
register printouts. The result will be either a provisional registration or notification of
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reasons for refusal and advice on disposing will be proposed online. Any needed
changes will be made online.
A provisional register will be made to record transfer. Here, the printed
provisional register will be visually checked. Any amendment will be done online.
There being no errors found in the formality check or after Amendments on the
errors are made, the transfer will be inputted in the register and a notice will be
prepared.
A notice on completed registration and the transfer certificate will be sent to the
applicant.
The notice of reasons for dismissal determined in the formality check will be
prepared and dispatched to the applicant. If a response is made to the notice to
resolve the application’s deficiency, and found acceptable, then it will be qualified for
registration.
The application will be rejected if no explanation is received or the response
does not resolve the issues against its registration.
D. The Japanese registration computer system
The administration application software is divided into four parts: establishment
of (a) patent rights, (b) annual fees, (c) transfer patent rights, and (d) cancel patent
rights. The establishment of patent rights part is the process of establishing rights
when the decision for registration was made by the registration office after the
applicant (who has been given the decision to grant a patent) pays the annual fee. The
annual fees portion is the procedure of receiving annual fee for patent, utility model
and industrial design for the receipt result of the annual fee and their recordation in
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the patent register. The transfer of patent rights component is the course of recording
different things, like transfer or license for example, with regard to the right on the
patent register. The cancel patent rights module is the manner of putting into record
the lapse of right on the patent register.
1. The computer system configuration
The JPO registration division staff uses this system. The database is on a host
and processing is done by batch on the host. A server executes the exchange of data
between the clients and the host. There are 50 client PCs. The system is a three-
layered structure in which a server is relayed between a client PC and a host computer.
Such structure has efficiently maximized the use of resources and decreased operating
cost.
2. The computerization system operation
Regular operation is controlled by a software called A-AUTO. The staff provides
troubleshooting services to users. For more serious problems, a maintenance company
is called in.
3. Composition of a registration master file
The Japanese registration master file is the file which is the “Registration master
file” held as a database of the host computer. When you want to inspect the detail of
registration, you can inspect using VDT screen or you can inspect by hard copy. The
Registration master file consists of largely two files namely: patent right management
file and register file. The patent right management file contains fundamental
information, such as the registration number and the date the patent right was
established, and the recent update on the registration (i.e. the right holder’s name).
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The register file comprises the facts as provided by law. The other file is made up of
the annual fee management file and the transfer management file.
4. The Registration computer system flowchart
The system manages the patent right from its establishment to the time of its
lapse. It runs the operation of the registration master file. It has four subsystems:
Establishment of patent right sub-system- it creates a registration master file
from data (registration decision data or appeal decision data) received from
other systems ;
Annual fee sub-system- the annual fee management file is generated from the
payment handed out by patentee. Computer check is made and it records the
annual fee received.
Transfer patent right sub-system- a transfer management file is constructed
based on transfer request form.
Cancellation of patent right subsystem- the lapsing of patent is done
automatically based on the computer management of system 1.
5. Subsystems 1 & 2 flowcharts establishment of patent right
subsystem and annual fee sub-system
Both sub-systems are similar except that in the institution of patent right, the
registration decision data and its’ transmission to other systems is necessary. The
patent right management file, after its creation from either of the decision data
(registration decision data and appeal decision data), anticipates (waits) the
submission of the payment (called form of payment). Data entry is performed when
the applicant hands out his paper form of payment for the establishment of his patent
right, after being notified of the decision of the examiner or of the appeals board. This
is then sent to the acceptance system, after which an annual fee management file is
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created. The registration master file is the main reference and the payment data are
replicated in the original and registration master files.
Payment can be in the form of deposit, cash or patent revenue stamp. In case
of deposit payment, a charge is collected from the Charge system the next day the
annual fee management file is made. When no collection is made, the sub-system will-
once a day for a maximum of 21 times - try to collect from the creation of the annual
fee management file. The collection of a charge flowchart shows the patent right
management file of the registration master and forwards the number of claim for
calculation of a legal fee for registration. For calculations to be made, the Annual fee
management file likewise sends the necessary payment years. The outcome is an
annual fee management file.
A computer check is performed after the collection of a charge, once a week by
batch processing. It consists of the retrieval of the latest information from an original
master file by the registration system and a recording on a patent right management
file. The payment data is then compared with a patent right management file to verify
the validity of the collected amount. When the result is acceptable, the data is
automatically registered. The processing of a registration of patent right is done once
a week by batch. The registration information is recorded in the annual fee and patent
right management files to produce a register file. After establishment of the right, a
registration certificate is made and sent off to the owner 11 days from the day of
registration.
For the Annual Fee sub-system, the recording of annual fee follows the
computer check and an annual fee receipt is issued and transmitted to the owner. The
annual fee data are entered in three files (patent right management file, annual fee
management file and the register file) of the registration master file. A receipt is
printed-out after the recording of the annual fee payment.
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6. The transfer patent right sub-system
Since the request for transfer patent is accepted by only paper form at the
moment, all formality check processes and all forms of transfer are made on paper
personally. Upon its receipt, data entry is made to transform it to digitized form called
an application acceptance file. A transfer management file is then created based on the
application reception file.
For a formality check to be performed, the temporary register, reception
document and a copy of transfer form (an edited version of the contents for easy
checking) are printed out. The data in all the three documents are evaluated.
Subsequently, registration-for-transfer instructions are executed by batch processing
once a day. Finally, a transfer-patent right notice is sent.
7. Cancellation of patent right sub-system
The following rights could be cancelled: (1) those whose term has expired; (2)
those who failed to file their annual fee form for renewal of its right and (3) those who
failed to file their annual fee form for establishment of patent right within the
prescribed time. The period parameter, the patent right management file and the
register file of the registration master file are managed by the system and an
automated lapsing of the right is performed.
