Our Firm can provide assistance for the preparation and prosecution of both Philippine and foreign patent, utility model and industrial design applications.
We maintain an active and diverse portfolio of Philippine and foreign patents, utility models and industrial designs covering diverse subject matter such as biotechnology, DNA technology, applied chemistry, pharmaceutical products, applied physics and information technology. We provide patent, utility model and industrial design services to various clients including individual inventors, small and medium-scale businesses, as well as large enterprises.
Our highly trained lawyers are capable of dealing with specialized cutting-edge technologies that are required for patent prosecution of accounts at the forefront of technology. Lawyers supervising the patent, utility model and industrial design accounts are qualified Patent Agents, having passed the Patent Agent Qualifying Examinations administered by the Philippine Intellectual Property Office ("IPO"). We have the capability to assist you in the drafting of the specifications and claims and their amendments for patent, utility model and industrial design applications, as well as provide services for prosecution, maintenance and annuity services for patents, utility models and industrial designs.
We also have linkages with major law firms around the world which enables us to help you with the filing and prosecution of patents, utility models and industrial designs abroad.
Documentary Requirements for a PHILIPPINE INVENTION PATENT
The documentary requirements for filing a new invention patent application is as follows:
- Request for the Grant of a Philippine Patent, which shall contain a petition for the grant of the patent; the name, address and nationality of the applicant, the inventor and the agent; and the title of the invention;
- Description/Specification of the invention;
- Drawings necessary for the understanding of the invention;
- One or more claims of the invention;
- Abstract of the invention, which shall consist of a concise summary of the disclosure of the invention, as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words;
- Certified copy of the foreign application, together with an English translation thereof, if the applicant wishes to claim a convention priority of a previous filing in a country which is a member of a treaty or convention affording the same privilege to Filipino citizens (e.g., Paris Convention for the Protection of Industrial Property);
- a. If the application is in the name of a person other than the inventor, an original Deed of Assignment must be signed by the inventor in favor of the applicant for submission to the IPO. The Deed of Assignment must also be signed by the applicant. Upon execution the Deed of Assignment must then be notarized by a person authorized to administer oaths.
b. If the application is in the name of the inventor, only an original Special Power of Attorney (“SPA”), signed by the inventor needs to be submitted to the IPO. The SPA need not be notarized or legalized.
While all these documents will be required by the Philippine Intellectual Property Office, only the request, specification and claims [Item Numbers (1), (2) and (4) above] are required in order to obtain a filing date. The other requirements may be filed subsequently.
Documentary Requirements for a PHILIPPINE UTILITY MODEL
The documentary requirements for filing a new utility model application are as follows:
- Request for the Grant of a Philippine Utility Model, which shall contain a petition for the grant of the utility model; the name, address and nationality of the applicant, the maker and the agent; and the title of the invention;
- Description/Specification of the utility model;
- Drawings necessary for the understanding of the utility model;
- One or more claims of the utility model;
- Abstract of the utility model, which shall consist of a concise summary of the disclosure of the utility model, as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words; and
- Certified copy of the foreign application, together with an English translation thereof, if the applicant wishes to claim a convention priority of a previous filing in a country which is a member of a treaty or convention affording the same privilege to Filipino citizens (e.g., Paris Convention for the Protection of Industrial Property);
- a. If the application is in the name of a person other than the maker, an original Deed of Assignment must be signed by the maker in favor of the applicant for submission to the IPO. The Deed of Assignment must also be signed by the applicant. Upon execution the Deed of Assignment must then be notarized by a person authorized to administer oaths.
b. If the application is in the name of the maker, only an original Special Power of Attorney (“SPA”), signed by the inventor/designer/maker, needs to be submitted to the IPO. The SPA need not be notarized or legalized.
While all these documents will be required by the Philippine Intellectual Property Office, only the request, specification and claims [Item Numbers (1), (2) and (4) above] are required in order to obtain a filing date. The other requirements may be filed subsequently.
Documentary Requirements for a PHILIPPINE INDUSTRIAL DESIGN
The documentary requirements for filing a new industrial design application are as follows:
- Request for the Grant of the Philippine Industrial Design, which shall contain a petition for the grant of the industrial design; the name, address and nationality of the applicant, the designer and the agent; and the title of the industrial design;
- Description/Specification of the industrial design;
- Drawings necessary for the understanding of the industrial design;
- One claim for an industrial design;
- Abstract of the industrial design, which shall consist of a concise summary of the disclosure of the industrial design, as contained in the description, claim and drawings in preferably not more than one hundred fifty (150) words; and
- Certified copy of the foreign application, together with an English translation thereof, if the applicant wishes to claim a convention priority of a previous filing in a country which is a member of a treaty or convention affording the same privilege to Filipino citizens (e.g., Paris Convention for the Protection of Industrial Property);
- a. If the application is in the name of a person other than the designer, an original Deed of Assignment must be signed by the designer in favor of the applicant for submission to the IPO. The Deed of Assignment must also be signed by the applicant. Upon execution the Deed of Assignment must then be notarized by a person authorized to administer oaths.
b. If the application is in the name of the designer, only an original Special Power of Attorney (“SPA”), signed by the designer, needs to be submitted to the IPO. The SPA need not be notarized or legalized.
