The Philippines is a party to the PCT which simplifies the procedure for filing patent applications to protect inventions in different countries that are signatories to the PCT. The PCT entered into force in the Philippines on 17 August 2001.
A PCT application has two phases: The first phase is the international phase in which a single international patent application is filed with a patent office of a PCT country, such as the Philippine Intellectual Property Office (“IPO”). The second phase is the national or regional phase in which the necessary documents are filed with the patent offices of the different PCT countries where protection is sought.
The International Phase
At the international phase, a single filing of an international application is made. Thereafter, a search is performed by the International Searching Authority, accompanied with a written opinion regarding the patentability of the invention which is the subject of the application. When the search is completed, it is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority.
The International Bureau shall cause the publication of an international application after the expiration of 18 months from the priority date of the application.
The Entry Into the National Phase in the Philippines
Entry into the Philippine national phase must be done no later than thirty (30) months from the priority date whether the national phase entry is based on PCT Article 22(1), Chapter I of PCT Article 39(1) (a), Chapter II.
The 30-month period may be extended by one (1) month subject to the payment of an extension fee equal to 50% of the filing fee.
Our Firm’s patent group, comprising of lawyers who are also registered Patent Agents, having successfully passed the IPO’s Patent Agents Qualifying Exam, are equipped with the technical know-how essential in prosecuting and defending PCT applications. Even before filing the application for entry into the Philippine national phase, we can make a preliminary review of the specification, claims and formal drawings to determine if the same are in conformity with pertinent Philippine Patent Laws and Rules and Regulations. Aside from the filing of the application, our patent group also has the capability to respond to official actions issued by the IPO, including amending the specification and claims. We also render post-registration services, such as monitoring and payment of annual fees.
To enter the Philippine national phase, the applicant should furnish the IPO a copy of the PCT international application in English wherein the Philippines is one of the designated states (unless already transmitted to the International Bureau); or if the application was filed in another language, its English translation, which shall include a translation into English of:
- The description;
- The claims as filed and, where applicable, as amended under PCT Article 19;
- Any text matter of the drawings;
- The abstract; and
- Where applicable, amendments to the description, claims or drawings under PCT Article 34, as contained in the annexes to the international preliminary examination report.
The copy of the PCT international application or its English translation must be submitted to the IPO not later than thirty (30) months from the priority date.
To complete the documentary requirements, the timely submission of the other formal documentary requirements for an invention patent application is important. In order to expedite the formality examination, an original Special Power of Attorney appointing our Firm as agent for the application must be filed within two (2) moths from the date of entry and a duly notarized Deed of Assignment executed in favor of the assignee (if any) within six (6) months from the date of entry. Under the Philippine Intellectual Property Code (“IP Code”), failure to submit said formal requirements will render the patent application as withdrawn.
While the payment of the national filing fee is not a requirement for purposes of obtaining a date of entry, the fee must be paid within one (1) month from the date of national entry, otherwise, the application in the Philippines will be deemed withdrawn.
As far as protection of any rights of the applicant under the IP Code is concerned, the international publication in English of an international application shall have the same effect as publication in the Philippines, provided that notice of the international publication and copy of the same have been transmitted by the applicant to the actual unauthorized user of the invention claimed in the international application.
During the national phase and at any time before a patent is granted or refused on the international application, the applicant may present amendments to the specification, claims and drawings in accordance with the IP Code and its implementing rules and regulations.
The Costs for Filing PCT Applications
As a member of the Intellectual Property Association of the Philippines ("IPAP”), our Firm adopts the Schedule of Minimum Attorneys' Fees agreed upon by all the members of the IPAP. Please find below a summary of the government fees and professional fees that an applicant can expect to incur in connection with the entry into the Philippine national phase, subject to adjustments made by the IPO and IPAP:
PCT NATIONAL PHASE ENTRY
| ACTIVITY | PROFESSIONAL FEES | GOVERNMENT FEES |
| I. Filing Request for National Entry |
| Entering the national phase | US$400.00 [plus $10.00 for each claim in excess of five (5)] | US$80.80 [plus $6.73 for each claim in excess of five (5) and US$0.67 for every sheet in excess of thirty (30)] |
| Excess sheet fee
[in excess of thirty (30)] | - - - - | 0.67
(per excess sheet) |
| Claiming convention priority
(if applicable) | 100.00 | 40.40 |
| Request for substantive examination | 150.00 | 78.56 |
| II. Examination |
| Response to each IPO Official Action | 150.00 | - - - - |
| Request for extension of time to respond to official action
(if necessary)
First
Second | 100.00
100.00 | 13.47
14.59 |
| Payment of publication fee of granted patent | 100.00 | 17.96 |
| III. Grant of Patent |
| Securing issued Letters Patent Certificate | 100.00 | - - - - |
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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