[ REPUBLIC ACT NO.

9502 ] AN ACT PROVIDING FOR CHEAPER AND QUALITY MEDICINES, AMENDING FOR THE PURPOSE REPUBLIC ACT NO. 8293 OR THE INTELLECTUAL PROPERTY CODE, REPUBLIC ACT NO. 6675 OR THE GENERICS ACT OF 1988, AND REPUBLIC ACT NO. 5921 OR THE PHARMACY LAW, AND FOR OTHER PURPOSES Be it enacted by the Senate and House of Representatives of the Philippines in Congress assembled:

CHAPTER 1 GENERAL PROVISIONS SECTION 1. Short Title. This Act shall be known as the "Universally Accessible Cheaper and Quality Medicines Act of 2008". SEC. 2. Declaration of Policy. It is the policy of the State to protect public health and, when the public interest or circumstances of extreme urgency so require, it shall adopt appropriate measures to promote and ensure access to affordable quality drugs and medicines for all. Pursuant to the attainment of this general policy, an effective competition policy in the supply and demand of quality affordable drugs and medicines is recognized by the State as a primary instrument. In the event that full competition is not effective, the State recognizes as a reserve instrument the regulation of prices of drugs and medicines, with clear accountability by the implementing authority as mandated in this Act, as one of the means to also promote and ensure access to quality affordable medicines. SEC. 3. Construction in Favor of Protection of Public Health. All doubts in the implementation and interpretation of the provisions of this Act, including its implementing rules and regulations, shall be resolved in favor of protecting public health. SEC. 4. Definition of Terms. For purposes of this Act, the following terms are to mean as follows: (a) Compulsory License is a license issued by the Director General of the Intellectual Property Office to exploit a patented invention without the permission of the patent holder, either by manufacture or through parallel importation; (b) Drug outlet refers to drugstores, pharmacies, and any other business establishments which sell drugs and medicines; (c) Drugs and medicines refers to any chemical compound or biological substance, other than food, intended for use in the treatment, prevention or

diagnosis of disease in humans or animals, including but not limited to: (1) any article recognized in the official United States Pharmacopoeia-National Formulary (USP-NF), official Homeopathic Pharmacopoeia of the United States, Philippine Pharmacopoeia, Philippine National Drug Formulary, British Pharmacopoeia, European Pharmacopoeia, Japanese Pharmacopoeia, Indian Pharmacopoeia, any national compendium or any supplement to any of them; (2) any article intended for use in the diagnosis, cure, mitigation, treatment, or prevention of disease in humans or animals; (3) any article other than food intended to affect the structure or any function of the human body or animals; (4) any article intended for use as a component of any articles specified in clauses (1), (2), and (3) not including devices or their components, parts, or accessories; and (5) herbal and/or traditional drugs which are articles of plant or animal origin used in folk medicine which are: (i) recognized in the Philippine National Drug Formulary; (ii) intended for use in the treatment or cure or mitigation of disease symptoms, injury or body defects in humans; (iii) other than food, intended to affect the structure or any function of the human body; (iv) in finished or ready-to-use dosage form; and (v) intended for use as a component of any of the articles specified in clauses (i), (ii), (iii), and (iv); (d) "Essential drugs list or national drug formulary" refers to a list of drugs prepared and periodically updated by the Department of Health on the basis of health conditions obtaining in the Philippines as well as on internationally accepted criteria; (e) "Importer" refers to any establishment that imports raw materials, active ingredients and finished products for its own use or for distribution to other drug establishments or outlets; (f) "Manufacture" includes any process or part of a process for making, altering, finishing, packing, labeling, breaking or otherwise treating or adapting any drug with a view to its sale and distribution, but does not include the compounding or dispensing of any drug in the ordinary course of retail business;

(g) "Manufacturer" refers to any establishment engaged in the operations involved in the production of a drug with the end view of storage, distribution, or sale of the product; (h) "Multisource pharmaceutical products" refers to pharmaceutically equivalent or pharmaceutically alternative products that may or may not be therapeutically equivalent. Multisource pharmaceutical products that are therapeutically equivalent are interchangeable; (i) "Retailer" refers to a licensed establishment carrying on the retail business of sale of drugs and medicines to customers; (j) "Trader" refers to any licensed establishment which is a registered owner of a drug product that procures the materials and packaging components, and provides the production monographs, quality control standards and procedures, but subcontracts the manufacture of such products to a licensed manufacturer; (k) "TRIPS Agreement" or Agreement on Trade-Related Aspects of Intellectual Property Rights refers to the international agreement administered by the WTO that sets down minimum standards for many forms of intellectual property regulation; and (l) "Wholesaler' refers to a licensed establishment or drug outlet who acts as merchant, broker or agent, who sells or distributes for resale or wholesale drugs and medicines. CHAPTER 2 AMENDMENTS TO REPUBLIC ACT NO. 8293, OTHERWISE KNOWN AS THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES SEC. 5. Section 22 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: "SEC. 22. Non-Patentable Inventions. The following shall be excluded from patent protection: "22.1. Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant. "For the purpose of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;

"22.2. x x x; "22.3. x x x; "22.4. x x x; "22.5. x x x; and "22.6. x x x; SEC. 6. Section 26 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: "SEC. 26. Inventive Step. 26.1. An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. (n) "26.2. In the case of drugs and medicines, there is no inventive step if the invention results from the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant." SEC. 7. Section 72 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: "SEC. 72. Limitations of Patent Rights. The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances: "72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to use the invention: Provided, further, That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party; "72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; "72.3. Where the act consists of making or using exclusively for experimental use of the invention for scientific purposes or educational purposes and such other activities directly related to such scientific or educational experimental use;

"72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture, construction, use or sale of any product: Provided, That, in order to protect the data submitted by the original patent holder from unfair commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the appropriate government agencies, shall issue the appropriate rules and regulations necessary therein not later than one hundred twenty (120) days after the enactment of this law; "72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to use the invention: Provided, further, That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party; "72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; "72.3. Where the act consists of making or using exclusively for experimental use of the invention for scientific purposes or educational purposes and such other activities directly related to such scientific or educational experimental use; "72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture, construction, use or sale of any product: Provided, That, in order to protect the data submitted by the original patent holder from unfair commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the appropriate government agencies, shall issue the appropriate rules and regulations necessary therein not later than one hundred twenty (120) days after the enactment of this law; "72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical "74.3. All cases arising from the implementation of this provision shall be

cognizable by courts with appropriate jurisdiction provided by law. "No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or preliminary injunction or such other provisional remedies that will prevent its immediate execution. "74.4. The Intellectual Property Office (IPO), in consultation with the appropriate government agencies, shall issue the appropriate implementing rules and regulations for the use or exploitation of patented inventions as contemplated in this section within one hundred twenty (120) days after the effectivity of this law." SEC. 9. Section 76.1 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: "SEC. 76. Civil Action for Infringement. 76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement: Provided, That, this shall not apply to instances covered by Sections 72.1 and 72.4 (Limitations of Patent Rights); Section 74 (Use of Invention by Government); Section 93.6 (Compulsory Licensing); and Section 93-A (Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement) of this Code. "76.2. x x x; "76.3. x x x; "76.4. x x x; "76.5. x x x; and "76.6. x x x; SEC. 10. Section 93 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: SEC. 93. Grounds for Compulsory Licensing. The Director General of the Intellectual Property Office may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of any person who has shown his capability to exploit the invention, under any of the following circumstances: 93.1. National emergency or other circumstances of extreme urgency; 93.2. Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government, so requires; or

93.3. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive; or 93.4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason; 93.5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason: Provided, That the importation of the patented article shall constitute working or using the patent; (Secs. 34, 34-A, 34-B, R.A. No. 165a) and 93.6. Where the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health. SEC. 11. A new Section 93-A is hereby inserted after Section 93 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, to read as follows: SEC. 93-A. Procedures on Issuance of a Special Compulsory License under the TRIPS Agreement. 93-A.1. The Director General of the Intellectual Property Office, upon the written recommendation of the Secretary of the Department of Health, shall, upon filing of a petition, grant a special compulsory license for the importation of patented drugs and medicines. The special compulsory license for the importation contemplated under this provision shall be an additional special alternative procedure to ensure access to quality affordable medicines and shall be primarily for domestic consumption: Provided, That adequate remuneration shall be paid to the patent owner either by the exporting or importing country. The compulsory license shall also contain a provision directing the grantee the license to exercise reasonable measures to prevent the re-exportation of the products imported under this provision. The grant of a special compulsory license under this provision shall be an exception to Sections 100.4 and 100.6 of Republic Act No. 8293 and shall be immediately executory. No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or preliminary injunction or such other provisional remedies that will prevent the grant of the special compulsory license. 93-A.2. A compulsory license shall also be available for the manufacture and export of drugs and medicines to any country having insufficient or no manufacturing capacity in the pharmaceutical sector to address public health problems: Provided, That, a compulsory license has been granted by such country or such country has, by notification or otherwise, allowed importation into its jurisdiction of the patented drugs and medicines from the Philippines in compliance with the TRIPS Agreement.

93-A.3. The right to grant a special compulsory license under this section shall not limit or prejudice the rights, obligations and flexibilities provided under the TRIPS Agreement and under Philippine laws, particularly Section 72.1 and Section 74 of the Intellectual Property Code, as amended under this Act. It is also without prejudice to the extent to which drugs and medicines produced under a compulsory license can be exported as allowed in the TRIPS Agreement and applicable laws. SEC. 12. Section 94 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: SEC. 94. Period for Filing a Petition for a Compulsory License. 94.1. A compulsory license may not be applied for on the ground stated in Subsection 93.5 before the expiration of a period of four (4) years from the date of filing of the application or three (3) years from the date of the patent whichever period expires last. 94.2. A compulsory license which is applied for on any of the grounds stated in Subsections 93.2, 93.3, 93.4, and 93.6 and Section 97 may be applied for at any time after the grant of the patent. (Sec. 34(1), R. A. No. 165) SEC. 13. Section 95 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: SEC. 95. Requirement to Obtain a License on Reasonable Commercial Terms. 95.1. The license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. 95.2. The requirement under Subsection 95.1 shall not apply in any of the following cases: (a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anti-competitive; (b) In situations of national emergency or other circumstances of extreme urgency; (c) In cases of public non-commercial use; and (d) In cases where the demand for the patented drugs and medicines in the Philippines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health. 95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder shall be notified as soon as reasonably practicable. 95.4. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds

to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly. (n) 95.5. Where the demand for the patented drugs and medicines in the Philippines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health, the right holder shall be informed promptly. SEC. 14. Section 147 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: SEC. 147. Rights Conferred. 147.1. Except in cases of importation of drugs and medicines allowed under Section 72.1 of this Act and of off-patent drugs and medicines, the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. There shall be no infringement of trademarks or tradenames of imported or sold patented drugs and medicines allowed under Section 72.1 of this Act, as well as imported or sold off-patent drugs and medicines: Provided, That, said drugs and medicines bear the registered marks that have not been tampered, unlawfully modified, or infringed upon, under Section 155 of this Code. 147.2. x x x. SEC. 15. Section 159 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows: SEC. 159. Limitations to Actions for Infringement. Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159.1. x x x; 159.2 x x x; 159.3 x x x; and 159.4 There shall be no infringement of trademarks or tradenames of imported or sold drugs and medicines allowed under Section 72.1 of this Act, as well as imported or sold off-patent drugs and medicines: Provided, That said drugs and medicines bear the registered marks that have not been tampered, unlawfully

modified, or infringed upon as defined under Section 155 of this Code. SEC. 16. Implementing Rules and Regulations on Amendments to Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines. Unless otherwise provided herein, the Intellectual Property Office, in coordination with the Department of Health and the Bureau of Food and Drugs, shall issue and promulgate, within one hundred twenty (120) days after the enactment of this Act, the implementing rules and regulations to effectively implement the provisions of this Act that relate to Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines.

CHAPTER 3 DRUGS AND MEDICINES PRICE REGULATION SEC. 17. Drugs and Medicines Price Regulation Authority of the President of the Philippines. The President of the Philippines, upon recommendation of the Secretary of the Department of Health, shall have the power to impose maximum retail prices over any or all drugs and medicines as enumerated in Section 23. The power to impose maximum retail prices over drugs and medicines shall be exercised within such period of time as the situation may warrant as determined by the President of the Philippines. No court, except the Supreme Court of the Philippines, shall issue any temporary restraining order or preliminary injunction or preliminary mandatory injunction that will prevent the immediate execution of the exercise of this power of the President of the Philippines. SEC. 18. Drugs and Medicines Price Monitoring and Regulation Authority of the Secretary of the Department of Health. To implement the policies of this Act under this Chapter, the Secretary of the Department of Health is hereby authorized to establish and initiate a price monitoring and regulation system for drugs and medicines within one hundred twenty (120) days after the enactment of this Act. The Secretary of the Department of Health may also create such bodies, consultative councils, from which advice may be sought in the implementation of a drug or medicine price monitoring and regulation policy. Such bodies or consultative councils created by the Secretary of the Department of Health shall coordinate its efforts together with other government agencies. SEC. 19. Functions and Responsibilities of the Secretary of the Department of Health. Pursuant to Section 18 of this Act, the Secretary of the Department of Health shall have the following powers: (A) Power to Recommend the Maximum Retail Price of Drugs and Medicines Subject to Price Regulation (1) Upon application or motu proprio when the public interest so requires, the Secretary of the Department of Health shall have the power to determine the maximum retail prices of drugs and medicines which shall be recommended to

the President of the Philippines for approval. In order that affordable prices of drugs and medicines from the different manufacturers, importers, traders, distributors, wholesalers, or retailers shall be made available to the public, the Secretary of the Department of Health, as he/she may deem fit and after a proper determination, shall have such approved maximum retail prices of drugs and medicines published; (2) In recommending the maximum retail price, the Secretary of the Department of Health shall consider the following factors: (a) Retail prices of drugs and medicines that are subject to regulation in the Philippines and in other countries; (b) The supply available in the market; (c) The cost to the manufacturer, importer, trader, distributor, wholesaler or retailer of the following, but not limited to: (i) The exchange rate of the peso to the foreign currency with which the drug or any of its component, ingredient or raw material was paid for; (ii) Any change in the amortization cost of machinery brought about by any change in the exchange rate of the peso to the foreign currency with which the machinery was bought through credit facilities; (iii) Any change in the cost of labor brought about by a change in minimum wage; or (iv) Any change in the cost of transporting or distributing the medicines to the area of destination; (d) Such other factors or conditions which will aid in arriving at a just and reasonable maximum price; and (3) No retailer shall sell drugs and medicines at a retail price exceeding the maximum retail price approved by the President of the Philippines as provided in Section 17 of this Act: Provided, That, the Secretary of the Department of Health shall immediately undertake a study on the prevailing prices of drugs and medicines subject to price regulation and provide an initial list of drugs and medicines, which maximum retail prices he/she shall recommend to the President of the Philippines. (B) Power to Include Other Drugs and Medicines in the List Subject to Price Regulation Upon application or motu proprio when the public interest so requires and after proper determination, the Secretary of the Department of Health may order the inclusion of drugs and medicines to the list subject of price regulation under Section 23 hereof.

