POST GRANT/ REGISTRATION LAW, PROCEDURE, PRACTICE AND ... · Japan Patent Office, for officially...

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


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


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


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


113 9.2.2 1st Assignment of issued patentfrom small to big entity

2,760.00 N/A



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


34

116 9.3.2 1st Assignment of registered mark from small to big entity

3,450.00 N/A



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


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


319 4.1.2 Second 2,760.00 1,380.00


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

45

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.

57

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).

65

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


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


Payment Form (Online)

DEDE



Annual Fee (for Establishment of Patent Right) Management File

Annual fee (for establishment patent right) management file


Mistaken Payment


Payment Form Print

List of Expired Data

To Dispatch System


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


Payment form (Online)

DE DE


Payment

Form


Annual Fee (for Renewal Patent Right) Management File

Annual fee (for patent right establishment) management file


Payment form OK

Mistaken Payment


Payment form Print

List ofExpired Data

To Dispatch System


DecliningFee System


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


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


Form of Payment Print

List ofExpired Data

To Dispatch System


DecliningFee System


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.

78

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.

79

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.

94

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.

96

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


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


IPO)


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


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





List of action letters to beforwarded to Messenger of

receiving section

Reviews,approves and signsrecordation by the supervisor

A

B

B


action

C

B

Encode

Receive the list of changesdocuments


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


- 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


OK


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



Stamp the mailing date tothe action letter


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



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


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


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】


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



Stamp the mailing date tothe action letter


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


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


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


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


IPO)

【OUT OF FLOW : PRIODMANAGEMENT】


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


Officialreceipt

List of request/Communication received

to be forwarded toPTASD

WithPayment

?

Y

N

Actionletter/ letterto pick upCTC/certi-

fication

C





List of action letters to beforwarded to Messenger ofreceiving section

Reviews,and signs theprepared CTC by the

supervisor

A

B

B


action

C

B

Encode

Receive the list of CTC request, documents, retrievedfirewrapper



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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POST GRANT/ REGISTRATION LAW, PROCEDURE, PRACTICE AND ... · Japan Patent Office, for officially...

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Transcript of POST GRANT/ REGISTRATION LAW, PROCEDURE, PRACTICE AND ... · Japan Patent Office, for officially...