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Business processing flow (Registration system flowchart) : Establishment
Decision to allow
Registration
+ Dispatch Date
Trial decision
Creation of Original Registration Master (Patent Right Management File)
Data of Draft Dispatch Date
Annual Fee (for Establishment Patent Right) Management file
Collection of Charge (Deposit / Pay in a Cash
Management of Period・ Not Submit a Form of Payment ・ Not Reply for Indication of
Supplementation
Computer Check
Registration of an Establishmentof Patent Right
Letters of Patent
Automatic Refund
Formality Check
Correction of Form Data of Payment in Annual Fee Management File by ex officio based on Form of Payment
Correction of Form Data of Payment in Annual Fee Management File by ex officio based on Supplementary Document
Draft For Form of Payment ・ Indication of Supplementation ・ Notice reason of Declining ・Declining Disposition
Draft・Declining Application
Draft Document File
Approval
Supplementary Document (Paper)
Form for Payment
DEDE
Registration Master (Patent Right Management File)
Form for
Payment
Registration Master (Patent Right Management File)
Annual Fee (for Establishment Patent Right) Management File
Annual fee (for establishment patent right) management file
Registration Master (Patent Right Management File) (Register File)
Form for Payment OK
Mistaken Payment
Confirm List of Computer -check
Form of Payment Print
List ofExpired Data
To Dispatch System
Supplementary Document (Online)
Rejection Fee System
・ Form of Payment NG ・All Supplementary Document
Draft For Supplementary Document ・Declining Disposition
GovernmentOffice Framework Payment
Creation of Original Registration Master (Patent Right Management File)
Data of Draft Dispatch Date
Annual Fee (for Establishment of Patent Right) Management file
Collection of Charge (Deposit / Cash payment
Period Management・ No Payment form submitted ・ No Reply to Indication of
Supplementation
Computer Check
Establishment of Patent Right Registration
Letters Patent Automatic Refund
Formality Check
Ex officio Correction of Payment Form Data in Annual Fee Management File based on payment form
Ex officio Correction of Payment Form Data in Annual Fee Management File based on Supplementary Document
Draft For Form of Payment ・ Indication of Supplementation ・ Notice reason of Refusal ・Declining Disposition
Draft Refusal of Application
Draft Document File
Approval
Supplementary Document (Paper)
Payment Form (Online)
DEDE
Registration Master (Patent Right Management File)
Registration Master (Patent Right Management File)
Annual Fee (for Establishment of Patent Right) Management File
Annual fee (for establishment patent right) management file
Registration Master (Patent Right Management File) (Register File)
Mistaken Payment
Confirm List of Computer -check
Payment Form Print
List of Expired Data
To Dispatch System
Supplementary Document (Online)
Draft Supplementary Document ・Declining Disposition
GovernmentOffice Framework Payment
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Business processing flow (Registration system flowchart) : Annual Fee
Data ofDraft Dispatch Date
Annual Fee (for Renewal Patent Right) Management file
Collection of Charge (Deposit / Pay in a Cash
Management of Period ・ No payment form submitted ・ No Reply for Indication of
Supplement
Computer Check
Registration of Annual Fee
Receipt
Automatic Refund
Formality Check
Ex officio Correction of Payment Form data in Annual Fee Management File based on Payment Form
Ex officio Correction of Payment Form Data in Annual Fee Management File based on Supplementary Document
Draft Document File
Approval
Supplementary Document (Paper)
Payment form (Online)
DE DE
Registration Master (Patent Right Management File)
Payment
Form
Registration Master (Patent Right Management File)
Annual Fee (for Renewal Patent Right) Management File
Annual fee (for patent right establishment) management file
Registration Master (Patent Right Management File) (Register File)
Payment form OK
Mistaken Payment
Confirm List of Computer -check
Payment form Print
List ofExpired Data
To Dispatch System
Supplementary Document (Online)
DecliningFee System
・ Form of Payment NG ・All Supplementary Document
Register Print
Draft for Supplementary Document ・Declining Disposition
Draft for payment formt ・ Indication for Supplement ・ Reason for Refusal Notice ・Declining Disposition
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Business processing flow (Registration system flowchart) : Annual Fee ( for Renewal Trademark)
Draft Data Dispatch Date
Annual Fee (for Renewal Trademark) Management file
Collection of Charge (Deposit /Cash payment
Management of Period-No Form of Payment submit -ted ・ No Reply to the Indication of
Supplementation
Computer Check
Registration of Annual Fee
Patent Certificate Automatic Refund
Formality Check
Ex officio Correction of Payment Form Data in Annual Fee Management File based on Payment Form t
Ex officio Correction of Payment Form Data In Annual Fee Management File based on Supplementary Document
Draft Document File
Approval
Supplementary Document (Paper)
Renewal Request (Online)
DE DE
Registration Master *Patent Right Management File
Renewal
Request
Registration Master *Patent Right Management File
Annual Fee (for Renewal Trademark) Management File
Annual fee (for Establishment Trademark) management file
Registration Master *Trademark Management File *Register File
Form for Payment OK
Mistaken Payment
Confirm List of Computer -check
Form of Payment Print
List ofExpired Data
To Dispatch System
Supplementary Document (Online)
DecliningFee System
・ Form of Payment NG ・All Supplementary Document
Draft for Supplementary Document ・Declining Disposition
Draft for Payment Form ・ Indication of Supplementation ・ Notice reason of Declining ・Declining Disposition
RegisterPrint
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Transfer flow
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IV. Comparison of the Japanese and Philippine post grant IP Philippines Japan
History Patent system related activities before 1862
Provisions regulating registration procedure in 1884
Philippine patent office established 1947
Japan Patent office established 1885
Post grant changes made through administrative/ Office/Memorandum orders/ Circulars by the Director of Patents
Registration changes made through law changes by decree orders, imperial decrees or cabinet orders
Amendments on IP laws not so often
Amendments on law often-sensitive to the needs of the time
I. term
Invention 20 yrs from filing date, not extendable
20 yrs from filing date, extendable to a maximum of 5 years
Utility Model 7 yrs 6 yrs
Industrial Design 5 years but can be renewed twice straight 15
Trademarks 10 years, renewable 10 years, renewable II. post grant maintenance Requirements
Invention annual fee from 5th to 20,
annual fees for 20 years, extendable for agricultural medicinal products, IP holder friendly
Utility Model None, every five years annual fees for 6 years
Industrial Design Extension/renewal of term twice annual fees for 15 years
Trademarks
Old law- affidavit of use/non-use on 5th, 10th, 15th then renewal ; new law- Declaration of actual use ,twice- 3rd year from filing date & 5th year from grant annual fees for 10 years
Assignments and transmissions
All forms of transfer handed in with paper
All forms of transfer handed in with paper at present but near future online filing,
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General provisions on assignments and licensing
detailed express provisions- IP holder friendly
no express provisions on exclusive & non-exclusive license, pledge & trust
Has exclusive & non – exclusive license, pledge & trust
Has no effect unless it is registered
Has no effect unless it is registered
How transfer is made transfer must be jointly applied
transfer must be jointly applied but an independent request will have to be made when it is obvious that the genuineness of the registration can be preserved-IP holder friendly
The register
Register is in the form of big docketbooks and hard discs/server
register is in the form of magnetic tapes or other materials which can accurately record the transactions processed by registration office, global trend, efficient and effective record keeping
All documents contained in the filewrapper after its registration are open to the public
There are some documents kept as secret
methods of payment of fees Written
On-line, written, comprehensive, both IP holder and administrator friendly, global standard
manner of collecting fees Simultaneous payment with application
Simultaneous
payment (only by
presentation in writing) - A
payment form is presented
with a patent stamp affixed
thereon, (b) Prepayment
System - The applicant
deposits beforehand an
anticipated sum of money
for the fees by presenting
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patent stamps and the JPO
allocates them for needed
fees for each procedure
relying on to the request of
the applicants. It is available
through online, floppy disk,
documents or through an
agent in his own name for
the applicant; and, (c) Cash
Payment System - Cash is
paid in JPO through Bank of
Japan (including its agents)
and a receipt will be
presented to JPO, the more
systems available to IP
holders the friendlier/more
convenient it is
Kinds of payment Cash, checks, postal money order
Deposit, patent stamps, cash
Issuance fees on registration Separate fee from annual fees Included in the annual fees
Different amount of annual fees yearly and paid yearly for patents; every five years progressively increasing in old law trademark while the third year fee is higher than the fifth year; the second or last extension/renewal is double in amount as compared to the first for design- utility model included in the old law
lump sum and the same amount for at least three years for patents; lump sum for ten years or five year yearly installments for trademarks; the lump sum payment is lesser in amount than the installment payment, IP holder-friendly
No annual fees required for the establishment of patent right
Patent right is establish after the annual fees are paid
Payment made by patentee or Any interested person can
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for his behalf pay even against the will of patentee or assignee-IP holder friendly
Grade period provided for late payments
Grace period provided for late payments
Inventions no reinstatement
inventions has reinstatement but very strict- convenient to IP holder
surcharge fees 20% of basic fees 100 % of basic fees
maintenance fees Complicated, different sets of schedule
Not complicated, all fees annually, IP holder-friendly
Claims Only in excess of 5 are counted for payment
all claims counted for payment this is in tune with worldwide standard
do not increase as annual fees increase
as annual fees increase so do the claim fees for patent rights increases its value as time pass
When 1st annual fees are paid
At the expiration of four years counted from the first publication for invention, renewal of term for design ( Utility model included in old law) six months from filing date or from the date of grant for old law
Annual fees must be paid within 30 days from the submission date of the certified copy of the decision to grant the patent. The Annual fees for utility model are filed together with the application for utility model registration.
exemption, reduce or delayed of fees None
Discretion of Commissioner –ip- holder friendly
When trademark renewal is made
renewal must be made within six months prior to the date of expiration of the term; belatedly, can make such request within six months from the expiration of that time limit
renewal must be made within six months prior to the date of expiration of the term; belatedly, can make such request within six months from the expiration of that time limit
No exemption
Japanese Government and
other independent
administrative institutions
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are exempted in paying the
renewal registration fee of
their registered trademarks.
Reissue of certificate
If the certificate is stained,
damage or lost, the person to
whom it was issued may
request for its re-issue;
assignees can ask for new
certificates
If the certificate is stained,
damage or lost, the person
to whom it was issued may
request for its re-issue.
