Patent Overview

Patent Overview

In the Philippines, patent protection is available for technical inventions that are novel, involve an inventive step, and are industrially applicable. By obtaining a patent, the patent owner may prevent third parties from making, using, selling, offering for sale, or importing the patented invention without authorization.

The term of a Philippine patent is generally 20 years from the filing date, provided that the required annuities are paid.

Publication & Examination Timeline

After formal examination, a patent application is generally published 18 months from the filing date or priority date. Once the application is published, the invention becomes publicly available, and the application may proceed to substantive examination.

In the Philippines, a request for substantive examination is required, and deadlines vary depending on the filing route:

  • Ordinary Philippine Patent Applications: The request for substantive examination must be filed within 6 months from the date of publication. If the request is not filed within this period, the application will be deemed withdrawn.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. If the fee is not paid within this period, the application will be deemed withdrawn.

Substantive Examination & Office Actions

During substantive examination, the IPOPHL examiner examines novelty, inventive step, industrial applicability, and compliance with the description and claim requirements.

  • Office Action Responses: If an Office Action is issued, the applicant must respond within the prescribed period by submitting arguments and/or amendments.
  • Amendments Constraint: Amendments are allowed, but no new matter beyond the original disclosure may be added.
  • Divisional Applications: Divisional applications may also be filed under certain conditions. For example, if an application is found to contain more than one invention, the examiner may require the applicant to divide the application.Warning: If a divisional application is not filed within the prescribed period, the applicant may lose the opportunity to pursue protection for the non-elected invention.

Accelerated Examination Options

For applicants seeking faster grant, accelerated examination may be available.

  • Expedited Examination: May be requested after publication and after the request for substantive examination has been filed.
  • International Cooperation: PPH (Patent Prosecution Highway) and ASPEC (ASEAN Patent Examination Co-operation) may be available where corresponding claims have been found allowable in another jurisdiction.

If the examiner finds that the application satisfies the patentability requirements, a notice of allowance is issued, and the patent is granted upon payment of the required grant and publication fees.

Appeal Process for Final Refusals

If a final refusal is issued, the applicant may consider filing an appeal:

  1. First Appeal: Must generally be filed with the Director of the Bureau of Patents within 2 months from the mailing date of the final refusal. This period is not extendible.
  2. Further Appeal: If the applicant is dissatisfied with the first decision, a further appeal may be filed with the Director General of IPOPHL within 30 days from receipt of the decision.

Critical Difference: Annuity Management

Annuity management is highly critical in the Philippines and features a distinct structure compared to other jurisdictions:

  • Timing: The first annuity becomes due after 4 years from the date of publication of the application, and annuities must then be paid annually.
  • Comparison with Japan: Unlike Japan, where the patent fees for the first to third years are paid upon registration, Philippine annuities may become due while the application is still pending.

Therefore, deadline management before and after grant is essential. Failure to pay annuities may result in the application being deemed withdrawn or the patent being considered lapsed.

Our Comprehensive Patent Services

Our team supports clients throughout the entire Philippine patent process, including:

  • Patentability assessment, invention review, and technical analysis
  • Patent specification and claim drafting
  • Philippine patent filing, Paris Convention filings, and PCT national phase entry
  • Deadline management after publication
  • Request for substantive examination and payment of examination fees
  • Office Action responses, including preparation of amendments and arguments
  • Divisional applications
  • Accelerated examination, PPH, and ASPEC
  • Appeals after final refusal
  • Grant, registration procedures, and annuity management
  • Recordation of assignments, changes, and licenses
  • Patent portfolio management

Strategic Approach to Philippine Patents

Obtaining patent protection in the Philippines requires more than simply filing an application. It is important to manage the entire process, including publication, substantive examination, Office Action responses, divisional applications, accelerated examination, appeals, grant procedures, and annuity payments.

Through close collaboration between Philippine IP professionals and an international IP team, including Japanese patent practitioners, we provide practical and cost-effective patent services tailored to each client’s business objectives.