The Intellectual Property Office of the Philippines (IPOPHL) issued The Revised Implementing Rules and Regulations (IRR) for Patents which took effect on 20 September 2022. Under the amended IRR, some notable key changes will be taking place:
- Introduction of accelerated substantive examination
Prior to this new provision, there is no accelerated substantive examination for patents, patent applicants can only expedite the prosecution of patent applications by filing a special accelerated examination request under (a) the Asean Patent Examination Co-operation Programme (ASPEC) or (b) Patent Prosecution Highway Programme (PPH).
Now, with the amendment, applicants may directly file a request for accelerated substantive examination after the application has been published in the IPOPHL e-Gazette and the request for substantive examination has been filed. Granting of an accelerated substantive examination is subject to the approval of the director of the Bureau of Patents (BOP).
2. Extension period for filing response to office action has been shortened
Prior to this amended IRR, it allows for a maximum of two two-month extensions of the period for responding to office action.
Now, with the amended IRR, it is limited to a maximum of two one-month extensions. This is meant to encourage applicants to submit responses on time, hence improving turnaround time.
3. Period to file appeal with respect to final refusal has been shortened
Prior to the amendment, it requires that a notice of appeal be filed within four months of the mailing date of the notice of final denial.
Now, under the amended IRR, it requires that a notice of appeal be filed within 30 days after the date of mailing the notice of final rejection.
4. Requirement on Power of Attorney
At the time of filing, a general or particular power of attorney is now necessary. If a power of attorney is not submitted at the time of filing, the application may be ruled incomplete. General powers of attorney no longer require notarization, and e-signature is now accepted.
5. Summary of Invention is required
A summary of the invention section is now needed in the description, and failure to provide one may result in the application being judged incomplete.
6. Divisional Applications
Prior to the amendment, voluntary divisional applications must be filed before the parent application is withdrawn or granted.
Now, under the amended IRR, Voluntary divisional applications can now be filed within four months from the date of grant or withdrawal of the parent or earlier divisional application. When a requirement to divide due to a lack of unity objection (ie. Mandatory Divisional Application) is made final, it is now possible to appeal the requirement and request that the four months period to file mandatory divisional applications starts only after the appeal is resolved instead of the previous standing whereby the divisional application needs to be filed within four months after the examiner issues a final objection as to lack of unity.
7. Extension of time to file Mandatory Divisional Application
An additional two (2) months extension of time to file mandatory divisional applications may now be granted.
8. Period for Filing a Petition to Revive a Withdrawn Application
The time limit for filing a petition to revive a withdrawn application has been reduced from four months to three months from the mailing date of the notification.
Click here to view the full IRR: https://pdf.ac/xInvR