Filing Procedure & Examination

Obtaining a patent in the Philippines involves several procedural stages, from filing the application to grant and maintenance of the patent. Careful management of each stage and the applicable deadlines is essential to obtain and preserve patent rights.

The Step-by-Step Patent Roadmap

1.Filing a Patent Application:Step 1。

A Philippine patent application may be filed directly under the Paris Convention or by entering the Philippine national phase of a PCT international application.

A patent application generally includes:

• Request for grant of a patent
• Specification
• Claims
• Drawings (where applicable)
• Abstract
• Priority documents (if priority is claimed)
• Assignment, Power of Attorney, and other supporting documents (where required)

2.Grace Period (Exception to Loss of Novelty):Step 2。

As a general rule, any public disclosure of an invention before filing may become prior art and destroy the novelty of the invention. Therefore, it is generally advisable to file a patent application before disclosing the invention at exhibitions, academic conferences, on websites, in catalogs, during sales activities, or in presentations to investors.

However, Philippine patent law provides a limited exception to the loss of novelty. A disclosure made within 12 months before the filing date or priority date may not prejudice the novelty of the invention if the disclosure was made by the inventor or by a person who obtained the information directly or indirectly from the inventor.

For PCT national phase applications, the applicability of the grace period should also be carefully considered. In particular, the date of disclosure, the nature of the disclosure, the person who made the disclosure, the priority date, and the international filing date should all be reviewed to determine whether the grace period is available under Philippine law.

Because the requirements for the grace period vary from country to country, a disclosure that may qualify for protection in the Philippines may still destroy novelty elsewhere. Accordingly, filing a patent application before any public disclosure remains the safest approach for international patent protection.

3.Formal Examination:Step 3。

After filing, IPOPHL conducts a formal examination to verify that all filing requirements have been satisfied. If any deficiencies are found, the applicant will be given an opportunity to correct them.

4.Publication:Step 4。

The application is generally published 18 months from the filing date or priority date. After publication, the invention becomes publicly available and the application proceeds toward substantive examination.

5.Request for Substantive Examination:Step 5。

• Ordinary Philippine Applications: A request for substantive examination must be filed within 6 months from the publication date. Failure to file the request within the prescribed period will result in the application being deemed withdrawn.
• PCT National Phase Applications: A separate request for substantive examination is not required. However, the substantive examination fee must be paid within 6 months from the date of national phase entry.

6.Substantive Examination:Step 6。

During substantive examination, the examiner evaluates whether the invention satisfies the patentability requirements, including:

• Novelty
• Inventive step
• Industrial applicability
• Sufficiency of disclosure
• Clarity and support of the claims
• Compliance with Philippine patent laws and regulations

If objections are raised, IPOPHL issues an Office Action. Applicants may respond by submitting arguments and/or amendments within the prescribed period.

7.Divisional Applications:Step 7。

Where an application contains more than one invention, a divisional application may be filed. In particular, if the examiner raises a lack of unity objection, a divisional application may be necessary to pursue protection for the non-elected invention within the prescribed period.

8.Accelerated Examination:Step 8。

Applicants seeking earlier patent protection may be eligible for accelerated examination. Depending on the circumstances, examination may be expedited through:

• Patent Prosecution Highway (PPH)
• ASEAN Patent Examination Co-operation (ASPEC)

These programs may significantly reduce examination time when the applicable requirements are satisfied.

9.Allowance and Grant:Step 9。

If the examiner determines that the invention satisfies all patentability requirements, a Notice of Allowance is issued. Upon payment of the prescribed grant and publication fees, the patent is granted and recorded in the Patent Register.

10.Appeals:Step 10。

If a Final Rejection is issued, the applicant may appeal to the Director of the Bureau of Patents within two months from the mailing date of the Final Rejection.

If the applicant is dissatisfied with the Director’s decision, a further appeal may be filed with the Director General of IPOPHL within 30 days from receipt of the decision.

11.Annuity Maintenance:Step 11。

To maintain a patent in force, annuities must be paid on time.

In the Philippines, the first annuity becomes due four years after the publication of the application, and annuities are payable annually thereafter. Unlike Japan, where patent fees for the first three years are paid upon registration, Philippine annuities may become due while the application is still pending. Accordingly, careful deadline management is essential both before and after patent grant.

Critical Risk: Failure to pay the prescribed annuities may result in the application being deemed withdrawn or the patent lapsing.

Our Support at TSUBAME IP Philippines

Our patent professionals provide comprehensive support throughout the entire patent prosecution process, including:

• Strategic filing advice & Grace period assessment
• Patent drafting & Filing
• Office Action responses & Divisional applications
• Accelerated examination (PPH / ASPEC)
• Appeals, Grant procedures, and long-term Annuity management

We help clients obtain and maintain strong patent protection in the Philippines.