(C) Power to Implement Cost-Containment and Other Measures (1) The Secretary of the Department of Health shall have the power to implement the fair price of drugs and medicines for purposes of public health insurance and government procurement based on the order of the President of the Philippines imposing maximum retail prices; and (2) The Secretary of the Department of Health shall have the power to implement any other measures that the government may avail of to effectively reduce the cost of drugs and medicines that shall include, but not limited to, competitive bidding, price volume negotiations, and other appropriate mechanisms that influence supply, demand and expenditures on drugs and medicines. (D) Power to Impose Administrative Fines and Penalties After due notice and hearing, the Secretary of the Department of Health shall have the power to impose administrative fines against any person, manufacturer, importer, trader, distributor, wholesaler, retailer, or any other entity, in such amount as it may deem reasonable, which in no case shall be less than Fifty thousand pesos (Php50,000.00) nor more than Five million pesos (Php5,000,000.00) for violations of the maximum retail price approved by the President of the Philippines pursuant to the provisions of this Chapter. (E) Power to Deputize Government Entities The Secretary of the Department of Health shall have the power to call upon and deputize any official, agent, employee, agency, or instrumentality of the national and local government for any assistance that it may deem necessary to carry out the purposes of this Chapter. (F) Other Powers Necessary to Implement Provisions of this Chapter The Secretary of the Department of Health shall exercise such powers and functions as may be necessary to implement and enforce the provisions of this Chapter of this Act, including the power to require the production and submission of records, documents, books of account, bills of lading, input documents, records of purchase and sale, financial statements, and such other documents, information and papers as may be necessary to enable the Secretary of the Department of Health to carry out its functions, duties, and responsibilities. Accordingly, within thirty (30) days from the effectivity of this Act and every December 31st of every year thereafter, every manufacturer, importer, trader, distributor, wholesaler, and retailer of a drug and medicine whether included in or excluded from the list of drugs and medicines that are subject to price regulation shall furnish the Secretary of the Department of Health a list, containing on the minimum the corresponding prices and inventory, of all drugs and medicines it manufactures, imports, trades, distributes, wholesales, or retails, data pertaining to the factors enumerated under Section 19(A)(2), and any and all necessary information that the Secretary of the Department of Health may require. SEC. 20. Procedures for Inquiries, Studies, Hearings, Investigations, and

Proceedings. All inquiries, studies, hearings, investigations and proceedings conducted by the Secretary of the Department of Health shall be governed by the rules adopted by him/her, and in the conduct thereof shall not be bound by the technical rules of evidence. SEC. 21. Effectivity of the Decisions or Orders of the Secretary of the Department of Health. All decisions or orders of the Secretary of the Department of Health pursuant to Section 19 Paragraphs (A) Power to Recommend the Maximum Retail Price of Drugs and Medicines Subject to Price Regulation, (B) Power to Include Other Drugs and Medicines in the List Subject to Price Regulation, (C) Power to Implement Cost-Containment and Other Measures, (D) Power to Impose Administrative Fines and Penalties, (E) Power to Deputize Government Entities, or (F) Other Powers Necessary to Implement Provisions of this Chapter, shall be immediately operative. SEC. 22. Review of the Decisions or Orders of the Secretary of the Department of Health. A party adversely affected by a decision, order or ruling of the Secretary of the Department of Health may, within thirty (30) days from notice of such decision, order or ruling, or in case of a denial of a motion for reconsideration thereof, within fifteen (15) days after notice of such denial, file an appeal with the Court of Appeals, which shall have jurisdiction to review such decision, order or ruling. The filing of a petition for a writ of certiorari or other special remedies in the Supreme Court shall in no case supersede or stay any decision, order or ruling of the Secretary of the Department of Health, unless the Supreme Court shall so direct, and the petitioner may be required by the Supreme Court to give bond in such form and of such amount as may be deemed proper. SEC. 23. List of Drugs and Medicines that are Subject to Price Regulation. The list of drugs and medicines that are subject to price regulation shall include, inter alia: (a) All drugs and medicines indicated for treatment of chronic illnesses and life threatening conditions, such as, but not limited to, endocrine disorders, e.g., diabetes mellitus; gastrointestinal disorders, e.g., peptic ulcer; urologic disorders, e.g., benign prostatic hyperplasia (BPH); cardiovascular diseases, e.g., hypertension; pulmonary diseases, e.g., pulmonary tuberculosis (PTB), asthma; auto-immune diseases, e.g., systemic lupus erythematosus (SLE); skin diseases, e.g., psoriasis; neuro-psychiatric disorders; other infectious diseases, e.g., human immunodeficiency virus-acquired immune deficiency syndrome (HIVAIDS); and other conditions such as organ transplants and neoplasm; (b) Drugs and medicines indicated for prevention of diseases, e.g., vaccines, immunoglobulin, anti-sera; (c) Drugs and medicines indicated for prevention of pregnancy, e.g., oral

contraceptives; (d) Anesthetic agents; (e) Intravenous fluids; (f) Drugs and medicines that are included in the Philippine National Drug Formulary (PNDF) Essential Drug List; and (g) All other drugs and medicines which, from time to time, the Secretary of the Department of Health determines to be in need of price regulation. SEC. 24. Illegal Acts of Price Manipulation. Without prejudice to the provisions of existing laws on goods not covered by this Act, it shall be unlawful for any manufacturer, importer, trader, distributor, wholesaler, retailer, or any person engaged in any method of disposition of drugs and medicines to engage in acts of price manipulation such as hoarding, profiteering, or illegal combination or forming cartel, as defined under Section 5 of Republic Act No. 7581, otherwise known as the Price Act, and all other acts committed in restraint of trade. SEC. 25. Penalty for Illegal Acts of Price Manipulation. Any person or entity who commits any act of illegal price manipulation of any drug and medicine subject to price regulation shall suffer the penalty of imprisonment for a period of not less than five (5) years nor more than fifteen (15) years or shall be imposed a fine of not less than One hundred thousand pesos (Php100,000.00) nor more than Ten million pesos (Php10,000,000.00), at the discretion of the court. The court may also order the suspension or revocation of its license to operate (LTO), professional or business license. Whenever any act of illegal price manipulation of any drug and medicine subject to price regulation is committed by a juridical person, its officials or employees, or in case of a foreign corporation or association, its agent or representative in the Philippines who are responsible for the violation, shall be held liable therefor. SEC. 26. Display of Maximum Retail Price Fixed and Approved by Order of the President of the Philippines for Drugs and Medicines Subject to Price Regulation. (a) Within a reasonable period as may be determined by the Secretary of the Department of Health, and: Provided, That it conforms to existing drug product labeling requirements, every manufacturer, importer, distributor, wholesaler, trader, or retailer of a drug and medicine intended for sale shall display the retail price which shall not exceed the maximum retail price approved by order of the President of the Philippines. The maximum retail price shall be printed on the label of the immediate container of the drug and medicine and the minimum pack thereof offered for retail sale with the words RETAIL PRICE NOT TO EXCEED preceding it, and UNDER DRUG PRICE REGULATION on a red strip.

(b) Within a period as may be determined by the Secretary of the Department of Health from time to time, every manufacturer, importer, or trader shall issue a price list to wholesalers, distributors, retailers and to the Secretary of the Department of Health, indicating the retail price, the maximum retail price, and such other information as may be required by the Secretary of the Department of Health. SEC. 27. Reports from Local Government Units (LGUs) and the Department of Trade and Industry (DTI). All local government units and the Department of Trade and Industry shall help ensure the implementation of pricing policies provided under this Chapter by submitting quarterly price monitoring reports to the Secretary of the Department of Health of drugs and medicines identified by the latter, and any and all necessary information that the Secretary of the Department of Health may require. SEC. 28. Role of the Department of Health (DOH) and the Department of Trade and Industry (DTI). The Department of Health and the Department of Trade and Industry shall conduct independent periodic surveys and studies of the selling prices of all drugs and medicines referred to in Section 23 of this Act all over the country as well as their share or effect on the family income of the different economic groups in the country for purposes of serving as data base for government efforts to promote access to more affordable medicines, as well as evaluating the effectivity of the measures undertaken to promote access to more affordable medicines. The DTI shall always officially provide the Secretary of the Department of Health copies of these independent reports. SEC. 30. Reportorial and Public Notice Requirements. (a) The Secretary of the Department of Health shall submit a bi-annual Monitoring Report of its performance on the implementation of this Act to the Office of the President. This report submitted to the Office of the President shall be published in a newspaper of general circulation within thirty (30) days upon submission. (b) It shall also submit annually a report of its performance on the implementation of this Act to both Houses of Congress, within fifteen (15) days from the opening of the regular session. It shall also regularly report and comply immediately to any order of the Congressional Oversight Committee. (c) The order of the President of the Philippines imposing maximum retail prices on drugs and medicines, including the conditions implementing it, shall be published within fifteen (15) days from issuance in at least two (2) newspapers of general circulation. All wholesalers, manufacturers, distributors, importers, or traders shall have a copy of the order of the President of the Philippines and provide the same to their clients and customers for every transaction. (d) All drug outlets are required to post in a conspicuous area within its premises

a clear copy of the order of the President of the Philippines which shall be easily accessible to the consuming public and updated regularly as the situation may warrant.

CHAPTER 4 STRENGTHENING OF THE BUREAU OF FOOD AND DRUGS SEC. 31. Strengthening of the Bureau of Food and Drugs (BFAD). (a) For a more effective and expeditious implementation of this Act, the Director or head of the Bureau of Food and Drugs shall be authorized to retain, without need of a separate approval from any government agency, and subject only to existing accounting and auditing rules and regulations, all the fees, fines, royalties and other charges, collected by the Bureau of Food and Drugs under this Act and other laws that it is mandated to administer based on the immediately prior year of operations, for use in its operations, like upgrading of its facilities, equipment outlay, human resource development and expansion, and the acquisition of the appropriate office space, among others, to improve the delivery of its services to the public. This amount, which shall be in addition to the annual budget of the Bureau of Food and Drugs, shall be deposited and maintained in a separate account or fund, which may be used or disbursed directly by the Director or head. (b) After five (5) years from the coming into force of this Act, the Director or head of the Bureau of Food and Drugs shall, subject to the approval of the Secretary of the Department of Health, determine if the fees and charges, mentioned in Subsection (a) hereof, are sufficient to meet its budgetary requirements. If so, it shall retain all the fees and charges it shall collect under the same conditions indicated in said Subsection (a) but shall forthwith, cease to receive any funds from the annual budget of the National Government; if not, the provisions of Subsection (a) shall continue to apply until such time when the Director or head of the Bureau of Food and Drugs, subject to the approval of the Secretary of the Department of Health, certifies that the abovestated fees and charges the Bureau of Food and Drugs shall collect are enough to fund its operations. (c) The Bureau of Food and Drugs shall submit a yearly performance report to the Quality Affordable Medicines Oversight Committee, as provided in Section 45 of this Act. The report shall itemize the use of such retained funds in the past year up to the present and the budgeted use of the same in the succeeding periods. SEC. 32. Quality Assurance of Drugs. The Bureau of Food and Drugs shall take the necessary steps to ensure that all drugs authorized for marketing in the country shall conform to international standards for the content, purity and quality of pharmaceutical products as established in the International Pharmacopoeia: Provided, That imported products in finished dosage forms, should be certified

under the World Health Organization (WHO) certification scheme on the quality of pharmaceutical products moving in international commerce: Provided, further, That the registration for multisource pharmaceutical products should conform to the WHO guidelines on registration requirements to establish interchangeability.

CHAPTER 5 NON-DISCRIMINATORY CLAUSE SEC. 33. Non-Discriminatory Clause. It shall be unlawful for any retail drug outlet to refuse to carry either by sale or by consignment, or offer for sale drugs and medicines brought into the country, as allowed under Section 7 of this Act which amends Section 72.1 of the Intellectual Property Code of the Philippines or Republic Act No. 8293, by the government or authorized third party which have been previously approved for distribution or sale by the Bureau of Food and Drugs. For this purpose, the said products shall be displayed with equal prominence as all other products sold in the establishment. SEC. 34. Refusal to Sell Drugs and Medicines. No manufacturer, importer, trader, distributor, wholesaler shall withhold from sale or refuse to sell to a wholesaler or retailer any drug or medicine without good and sufficient reasons. SEC. 35. Penalties. Any person or entity who shall refuse to carry or sell drugs and medicines pursuant to the provisions of this Chapter shall be punished with a fine of not less than One hundred thousand pesos (Php100,000.00) but not more than Five hundred thousand pesos (Php500,000.00), at the discretion of the court. For the succeeding offense, the penalties shall not be less than Five hundred thousand pesos (Php500,000.00) but not more than One million pesos (Php1,000,000.00), at the discretion of the court, and suspension or revocation of its license to operate (LTO), business or professional license, as the case may be. SEC. 36. Implementing Rules and Regulations on the Non-Discriminatory Clause. Within one hundred twenty (120) days from the effectivity of this Act, the Department of Health, in consultation with the Department of Trade and Industry, shall promulgate the rules and regulations necessary to effectively implement the provisions of this Chapter.