No defensive mark Has defensive mark
Extinction of rights
expiration of the term, non-payment of maintenance fees, final & conclusive trial decision to invalidate the right as provided in the IP code supplemented by rules of court
expiration of the term, abandonment of the right, absence of heir, final and conclusive trial decision to invalidate the right, or revocation of the right by the provisions of Act concerning Prohibition of Private Monopoly and Maintenance of Fair Trade
Judicial court can invalidate IP right; no IPO examiners detailed in judicial courts to help in decision making
Only JPO can invalidate-final and conclusively IP rights; uses appeal examiners detailed in their courts in making decisions
Registration office 14 personnel and partially computerized
41 personnel & completely computerized
V. Recommendations
There are many points in the Japanese System that are worth emulating:
(1). Historically the Japanese industrial property laws had undergone a lot of changes,
purposely dynamic to keep abreast of the rapidly emerging technologies, compelling
economic and technological growth, always sensitive to public needs as well as to be
77
synchronized with international development. The Philippines should likewise follow
such example. Though its 1998 IP Code had been a giant step towards its goal of a
well-enforced IP system and modernized administration the Philippines must not stop
there but instead be forceful and race against time to bridge the technology gap so as
to promote socio-economic growth.
(2). The Japanese maintenance fees systems are simple and easy to remember. The
effectivity of Patent right is counted from the filing date such that the annual fees
should be paid counting from the filing date to twenty years. For each year the IP right
is maintained, there is a corresponding fee which increases progressively with time.
The patent right continues to exist by the payments of an annual fee at the time of
registration of establishment and subsequent annual fees within the time limit provided
as provided by law. The annual fee for each year can be paid in lump sum and this
makes the work of the IP holder and JPO easier. A grace period is prescribed which
allows the patentee who fails to pay the annual fee within the time limit to maintain
the right by paying the annual fee with surcharge of the same amount as the annual
fee within six months from the expiration of the time limit To avoid the unnecessarily
payment of surcharge the IP holder cautious in their due dates. Such system should be
made as a benchmark as it is an international standard and user friendly to both IP
administrators and IP holders.
(3). The Japanese Registration Laws have explicit provisions on licensing (exclusive
and non-exclusive), pledge and trust which are very important to IP holders but there
is little said in the present Philippine law. I suggest that more provisions on said
matters be included in the future amendments of the law for they are eye-opener to IP
holders and win over them to find more creative ways in using their IP rights. Though
changes in the law in Philippines would take long but still lawmakers and IP
administrators are implored to consider more vibrant, continuous, pressing changes in
the law, procedures and practice to answer immediate IP needs of Filipino inventors,
businessmen, academicians as well as be in harmony to international standards.
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Likewise, since IPO is legally allowed to restructure the schedule of fees every
two years, then it is respectfully recommended that for the coming schedule change to
make it at par with the global norm at the same time IP holder friendly and
administratively expedient:
The fees on issuance of patent right (equivalent to establishment of right)
should be provided in the fees circular, the amount of which should consider the first
four years of the patent right. The present law provides for the following years (fees to
be paid at the expiration of four years- meaning for the coming 5th year) until the
twentieth year. No patent right should be instituted unless this fee is paid.
The frequency of annual fee payment should only be four times. That is, after the
payment of issuance of patent right. This will lessen the voluminous yearly filings for
maintenance of invention patent. It will minimize the possibility of oversight on the
date due.
The payment of claims should also be increased as the annual fee increases.
Each and every claim should be paid, not only those in excess of five.
Reinstatement of patent right should be again allowed even just an additional six
months on top of the six months grace already provided in the law. The corresponding
fee should be double the prescribed fee.
Though no maintenance fee is required, the Utility Model should also be liable
for a fee leading to the issuance of UM registration right. The same goes with
Industrial Design.
The trademark declaration of actual use fee should be the amount to be
multiplied for each class. Setting of the amount should consider maintenance for ten
years of protection Likewise declaration of actual use on renewal registrations should
also be higher than that of the original registration.
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The surcharge fee should be increased from 20% to 50% to make IP owners
vigilant in meeting filing deadlines.
In order to effectuate the necessary proposed changes a new division in the IPO
should be established just like in the JPO which will continually review and revise the
IP laws and policies. As such proposal at present will seem far-fetched a more viable
solution is an adhoc committee on policy and law planning headed by the deputy
director general with members composed of all Bureau directors and their chosen
technical staff which should meet at least once a month for brainstorming, planning
and frameworking.
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Annex A. Philippine old and new law and regulations
THE OLD LAW (R.A. 165)
Chapter V Term of Patent
Sec. 21. Term of Patent- The term shall begin on the date when the patent is issued as shown on the face
thereof and shall expire seventeen years thereafter. However, a patent shall cease to be in force and effect if the
patentee fails to pay the prescribed annual fees within the prescribed times hereinafter provided or if the patent is
cancelled in accordance with the provisions of this act.
Sec. 22 Annual fees- The first annual fee on a patent shall be due and payable on the expiration of four years
from the date of issue. In a similar manner annual fees on subsisting patents shall be due and payable on the fifth
and each subsequent anniversary of the date of issue. If any annual fee is not paid within the prescribed time, a
notice of nonpayment shall be published in the Official Gazette and the patentee shall have six months from the
date of publication to pay the fee together with the surcharge required for the delayed payment. A notice of the
lapsing of a patent for nonpayment of any annual fee shall be published in the Official Gazette.
Sec. 23. Reinstatement of a lapsed patent. Within two years from the date on which the first unpaid annual fee
was due, a patent which has lapsed for non-payment of any annual fee may be reinstated upon payment of all
annual fees then due and the surcharge for reinstatement, and upon proof satisfactorily to the Director that such
nonpayment was due to fraud, accident, mistake or excusable negligence: Provided however, that such
reinstatement shall not prejudice the rights acquired by a third person while the patent was not in force.
Chapter XI.- Assignment and Transmissions of rights
Sec. 50 Patents or applications for patents and inventions covered thereby shall be protected as
and have the applicable rights of other property.
Inventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or
transmitted by inheritance or bequest.
Sec. 51 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. 52. Form of assignment- same as sec. 105 new law.
Sec. 53 Recording ( almost the same as sec 106 except the words in italics) . The Director shall record
assignments, licenses and other instruments relating to any right, title or interest in and to inventions, and patents
or inventions covered thereby, which are presented in due form to the Office for registration, in books and records
kept for the purpose. The original documents together with a signed duplicate thereof shall be filed, but if the
original is not available, an authenticated copy thereof in duplicate may be filed. Upon recording, the Director shall
81
retain the duplicate, return the original or the authenticated copy to the party filing with a notation of the fact of
record. Notice of the recording shall be published in the Official Gazette.
This paragraph is the same as that in sec. 106.2
Sec. 54 Rights of joint owners same as sec. 107 new law
Sec. 58. Terms and extension thereof.- the term of the design patent and of the patent for a utility model shall be
five years from the date of the grant thereof.
Before the expiration of the five-year term, upon payment of the required fee or within a further time
thereafter not to exceed six months upon payment of the surcharge, the owner of the design patent or of a patent
for utility model may apply for an extension for an additional five years. The application for extension must be
accompanied by an affidavit showing that the design or the model is in commercial or industrial use in the
Philippines or satisfactory explaining non-use. In a similar manner an extension for a third five-year period may be
obtained.
R.A. 166 post registration law provisions.
Sec. 12 Duration.- Each certificate of registration shall remain in force for twenty years: Provided, That
registrations under the provisions of this Act shall be cancelled the Director, unless within one year following the
fifth, tenth, and fifteenth anniversaries of the date of issue of the certificate of registration, the registrant shall file
with the Patent Office an affidavit showing that the mark or trade-name is still in use, or showing that its non-use is
due to special circumstances which excuse such non-use and is not due to any intention to abandon the same, and
pay the required fee.
The Director shall notify the registrant who files the above-prescribed affidavits of his acceptance or refusal
thereof and, if a refusal, the reasons thereof.
