Here are the frequently asked questions on trademark registration in the Philippines. These questions and answers aim to clarify how applicants can register their trademarks in the Philippines.
A utility model is a protection awarded to inventions that fall short of the inventive requirement. It is any technical solution to a problem in any field of human activity which is new and industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec.109 in relation to Sec. 21, IP Code.)
The applicant may choose between two (2) routes in filing a utility model application in the Philippines. These are:
- Direct Route; and
- Patent Cooperation Treaty (PCT) Route
The following are the requirements:
- signed request for the registration of utility model;
- description, abstract, claims and drawings; and
- if priority right is claimed, the details of the claim including the filing date, file number and country of origin.
An applicant may claim priority if it has applied for the same utility model in another country which by treaty, convention, or law affords similar privileges to Philippine citizens. The utility model application shall be considered as filed as of the date of filing of the foreign application, provided that (1) the Philippine application claims priority; (2) the Philippine application is filed within twelve (12) months from the date when the earliest application was filed; and (3) a certified copy of the foreign application together with an English translation thereof, if not in English, is filed within six (6) months from the date of filing in the Philippines.
The following requirements must be submitted no later than thirty (30) days from the priority date:
- signed request for national phase entry;
- description, claims, abstract and drawings;
- copy of the international application in English as filed if the applicant has not yet received Form PCT/IB/308 or the English translation of the international application if it was filed in another language; and
- copy of the amendments under Article 19 and/or Article 34, if applicable, in English.
The 30th month deadline for entering the national phase of the PCT application may be extended by filing a request for extension of one (1) month and payment of the official extension fee.
No. Submission of priority documents is not required for purposes of entering the into the national phase. The priority documents however, must be submitted to the International Bureau within sixteen (16) months from the priority date.
If no submission was made to the International Bureau within sixteen (16) months, it must be submitted to the Intellectual Property Office (IPO) within six (6) months from the date of entry into national phase together with the payment of the extension fee for the submission of the priority document.
Yes, conversion of a patent application to a utility model application and vice versa is allowed. Conversion of the application is allowed at any time before the grant or refusal of a patent or utility model registration upon payment of the prescribed fee. It shall be accorded the filing date of the initial application. Conversion of the application may be only done once.
No. An applicant may not file two (2) applications for the same subject, one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively. (Sec.111, IP Code.)
There is no substantive examination of the utility model application.
A utility model is protected for seven (7) years from the date of the filing of the application, without possibility of renewal. (Sec. 109.3, IP Code)
No. Oppositions against patent, utility models and industrial designs are not available under the rules.
Yes. Third party observations may be submitted. Following the publication of utility model in the E-Gazette, a third party observation may be filed within thirty (30) days. Any third party may present observations in writing concerning the application. Such observations shall be communicated to the applicant who in turn may comment on them. The observations and the comments will be included in the file wrapper of the application and will be studied by the Bureau. (Sec. 47, IP Code)