CHAPTER 6 AMENDMENTS TO REPUBLIC ACT NO. 6675, OTHERWISE KNOWN AS THE GENERICS ACT OF 1988 SEC. 37. Section 5 of Republic Act No. 6675, otherwise known as the Generics Act of 1988, is hereby amended to read as follows: SEC. 5. Posting and Publication. The Department of Health shall publish annually in acceptable means of public dissemination in at least two (2)

newspapers of general circulation in the Philippines the generic names, and the corresponding brand names under which they are marketed, of all drugs and medicines available in the Philippines. SEC. 38. Section 6 of Republic Act No. 6675, otherwise known as the Generics Act of 1988, is hereby amended to read as follows: SEC. 6. Who Shall Use Generic Terminology. (a) All government health agencies and their personnel as well as other government agencies shall use generic terminology or generic names in all transactions related to purchasing, prescribing, dispensing and administering of drugs and medicines. (b) All medical, dental and veterinary practitioners, including private practitioners, shall write prescriptions using the generic name. The brand name may be included if so desired. (c) Any organization or company involved in the manufacture, importation, repacking, marketing and/or distribution of drugs and medicines shall indicate prominently the generic name of the product. In the case of brand name products, the generic name shall appear prominently and immediately above the brand name in all product labels as well as in advertising and other promotional materials. (d) Drug outlets, including drugstores, hospital and non-hospital pharmacies and nontraditional outlets such as supermarkets and stores, shall inform any buyer about any and all other drug products having the same generic name, together with their corresponding prices so that the buyer may adequately exercise his option. Within one (1) year after the approval of this Act, the drug outlets referred to herein shall post in conspicuous places in their establishments a list of drug products with the same generic name and their corresponding prices. (e) There shall appear prominently on the label of a generic drug the following statement: this product has the same therapeutic efficacy as any other generic product of the same name. Signed: BFAD. SEC. 39. Section 8 of Republic Act No. 6675, otherwise known as the Generics Act of 1988, is hereby amended to read as follows: SEC. 8. Required Production. Subject to the rules and regulations promulgated by the Secretary of Health, every drug manufacturing company operating in the Philippines shall be required to produce, distribute and make widely available to the general public an unbranded generic counterpart of their branded product. SEC. 40. Section 11 of Republic Act No. 6675, otherwise known as the Generics Act of 1988, is hereby amended to read as follows:

SEC. 11. Education Drive. The Department of Health jointly with the Philippine Information Agency and the Department of the Interior and Local Government shall conduct a continuous information campaign for the public and a continuing education and training for the medical and allied medical professions on drugs with generic names as an alternative of equal efficacy to the more expensive brand name drugs. Such educational campaign shall include information on the illnesses or symptoms which each generically named drug is supposed to cure or alleviate, as well as in contraindications. The Department of Health with the assistance of the Department of the Interior and Local Government and the Philippine Information Agency shall monitor the progress of the education drive, and shall submit regular reports to Congress. SEC. 41. Section 12 of Republic Act No. 6675, otherwise known as the Generics Act of 1988, is hereby amended to read as follows: SEC. 12. Penalty. (A) Any person who shall violate Section 6(a) or 6(b) of this Act shall suffer the penalty graduated hereunder, viz: (a) for the first conviction, he shall suffer the penalty of reprimand which shall be officially recorded in the appropriate books of the Professional Regulation Commission. (b) for the second conviction, the penalty of fine in the amount of not less than Ten thousand pesos (Php10,000.00) but not exceeding Twenty-five thousand pesos (Php25,000.00), at the discretion of the court. (c) for the third conviction, the penalty of fine in the amount of not les s than Twenty-five thousand pesos (Php25,000.00) but not exceeding Fifty thousand pesos (Php50,000.00) and suspension of his license to practice his profession for sixty (60) days at the discretion of the court. (d) for the fourth and subsequent convictions, the penalty of fine of not less than One hundred thousand pesos (Php100,000.00) and suspension of his license to practice his profession for one (1) year or longer at the discretion of the court. (B) Any juridical person who violates Sections 6(c), 6(d), 7 or 8 shall suffer the penalty of a fine of not less than One hundred thousand pesos (Php100,000.00) and suspension or revocation of license to operate such drug establishment or drug outlet at the discretion of the court: Provided, That its officers directly responsible for the violation shall suffer the penalty of fine of at least Forty thousand pesos (Php40,000.00) and suspension or revocation of license to practice profession, if applicable, and by imprisonment of not less than six (6) months nor more than one (1) year or both fine and imprisonment at the discretion of the court: and, a list of drug products with the same generic name and their corresponding prices. Provided, further, That if the guilty party is an alien, he shall be ipso facto deported after service of sentence without need of further proceedings.

(C) The Secretary of Health shall have the authority to impose administrative sanctions such as suspension or cancellation of license to operate or recommend suspension of license to practice profession to the Professional Regulation Commission as the case may be for the violation of this Act. The administrative sanctions that shall be imposed by the Secretary of the Department of Health shall be in a graduated manner in accordance with Section 12.A. An administrative case may be instituted independently from the criminal case: Provided, That, the dismissal of the criminal case or the withdrawal of the same shall in no instance be a ground for the dismissal of the administrative case. SEC. 42. Implementing Rules and Regulations to the Amendments to the Generics Act of 1988. The Department of Health, in consultation with the appropriate government agencies, shall, within one hundred twenty (120) days from the effectivity of this Act, promulgate the rules and regulations necessary to effectively implement the provisions of this Act that relate to Republic Act No. 6675, or the Generics Act of 1988.

CHAPTER 7 AMENDMENTS TO REPUBLIC ACT NO. 5921, AS AMENDED, OTHERWISE KNOWN AS THE PHARMACY LAW SEC. 43. Section 25 of Republic Act No. 5921, as amended, otherwise known as the Pharmacy Law, is hereby amended to read as follows: SEC. 25. Sale of medicine, pharmaceuticals, drugs and devices. No medicine, pharmaceutical, or drug, except for those which are non-prescription or over-thecounter, of whatever nature and kind or device shall be compounded, dispensed, sold or resold, or otherwise be made available to the consuming public except through a prescription drugstore or hospital pharmacy, duly established in accordance with the provisions of this Act. Non-prescription or over-the-counter drugs may be sold in their original packages, bottles, containers or in small quantities, not in their original containers to the consuming public through supermarkets, convenience stores and other retail establishments. Pharmaceutical, drug or biological manufacturing establishments, importers and wholesalers of drugs, medicines, or biologic products, shall not sell their products for re-sale except only to retail drug outlets, hospital pharmacies or to other drug wholesalers under the supervision of a registered pharmacist, and supermarkets, convenience stores, other retail establishments for over-the-counter drugs, duly licensed by the Bureau of Food and Drugs. SEC. 44. Implementing Rules and Regulations to the Amendments to the Pharmacy Law. The Department of Health, in consultation with the appropriate government agencies, within one hundred twenty (120) days from the effectivity

of this Act, shall promulgate the rules and regulations necessary to effectively implement the provisions of this Chapter.

CHAPTER 8 MISCELLANEOUS PROVISIONS SEC. 45. Congressional Oversight Committee. For the effective implementation of this Act, there shall be created a Congressional Oversight Committee, hereinafter referred to as the Quality Affordable Medicines Oversight Committee, to be composed of five (5) members from the Senate, which shall include the Chairpersons of the Senate Committees on Trade and Commerce and Health and Demography, and, five (5) members from the House of Representatives, which shall include the Chairpersons of the House of Representatives Committees on Trade and Industry and Health. The Quality Affordable Medicines Oversight Committee shall be jointly chaired by the Chairpersons of the Senate Committee on Trade and Commerce and the House of Representatives Committee on Trade and Industry. The Vice-Chair of the oversight committee shall be jointly held by the Chairpersons of the Senate Committee on Health and Demography and the House of Representatives Committee on Health. SEC. 46. Appropriations. For the initial implementation of this Act, the amount of Twenty-five million pesos (Php25,000,000.00), in addition to the budget of the Department of Health, shall be provided for the operations of the Office of the Secretary of the Department of Health. The Quality Affordable Medicines Oversight Committee shall be provided an initial budget of Five million pesos (Php5,000,000.00) to perform its functions as mandated under this Act. Thereafter, such sum as may be necessary for its continued implementation shall be included in the annual General Appropriations Act. SEC. 47. Separability Clause. Any portion or provision of this Act that may be declared unconstitutional or invalid shall not have the effect of nullifying other portions and provisions hereof as long as such remaining portion or provision can still subsist and be given effect in their entirety. SEC. 48. Repealing Clause. All laws, decrees, executive orders, proclamations and administrative regulations or parts thereof inconsistent herewith are hereby repealed or modified accordingly. SEC. 49. Effectivity Clause. This Act shall take effect fifteen (15) days after its publication in at least two (2) national papers of general circulation.

RULES AND REGULATIONS ON INVENTIONS Whereas, the State recognizes that an effective industrial property system is vital to the development of domestic creativity, facilitates transfer of technology,

attracts foreign investments and ensures market access for our products; Whereas, it is the policy of the State to streamline administrative procedures in granting patents and enhance the enforcement of intellectual property rights in the Philippines; Now, therefore, pursuant to the provisions of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, the following rules and regulations on inventions are hereby promulgated: PART 1 DEFINITIONS Rule 100. Definitions. Unless otherwise specified, the following terms shall have the meaning provided in this Rule: (a) "Bureau" means the Bureau of Patents of the Office; (b) "Director" means the Director of the Bureau of Patents; (c) "Director General" means the Head of the Intellectual Property Office; (d) "Examiner" means any officer or employee of the Bureau of Patents authorized to examine applications. The title or official designation of such officer or employee may change as the structure of the Office may be set; (e) "IP Code" means Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines; (f) "IPO Gazette" means the Intellectual Property Office's own publication where all matters required to be published under the IP Code shall be published; (g) "Office" means the Intellectual Property Office; and (h) "Regulations" means this set of rules and regulations and such Rules of Practice as may be formulated by the Director of Patents and approved by the Director General. PART 2 PATENTABILITY Rule 200. Patentable Inventions. - Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. (Sec. 21, IP CODE) Rule 201. Statutory Classes of Invention. - An invention may be, or may relate to; a) a useful machine; b) a product; c) or process or an improvement of any of the foregoing; d) microorganism; and e) non-biological and microbiological processes. (Sec. 21, IP CODE) Rule 202. Non-Patentable Inventions. - The following shall be excluded from patent protections: (a) Discoveries, scientific theories and mathematical method; (b) Schemes,

rules and methods of performing mental acts, playing games or doing business, and programs for computers; (c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and compositions for use in any of these methods; (d) Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to microorganisms and non-biological and microbiological processes; (e) Aesthetic creations; and (f) Anything which is contrary to public order or morality. (Sec. 22, IP CODE) Rule 203. Novelty. - An invention shall not be considered new if it forms part of a prior art. (Sec. 23, IP CODE)

Rule 204. Prior Art. - Prior art shall consist of: (a) Everything made available to the public by means of a written or oral disclosure, by use, or in any other way, before the filing date or the priority date of the application claiming the invention. Prior use which is not present in the Philippines, even if widespread in a foreign country, cannot form part of the prior art if such prior use is not disclosed in printed documents or in any tangible form. (b) The whole contents of an application for a patent, utility model, or industrial design registration, published under Sec. 44 of IP CODE, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of IP CODE, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same, (Sec. 24, IP CODE): Where two or more applications are independently filed with respect to the same invention, and the later applications are filed before the first application or earlier application is published, the whole contents of the first or earliest filed application published in accordance with Sec. 44, IP CODE on or after the filing date or priority date of the later filed application shall be novelty destroying with respect to the later filed application. Rule 205. Non-Prejudicial Disclosure. - The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by: (a) The Inventor; (b) A foreign patent office, the Bureau or the Office, and the information was contained (a) in another application filed by the inventor and should not have been disclosed by the office, or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the

information directly or indirectly from the inventor; or (c) A third party which obtained the information directly or indirectly from the inventor. For the purposes of subsection (a) "inventor" also means any person who, at the filing date of application, had the right to the patent. (Sec. 25, IP CODE) Rule 206. Inventive Step. - (a) An invention involves an inventive step if, having regard to prior art, it is not obvious to a "person skilled in the art" at the time of the filing date or priority date of the application claiming the invention. (Sec. 26, IP CODE) (b) Only prior art made available to the public before the filing date or priority date shall be considered in assessing inventive step. Rule 207. Person Skilled in the Art. - The person skilled in the art is presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant date. He is presumed to have knowledge of all references that are sufficiently related to one another and to the pertinent art and to have knowledge of all arts reasonably pertinent to the particular problems with which the inventor was involved. He is presumed also to have had at his disposal the normal means and capacity for routine work and experimentation. Rule 208. Industrial Applicability. - An invention which can be produced and used in any industry shall be industrially applicable. (Sec. 27, IP CODE) PART 3 RIGHT TO A PATENT Rule 300. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly (Sec. 28, IP CODE). Rule 301. Who may be Named in an Application as an Applicant. - The application may be filed by the actual inventor(s) or in the name of his heirs, legal representative or assigns.

Rule 302. Inventions Created Pursuant to a Commission. - The person who commissions the work shall own the patent, unless otherwise provided in the contract. (Sec. 30.1, IP CODE) Rule 303. Inventions made in the course of employment. In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) The employee, if the inventive activity is not a part of his regular duties even if

the employee uses the time, facilities and materials of the employer (b) The employer, if the invention is the result of the performance of his regularlyassigned duties, unless there is an agreement, express or implied, to the contrary. (Sec. 30.2, IP CODE) Rule 304. First to File Rule. - If two (2) or more persons have made the same invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date (Sec. 29, IP CODE). Where two or more applications for the same invention made separately and independently of each other have the same filing date, or priority-date the patent will be issued jointly to the applicants of all such applications. Rule 305. Right of Priority. - An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing of the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines (Sec. 31, IP CODE). This six (6) month-period may be extended by the Director for a maximum of six (6) months upon showing of good cause or in compliance with treaties to which the Philippines is or may become a member. Rule 306.1. Multiple Priorities. - An application can claim more than one priority even from different countries. If more than one patent priority is claimed, time limits computed from the priority date will be based upon the earliest priority date. Rule 306.2. If one or more priorities are claimed, the right of priority shall cover only those elements of the application which are included in the application or applications whose priority is claimed. Rule 306.3. If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the previous application as a whole specifically disclose such elements. Rule 306.4. Where an application could have claimed the priority of an earlier application, but when filed, did not contain such priority, the applicant shall be given two (2) months from the filing date to submit priority claim. Submission of priority claim after the filing of the application shall be accompanied by a declaration of the applicant stating that the delay in submitting

the priority claim was unintentional. Rule 307. Certified Copy of the Foreign Applications. - The certified copy of foreign applications mentioned in Rule 302 shall be the copy of the priority application(s) as duly certified to be a true or faithful reproduction thereof by the Industrial Property Office which received it or any other office which has official custody of the foreign application.