Chapter VIII. – Assignment and Transmission of Rights
Sec. 31. Rights assignable and form of assignments- A registered mark or trade-name, or one for which
application to register has been filed shall be assignable with the goodwill of the business in which the mark or
trade-name is used, or with the part of the goodwill of the business connected with the use of and symbolized by
the mark or trade-name, and in any such assignment it shall not be necessary to include the goodwill of the
business connected with the use of and symbolized by any other mark or trade-name used in the business or by the
name or style under which the business is conducted. Upon payment of the required fee, the Director shall record
assignments in due form in books kept for that purposes.
This paragraph is the same as sec. 105 of new law.
An assignment shall be void as against any subsequent purchaser for a valuable consideration without
notice, unless it is recorded in the Patent Office within three months after the date thereof or prior to such
subsequent purchase.
NEW LAW Patent
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Sec. 54Term of Patent
The term of a patent shall be twenty years from the filing date of the application.
Sec. 55Annual Fees
55.1. To maintain the patent application or patent, an annual fee shall be paid upon the expiration of four years
from the date the application was published pursuant to Section 44 hereof, and on each subsequent anniversary of
such date. Payment may be made within three months before the due date. The obligation to pay the annual fees
shall terminate should the application be withdrawn, refused, or cancelled.
55.2. If the annual fee is not paid, the patent 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 Register of the Office.
55.3. A grace period of six months shall be granted for the payment of the annual fee, upon payment of the
prescribed surcharge for delayed payment.
Sec. 103Transmission of Rights 103.1 Patents or applications for patents and invention to which they relate, shall be protected in the same way as
the rights of other property under the Civil Code.
103.2. Inventions and any right, title or interest in and to patents and inventions covered thereby, may be
assigned or transmitted by inheritance or bequest or may be the subject of a license contract.
Sec. 104 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. 105 Form of Assignment The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer
oath or perform notarial acts, and certified under the hand and official seal of the notary or such other officer.
Sec. 106 Recording
106.1. The Office shall record assignments, licenses and other instruments relating to the transmission of any right,
title or interest in and to inventions, and patents or application for patents or inventions to which they relate, which
are presented in due form to the Office for registration, in books and records kept for the purpose. The original
documents together with a signed duplicate thereof shall be filed, and the contents thereof should be kept
confidential. If the original is not available, an authenticated copy thereof in duplicate may be filed. Upon recording,
the Office shall retain the duplicate, return the original or the authenticated copy to the party who filed the same
and notice of the recording shall be published in the IPO Gazette.
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106.2. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable
consideration and without notice, unless, it is so recorded in the Office, within three months from the date of said
instrument, or prior to the subsequent purchase or mortgage.
Sec. 107Rights 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 of the joint owners 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 proportionally dividing the proceeds with such other owner or owners.
(Industrial Design)
118.1. The registration of an industrial design shall be for a period of five years from the filing date of the
application.
118.2. The registration of an industrial design may be renewed for not more than two consecutive periods of five
years each, by paying the renewal fee.
118.3. The renewal fee shall be paid within twelve months preceding the expiration of the period of registration.
However, a grace period of six months shall be granted for payment of the fees after such expiration, upon payment
of a surcharge.
118.4. The Regulations shall fix the amount of renewal fee, the surcharge and other requirements regarding the
recording of renewals of registration.
(Trademark)
137.1. The Office shall maintain a Register in which shall be registered marks, numbered in the order of their
registration, and all transactions in respect of each mark, required to be recorded by virtue of this law.
137.2. The 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.
137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided, That the
assignment is recorded in the Office. In case of a change of ownership, the Office shall at the written request
signed by the owner, or his representative, or by the new owner, or his representative and upon a proper showing
and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in
the name of such assignee, and for the unexpired part of the original period.
137.4. The Office shall record any change of address, or address for service, which shall be notified to it by the
registered owner.
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137.5. In the absence of any provision to the contrary in this Act, communications to be made to the registered
owner by virtue of this Act shall be sent to him at his last recorded address and, at the same, at his last recorded
address for service.
149.1. 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.
Sec. 145Duration A certificate of registration shall remain in force for ten years: Provided, That 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 the Regulations, within one year from the fifth anniversary of the date of the registration of the
mark. Otherwise, the mark shall be removed from the Register by the Office.
149.1. 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.
149.2. 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.
149.3. The assignment of the application for registration of a mark, or of its registration, shall be in writing and
require the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made
by any document supporting such transfer.
149.4. Assignments and transfers of registration of marks shall be recorded at the Office on payment of the
prescribed fee; assignment and transfers of application 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.
149.5. Assignments and transfers shall have no effect against third parties until they are recorded at the Office.
Sec. 152Non-use of a Mark When Excused 152.1. 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.
152.2. 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.
152.3. 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.
152.4. 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
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respect to the nature and quality of the goods or services, such use shall inure to the benefit of the registrant or
applicant.
Procedures
R.A. 166 rules of practice
Chapter II
AFFIDAVIT OF USE
141. Statutory requirements for affidavit of use. – According to the law, the registration of a mark or a trade name
or of a name or renewal registration or other mark of ownership stamped on container of beverages, shall remain in
force for twenty years: Provided, That registration or renewal registration shall be cancelled upon order of the
Director, unless within one year following the fifth, tenth, and fifteenth anniversaries of the effective date of the
registration or renewal registration, the registrant or assignee of record shall file with the Patent Office, with the
required fee, an affidavit showing that the mark of ownership stamped on containers of beverages, is still in use, or
showing circumstances which excuse such non-use and is not due to any intention of the registrant or assignee to
abandon the same.
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.
This requirement aims to remove from the Register registrations that have become “deadwood.”
Moreover, if a mark or trade mark has not been substantially used continuously for five (5) years, it shall be
presumed to have been abandoned.
142. Jurisdiction of the Executive Examiner. – The Executive Examiner shall have original jurisdiction over
matters relating to affidavits of use, and his decisions on such matters, when final, are subject to appeal to the
Director in the same manner that final decisions of the Principal Examiners on applications for registration may be
appealed to said Director. Registrants, their attorneys and agents will deal with the Executive Examiners exclusively
on such matters, or with such other officials or employees whom the Director may designate to assist him.
143. Contents of affidavit of use. - An affidavit of use must refer to not more than one certificate of registration,
must be signed by the registrant, or assignee of record, in person, and submitted in duplicate and must:
Identify the certificate of registration to which it refers, by the certificate number and date of registration;
Recite sufficient facts to show that the mark or trade name or name or other mark of ownership, described in the
certificate of registration, is still in use in the Philippines, specifying the nature of such use or recite sufficient facts
to show that its non-use is due to special circumstances which excuse such non-use, and is not due to any intention
to abandon the mark, trade name or name or other mark of ownership.
144. Acknowledgment of receipt of affidavit. – The registrant will be notified by the Executive Examiner, in
the name of the Director, of the receipt of the affidavit, and if satisfactory, of its acceptance.
145. Reconsideration of affidavit. – If the affidavit is insufficient or not satisfactory, the registrant will be
notified of the reasons by the Executive Examiner. Reconsideration of such refusal may be requested within three
months from the date of mailing of the notice. The request for reconsideration must state the reasons therefore.
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146. Time for cancellation. – If no affidavit is filed, the registration will, upon recommendation of the Executive
Examiner, be cancelled forthwith by the Director after the end of the sixth, eleventh or sixteenth year, and a notice
of the cancellation will be sent to the registrant. The fact of cancellation shall be published in the Official Gazette,
when the order for cancellation has become final and executory.
If the affidavit is filed but is refused, cancellation of the registration will be withheld pending further proceedings.
CHAPTER II
REGISTRATION ON THE PRINCIPAL REGISTER; CERTIFICATE OF REGISTRATION; EFFECT AND
NOTICE OF REGISTRATION
111. The Principal Examiner and Trademarks Registrar to have jurisdiction over matters relating to registration and
certificates of registration – The Principal Examiner & Trademarks Registrar shall be in charge of entering a
registration on the registry books, as well as of the preparation of and delivery to the registrant of the certificate of
registration signed by the Director, and of the publication of the issuance thereof in the Official Gazette. In such
matters, applicants, their attorneys, and agents shall deal with him only, or with such other officials or employees
whom the director may designate to assist him.