While all these documents will be required by the Philippine Intellectual Property Office, only the request, specification and claims [Item Numbers (1), (2) and (4) above] are required in order to obtain a filing date. The other requirements may be filed subsequently.
Costs for Filing and Maintenance of Patents, Utility Models and Designs
ACTIVITY |
PROFESSIONAL FEES |
GOVERNMENT FEES |
I. Filing |
|
Search and report for each class/subject
|
US$200.00
|
- - - -
|
|
Filing of original application
a. For invention
b. For utility model
c. For design
|
400.00
[plus $10.00 for each claim in excess of five (5)]
350.00
[plus $10.00 for each claim in excess of five (5)]
350.00
[plus $200.00 for each embodiment in excess of one (1) design]
|
US$80.80
[plus $6.73 for each claim in excess of five (5)]
67.33
[plus $4.49 for each claim in excess of five (5)]
67.33
[plus $33.67 for each embodiment in excess of one (1) design]
|
|
Preparation of formal drawings per sheet
|
80.00
|
- - - -
|
|
Claiming convention priority
(if applicable)
|
US$100.00
(plus $80.00 for each priority claim in excess of one)
|
US$40.40 (for invention)
33.67
(for utility model and industrial design)
|
|
Late filing of formal documents for each application
|
100.00
|
- - - -
|
II. Examination |
|
Request for substantive examination
|
150.00
|
78.56
|
|
Filing voluntary amendments to application
|
150.00
|
11.22
|
|
Conversion to another kind of application
a. invention to utility model
b. utility model to invention
|
200.00(min)
200.00(min)
|
12.34
26.93
|
|
Response to each official action
|
150.00(min)
|
- - - -
|
|
Request for extension of time to respond to Official Action (if necessary)
First
Second
|
100.00
100.00
|
13.47 (min)
14.59 (min)
|
|
Petition for revival of abandoned application
|
250.00
|
22.44
|
|
Request for certification of documents
|
100.00
|
11.22
(plus cost of reproduction/
computer print-out)
|
|
Submission of retyped amended specification and claims (maximum of 60 pages)
|
100.00
|
----
|
|
Filing of a divisional application
|
400.00
(Invention)
350.00
(utility model/industrial design)
|
80.80
(Invention)
67.33
(utility model/industrial design)
|
|
Request for a registrability report on a utility model/design application
|
150.00
|
24.69
|
|
Conference/interview with examiner not exceeding one hour
|
250.00
|
22.44
|
III. Registration |
|
Payment of issuance and publication fees
|
100.00
|
17.96 (min)
|
|
Securing and transmitting each original letters patent
|
100.00
|
- - - -
|
|
Request for amendment or correction of letters patent
|
150.00
|
13.47 (min)
|
|
IV. Post-Registration
|
|
Reinstatement of a lapsed patent
|
300.00(min)
|
- - - -
|
V. Others |
|
Request for recordal of license agreement, assignment or document affecting title, change of name
a) for each pending application
b) for each granted patent
|
US$150.00
200.00
|
US$15.71 (min)
33.67 (min)
|
|
Request for recordal of change of address
a) for each pending application
b) for each granted patent
|
150.00
200.00
|
15.71 (min)
15.71 (min)
|
|
Request for extension of term of design/utility model registration
|
300.00
|
60.60(min)
|
ANNUAL FEES
|
ACTIVITY
|
PROFESSIONAL FEES
|
GOVERNMENT FEES
|
|
Maintenance Requirements
|
|
Payment of Annual Fee [due within four (4) years from the date of the international publication for PCT applications or four (4) years from the date of publication in the Philippines for ordinary patent invention; there is an additional government fee of Seven and 86/100 United States Dollars (US$7.86) per claim in excess of five (5)]
5th year
6th year
7th year
8th year
9th year
10th year
11th year
12th year
13th year
14th year
15th year
16th year
17th year
18th year
19th year
20th year
|
US$150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
150.00
|
US$60.60
80.80
101.00
121.20
161.60
202.00
260.36
323.20
381.56
464.60
545.40
623.96
704.76
846.16
1,016.73
1,218.73
|
Reduction of Government Fees
For entities considered to be small entities, there shall be a 50% discount on the government fees. A small entity is any natural or juridical person whose assets are worth One Hundred Million Pesos (PhP100,000,000.00) or less; or any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled corporations, state universities and colleges and government-owned or government-run schools.
A duly notarized Sworn Statement Form must be submitted to the IPO within sixty (60) days from the filing of the application, otherwise the applicant shall be assessed to pay the full amount of the government fees.
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