PART 4 THE PATENT APPLICATION Rule 400. The Patent Application. - An application for a patent shall be in Filipino or English and shall be filed in writing either directly to the Bureau or by post and must be addressed to the Director. The application shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawing(s) necessary for the understanding of the invention; (d) One or more claims; and (e) An abstract. Rule 401. Payment of Fees. - An application shall be subject to the payment of the filing fee, the search fee and publication fee (1st publication) within one (1) month after the filing date of the application. The application shall be deemed forfeited for non-payment of these fees. Rule 402. Marking of documents; acknowledgment. The Bureau shall mark the documents making up the application with the date of the receipt. After receipt of the full payment of the required fees, the Bureau may issue an acknowledgment stating the application number, name of applicant and title of the invention. Rule 403. Form of Request; Office Application Form. - The request shall be made on a form drawn up by the Office. For the convenience of applicants, the Office shall draw up and make available a standard application form which may be reproduced at will by applicants and other persons at their own cost. Rule 404. The Request. - The request shall contain the following: (a) Petition for the grant of a patent; (b) Applicant's name and address; (c) Title of the invention; (d) Inventor's name; (e) If with claim for convention priority it shall contain the file number, country of origin and the date of filing in the said country where the application was first filed; (f) Name and address of the resident agent/representative (if any); and (g) Signature of the applicant or resident agent/representative. Rule 405. Disclosure and Description of the Invention. - The application shall

disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Rule 406. Test for enabling Disclosure. - The test for enabling disclosure is whether the persons to whom it is addressed could, by following the directions therein, put the invention into practice. Rule 407. Content of the Description. (1) The description shall: (a) Specify the technical field to which the invention relates; (b) Indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the search report and for the examination, and, preferably, cite the documents reflecting such art; (c) Disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art; (d) Briefly describe the figures in the drawings, if any; (e) When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to its different parts, as shown in the views, by use of reference letters or numerals (preferably the latter); (f) Describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any; and (g) Indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry. (2) The description shall be presented in the manner and order specified in paragraph 1, unless because of the nature of the invention, a different manner or a different order would afford a better understanding and a more economic presentation.

Rule 408. Requirements of Applications Relating to Biological Materials and Microorganisms. - Where the application concerns a microbiological process or the product thereof and involves the use of a microorganism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the invention shall only be regarded as being disclosed if: (a) A culture of the microorganism has been deposited in a depositary institution before filing the application; (b) The depositary institution and the file number of the culture deposit are stated in the application. If this information is not yet available at the time of filing the application, the said information shall be submitted within two (2) months from request of the Examiner. Publication of the application under Section 44, IP CODE shall be held pending submission of said information; and (c) The application as filed gives relevant information as is

available to the applicant on the characteristics of the microorganism. Rule 409. Requirements of Application Relating to Biological Materials and Microorganisms before Allowance. - An application which concerns a microbiological process or the product thereof and involves the use of any novel strain of microorganism shall be allowed only when the following conditions are met: (a) A deposit was made in a recognized international depositary authority; (b) Proof of such deposit together with the proper identification or deposit number assigned by the depositary is submitted; and (c) That the depositary should be under the contractual obligation to place the culture in permanent collection, and to provide access to persons who shall have interest therein in regard to matters relating to the patent application as published. Rule 410. Title of the Invention. - The title of the invention should be as short and specific as possible, and should appear as a heading on the first page of the specification. All fancy names are not permissible in the title. Rule 411. Abstract. - The abstract written in a separate sheet with a heading "Abstract" shall consist of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words. It must be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall merely serve for technical information. Each main technical feature mentioned in the abstract and illustrated by a drawing in the application shall be followed by a reference sign placed between parentheses. Rule 412. Prohibited Matter - (a) The application shall not contain: (i) a statement or other matter contrary to "public order" or morality; (ii) statement disparaging the products or processes of any particular person or other than the applicant, or the merits or validity of applications or patents of any such person. Mere comparison with the prior art shall not be considered disparaging per se; (iii) any statement or other matter obviously irrelevant or unnecessary under the circumstances. b) If an application contains prohibited matter within the meaning of this Rule, the Bureau shall omit it when publishing the application, indicating the place and number of words or drawing omitted. Rule 413. (a) General Requisites for the Drawing. - The drawing must be signed by the applicant or the name of the applicant may be signed on the drawing by his attorney or agent. The drawing must show every feature of the invention covered by the claims, and the figures should be consecutively numbered. (b) Drawing for an Improvement. - When the invention consists of an

improvement of an old machine, the drawing must exhibit, in one or more views, the invention itself, isolated from the old structure, and also, in another view, so much only the old structure as will suffice to show the relation of the invention therewith.

Rule 414.1. Uniform Standard of Excellence Suited to Photolithographic Process, Required of Drawings. - The printing of the drawings in the IPO Gazette is done by the photolithographic process, and therefore the character of each original drawing must be brought as nearly as possible to a uniform standard of excellence suited to the requirements of the process, to give the best results, in the interests of the inventors, of the Office, and of the public. The following rules will therefore be strictly enforced, and any departure from them will be certain to cause delay in the examination of an application. Rule 414.2. Paper and Ink. - Drawings must be made upon paper that is flexible, strong, white, smooth, non-shiny and durable. Two ply or three ply Bristol board is preferred. The surface of the paper should be calendered and of a quality which will permit erasure and correction with India ink. India ink, or its equivalent in quality, is preferred for pen drawings to secure perfectly black solid lines. The use of white pigments to cover lines is not permissible. Rule 414.3. Size of Drawing Sheet; Imaginary Line. - The size of a sheet on which a drawing is made must be exactly 29.7 cm x 21 cm or the size of an A4 paper. The minimum imaginary margins shall be as follows: top 2.5 cm; left side 2.5 cm; right side 1.5 cm; bottom 1 cm. Within this imaginary margin all work and signatures must be included. One of the shorter sides of the sheet is regarded as its top, and, measuring downwardly from the imaginary line, a space of not less than 3 cm is to be left blank for the heading of title, name, number, and date. Rule 414.4. Character and Color Lines. - All drawings must be made with the pen or by a photolithographic process which will give them satisfactory reproduction characteristics. Every line and letter (signatures included) must be absolutely black. This direction applies to all lines, however fine, to shading and to lines representing cut surfaces in sectional views. All lines must be clean, sharp, and solid, and they must not be too fine or crowded. Surface shading, when used, should be open. Sectional shading should be made by oblique parallel lines, which may be about 0.3 cm apart. Solid black should not be used for sectional or surface shading. Freehand work should be avoided whenever possible. Rule 414.5. The Fewest Possible Number of Lines and Little or No Shading to be Used. - Drawings should be made with the fewest lines possible consistent with clearness. By the observance of this rule the effectiveness of the work after reduction will be much increased. Shading (except on sectional views) should be used sparingly, and may even be dispensed with if the drawing be otherwise well executed. The plane upon which a sectional view is taken should be indicated on

the general view by a broken or dotted line, which should be designated by numerals corresponding to the number of the sectional view. Heavy lines on the shade sides of objects should be used, except where they tend to thicken the work and obscure letter of reference. The light is always supposed to come from the upper left hand corner of an angle of 45 degrees. Rule 414.6. Scale to which Drawing is Made to be Large Enough. - The scale to which a drawing is made ought to be large enough to show the mechanism without crowding, and two or more sheets should be used if one does not give sufficient room to accomplish this end; but the number of sheets must never be more than what is absolutely necessary. Rule 414.7. Letters and Figures of Reference. - The different views should be consecutively numbered. Letters and figures of reference must be carefully formed. They should, if possible, measure at least 32 millimeters in height, so that they may bear reduction to 10.6 millimeters; and they may be much larger when there is sufficient room. They must be so placed in the close and complex parts of drawings as not to interfere with a thorough comprehension of the same, and therefore should rarely cross or mingle with the lines. When necessarily grouped around a certain part, they should be placed at a little distance where there is available space, and connected by lines with the parts to which they refer. They should not be placed upon shaded surfaces, but when it is difficult to avoid this, blank space must be left in the shading where the letter occurs, so that it shall appear perfectly distinct and separate from the work. If the same part of an invention appears in more than one view of the drawing, it must always be represented by the same character, and the same character must never be used to designate different parts. Rule 414.8. Signature, Where to be Placed. - The signature of the applicant should be placed at the lower right-hand corner within the imaginary margins of each sheet, but in no instance should they trespass upon the drawings. Rule 414.9. Title of the Drawing. - The title should be written with pencil on the back of the sheet. The permanent name and title constituting the heading will be applied subsequently by the Bureau of Patents in uniform style.

Rule 414.10. Position on Drawing Sheets of Large Views. - All views on the same sheet must stand in the same direction and must, if possible, stand so that they can be read with the sheet held in an upright position. If views longer than the width of the sheet are necessary for the proper illustration of the invention, the sheet may be turned on its side. The space for heading must then be reserved at the right and the signatures placed at the left, occupying the same space and position as in the upright views and being horizontal when the sheet is held in an upright position. One figure must not be placed upon another or within the outline of another.

Rule 414.11. Flow Sheets and Diagrams. - Flow Sheets and diagrams are considered drawings. Rule 414.12. Requisites for the Figure of the IPO Gazette. - As a rule, only one view of each invention can be shown in the IPO Gazette illustrations. The selection of that portion of a drawing best calculated to explain the nature of the invention or its specific improvement would be facilitated and the final result improved by judicious execution of a figure with express reference to the IPO Gazette, but which must at the same time serve as one of the figures referred to in the specification. For this purpose the figure may be a plan, elevation, section, or perspective view, according to the judgment of the draftsman. All its parts should be especially open and distinct, with very little or no shading, and it must illustrate only the invention claimed, to the exclusion of all other details. When well executed, it will be used without curtailment or change, but any excessive fineness or crowding or unnecessary elaborateness of detail will necessitate its exclusion from the IPO Gazette. Rule 414.13. Reference Signs. - Reference signs not mentioned in the description and claims shall not appear in the drawings and vice versa. The same features, when denoted by reference signs, shall throughout the application, be denoted by the same signs. Rule 414.14. Photographs. - (a)Photographs are not normally considered to be proper drawings. Photographs are acceptable for obtaining a filing date and generally considered to be informal drawings. Photographs are only acceptable where they come within the special categories as set forth in the paragraph below. Photolitographs of photographs are never acceptable. (b) The Office is willing to accept black and white photographs or photomicrographs (not photolitographs or other reproduction of photographs made by using screens) printed on sensitized paper in lieu of India ink drawings, to illustrate the inventions which are incapable of being accurately or adequately depicted by India ink drawings restricted to the following categories: crystalline structures, metallurgical microstructures, textile fabrics, grain structures and ornamental effects. The photographs or photomicrographs must show the invention more clearly than they can be done by the India ink drawings and otherwise comply with the rules concerning such drawings. (c) Such photographs to be acceptable must be made on photographic paper having the following characteristics which are generally recognized in the photographic trade: paper with a surface described as smooth, tint, white, or be photographs mounted on a proper sized Bristol board. Rule 414.15. Matters not Permitted to Appear on the Drawings. - An agent's or attorney's stamp, or advertisement or written address shall not be permitted on the drawings.

Rule 414.16. Drawings not Conforming to Foregoing Rules to be Accepted Only Conditionally. - A drawing not executed in conformity to the foregoing rules may be admitted for purposes of examination if it sufficiently illustrates the invention, but in such case, the drawing must be corrected or a new one furnished before the application will be allowed. Applicants are advised to employ competent draftsman to make their drawings.

Rule 415. Claim. - (a) The specification must conclude with a claim particularly pointing out and distinctly claiming the part, improvement, or combination which the applicant regards as his invention. (b) The application may contain one (1) or more independent claims in the same category, (product, process, apparatus or use) where it is not appropriate, having regard to the subject matter of the application, to cover this subject matter by a single claim which shall define the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description. (c) One or more claims may be presented in dependent form, referring back and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim ("multiple dependent claim") shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purpose a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. Furthermore, any claim depending on a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claims. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have to pay the prescribed additional fees. Claims in dependent form shall be construed to include all the limitations of the claims incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered. (d) The claim or claims must conform to the invention as set forth in the description made in the specification, and the terms and phrases used in the claims must find clear support or antecedent basis in the said description, so that the meaning of the terms in the claims may be ascertainable by reference to the description. Claims shall not, except where absolutely necessary, rely in respect of the technical features of the invention, on references to the description or drawings. In particular, they shall not rely on such references as: "as described in part xxx of the description" or, "as illustrated in figure xxx of the drawings". Rule 416. Form and content of the claims. - The claims shall define the matter for which protection is sought in terms of the technical features of the invention.

Wherever appropriate the claims shall contain: (a) a statement indicating the designation of the subject matter of the invention and those technical features which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art; (b) a characterizing portion preceded by the expression "characterized in that" or "characterized by" - stating the technical features which, in combination with the features stated in sub-paragraph (a), it is desired to protect; and (c) If the application contains drawings, the technical features mentioned in the claims shall preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. These reference signs shall not be construed as limiting the claim. Rule 417. Claims incurring fee - (a) Any application comprising more than five (5) claims, independent and/or multiple/alternative dependent claims at the time of filing, or added claims after the filing date in respect of each claim over and above five (5) incurs payment of a claims fee. The claims fee shall be payable within one (1) month after the filing of the application. If the claim fees have not been paid in due time, they may still be validly paid within a grace period of one (1) month from notice pointing out the failure to observe the time limit. If the claims fee is not paid within the time limit and the grace period referred to in this Rule, the claim or claims concerned shall be deemed deleted.