112. Duration of Registration – According to the law, the registration of a mark or trade name on the Principal
Register remains in force for 20 years from the date of registration, Provided, That registration shall be cancelled
upon order of the Director, unless within one year ff. the 5th, 10th, 15th anniversaries of the effective date of the
registration the registrant files with the Patent Office, with the required fee, an affidavit showing that the mark or
trade name is still in use or showing that its non-use is due to special circumstances which excuse such non-use,
and is not due to any intention of the registrant to abandon the same. (R.A. No. 166, Sec. 12)
113. Certificate of Registration on Principal Register prima facie evidence of validity - According to the law, a
certificate of registration on the Principal Register of a mark or trade name is prima facie evidence of validity of
registration, the registrant’s exclusive right to use the same in connection with the goods, business, or services
specified in the certificate, subject to any conditions and limitations stated therein, (R.A. no. 166, sec. 20)
114. Notice of fact of registration important – According to the law, after the issuance of the certificate of
registration on the principal register, the registrant of the mark or trade name should give notice that the mark or
trade name is registered by displaying with the same, as used, the words, “Registered in the Philippine Patent
Office” or Reg. Phil. Pat. Off.” The law further provides that, in any suit for infringement by a registrant failing so to
mark the goods bearing the registered mark or trade name, no damages will be covered, unless the defendant has
actual notice of the registration. (R.A. No. 166, sec. 21)
CHAPTER III
RECORDING OF ASSIGNMENTS OF REGISTRATION ON ANY OF THE THREE REGISTERS; OF ANY
OTHER INSTRUMENT AFFECTIN THE TITLE TO ANY REGISTERED MARK, TRADENAME, AND NAME OR
OTHER MARK OF OWNERSHIP, INCLUDING LICENSES.
147. Jurisdiction of the Executive Examiner – The executive Examiner shall have original jurisdiction over all matters
relating to the recording of assignments of marks or trade names or names or other marks of ownership, or other
documents affecting the title to the same, including licenses. He shall be the registrar of such assignments, other
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document & licenses, and his decisions on such matters, when final, are subject to appeal to the Director in the
same manners that final decisions of the Principal Examiners on applications for registration on the three Registers
may be appealed to the said director. Registrants, their attorneys or agents will deal with the Executive Examiner
exclusively on matters of recording of assignments, licenses, and other documents, or with such other officials or
employees whom the Director may designate to assist him.
148. Assignment must be made with the good will of the business. – No assignment of the registered mark or trade
name or name or other mark o ownership, or of one for which application to register has been filed, will be
accepted by the Patent Office for recording, unless the assignment includes the good will of the business in which
the mark or trade name or name or other mark of ownership is used. (R.A. no.166, Sec. 31)
149. Form of assignment, of any other instrument affecting the title, and of the license.- To be acceptable for
recording, the assignment, other documents or license:
must be in writing and in English language; if in the Spanish or in the Philippine national language or in any other
language, the assignment must be accompanied by a verified English translation;
must be acknowledged before a notary public or other officer authorized to administer oaths or perform other
notarial acts, and be certified under the hand and official seal of the said notary or other officer; must be
accompanied by an appointment of a resident agent, if the assignee is not domiciled in the Philippines;
must identify the certificate of registration involved by number and date of issue; or if the trademark or trade name
or name or other mark of ownership has been applied for registration, the serial number and filing date of the
application for registration shall be stated;
must be accompanied by the required recording and publication fees. (Republic Act 166, Sec. 31.)
150. Authority of the foreign notary to be proved. – When the assignment, other document, license, translation and
appointment of a resident agent are executed in a foreign country, the authority of the foreign notary or other
officer shall be proved by a certificate of a diplomatic or consular officer of the Philippines or other officer
representing the interests of the Philippines in the foreign country.
151. Assignment, other instruments affecting the title, and license, and translation, to be submitted in duplicate. –
The original document of assignment, other document or license and its translations, together with a signed
duplicated thereof, shall be submitted; but if the original is not available, two authenticated copies thereof may be
submitted instead. After recordal, the Executive Examiner 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 filing
the instrument with a notation of the fact of recording.
152. Date of receipt of instrument to be recorded considered its date of recording.- The date of recording of an
assignment, other document of license is the date of its receipt at the Patent Office in proper form and accompanied
by the full recording fee.
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153. A new certificate of registration may be issued to assignee. – Upon written petition of an assignee of record,
and upon payment of the required fee, a new certificate of registration for the unexpired period of the registration
may be issued to the assignee.
154. Certificate of registration may be issued to assignee of application instead of to the applicant. – In the case of
the assignment of a mark or trade name or name or other mark of ownership, which is pending registration, the
certificate of registration may be issued to the assignee of the applicant for registration, provided the assignment
has been recorded in the Patent Office before registration in the name of the applicant has been entered on the
Register and the certificate of registration in the of the said applicant has been prepared.
155. Action may be taken by assignee of record in any proceeding in Patent Office. – Any action in any proceeding
in the Patent Office which may or must be taken by a registrant or applicant may be taken by the assignee,
provided the assignment has been recorded; but, unless such assignment has been recorded, no assignee will be
recognized to take action.
Revised Rules of Practice before the Phils. Patent Office in Patent Cases
Part VII
Issuance, Term, and Extension of term of Letters Patent ; Annual fees on invention patents; effect of non-payment
of annual fees
Chapter 1
Issuance of Letters Patent
144. Issuance of letters patent.------(a) If it shall appear from the report of the examination made by the Principal
Examiner that the applicant is justly entitled to a patent under the law and the Director, after reviewing said report,
approved the same; and if no interference has been declared or if the same has been declared, it has been decided
in favor of the applicant, the Director of Patents shall issue the patent and shall, as soon as possible thereafter,
cause to be published in the Official Gazette the fact of the issuance together with a suitable view of the drawing,
and with a statement of the claims allowed.
(Republic Act 165, section 18.)
(b) The Patents Executive Examiner shall be in charge of all matters relating to the preparation, issuance and
publication of letters patent.
(Rule 82, Ord. 1-16)
145. Delivery of Letters Patent.--- The patent will be delivered or mailed to the attorney or agent of record, if there
be one; or, if the attorney or agent so requests, to the patentee or assignee of an interest therein; or, if there be no
attorney or agent, to the patentee or to the assignee of the entire interest, if he so requests.
Chapter II
Terms of Letters Patent and Extension of Term
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146. Term of letters patent for invention.---the term of a letters patent for an invention is seventeen years counted
from the date when the letters patent was issued, as shown on the face thereof.
(Rule 83, Ord. 1-16)
147. When a letters patent for an invention ceases to be in force prior to the expiry of its term.—a letters patent for
an invention shall cease to be in force and effect during its term, if the patentee shall fail to pay any prescribed
annual fee within the time set for the payment thereof, or if the patent be cancelled in accordance with the
provisions of the law.
(see R.A. 165, section 21)
(Rule 84, Ord. 1-16)
148. Term of letters patent for industrial design and for utility model.—the term of a letters patent for an industrial
design or for a utility model is five years, counted from the date of its issue, as shown on the face.
(R.A. No. 165, section 58 as amended by section 1)
(Rule 85, Ord. 1-16)
149. Extension of the term of letters patent for an industrial design or a utility model.—(a) before the expiration of
its term, upon payment of the required filing and publication fee, or within a further time thereafter not to exceed
six months upon payment of the required surcharge, the original term of a design patent or a utility model patent,
may upon written application to the director of Patents by the patentee or assignee of record, be extended by five
years. The application for extension must be accompanied by an affidavit of the patentee or assignee showing that
the design or utility model is in commercial or industrial use in the Philippines, or satisfactorily explaining its non-use.
In similar manner, further extension of five years may be obtained.
(R.A. No. 165, section 58 as amended by section 1, R.A. 864)
(b) the extension if granted shall be given publicity in the Official Gazette.
(Rule 86, Ord. 1-16)
Jurisdiction of the Patents Executive Examiner over extensions of the terms; appeal to the Director.—The Patents
Executive examiner shall have original jurisdiction over the applications for the extension of the terms of design
patents and of utility model patents, and over all matters relative thereto. Any final decision of the said Patents
executive Examiner in connection with such applications and with such other matters are subject to Petition or
Appeal to the director of Patents, in accordance with Rules 255 and 256 et seq.