Rule 418. Presentation of the Application Documents. - (a) All papers for an application for an invention patent which are to become part of the permanent records of the Office must be the original copy only, and legibly written, typewritten, or printed in permanent ink only on one side of the sheet. If necessary, only graphic symbols and characters and chemical or mathematical formulas may be written by hand or drawn. The typing shall be 1 spaced. All text matter shall be in characters, the capital letters of which are not less than 0.21 cm. high, and shall be in dark, indelible color. (b) The documents making up the application shall be on a 29.7 cm x 21 cm paper or the size of an A4 paper which shall be pliable, strong, white, smooth, matt and durable. (c) The specification and claims of an invention patent must be written with the lines numbered in sets of five and the number appearing on the left side margin. (d) The description, the claims and the abstract may contain chemical or mathematical formulas. The description and the abstract may contain tables. The claims may contain tables only if their subject-matter makes the use of tables desirable. Tables and chemical or mathematical formula may be placed sideways on the sheet if they cannot be presented satisfactorily in an upright position

thereon; sheets on which tables or chemicals or mathematical formulas are presented sideways shall be so presented that the tops of the tables or formula are at the left side of the sheet. (e) Physical values shall be expressed in the units recognized in international practice, wherever appropriate in terms of the metric system using system international (SI) units. Any data not meeting this requirement must also be expressed in the units recognized in international practice. For mathematical formula, the symbols in general use shall be employed. For chemical formula the symbols, atomic weights and molecular formula in general use shall be employed. In general, use should be made of the technical terms, signs and symbols generally accepted in the field in question. (f) The terminology and the signs shall be consistent throughout the application. (g) Each of the documents making up the application (request for grant, specification, claims, drawings and abstract) shall commence on a separate sheet. The separate sheets shall be filed in such a way that they can easily be turned over, and joined together again. (h) Margins The margins of the documents shall be within the following ranges: Top : 2 cm. - 4 cm. Leftside : 2.5 cm. - 4 cm. Rightside : 2 cm. - 3 cm. Bottom : 2 cm. - 3 cm. The margins of the documents making up the application must be completely blank. All the sheets making up the documents shall have their pages numbered consecutively using Arabic numeral. The page numbers shall appear in the central portions of either the top or bottom margins. (i) The documents making up the application except the request for grant shall be filed in four (4) copies. Rule 419. Models, when Required. - A model may be required when the invention sought to be patented cannot be sufficiently described in the application. The Examiner shall notify the applicant of such requirement, which will constitute an official action in the case. When a model has been received in compliance with the official requirement, the date of its filing shall be entered on the file wrapper. Models not required nor admitted will be returned to the applicants. When a model is required, the examination may be suspended until it shall have been filed. Rule 419.1. Requisites for the Model. - The model, when required, must clearly exhibit every feature of the machine which form the subject of a claim of invention, but should not include other matter than that covered by the actual

invention or improvement, unless it be necessary to the exhibition of the invention in a working model. Rule 419.2. Material Required for the Model; Working Models. - The model must be neatly and substantially made of durable material, but when the material forms an essential feature of the invention, the model should be constructed of that material. A working model may be required if necessary to enable the office to fully and readily understand the precise operation of the machine.

Rule 419.3. Models, when Returned to Applicant. - In all applications which have been rejected or become abandoned, the model, unless it be deemed necessary that it be preserved in the Office, may be returned to the applicant upon demand and at his expense; and the model in any pending case may be returned to the applicant upon the filing of a formal abandonment of the application signed by the applicant in person and any assignee. Models belonging to patented cases shall not be taken from the Office without the authorization by the Director. Rule 419.4. Models filed as exhibits in contested cases. - Models filed as exhibits in contested cases may be returned to the parties at their expense. If not claimed within a reasonable time, they may be disposed of at the discretion of the Director. Rule 420. Employment of Attorney-at-Law or Agent Recommended. - An applicant or an assignee of the entire interest may prosecute his own case, but he is advised, unless familiar with such matters, to employ a competent attorneyat-law or agent, as the value of patents depends largely upon the skillful preparation of the specification and claims. The Office cannot aid in the selection of an attorney-at-law or agent. Rule 421. Appointment of Resident Agent or Representative. - An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for judicial or administrative procedure relating to the application for patent or the patent may be served. (a) If there are two (2) or more agents appointed by the applicant, the Office shall forward all actions to the last agent appointed. A substitute or associate attorney may be appointed by an attorney only upon the written authorization of his principal; but a third attorney appointed by the second will not be recognized. (b) Revocation of Power of Attorney. - A power of attorney or authorization may be revoked at any stage in the proceedings of a case upon proper notification to the Director General, and, when revoked, the Office will notify the attorney or agent of such revocation and shall communicate directly with the applicant or

with such other attorney or agent as he may later appoint. Rule 422. (a) Decorum and Courtesy Required in the Conduct of Business. Applicants, their attorneys or agents are required to conduct their business with the Office with politeness, decorum, and courtesy. Applicants who act or persist in acting in violation of this rule, shall be required to be represented by attorney, and papers presented containing matter in violation of this rule will be submitted to the Director and returned to the sender, by his direct order. (b) Complaints against Examiners to be on Separate Paper. - Complaints against Examiners and other officers must be made in a communication separate from other papers, and will be promptly investigated by or at the instance of the Director. PART 5 WHO MAY APPLY FOR A PATENT Rule 500. - Who may apply for a patent. - Any person, natural or juridical, may apply for a patent. If the applicant is not the inventor, the Office may require him to submit proof of his authority to apply for a patent. Rule 501. - When the applicant dies, becomes insane. - In case the applicant dies, becomes insane or incapacitated, the legally appointed administrator, executor, guardian, conservator, or representative of the applicant, may sign the application papers and other documents, and apply for and obtain the patent in the name of the applicant, his heirs or assignee. Rule 502. Assigned invention and patents. - In case the whole interest in the invention is assigned, the application may be filed by or in the name of the assignee who may sign the application. In case the assignee is a juridical person, any officer thereof may sign the application in behalf of the said person. In case of an aliquot portion or undivided interest, any of the joint owners will sign the application. Rule 503. Juridical person - Definition. - A juridical person is a body of persons, a corporation, a partnership, or other legal entity that is recognized by law which grants a juridical personality separate and distinct from that of a share holder, partner or member.

Rule 504. Proof of authority. - If the person who signs the application in behalf of a juridical person is an officer of the corporation, no proof of authority to file the said application will be required. However, if any other person signs for and in behalf of a juridical person, the Bureau shall require him to submit proof of authority to sign the application.

If the applicant appoints a representative to prosecute and sign the application, the Bureau shall require proof of such authority. Rule 505. Forms of signatures. - Where a signature is required, the Office may accept: (a) A hand-written signature; or (b) The use of other forms of signature, such as a printed or stamped signature, or the use of a seal, or thumb marks, instead of a hand-written signature. Provided, That where a seal or a thumbmark is used, it should be accompanied by an indication in letters of the name of the signatory. No attestation, notarization, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a letters patent. PART 6 FILING DATE AND FORMALITY EXAMINATION Rule 600. Filing Date Requirements. - The filing date of a patent application shall be the date on which the Office received the following elements in English or Filipino: (a) An express or implicit indication that a Philippine patent is sought; (b) Information identifying the applicant; and, (c) Description of the invention and one (1) or more claims. Rule 600.1. Incomplete application. - Where the application refers to a drawing or drawings, it shall not be considered complete if the drawing or drawings are not included in the application. Rule 600.2. For purposes of obtaining a filing date, the Bureau may accept a copy of the application received by the resident agent by telefax, subject to submission of the original copy within two (2) months from the filing date. Rule 601. According A Filing date. - The Office shall examine whether the patent application satisfies the requirements for the grant of filing date as provided in these Regulations. If the filing date cannot be accorded, the applicant shall be given an opportunity to correct the deficiencies. If the application does not contain all the elements indicated in these regulations, the filing date should be that date when all the elements are received. If the deficiencies are not remedied within two (2) months from the date on which the application was initially presented to the Office, the application shall be considered withdrawn (Sec. 41, IP CODE). Rule 602. Late-filed or missing drawings. - (a) If the formality examination reveals that the drawings were filed after the filing date of the application, the Bureau shall send a notice to the applicant that the drawings and the references to the drawings in the application shall be deemed deleted unless the applicant

requests within two (2) months that the application be granted a new filing date which is the date on which the drawings were filed. (2) If the formality examination reveals that the drawings were not filed, the Bureau shall require applicant to file them within two (2) months and inform the applicant that the application will be given a new filing date which is the date on which the drawings are filed, or, if they are not filed in due time, any reference to them in the application shall be deemed deleted. (3) The new filing date shall be cited in all succeeding correspondences between the Bureau and the applicant.

Rule 603. Formality Examination. - If a patent application has been accorded a filing date and the required fee has been paid within one (1) month, compliance with other requirements will be checked. Such other requirements may relate to the following: (a) contents of the request for grant of a Philippine patent; (b) Priority documents if with claim of convention priority (i.e., file number, date of filing and country of the priority applications); (c) Proof of authority, if the applicant is not the inventor; (d) Deed of assignment; (e) Payment of all fees, (e.g. excess claims) (f) Signatures of the applicants; (g) Identification of the inventor; and (h) Formal drawings. Rule 604. Unity of Invention. - (a) The application shall relate to one invention only or to a group of inventions forming a single general inventive concept. (Sec. 38.1, IP CODE) (b) If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director may require that the application be restricted to a single invention. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application: Provided that the later application is filed within four (4) months after the requirement to divide becomes final, or within such additional time, not exceeding four (4) months, as may be granted. Provided further , That each divisional application shall not go beyond the disclosure in the initial application. (Sec. 38.2, IP CODE) Rule 604.1. The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground to cancel the patent (Sec. 38.3, IP CODE). Rule 605. Requirements for Unity of Invention - (a) The requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.

The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole makes over the prior art. (b) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternative within a single claim. (c) A plurality of independent claims in different categories may constitute a group of inventions linked to form a single general inventive concept, the link being e.g. that between a product and the process which produces it; or between a process and an apparatus for carrying out the process. (d) Three different specific combinations of claims in different categories which are permissible in any one application are the following: (1) in addition to an independent claim for a given product, an independent claim for a process specially adopted for the manufacture of the product, and an independent claim for a use of the product; or (2) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the process; or (3) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the product, and an independent claim for apparatus or means specifically designed for carrying out the process. Rule 606. Reconsideration for Requirement. - (a) If the applicant disagrees with the requirement of division, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. In requesting reconsideration, the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final. (b) The requirement for division will be reconsidered on such a request. If the requirement is repeated and made final, the principal Examiner will, at the same time, act on the claims of the invention elected.

Rule 607. Appeal from requirement for division. - After a final requirement for division, the applicant, in addition to making any response due on the remainder of the action, may appeal from the requirement. The prosecution on claims of the elected invention may be continued during such appeal. Appeal may be deferred until after final action on or allowance of the claims of the invention elected. Appeal may not be allowed if reconsideration of the requirement was not requested.

Rule 608. Subsequent presentation of claims for different invention. -If, after an official action on an application, the applicant presents claim directed to an invention divisible from the invention previously claimed, such claims, if the amendment is entered, will be rejected and the applicant will be required to limit the claims to the invention previously claimed. Rule 609. Election of species. - In the first action on an application containing a generic claim and claims restricted separately to each of more than one species embraced thereby, the Examiner, if of the opinion, after a complete search on the generic claim presented is allowable, shall require the applicant in his response to that action to elect the species of his invention to which his claim shall be restricted, if no generic claim is finally held allowable. Claims directed neither to the species nor to the genus of the disclosed invention maybe allowed. Markush type claims, i.e., claims which enumerate in alternative manner, members or variations which are properly claimable as species claims may likewise be allowed, provided that the amount of the fees payable by the applicant/s shall be computed depending on the number of members or variations enumerated in the Markush type claims. Rule 610. Separate application for invention not elected. - The inventions which are not elected after a requirement for division may be the subject of separate applications which will be examined in the same manner as original applications. However, if such an application is filed before the original application is patented or withdrawn, and if it is identical and the papers constituting an exact copy of the original papers which were signed and executed by the applicant, signing and execution of the applicant may be omitted; such application may consist of the filing fee, a copy of the drawings complying with rules relating to drawings and filed, together with a proposed amendment canceling the irrelevant claims or other matters. Rule 611. Divisional Application - (a) The applicant may file a divisional application on a pending application before the parent application is withdrawn, abandoned or patented, provided that the subject matter shall not extend beyond the content of the parent application. The divisional application shall be accorded the same filing date as the parent application, and shall have the benefit of any right to priority. Rule 612. Information Concerning Corresponding Foreign Application for Patents. - The applicant shall, at the request of the Director, furnish him with the date and number of any application for a patent filed by him abroad, hereafter referred to as the "foreign application", relating to the same or essentially the same invention as that claimed in the application filed with the Office and other documents relating to the foreign application. (Sec. 39, IP CODE) Rule 612.1. Other documents relating to the foreign application may consist of

the following: (a) A copy of the search reports in English on the corresponding or related foreign application prepared by the European, Japanese or United States Patent Offices, searching authorities under the Patent Cooperation Treaty or by the office where the first patent application was filed. (b) Photocopy of the relevant documents cited in the search report; (c) Copy of the patent granted to the corresponding or related application; (d) Copy of the examination report or decision on the corresponding or foreign related application; and (e) Other documents which could facilitate adjudication of the application. Rule 612.2. Non-compliance. - The application is considered withdrawn if the applicant fails to comply with the requirement to furnish information concerning the corresponding foreign application, within the specified period.

PART 7 CLASSIFICATION AND SEARCH Rule 700. Classification and Search. - An application that has complied with the formal requirements shall be classified and a search shall be conducted to determine the prior art. (Sec. 43, IP CODE). Rule 701. The Office shall use the International Patent Classification. Rule 701.1. Content of the Intellectual Property Search Report. - The Intellectual Property Search Report is drawn up on the basis of the claims, description, and the drawings if there is any: (a) The search report shall mention those documents, available at the Office at the time of drawing up the report, which may be taken into consideration in assessing novelty and inventive step of the invention. (b) The search report shall distinguish between cited documents published before the date of priority claimed, between such date of priority and the date of filing, and on or after the date of filing. (c) The search report shall contain the classification of the subject matter of the application in accordance with the International Patent Classification. (d) The search report may include documents cited in a search established in the corresponding foreign application. PART 8 PUBLICATION AND REQUEST FOR EXAMINATION Rule 800. Publication of Application. - (a) The application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any document or documents that reflect prior art, after the expiration of eighteen (18) months from the filing date or priority date. (b) The application will not be published if it has been finally refused or withdrawn or deemed to be withdrawn before the termination of the technical preparation for

publication. (c) The application to be published shall contain the bibliographic data, any drawing as filed and the abstract. (d) The Office shall communicate to the applicant the date and other information regarding the publication of the application and draw his attention to the period within which the request for substantive examination must be filed. (e) After publication of a patent application, any interested party may inspect the application documents filed with the Office. (f) The Director General, subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines. (Sec. 44, IP CODE) Rule 801. Confidentiality before Publication. - An application, which has not yet been published, and all related documents, shall not be made available for inspection without the consent of the applicant. (Sec. 45, IP CODE). Rule 802. Observation of Third Parties. - Following the publication of the application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. (Sec. 47, IP CODE)

Rule 803. Request for Substantive Examination. - The application shall be deemed withdrawn unless within six (6) months from the date of publication under these rules, a written request to determine whether a patent application meets the requirements of Patentability as provided for by the IP CODE, and the fees have been paid on time. Rule 803.1. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. (Sec. 48, IP CODE) Rule 804. Rights Conferred by an Application After Publication. - The applicant shall have all the rights of a patentee under Sec. 76, of the IP CODE against any person who, without his authorization, exercised any of the rights conferred under Section 71 of said law in relation to the invention claimed in the published application, as if a patent has been granted for that invention: Provided, That the said person had: (a) Actual knowledge that the invention that he was using was the subject matter of a published application; or (b) Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided, That the action

may not be filed until after the grant of a patent on the published application and within four (4) years from the commission of the acts complained of (Sec. 46, IP CODE). Rule 805. Citation and references. - Should domestic patents be cited, their numbers and dates, the names of the patentees, and the classes of inventions must be stated. Should foreign patents be cited, their nationality or country, numbers and dates and the names of the patentees must be stated, and such other data must be furnished as may be necessary to enable the applicant to identify the patents cited. In citing foreign patents, in case part of the patent be involved, the particular pages and sheets containing the parts relied upon must be identified. Should non-patent publications be cited, the author (if any), title, date, relevant pages or plates, and place of publication, or place where a copy can be found, shall be given. PART 9 THE EXAMINATION OF THE APPLICATION; NATURE OF PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR A PATENT; GENERAL CONSIDERATIONS Rule 900. Applications prosecuted ex parte. - An application is prosecuted ex parte by the applicant; that is, the proceedings are like a lawsuit in which there is a plaintiff, but no defendant, the court itself acting as the adverse party. Rule 901. Proceedings a contest between the Examiner and the applicant. - An ex parte proceeding in the Bureau is a law contest between the Examiner, representing the public and trying to give the inventor the least possible monopoly in return for his disclosure, and the applicant or his attorney trying to get as much monopoly as possible. Rule 902. Applicant supposed to look after his interest. - The Bureau, represented by the Examiner, is not supposed to look after the interests of an applicant. The Examiners are charged with the protection of the interest of the public, and hence must be vigilant to see that no patent issues for subject matter which is not patentable, and is already disclosed in prior inventions and accessible to the public at large. Rule 903. Preliminary adverse actions of the Examiner valuable to applicant. The positive value of preliminary adverse actions of the Examiner should be fully appreciated by the applicant and his attorney. A hard-fought application will produce a patent much more likely to stand in court than a patent which has slid through the Bureau easily. This is so for two reasons: first, the rejections have given the applicant or his attorney suggestions of strengthening amendments so that his claims have been made infinitely less vulnerable than would be otherwise possible; secondly, every point raised by the Examiner and finally decided by the Bureau in favor of the applicant will give him a prima facie standing on that point

in court. The Office is empowered by law to pass upon applications for patents and, because of the authority vested in it, its decisions with respect to the granting of an application or on any point connected with it will be presumed to be correct by the courts.

Rule 904. A preliminary rejection should not be taken literally; Examiner is only trying to be helpful. - A rejection by the Examiner is never to be taken literally. An applicant should remember that the Examiner may not be actually rejecting his invention. The Examiner may in fact be quite prepared to admit the invention over the references to the prior art. He may be merely rejecting the applicant's claims, that is, the way in which the applicant has expressed his invention. An Examiner will frequently make a blanket rejection on some reference to the prior art just to be helpful to the applicant - just to give the applicant a chance to explain away some reference and make a change in his claims to avoid it, rather than to wait until the patent is granted and is involved in a litigation, when it may be too late to make the explanation. Rule 905. The Examiners shall have original jurisdiction over all applications; appeal to the Director. - The examination of all applications for the grant of invention patents shall be under the original jurisdiction of the several Examiners; their decisions, when final, shall be subject to petition, or appeal to the Director within four (4) months from the mailing date of the notice of the decision. As regards information on any specific technical or scientific matter pending final action by the Bureau, the applicant may, upon payment of a fee, request in writing for a conference with the Examiner specifying the query he would want to propound to the Examiner but in respect of which the Examiner has the discretion to grant the request or choose to reply to the query in writing. Rule 906. Order of examination. - Applications filed in the Bureau and accepted as complete applications are assigned for examination to the respective Examiners handling the classes of invention to which the applications relate. Applications shall be taken up for examination by the Examiner in the order in which they have been filed. Applications which have been acted upon by the Examiner, and which have been placed by the applicant in condition for further action by the said Examiner (amended application) shall be taken up for such action in the order in which they have been placed in such condition (date of amendment). Rule 907. Nature of examination, Examiner's action. - (a) On taking up an application for examination, the Examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the invention sought to be patented. The examination shall be complete with respect both to compliance of the application with the statutes and

rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated. (b) The applicant will be notified of the Examiner's action. The reasons for any adverse action or any objection or requirement will be stated and such information or references will be given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his application. Rule 908. Completeness of Examiner's action. - The Examiner's action will be complete as to all matters, except that in appropriate circumstances, such as restriction requirement, fundamental defects in the application, and the like, the action of the Examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the Examiner until a claim is found allowable. Rule 909. Rejection of claims. - (a) If the invention is not considered patentable, in any manner, all the claims will be rejected by the Examiner. If the invention is considered patentable as claimed in certain of the claims, but unpatentable as claimed in other claims, the latter claims will be rejected but will not result in the refusal to grant a patent provided it is limited only to claims that have not been rejected. (b) In rejecting claims for want of novelty or for want of inventive step, the Examiner must cite the references most relevant to the invention. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not obvious, must be clearly explained and each rejected claim specified. (c) Claims may be rejected for non-compliance with Sec. 35.1 and Sec. 36.1, IP CODE.

Rule 910. Unpublished, withdrawn and forfeited applications not cited. Unpublished, withdrawn and forfeited applications as such will not be cited as references. Rule 911. Reply by applicant. - (a) After the action of the Examiner, if the same be adverse in any respect, the applicant, if he persists in his application for a patent, must reply thereto and may request re-examination or reconsideration, with or without amendment. (b) In order to be entitled to re-examination or reconsideration, the applicant must make a request therefor in writing, and he must distinctly and specifically point out the supposed errors in the Examiner's action; the applicant must respond to every ground of objection and rejection in the prior Examiner's action (except that request may be made that objections or requirements as to form, not necessary

to further consideration of the claims, be held in abeyance until a claim is allowed), and the applicant's action must appear throughout to be a bona fide attempt to advance the case to final action. The mere allegation that the Examiner has erred will not be received as a proper reason for such reexamination or reconsideration. (c) In amending an application in response to a rejection, the applicant must clearly point out the patentable inventiveness and novelty which he thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He must also show how the amendments avoid such references or objections. Rule 912. Re-examination and reconsideration. - After response by applicant, the application will be re-examined and reconsidered, and the applicant will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. Applicant may respond to such Examiner's action, in the same manner provided in these Regulations, with or without amendment, but any amendments after the second Examiner's action must ordinarily be restricted to the rejection or to the objections or requirements made, and the application will be again considered. Rule 913. Final rejection or action. - (a) On the second or any subsequent examination or consideration, the rejection or other action may be made final, where upon applicant's response is limited to appeal, in the case of rejection of any claim or to amendment as specified in these Regulations. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim as provided in these Regulations. Response to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected; and, if any claim stands allowable, compliance with any requirement or objection as to form. (b) In making such final rejection, the Examiner shall repeat all grounds of rejection then considered applicable to the claims in the case, clearly stating the reasons therefor. The Examiner may not cite grounds that have not been raised in the earlier communications to the applicant. Rule 914. Conversion of Patent Applications or Applications for Utility Model. - (a) At any time before the grant or refusal of a patent, an applicant for a patent, may, upon payment of the prescribed fee convert his application into an application for registration of a utility model, which shall be accorded the filing date of the initial application. An application may be converted only once. (Sec. 110, IP CODE) (b) At any time before the grant or refusal of a utility model registration, an applicant for a utility model registration may, upon payment of the prescribed fee, convert his application into a patent application, which shall be accorded the filing date of the initial application. (Sec. 110, IP CODE)

Rule 915. Prohibition against Filing of Parallel Applications. - 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)

AMENDMENTS BY THE APPLICANT Rule 916. Amendment by the applicant. - An applicant may amend the patent application during examination: Provided, That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. (Sec. 49, IP CODE) Rule 917. Amendments after final action of the Examiner. - (a) After final rejection or action, amendments may be made canceling claims or complying with any requirement of form which has been made, and amendments presenting rejected claims in better form for consideration on appeal may be admitted; but any proceedings relative thereto, shall not operate to relieve the application from its condition as subject to appeal or to save it from being considered withdrawn. (b) Should amendments touching the merits of the application be presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented. Rule 918. Amendment and revision required. - The specification, claims and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary prolixity, and to secure correspondence between the claims, the specification and the drawing. Rule 919. Amendment of disclosure. - No deletion or addition shall broaden the disclosure of an application to include new matter after the filing date of the application. All amendments to the specification, claims or drawing, and all additions thereto made after the filing date of the application must conform to at least one of them as it was as of the filing date. Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application even though supported by a supplemental oath, and can be shown or claimed only in a separate application. Rule 920. Amendment of claims. - The claims may be amended by canceling particular claims, by presenting new claims or by amending the language of particular new claims (such amended claims being in effect new claims). In presenting new or amended claims, the applicant must point out how they avoid any reference or ground of rejection of record which may be pertinent. Furthermore, in order to facilitate the processing of the examination of the application , the applicant shall indicate in his response which form part in the original disclosure constitutes the basis of the amendments.

Rule 921. Manner of making amendments. - Erasures, additions, insertions, or alterations of the papers and records must not be made by the applicant. Amendments by the applicant are made by filing a paper in accordance with these Regulations, directing or requesting that specified amendments be made. The exact word or words to be stricken out or inserted in the application must be specified and the precise point indicated where the deletion or insertion is to be made. The basis of the proposed amendments in the original application as filed shall be indicated. Rule 922. Entry and consideration of amendments. - (a) Amendments are entered by the Bureau by making the proposed deletions by drawing a line in red ink through the word or words cancelled, and by making the proposed substitutions or insertions in red ink, small insertions being written in at the designated place and larger insertions being indicated by reference. (b) Ordinarily all amendments presented in a paper filed while the application is open to amendment are entered and considered provided that amendments that do not comply with this rule may not be accepted. Untimely amendatory papers may be refused entry and consideration in whole or in part. Rule 923. Amendments to the drawing. - (a) No change in the drawing may be made except by permission of the Bureau. Request for changes in the construction shown in any drawing may be made only upon payment of the required fee. A sketch in permanent ink showing proposed changes to become part of the record must be filed together with the search request. The paper requesting amendments to the drawing should be separate from other papers. The drawing may not be withdrawn from the Bureau except for signature. Substitute drawings will not ordinarily be admitted in any case unless required by the Bureau.

Rule 924. Amendment of amendments. - When an amendatory clause is to be amended, it should be wholly rewritten and the original insertion cancelled, so that no interlineations or deletions shall appear in the clause as finally presented. Matter cancelled by amendment can be reinstated only by a subsequent amendment presenting the cancelled matter as a new insertion. Rule 925. Substitute specification. - If the number or nature of the amendments shall render it difficult to consider the case, or to arrange the papers for printing or copying, the Examiner may require the entire specification or claims, or any part thereof, to be rewritten. A substitute specification will ordinarily not be accepted unless it has been required by the Examiner. A substitute specification may be required within two (2) months from grant of the patent prior to publication of the patent in the IPO Gazette. Rule 926. Numbering of claims. - The original numbering of the claims must be

preserved through the prosecution. When claims are cancelled, the remaining claims must not be renumbered. When claims are added by amendment or substituted for cancelled claims, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the Examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant. Rule 927. Petition from refusal to admit amendment. - From the refusal of the Examiner to admit an amendment, in whole or in part, a petition will lie to the Director under these Regulations. Rule 928. Interviews with the Examiners: when no interview is permitted Interviews with the Examiner concerning an application pending before the Bureau can be held only upon written request specifying the query the applicant would want to propound and after payment of the required fee, but in respect of which the Examiner has the jurisdiction to grant interview or instead reply to the query in writing. The interview shall take place within the premises of the Bureau and during regular office hours as specified by the Examiner. All interviews or conferences with Examiners shall be reduced to writing and signed by the Examiner and the applicant immediately after the conference. Such writing shall form part of the records of the Bureau. Interviews for the discussion of pending applications shall not be held prior to the first official action thereon. TIME FOR RESPONSE BY APPLICANT; WITHDRAWAL OF APPLICATION Rule 929. Withdrawal of application for failure to respond within time limit. - (a) If an applicant fails to prosecute his application within the required time as provided in these Regulations, the application shall be deemed withdrawn. (b) The time for reply may be extended only for good and sufficient cause, and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the applicant is due. The Examiner may grant a maximum of two (2) extensions, provided that the aggregate period granted inclusive of the initial period allowed to file the response, shall not exceed six (6) months from mailing date of the official action requiring such response. (c) Prosecution of an application to save it from withdrawal must include such complete and proper action as the condition of the case may require. Any amendment not responsive to the last official action shall not operate to save the application from being deemed withdrawn. (d) When action by the applicant is a bona fide attempt to advance the case to final action, and is substantially a complete response to the Examiner's action,

but consideration of some matter or compliance with some requirements has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of withdrawal is considered. (e) Prompt ratification or filing of a correctly signed copy may be accepted in case of an unsigned or improperly signed paper.

Rule 930. Revival of application. - An application deemed withdrawn for failure to prosecute may be revived as a pending application within a period of four (4) months from the mailing date of the notice of withdrawal if it is shown to the satisfaction of the Director that the failure was due to fraud, accident, mistake or excusable negligence. A petition to revive an application deemed withdrawn must be accompanied by (1) a showing of the cause of the failure to prosecute, (2) a complete proposed response, and (3) the required fee. An application not revived in accordance with this rule shall be deemed forfeited. Rule 931. Express withdrawal of application. - An application may be expressly withdrawn by filing in the Bureau a written declaration of withdrawal, signed by the applicant himself and the assignee of record, if any, and identifying the application. PART 10 GRANT OF PATENT Rule 1000. Grant of Patent. - If the application meets the requirements of the IP CODE and these Regulations, the office shall grant the patent: Provided, That all the fees are paid on time. If the required fees for grant and printing are not paid in due time, the application shall be deemed withdrawn (Sec. 50, IP CODE) Rule 1001. Contents of patent. - The patent shall be issued in the name of the Republic of the Philippines under the seal of the Office and shall be signed by the Director of Patents, and registered together with the description, claims, and drawings, if any, in books and records of the Office. (Sec. 63, IP CODE) Rule 1002. Publication upon Grant of Patent. - The grant of the patent together with other information shall be published in the IPO Gazette within six (6) months. (Sec. 52.1, IP CODE) Rule 1003. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office. (Sec. 52.2, IP CODE) PART 11

TERM OF PATENT Rule 1100. Term of patent. - The term shall be twenty (20) 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 is 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 1101. Annual Fees. - The first annual fee on a patent shall be due and payable on the expiration of four (4) years from the date the application is published, and on each subsequent anniversary of such date. Payment may be made within three (3) 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) Rule 1102. Date 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 1103. Non-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 1104. Grace period. A grace period of six (6) 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 1200. Form 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;

(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 1201. 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 instrument, including licenses, must conform with the requirements of the preceding rule. Rule 1202. Assignment 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 1203. Date 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 1204. 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 Office before the actual issue of the patent.