(Rule 87, Ord. 1-16)
Chapter III
Annual Fees Payable on Letters Patent for Inventions
Director.-- The patents Executive Examiner shall have original jurisdiction over all matters affecting the payment and
non-payment of annual fees on letters patents for inventions, and his decisions, when final, are subject to Petition
or Appeal to the director of Patents in accordance with rules 255 and 256 et. seq. In such matters, the patentees,
their attorneys or agents will deal with him exclusively and with no other official or employee.
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(Rule 88, Ord. 1-16)
152. When first annual fee and subsequent annual fees are payable.- The first annual fee of P 100* on a patent for
invention prescribed by sections 22 and 75 of the patent law (R.A. 165 as amended) shall be due and payable on
the expiration of four years from the date of issue of the patent. In a similar manner, annual fees of P 100* on
subsisting patents shall be due and payable on the fifth and each subsequent anniversary of the date of issue until
the term of the patent expires.
(Rule 88a, Ord. 1-16)
153. Effect of failure to pay the annual fee.- if any annual fee is not paid within the prescribed time, a notice of the
non-payment shall be published by the Patent Office in the Official Gazette and the patentee shall have six months
from the date of the actual publication to pay the fee, together with the surcharge required for delayed payments.
(See Rule 16.) If the patentee does not pay the annual fee and the surcharge within the said six months, the letters
patents lapses. When a letters patent lapses, a notice of the lapsing shall also be published by the Patent Office in
the Official Gazette.
(Rule 88-b, Ord. 1-16)
154. Reinstatement of lapsed letters patent.—Within two years for the date on which the first unpaid annual fee was
due, a patent which has lapsed for non-payment of any annual fee may be reinstated upon payment of all annual
fees then due, of the surcharge of P100* for reinstatement, and of all expenses for publication in the Official
Gazette, incurred by the Patent Office, and upon satisfactory proof that the non-payment of the annual fees was
due to fraud, accident, mistake or excusable negligence; Provided, however, That such reinstatement shall not
prejudice any right acquired by third persons while the patent was not in force. (Republic Act No.165, section 23.)
(Rule 88-c, Ord. 1-16)
155. To whom annual fee to be paid. – All annual fees shall be paid to the Patent Office.
(Rule 88-d, Ord. 1-16)
CHAPTER III
RECORDING OF ASSIGNMENTS OF LETTERS PATENTS AND OF OTHER INSTRUMENTS AFFECTING TITLE TO
PATENTS, INCLUDING LICENSES
173. Jurisdiction of the Patents Executive Examiner; appeals to the Director.- The Patents Executive Examiner shall
have original jurisdiction over all matters relative to the recording of assignments of patents and applications for
patent and other instruments affecting title to patents and applications for patents, including licenses; he shall be
the Registrar of these assignments, other instruments and licenses and his decisions on such maters, when final, are
subject for Petition of Appeal to the Director, in accordance with Rule 225 and Rule 256 et seq. Patentees or
assignees of record, their attorneys or agents will deal on such matters exclusively with the Patents Executive
Examiner, or with such other officials or employees who the Director may designate to assist him.
(Rule 95, Ord. 1-16)
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174.Form of assignment of a patent or of an application for a patent.-- To be acceptable for recording, the
assignment:
must be in writing and in the English language; if in the Spanish or in the Philippine national language or in any
other language, the document must be accompanied by a verified English translation 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;
must be accompanied by an appointment of a resident agent, if the assignee is not domiciled in the Philippines;
must identify the letters patent involved by number and date, giving the name of the inventor, designer or maker,
and the title of the invention, industrial design or utility model, as set forth in the patent; in the case of an
application for patent, the serial number and filing date of the application should be stated, giving also the name of
the inventor, designer or maker, and the title of the invention, design or utility model, 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 serial number and filing date are ascertained, it should adequately identify the
application as by its date of execution and name of the inventor, designer or maker, and title of the invention,
design, or utility model; so that there can be no mistake as to the patent or application intended.
Must accompanied by the required recording and publication fees. (See Rule 16.) (Rule 96, Ord.1-16)
175. Authority of foreign notary to be notary to be proved.—When the assignment, translation and appointment of a
resident agent are executed in a foreign country, the authority of the foreign notary or other officer shall be proved
by a certificate of a diplomatic or consular officer of the Philippines or other officer representing the interests of the
Philippines in the foreign country. (Rule 97, Ord. 1-16)
176. 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 instruments, including licenses, must conform to the requirement of
the preceding two rules. (Rule 98, Ord. 1-16)
177. Assignments and other instruments to be submitted in duplicate.-- The original document of assignment or
other instrument, together with a signed duplicate thereof, shall be submitted; but if the original is not available,
two authenticated copies thereof may be submitted instead. After recording, the Patents Executive Examiner 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 filing the assignment, with a notation of the fact of recording. (Rule 99,
Ord. 1-16)
178. Date of receipt of assignment or other instrument or license considered its date of recording. – The date of
recording of an assignment or other instrument is the date of its receipt at the Patent Office in proper form and
accompanied by the full recording fee.
(Rule 100, Ord. 1-16)
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179. 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 Patent Office before the actual issue of patent. (Rule 101. Ord. 1-16)
180. Action may be taken by assignee of record in any proceeding in Patent Office. – Any action in any proceeding
in the Patent Office, which may or must be taken by a patentee or applicant may be taken by the assignee,
provided the assignment has been recorded; but, unless such assignment has been recorded, no assignee will be
recognized to take action. (Rule 102, Ord. 1-16)
Trademark Regulation
Rule 204Declaration 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 205Contents of the Declaration and Evidence of Actual Use
The declaration shall be under oath, must refer to no more than 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 the
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, specifying the
nature of such use, attaching certified or original copies of purchase orders, sales invoices, official receipts, stating
the volume of sales during the fiscal year immediately preceding the filing of the declaration, furnishing copies of
printed advertisement and other proofs of advertising with a statement of the advertising cost in the immediately
preceeding fiscal year as shown in the corresponding audited financial statements where applicable, or income tax
returns in all cases. The declarant should also 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.
Rule 801Duration
A certificate of registration shall remain in force for ten 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 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 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.
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Rule 802Non-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 803Use 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 804Use 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 805Use 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 906Assignment 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 907Form of Assignment or Transfer
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 908Recordal 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.
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Rule 909Assignment, 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 910Date 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 911A 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 915Cancellation 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 916Contents 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
Rule 921Renewal 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 a half years shall be required to submit the declaration and evidence of actual use prescribed in
these Regulations within one 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 a half 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
95
Regulations and, upon renewal, shall be reclassified in accordance with the Nice Classification. The renewal shall be
for the duration of ten 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 922Prior 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.
Section 3.2Filing 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 registration 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 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
propio.
Section 3.3Processing 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 3.2Filing 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 registration 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 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
propio.
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 years.
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Section 3.5Duration 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 years and shall
be subject to the same requirements for renewal as a registration granted under the IP Code.
Rule 1100Term of Patent
The term shall be twenty 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 are 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 1101Annual Fees
The first annual fee on a patent shall be due and payable on the expiration of four years from the date the
application is published, and on each subsequent anniversary of such date. Payment may be made within three
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)
0Rule 1102Date 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 1103Non-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 1104Grace Period
A grace period of six 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 1200Form 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;
97
(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 1201Form 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 1202Assignment 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 1203Date 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 1204Letters 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 1205Action 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 3 ASSIGNMENT AND TRANSMISSION OF RIGHTS
Rule 1211Assignment and Transmission of Rights
Patents or applications for patent and the inventions to which they relate shall be protected in the same way as the
rights of other property under the Civil Code. Inventions and any right, title or interest in and to patents and
98
inventions covered thereby may be assigned, or transmitted by inheritance or bequest or may be the subject of a
license contract. (Sec. 103, IP CODE)
Rule 1212Assignment 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 1213Rights 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)
Rule 315Term of Industrial Design Registration
The term shall be five years from the filing date of the application and may be renewed for not more than two
consecutive periods of five years each, by paying the renewal fee. (Secs. 118.1 and 118.2, IP Code).
However, taking into account the first-to-file rule, the volume of applications pending upon the effectivity of the IP
Code and the time that has lapsed between the effectivity of the IP Code and the effectivity of these Regulations:
(a) The first term of the industrial registrations filed prior to the effectivity of, and processed under, the IP Code
shall end five years from the effectivity of these Regulations.
(b) The first term of the industrial registrations filed under the IP Code and pending upon the effectivity of these
Regulations shall end five years from the effectivity of these Regulations.
Rule 316The Renewal Fee
The renewal fee shall be paid within twelve months preceding the expiration of the period of registration. A grace
period of six months shall be granted for payment of the fees after such expiration, upon payment of a surcharge.
CHAPTER 1 ASSIGNMENT
Rule 600Form of Assignment
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) Must identify the registration involved by number and date, giving the name of the registrant and the title of
the utility model or industrial design as set forth in the certificate; in the case of an application for registration, the
application number and filing date of the application should be stated, giving also the name of the applicant, and
99
the title of the utility model or industrial design, 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, it should
adequately identify the application, by its date of execution and name of the applicant, and the title of the utility
model or industrial design; so that there can be no mistake as to the utility model or industrial design or application
intended; and
(e) Must be accompanied by the required recording and publication fees.
Rule 601Form of Other Instrument Affecting the Title to a Registration 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 602Assignment and Other Instruments to be Submitted in Duplicate
The original document of assignment, together with a signed duplicate thereof, shall be submitted; but if the
original is not available, two certified copies thereof may be submitted instead. After recording, the Office shall
retain the signed duplicate or one of the certified copies, as the case may be, and return the original or the other
certified copy to the party filing the assignment, with a notation of the fact of recording.
Rule 603Date of Receipt of Assignment or Other Instrument or License Considered Its Date of Recording
The date of recording of an assignment or other instruments is the date of its receipt at the Office in proper form
and accompanied by the full recording fee.
Rule 604Certificates may be Issued to the Assignee in Place of the Applicant
In the case of the assignment of a pending application for registration, the certificate may be issued to the assignee
of the applicant, provided the assignment has been recorded in the Office before the actual issue of the certificate.
Rule 605Action 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.
TRANSMISSION OF RIGHTS
Rule 611Transmission of Rights
Registration and applications for utility models and industrial designs shall be protected in the same way as the
rights of other property under the Civil Code.
Utility models and industrial designs and any right, title or interest in and to registration and utility models and
industrial designs covered thereby may be assigned, or transmitted by inheritance or bequest or may be the subject
of a license contract.
Rule 612Assignment
An assignment may be of the entire right, title or interest in and to the registration and application for utility models
and industrial designs covered thereby, or of an undivided share of the entire registration and utility models and
100
industrial designs in which event the parties become joint owners thereof. An assignment may be limited to a
specified territory.
Rule 613Recording
The Office shall record assignments, licenses and other instruments relating to the transmission of any right, title or
interest in and to certificates of registration or application for utility models and industrial designs, which are
presented in due form to the Office for registration, in books and records kept for the purpose. The original
document together with a signed duplicate thereof shall be filed and the contents thereof should be kept
confidential. If the original is not available, certified copy thereof in duplicate may be filed. Upon recording, the
Office shall retain the duplicate, and return the original or the certified copy to the party who filed the same and
notice of the recording shall be published in the IPO Gazette.
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.
Rule 614Rights of Joint Owners
If two or more persons jointly own a registration and the utility model or industrial design covered thereby either by
the issuance of the registration in their joint favor or by reason of the assignment of an undivided share in the
registration and utility model or industrial design 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 utility model or industrial design 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.
IV. References Intellectual Property Code, R.A. 8293 Patent Law, R.A. 165 as amended Trademark Law R.A. 166 as amended Japanese Laws relating to Industrial Property Focus Intellectual Property Rights, World Bulletin Vol. 12 Nos.1-3 Jan-June 1996 Rules and Regulations on Trademarks, Servicemarks, Tradename and Marks stamped containers as amended by Office Order No. 39 (2002) Office Order No. 40 (2002) Office Order No. 20 (2001) Office Order No. 08 (2002) Office Order No. 17 (1998) Rules and Regulations on Patents, Utility Models and Design Translated documents from Registration Office Http://www.jpo.go.jp Http://www.ipophils.gov.ph Seminar handouts on Registration System of JPO by Ryoichi Suda, July 2002 Seminar handouts on Practice for Registration by Kazuei Kawauchi Registration Office September 13, 2002 Lectures by Mr. Kanji Kudo – Registration Law Mr. Kusakari – Set up procedure for Patents and UM Mr. Hirabayashi- Procedure for trademark Mr. Katano – Procedure with regard to transfer Mr. Nagasawa- Introduction and general matters Mr. Kitazawa-Licensing Modernization Projects’ data from Mr. Hiroo Takaki Mr. Toru Yamasaki
H. Annex b. FLOW OF MANAGEMENT PROCESSING AFTER COMPUTERIZATION (Registry Annual Fee)【PACSYS REGISTRY Module】
14.OCT.2003
Annuity payee Messenger Receiving Section Publication Division
AnnuityPayment
Check the Patent No.,amount, annuity year,
Communication /Response
OK
Received Payment (Cashier)
Receives the Annuity Payment,Communications/Response byReceiving Officer using Receiving
Record the assingment ofannual payment to IPRS
Receiveaccepted/signedpayment or actionletter to be sent to
the payee Stamp date of acceptance
Preparation ofcard
Send/mail/dispatch
(snail mail or lawoffice mail box in
IPO)
【3rd year
Annuity PaymentCommunication/Response
Registry
Assign Anuity payment / response to IPR Specialist
- Order of Payment
WithPayment
?
Y
NA
Drafting of action by IPRSpecialist to be reviewed bythe supervisor
Officialreceipt
List of AnnuityPayment/CommunicationReceived to be forwarded
to PTASD
WithPayment
?
Y
N
Actionletter/acceptedpayment
C
Evaluates the annuitypayments / responseno defect / defect
traversed
Approval of action by thesupervisor and signature by theIPR Specialist
Statistical report -monthly,quarterly or frombeginning of year to date
Stamp the mailing dateto the action letter
Encode the mailing date
List of action letters tobe forwarded toMessenger of receivingsection
Review and sign paymentform by the supervisor
A
B
B
Communication/ response to
action
C
B
Encord
Receive the list of annual payment
Receive the list of communication
Cmmunication to IPRS
Y
N
Period Managementof Communications
Action letter to besent to the Payor
Encord date ofacceptance
List of Annual Paymentforwarded to the
Messenger
Annual Reminders
B
【OUT OF FLOW : PRIOD MANAGEMENT】
【OUT OF FLOW : LAPSED PATENT】
Period Managementof LAPSEDPATENT
List of LAPSEDPATENT
D
【OUT OF FLOW : ANNUALREMAINDERS】
D
Issue Official Gazetof Lapsed Patent
【OUT OF FLOW : STATITIS REPORE】
- 101 -
H.Annex b. FLOW OF MANAGEMENT PROCESSING AFTER COMPUTERIZATION (REGISTRY TRANSFERS PATENTED)【PACSYS REGISTRY Module】
14. OCT. 2003
Changes/transfers Messenger Receiving Section Publication Divisionfilers
Transfers/changes doc.
Communication/Response
OK
Received Payment (Cashier)
Record the assignment ofchange documents to IPRS
Receive recordedtransfers/changesor action letter tobe sent to the filer
Stamp date of recordation Preparation ofreturn card
Send /mail/dispatch
(snail mail or lawoffice mail box in
IPO)
【OUT OF FLOW : PRIOD MANAGEMENT】
Communication/ResponseTransfers/changes recordation request
Registry
Check the Patent No., amount, type of document,inventor/designer/maker/owner
Receives the documents onchanges/transfers,
Communications/Responses byReceiving Officer using Receiving
Machine
Assign change documents/ response to IPR Specialist
- Order of Payment
WithPayment
?