Rule 1205. Action 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 2. Surrender, Correction and Amendment of Patent Rule 1206. Surrender of Patent. -(a) The owner of the patent, with the written and verified consent of all persons having grants or licenses or other right, title or interest in and to the patent and the invention covered thereby, which have been recorded in the Office, may surrender his patent, any claim or claims forming part thereof to the Office for cancellation. The petition for cancellation shall be in writing, duly verified by the petitioner and if executed abroad shall be authenticated. (Sec. 56, IP CODE) (b) Any person may give notice to the Office of his opposition to the surrender of a patent, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question. (c) If the Office is satisfied that the patent may properly be surrendered, it may accept the offer and, as from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention before that day for the services of the government. (Sec. 56, IP CODE) Rule 1207. Correction of mistakes of the Office. - Upon written petition, in duplicate, of the patentee or assignee of record, and upon tender to the Office of the copy of the patent issued to the patentee, the Director shall have the power to correct without fee any mistake in a patent incurred through the fault of the Office when clearly disclosed by the records thereof, to make the patent conform to the records. (Sec. 57, IP CODE) Rule 1208. Correction of mistake in the application. - On request of any interested person and payment of the prescribed fee, the Director is authorized to correct any mistake in the patent of a formal and clerical nature, not incurred through the fault of the Office. (Sec 58, IP CODE) Rule 1209. Changes in patent. - (a) The owner of the patent shall have the right to request the Bureau to make changes in the patent in order to: (a) Limit the extent of the protection conferred by it; (b) Correct obvious mistakes or to correct clerical errors; and (c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith; Provided, That were the change would result in broadening of the extent of the protection conferred by the patent, no request may be made after the expiration of two (2) years from the

grant of a patent and the change shall not affect the rights of any third party which has relied on the patent, as published. Rule 1210. Form and publication of amendment or corrections. - An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction, authenticated by the seal of the Office and signed by the Director, which certificate shall be attached to the patent. Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent furnished by the Office shall include a copy of the certificate of the amendment or correction. (Sec. 60, IP CODE) Rule 1212. 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. 104, IP CODE) Rule 1213. Rights 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)

PART 13 PETITIONS AND APPEAL Rule 1300. Nature of the function of Examiners. The function of determining whether or not an application for grant of patent should be allowed or denied under the facts disclosed in the application and in the references consulted by the Examiner and under the applicable law (statutory and decisional), is a quasijudicial function and involves the exercise of judicial discretion. Thus, with respect to such function, the Director cannot lawfully exercise direct control, direction and supervision over the Examiners but only general supervision, exercised through a review of the recommendation they may make for the grant of patent and of other actions, and through a review of their adverse decisions by petition or appeal. Rule 1301. Petition to the Director to question the correctness of the action of an Examiner on a matter not subject to appeal. - Petition may be filed with the Director from any repeated action or requirement of the Examiner which is not

subject to appeal and in other appropriate circumstances. Such petition, and any other petition which may be filed, must contain a statement of the facts involved and the point or points to be reviewed. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition. The Examiner, as the case may be, may be directed by the Director to furnish a written statement setting forth the reasons for his decision upon the matter averred in the petition, supplying a copy thereof to the petitioner. The mere filing of a petition will not stay the maximum period of six (6) months counted from the mailing date of the Examiner's action subject of the appeal for replying to an Examiner's action nor act as a stay of other proceedings. Rule 1302. Appeals to the Director. - Every applicant for the grant of a patent may, upon the final refusal of the Examiner to grant the patent, appeal the matter to the Director. Appeal may also be taken to the Director from any adverse action of the Examiner in any matter over which these Regulations give original jurisdiction to the Examiner. A second adverse decision by the Examiner on the same grounds may be considered as final by the applicant, petitioner, or patentee for purposes of appeal. Rule 1303. Effect of a final decision of an Examiner which is not appealed. - A final decision of an Examiner which is not appealed to the Director within the time permitted, or, if appealed, the appeal is not prosecuted, shall be considered as final to all intents and purposes, and shall have the effect of res judicata in respect of any subsequent action on the same subject matter. If an application is considered abandoned for failure of the applicant to respond to an action of the Examiner on the merits, the order declaring the application as withdrawn which has become final shall likewise have the effect of res judicata. Rule 1304. Time and manner of appeal. - Any petition or appeal must be taken by filing the petition in duplicate or a notice of appeal, as the case may be, and payment of the required fee within two (2) months from the mailing date of the action subject of the petition or appeal, must specify the various grounds upon which the petition or appeal is taken, and must be signed by the petitioner or appellant or by his attorney of record. The period herein provided shall, in no case, exceed the maximum period of six (6) months from the mailing date of the action subject of the petition or appeal. Rule 1305. Appelant's brief required. - In case of an appeal, the appellant shall, within two (2) months, without extension, from the date of filing of the notice of appeal, file a brief of the authorities and arguments on which he relies to maintain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dismissed.

Rule 1306. The Examiner's answer. - The Examiner shall furnish a written

statement in answer to the petition or appellant's brief, as the case may be, within two (2) months from the order of the Director directing him to submit such statement. Copy of such statement shall be served on the petitioner or appellant by the Examiner. Rule 1307. Appellant's reply. - In case of an appeal, the appellant may file a reply brief directed only to such new points as may be raised in the Examiner's answer, within one (1) month from the date copy of such answer is received by him. Rule 1308. Appeal to the Director General. The decision or order of the Director shall become final and executory fifteen (15) days after receipt of a copy thereof by the appellant unless within the said period, a motion for reconsideration is filed with the Director or an appeal to the Director General has been perfected by filing a notice of appeal and payment of the required fee. Only one motion for reconsideration of the decision or order of the Director shall be allowed. Rule 1310. Director's comment. The Director shall submit within one (1) month his comments on the appellant's brief if so required by the Director General. Rule 1311. Appeal to the Court of Appeals. The decision of the Director General shall be final and executory unless an appeal to the Court of Appeals is perfected in accordance with the Rules of Court applicable to appeals from decisions of Regional Trial Courts. No motion for reconsideration of the decision or order of the Director General shall be allowed. FINAL PROVISIONS Section 1. Correspondence. The following regulations shall apply to correspondence between patentee/applicants and the Office or the Bureau: (a) Business to be transacted in writing. All business with the Office or Bureau shall be transacted in writing. Actions will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding. (b) Personal attendance of applicants and other persons unnecessary. Unless otherwise provided, the personal attendance of applicants and other persons at the Office is unnecessary. Their business can be transacted by correspondence. (c) Correspondence to be in the name of the Director of Patents. All Office letters with respect to matters within the jurisdiction of the Bureau must be sent in the name of the Director of Patents. All letters and other communications intended with respect to such matters must be addressed to him and if addressed to any other officer, they will ordinarily be returned. (d) Separate letter for each case. In every case, a separate letter shall be written in relation to each distinct subject of inquiry. (e) Letter relating to applications. When a letter concerns an application it shall state the name of the applicant, the title of the invention, the application number and the filing date of the application. (f) Letters relating to granted patents. When the letter concerns a granted

patent, it shall state the name of the patentee, the title of the invention, the patent number and date of issuance. (g) Subjects on which information cannot be given. The Office cannot respond to inquiries as to the newness or inventive step of an alleged invention desired to be patented in advance of the filing of an application for a patent. On the propriety of making an application for the grant of patent, the applicant must judge for himself or consult an attorney-at-law or patent agent. The Office is open to him, and its records pertaining to all patents granted may be inspected either by himself or by any attorney or agent he may call to his aid. Further than this the Office can render him no assistance until his application comes regularly before it in the manner prescribed by law and by these Regulations. A copy of the law, rules, or circular of information, with a section marked, set to the individual making an inquiry of the character referred to, is intended as a respectful answer by the Office. Examiners' digests are not open to public inspection. The foregoing shall not, in any way, be interpreted to prohibit the Office from undertaking an information dissemination activity in whatever format, to increase awareness on the patent law.

Section 2. Fees and charges to be prepaid; Fees and charges payable in advance. Express charges, freight, postage, telephone, telefacsimile including cost of paper and other related expenses, and all other charges on any matter sent to the Office must be prepaid in full. Otherwise, the Office shall not receive nor perform any action on such matters. The filing fees and all other fees and charges payable to the Office shall be collected by the Office in advance of any service to be rendered. Section 3. Implementation. In the interest of the service, until the organization of the Bureau is completed, the functions necessary to implement these Regulations shall be performed by the personnel of the former Bureau of Patents, Trademarks and Technology Transfer as may be designated by the Director General upon the recommendation of the Chiefs of the Chemical Examining Division and the Mechanical and Electrical Examining Division of the Bureau of Patents, Trademarks and Technology Transfer, or the Director of Patents if one has been appointed and qualified or the Caretaker or the Officerin-Charge as the Director General may designate. Section 4. Repeals. All rules and regulations, memoranda, circulars, and memorandum circulars and parts thereof inconsistent with these Regulations particularly the Rules of Practice in Patent Cases, as amended, are hereby repealed; Provided that all applications for patents pending in the Bureau of Patents, Trademarks and Technology Transfer shall be proceeded with and

patents thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued to be enforced, to this extent and for this purpose only. Section 5. Separability. If any provision in these Regulations or application of such provision to any circumstance is held invalid, the remainder of these Regulations shall not be affected thereby. Section 6. Furnishing of Certified Copies. Mr. Eduardo Joson, Records Officer II, is hereby directed to immediately file three (3) certified copies of these Regulations with the University of the Philippines Law Center, and, one (1) 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. PART 1 Registration of Trademarks and Service Marks RULE 10. - Title. - These regulations shall be known as the "Trademark Regulations". [As amended by Office Order No. 08 (2000)] RULE 100. Definitions. - Unless otherwise specified, the following terms shall have the meaning provided in this Rule: (a) "Bureau" means the Bureau of Trademarks of the Intellectual Property Office; (b) "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristics, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark; (c) "Competent authority" for purposes of determining whether a mark is well-known, means the Court, the Director General, the Director of the Bureau of Legal Affairs, or any administrative agency or office vested with quasijudicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark; (d) "Director" means the Director of the Bureau of Trademarks; (e) "Director General" means the head of the Intellectual Property Office; (f) "Examiner" means the trademark examiner or any official or employee of the Bureau of Trademarks authorized to examine applications for registration or renewals thereof; (g) "IP Code" means Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines; (h) "IPO Gazette" means the Intellectual Property Office's own publication where all matters required to be published under the IP Code shall be published; (i) "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods; (j) "Office" means the Intellectual Property Office; (k) "Regulations" means these set of rules and regulations and such Rules of Practice in Trademarks and

Service Marks as may be formulated by the Director of Trademarks and approved by the Director General; and (l) "Trade name" means the name or designation identifying or distinguishing an enterprise, also known or referred to as business identifier. RULE 101. Registrability. - A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; (c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be wellknown internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services; Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services. Geographical indications are indications which identify a good as originating in the territory of a country which is a member of, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. (h) Consists exclusively of signs that are generic for the goods or services that they

seek to identify; (i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) Consists of color alone, unless defined by a given form; or (m) Is contrary to public order or morality. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods or services for which registration is requested as a result of the use that has been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. The nature of the goods or services to which the mark is applied will not constitute an obstacle to registration. RULE 102. Criteria for determining whether a mark is well-known. - In determining whether a mark is well-known, the following criteria or any combination thereof may be taken into account: (a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies; (c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; (f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) the commercial value attributed to the mark in the world; (j) the record of successful protection of the rights in the mark; (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and, (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark.

RULE 103. Trade Names or Business Names. - (a) A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. (b) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful. (c) The remedies provided for cancellation and infringement of marks in Sections 153 to 156 and Sections 166 and 167 of the IP Code shall apply to tradenames mutatis mutandis. (d) Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. However, such transfer or assignment shall 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. PART 2 Right to a Mark RULE 200. How Marks are Acquired. - The rights in a mark shall be acquired through registration made validly in accordance with the law. RULE 201. International Conventions and Reciprocity. - (a) Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by the Intellectual Property Code. (b) The registration of a mark of such person shall be independent of the registration in the country of origin and the duration, validity or transfer in the Philippines of such registration shall be governed by the IP Code and these Regulations. RULE 202. Priority Right; Basis for Claiming Priority Right. - (a) An application for registration of a mark filed in the Philippines by a person referred to in Rule 201, and who previously duly filed an application for registration of the same mark in

one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country. (b) No registration of a mark in the Philippines by a person described in this rule shall be granted until such mark has been registered in the country of origin of the applicant. (c) The country of origin of the applicant is the country in which he is a national, domiciled, or has a bona fide and effective industrial or commercial establishment. (d) Nothing in this rule shall entitle the owner of a registration granted under this rule to sue for acts committed prior to the date on which his mark was registered in the Philippines; Provided, That, notwithstanding the foregoing, the owner of a well-known mark, as defined in the IP Code and these Regulations, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law. (e) In like manner and subject to the same conditions and requirements, the priority right may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application that was made the basis of the priority right and filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority shall not thereafter serve as a basis for claiming a right of priority.