Y
N
A
Drafting of action by IPRSpecialist to be reviewed bythe supervisor
Officialreceipt
List of documents/Communications
Received to be forwardedto PTASD
WithPayment
?
Y
N
Actionletter/recorded
documents
C
Evaluates the
changes/transfers
documents/response no
defect / defect
Approval of action by thesupervisor and signature by theIPR Specialist
Statistical report -monthly,quarterly or frombeginning of year to date
Stamp the mailing dateto the action letter
Encode the mailing date
List of action letters to beforwarded to Messenger of
receiving section
Reviews,approves and signsrecordation by the supervisor
A
B
B
Communication/ response to
action
C
B
Encode
Receive the list of changesdocuments
Receive the list of communication
Communication to IPRS
YN
Period Management ofgranted patents withrecordation requests
Action letter to besent to the filer
Encode recordation informationand date
D
D
Publication of Changes
List of documents/recordation to be
forwarded to Messengerand Publication Division
【OUT OF FLOW : STATITIS REPORE】
- 102 -
H. Annex b. FLOW OF MANAGEMENT PROCESSING AFTER COMPUTERIZATION (REGISTRY EXTENSION OF TERM)【PACSYS REGISTRY Module】
14.OCT.2003Petitioner/filer Messenger Receiving Section Publication Division Bureau of Patents
Communication/Response
OK
Received Payment (Cashier)
Record the assignment ofpetition to IPRS
Receiveapprove/Petition/signed payment or actionletter to be sent to
the Petitioner
Preparation of returncard
Receive the list andfilewrapper
Send /mail /dispatch
(snail mail or lawoffice mail box in IPO)
【3rd year dvelopment】
Petition for ExtensionCommunication/Response
Registry
Petition forextension of
term Check the Patent No., amount, 1st or 2nd extension, receiving date, designer/owner
Receives the Petitions,Communications/Responses by Receiving
Officer using Receiving Machine
Assign petition / response to IPR Specialist
- Order of Payment
WithPayment?
Y
N
A
Drafting of action by IPRSpecialist to be reviewed by thesupervisor
Officialreceipt
List of Petitions/Communication Receivedto be forwarded to PTASD
WithPayment?
Y
N
Actionletter/acceptedpayment
C
Evaluates the petitions /response no defect /
defect traversed
Approval of action by thesupervisor and signature by theIPR Specialist
Statistical report -monthly,quarterly or frombeginning of year to date
Stamp the mailing date tothe action letter
Encode the mailing date
List of action letters to beforwarded to Messenger ofreceiving section
Reviews,and signs therecommendation for approval
of the Petition by thesupervisor
A
BB
B
Communication /response to
action
C
B
Encode
Receive the list of petitions,documents, retrieved filewrapper
Receive the list of communication
Communication to IPRS
Y
N
Period Management ofGranted design patentswith extension requests
Action letter to be sent to thePetitioner,filer
Encode effective date of approval
List of petitions forwarded tothe BOP's Asst. Director for
approval and signature
Befor extention termReminders
BB
List of petitions forwardedto the Messenger
【OUT OF FLOW : PRIOD MANAGEMENT】
D
D
Asst. Directorapproves and signs
E
E
Period Managementof LAPSED PATENT
List of LAPSEDPATENT
F
【OUT OF FLOW : LAPSED PATENT】
【OUT OF FLOW : ANNUAL REMAINDERS】
【OUT OF FLOW : STATISTICS REPORT】
List of approved and signedpetitions to be forwarded to
Registry
F
Issue Official Gazetof Lapsed Patent
- 103 -
H. Annex b. FLOW OF MANAGEMENT PROCESSING AFTER COMPUTERIZATION(REGISTRY TRANSFERS- PENDING ) 【PASYS REGISTRY Module】
14.OCT.2003Changes/transfers Messenger Receiving Section Publication Division Bureau of Patents
filers
Transfers/changes doc.
Communication/Response Receives List
OK
Received Payment (Cashier)
Records the assignment ofpending patents with
recordation request to IPRS
Receives list anddocuments with
stamped recordationor action letter to be
sent to the filer
Preparation of returncard
Send /mail /dispatch
(snail mail or lawoffice mail box in IPO)
【3rd year Development】
【OUT OF FLOW : PRIOD MANAGEMENT】
Registry
Receives the documents onchanges/transfers,
Communications/Responses by ReceivingOfficer using Receiving Machine
Assigns pending patents with recordation request to IPRS
prepares the O.G.publication of pendingpatents with approved
transfer/changerecordation
Transfers/changes recordation request
- Order of Payment
WithPayment?
Y
NA
Drafting of action by IPRSpecialist to be reviewed by thesupervisor
Officialreceipt
List of pending patentstogether with its
documents to be forwardedto BOP
WithPayment?
Y
N
Actionletter/documents with
stampedrecordation
C
Evaluates thechanges/transfers
documents/response nodefect / defect traversed
Approval of action by thesupervisor and signature by theIPR Specialist
Statistical report -monthly,quarterly or frombeginning of year to date
Stamp the mailing date tothe action letter
Encode the mailing date
List of action letters to beforwarded to Messenger of
receiving section
Reviews,approves and signsrecordation by the supervisor
A
B
B
Communication /response to
action
C
B
Encode
Receives the list of pending patents withrecordation requests
Receives the list of communication
Communication to IPRS
Y
N
Period Management ofpatent applications withrecordation requests
Action letter to be sentto the filer
Encode recordationinformation and date
recordation
E
E
Communications/ response
stamps recordation informationon documents and letters
patent
List of patents with approvedtransfer or changes recordationto be forwarded to Messenger ofreceiving section and Publication
Division
List of communications regardingpending request for transfer/change
recordation to be forwarded toPTASD
List of pending patentstogether with its
documents only to beforwarded to PTASD
D
D
Check the Application No., amount, type of document,inventor/designer/maker/owner
F
F
Document to be inserted tothe filewrapper
【OUT OF FLOW : STATITIS REPORE】
Prepare the pertinent documentsto be forwarded to Registry relatingto recordation request
Encode the forwarding dateand type of documentforwarded
Check the actuallocation offilewrapper?
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H. Annex b. FLOW OF MANAGEMENT AFTER COMPUTERIZATION ( REGISTRY CERTIFICATION) 【PACSYS REGISTRY Module】
14. OCT. 2003Requester Messenger Receiving Section Publication Division
Communication /Response
OK
Received Payment (Cashier)
Record the assignment ofCTC request to IPRS
Receive letter topick up requestedCTC, certificationor action letter tobe sent to the
Preparation ofreturn card
Send /mail/dispatch
(snail mail or lawoffice mail box in
IPO)
【OUT OF FLOW : PRIODMANAGEMENT】
Communication/Response
Registry
Certification/CTC request
letterCheck the application/Patent No/s., amount, inventor, maker,
designer or owner
Receives the request letter,Communications/Responses by
Receiving Officer using ReceivingMachine
Request for CTC, certification
Assign request / response to IPR Specialist
- Order of Payment
WithPayment
?
Y
N
A
Drafting of action by IPRSpecialist to be reviewed bythe supervisor
Officialreceipt
List of request/Communication received
to be forwarded toPTASD
WithPayment
?
Y
N
Actionletter/ letterto pick upCTC/certi-
fication
C
Approval of action by thesupervisor and signature by theIPR Specialist
Statistical report -monthly,quarterly or frombeginning of year to date
Stamp the mailing dateto the action letter
Encode the mailing date
List of action letters to beforwarded to Messenger ofreceiving section
Reviews,and signs theprepared CTC by the
supervisor
A
B
B
Communication/ response to
action
C
B
Encode
Receive the list of CTC request, documents, retrievedfirewrapper
Receive the list of communication
Communication to IPRS
Y
N
Action letter to be sent tothe requester
Encode date of fulfilled request
List of issued patents withCTC/certification request andLetters to pick up requested
CTC, certification to bef d d t th R i i
Evaluates thedocument/respons
es, no defect/
【OUT OF FLOW : STATITISREPORE】
Period Management ofpatent applications withrecordation requests
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