RULE 203. Requirements for Applications Claiming Priority Right.- An application with claim of priority right must be filed within six (6) months from the date the earliest foreign application was filed. Without need of any notice from the Office, Bureau or examiner, the applicant shall file an English translation of a certified copy of any of the following within three (3) months from the date of filing in the Philippines: a) Foreign application showing the date of filing b) Foreign registration indicating the date of filing [as amended by Office Order No. 39 (2002)] RULE 204. Declaration 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 205. Contents of the Declaration and Evidence of Actual Use. - The declaration shall be under oath, must refer to only 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 of 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 and, specifying the nature of such use. The declarant shall 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. [As amended by Office Order No. 08 (2000)] PART 3 Who May Apply for a Mark RULE 300. The Applicant. - (a) Applicant may be a person or juridical person. (b) Unless modified by this Chapter, all applications for a mark should be in the name of the applicant(s) who may sign the application. If there are more than one applicant, all of them should be named as applicant but anyone may sign the application for and in behalf of all the applicants. RULE 301. Assigned marks. - In case the whole interest in the mark is assigned, the application may be filed in the name of the assignee who may sign the application. In case the assignee is a juridical person, any officer thereof may sign the application in behalf of the said person. In case of an aliquot portion or undivided interest, each of the joint owners will sign the application. RULE 302. Representation; Address for Service. - If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he shall designate by a written document filed in the Office, the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. The written document shall be submitted to the Office within sixty (60) days from filing date without need of any notice from the Office. Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director. [As amended by Office Order No. 08 (2000)] RULE 303. Applicant may be represented by attorney. - The owner of a mark may file and prosecute his own application for registration, or he may be represented by any attorney or other person authorized to practice in such matters by the Office. The Office shall not aid in the selection of an attorney or agent other than the furnishing of the list of Attorneys or agents authorized to

practice before the Office. RULE 304. Power of attorney or Authorization. - At the time of filing of an application, no power of attorney or authorization is required. However, the Office may require any attorney or other recognized person to submit within sixty (60) days from notice a power of attorney or authorization before he will be allowed to take an initial or further action in any application or registration. A substitute or associate attorney may be appointed by an attorney only upon the written authorization of his principal; but a third attorney appointed by the second will not be recognized. [As amended by Office Order No. 08 (2000)]

RULE 305. Death, insanity, incapacity of applicant. - When the applicant dies, becomes insane or otherwise incapacitated, the legally appointed executor, administrator, guardian, conservator or representative of the dead or insane or incapacitated applicant may prosecute the application in behalf of the heirs and successors-in-interest of the applicant. RULE 306. Signature and other means of Self-identification. - (a) Where a signature is required, the Office shall accept: (1) A hand-written signature; or (2) The use of other forms of signature, such as a printed or stamped signature, or the use of a seal, instead of a hand-written signature: Provided, That where a seal is used, it should be accompanied by an indication in letters of the name of the signatory. (b) No attestation, notarization, authentication, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration. PART 4 Trademark Application RULE 400. Requirements of application. - All applications must be addressed to the Director and shall be in Filipino or English and shall contain the following: (a) a request for registration; (b) the name and address of the applicant; (c) the name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any; (d) where the applicant is a juridical entity, the law under which it is organized and existing; (e) the appointment of an agent or representative, if the applicant is not domiciled in the Philippines; (f)

where the applicant claims the priority of an earlier application, a declaration claiming the priority of that earlier application, together with an indication of: the name of the state with whose national Office the earlier application was filed or if filed with an Office other than a national Office, the name of that Office; the date on which the earlier application was filed; and - where available, the application number of the earlier application; (g) where the applicant wishes to claim color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color; (h) where the mark is a three-dimensional mark, a statement to that effect; (i) a reproduction of the mark and facsimiles thereof as provided in these Regulations; (j) a transliteration or translation of the mark or of some parts of the mark, as prescribed in these Regulations; (k) the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; (l) where the application is for a collective mark, a designation to that effect; (m) a signature by, or other selfidentification of, the applicant or his representative; (n) Power of Attorney if the filing is through a representative; and (o) sworn statement that the applicant is a small entity if such be the fact. RULE 401. Office Application Form. - For the convenience of applicants, the Office shall draw up and make available a standard application form which may be reproduced at will by applicants and other persons at their own cost. RULE 402. Label. - The applicant may include the label as actually used or intended to be used on the goods or a copy or duplicate made by photo engraving or some similar process. The mark must be bigger and more dominant than the generic term of goods except in the case of medicine as required by law.

RULE 403. Drawing. - (a) The drawing of the mark shall be substantially exact representation thereof as actually used or intended to be used on or in connection with, the goods or services of the applicant. (b) A typed drawing may be accepted by the Examiner if no special characteristics have to be shown such as design, style of lettering, color, diacritical marks, or unusual forms of punctuation. A computer print-out may also be accepted by the Examiner if it substantially complies with the requirement that it must be the exact representation of the mark. (c) The provisions of this Rule shall, however be construed liberally in determining whether the applications shall be considered complete for the purpose of granting a filing date.

RULE 404. Drawing for a service mark may be dispensed with in certain cases. The drawing of a service mark may be dispensed with but the application must contain an adequate description of such mark. RULE 405. Drawing to be on Bristol board. - The Drawing must be made upon pure white paper of a thickness of a Bristol board. The surface of the paper must be calendered and smooth. RULE 406. Size of board; "sight". - The size of a sheet on which a Drawing is made must be exactly two hundred ten millimeters (210 mm) by two hundred ninety-seven millimeters (297 mm) or the size of an A4 paper. Nineteen millimeters (19 mm) from its edges, a single marginal line is to be drawn, leaving the "sight" precisely one hundred seventy-two millimeters (172 mm) by two hundred fifty-nine millimeters (259 mm). Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be regarded as its top. RULE 407. Drawing to be with the Pen or by other processing giving satisfactory results. - If colors are not claimed, all Drawings must be made with pen only or by a process which will give them satisfactory reproduction characteristics. Every line and letter, signatures included, must be absolutely black. This direction applies to all lines, however fine, and to shading. All lines must be clean, sharp, and solid, and they must not be too fine or crowded. Surface shading, when used, should be open. RULE 408. The Name of the Owner to be within Marginal Lines. - The name of the proprietor of the trademark or service mark trade name must be within the marginal lines and should not encroach upon the drawing. It should be signed by the owner or his Attorney of record. However, a printed or stamped signature or the use of seal accompanied by an indication in letters of the name of signatory is also accepted. RULE 409. When board may be turned on its side. - When the view is longer than the width of the sheet, the sheet should be turned on its side. RULE 410. Manner of mailing the Drawing to the Bureau. - Drawing transmitted to the Office should be sent flat, protected by a sheet of heavy binder's board, or should be rolled for transmission in a suitable mailing tube. They should never be folded. RULE 411. Color. - Where color is a material feature of the mark as used or intended to be used, the color or colors employed may be actually reproduced in the drawings and facsimiles. Otherwise, a statement must be made giving the name or names of the color or colors claimed indicating the principal part or parts of the mark which are in such color or colors. RULE 412. Informal Drawing. - A Drawing not executed in conformity with the foregoing rules may be accepted for the purpose of examination, but the Drawing

must be corrected or a new one furnished, as may be required, before the mark can be published for opposition or the application allowed. Substitute Drawings will not be accepted unless they have been required by the Examiner or unless correction of original Drawing would require that the mark or trade name be substantially entirely redrawn.

RULE 413. Use of an old Drawing in a new application. - In an application filed in place of an abandoned or rejected application, a new complete application is required, but the old Drawing, if suitable, may be used. The application must be accompanied by a request for the transfer of the Drawing, and by a permanent photographic copy, or an order for such copy, of the Drawing to be placed in the original file. A drawing so transferred or to be transferred cannot be amended. RULE 414. The small facsimiles of the Drawing, how prepared. - The ten small facsimiles of the Drawing must be printed in black ink or in color, if colors are claimed, one facsimile on Bristol board and the other nine facsimiles on an ordinary coupon bond paper and must be capable of being satisfactorily reproduced when published in the IPO Gazette. The size of the sheet on which these facsimiles are to be printed must be seventy millimeters (70 mm) long and thirty-five millimeters (35 mm) wide. RULE 415. Translation/Transliteration. - A translation or transliteration of the mark or of some parts of the mark must accompany the application if the mark or of some parts of the mark is/are foreign word(s), letter(s) and character(s), or foreign sounding. Transliteration is an act, process or instance of representing or spelling of words, letters or characters of one language in the letters and characters of another language or alphabet. Translation is an act, process or instance of translating as rendering from one language or representational system into another. RULE 416. Nice Classification. - The applicant must indicate the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the Nice Classification to which each group of goods or services belongs. CLASSIFICATION OF GOODS TITLE Class 1 Chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of

powders, liquids or plates, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry. 2 Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; coloring matters; dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions, dentrifices 4 Industrial oils and greases (other than edible oils and fats and essential oils );lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, nightlights and wicks 5 Pharmaceutical, veterinary and sanitary substances; infants'; and invalids' foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin 6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles); cables and wires (non-electric); lock-smiths' work ; metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores 7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators 8 Hand tools and instruments; cutlery, forks and spoons; side arms 9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers; calculating machines; fire-extinguishing apparatus 10 Surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth) 11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes 12 Vehicles; apparatus for locomotion by land, air or water

13 Firearms; ammunition and projectiles; explosive substances; fireworks 14 Precious metals and their alloys and goods in precious metals or coated therewith ( except cutlery, forks and spoons); jewelry, precious stones; horological and other chronometric instruments 15 Musical instruments (other than talking machines and wireless apparatus) 16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding materials; photographs; stationery, adhesive materials (stationery); artists' materials; paint brushes; typewriters and Office requisites (other than furniture); instructional and teaching material (other than apparatus);playing cards; (printers') type and cliches (stereotype) 17 Gutta percha, india rubber, balata and substitutes, articles made from these substances, and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacturers; materials for packing, stopping or insulating; asbestos, mica and their products; hose pipes (non-metallic) 18 Leather and imitations of leather, articles made from these materials, and not included in other classes; skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery 19 Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; road-making materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots 20 Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these material, or of plastic 21 Small domestic utensils and containers (not of precious metal, nor coated therewith);combs and sponges; brushes (other than paint brushes);brush-making materials; instruments and materials for cleaning purposes; steel wool; unworked or semi-worked glass (excluding glass used in building); glassware, porcelain and earthenware not included in other classes 22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hair, capoc, feathers, seaweeds, etc.); raw textile materials 23 Yarns, threads 24 Tissues (piece goods); bed and table covers; textile articles not included in other classes 25 Clothing, including boots, shoes and slippers

26 Lace and embroidery, ribbons and braids; buttons, press buttons, hooks and eyes, pins and needles; artificial flowers 27 Carpets, rugs, mats and matting; linoleums and other materials for covering existing floors; wall hangings (non-textile) 28 Games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for Christmas trees 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs; milk and other dairy products; edible oils and fats; preserves, pickles 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes pastry and confectionery, ices; honey, treachel; yeast, baking-powder; salt mustard; pepper, vinegar, sauces; spices; ice 31 Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt 32 Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages. 33 Wines, spirits and liqueurs 34 Tobacco, raw or manufactured; smokers' articles; matches

(b) CLASSIFICATION OF BUSINESS OR SERVICES 35 Advertising and business 36 Insurance and financial 37 Construction and repair 38 Communication 39 Transportation and storage 40 Material treatment 41 Education and entertainment 42 Miscellaneous

RULE 417. Broad terms. - In any application, the use of broad terms in identifying the goods, business or services shall be unacceptable. Applicants whose application are based on foreign registration shall be required to specify the goods covered by such foreign registration in all cases where the foreign registration used broad terms in identifying the goods, business or services. RULE 418. Single registration for goods and/or services. - One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application, such an application shall result in one registration. RULE 419. Division of Applications. - (a) Any application referring to several goods or services referred to as the "initial application" may be divided by the applicant into two (2) or more applications hereafter referred to as the "divisional applications" by distributing among the latter the goods or services referred to in the initial application. (b) A single class shall not be subdivided. (c) The divisional applications must be submitted before examination of the initial application or within two (2) months from mailing date of the first action of the Bureau. (d) Upon receipt of the divisional applications, the Office shall cancel the initial application together with its application number. New application numbers shall be given to the divisional applications but the filing date shall be the same as the filing date of the initial application. The divisional applications shall likewise preserve the benefit of the right of priority of the initial application. PART 5 The Filing Date RULE 500. Filing Date. - Subject to the provisions on priority right, the filing date of an application shall be the date on which the Office received the payment for the required fee and the following indications and elements in English or Filipino: (a) An express or implicit indication that the registration of a mark is sought; (b) The identity of the applicant; (c) Indications sufficient to contact the applicant or his representative, if any; (d) A reproduction of the mark whose registration is sought; and (e) The list of the goods or services for which the registration is sought.

RULE 501. Application Number and Filing Date. - (a) Before starting to examine the registrability of a mark, the Examiner or such other personnel as the Director may authorize, shall examine whether the application satisfies the requirements for the grant of a filing date as provided in these Regulations. If the application does not satisfy the filing date requirements, the Bureau shall notify the applicant

who shall, within a period of one (1) month from mailing date of the notice, complete or correct the application as required; otherwise, the application shall be considered withdrawn. (b) If the application did not satisfy the requirements for grant of a filing date at the time that the filing fee and other indications were received by the Office, the filing date that was given shall be cancelled and a new filing date shall be entered in the records of the Office. The new filing date shall be the date on which the Office received the completed or corrected application as specified in the notice to the applicant. PART 6 Proceedings in the Examination of an Application for Registration CHAPTER 1 Nature of the Proceedings RULE 600. Application prosecuted ex parte; Protests. - An application for registration is prosecuted ex parte by the applicant; that is, the proceedings are like a lawsuit in which there is a plaintiff (the applicant) but no defendant, the court itself (the Examiner) acting as the adverse party. No attention shall be paid to ex parte statements or protests of persons concerning pending applications to which they are not parties, unless information of the pendency of these applications shall have been voluntarily communicated by the applicants. RULE 601. Proceedings a contest between Examiner and the Applicant. - An ex parte proceeding in the Office for the registration of a mark is a law contest between the Examiner, representing the interest of the public and the applicant (or his attorney), representing his own private interests. RULE 602. Applicant supposed to look after his own interests. - The Office, represented by the Examiner, is not supposed to look after the interest of an applicant. The law imposes that duty upon the applicant himself. The Examiner is charged with the protection of the interests of the public and hence must be vigilant to see that no registration issues for a mark contrary to law and these Regulations. RULE 603. Preliminary adverse action of the Examiner valuable to Applicant. The positive value of a preliminary adverse action of the Examiner should be fully appreciated by the applicant or his attorney. A hard-fought application will produce a registration much more likely to stand in court than a registration which has slid through the Office easily. The reason for this is that every point raised by the Examiner and finally decided by the Office in favor of the applicant will give the applicant a prima facie standing on that point in court.

The Office is empowered by law to pass upon applications for registration and, because of the authority vested in it, its decisions with respect to the grant of a registration, or on any point connected with it, are presumed to be correct by the courts. RULE 604. A preliminary rejection should not be taken literally; Examiner is only trying to be helpful. - A preliminary rejection by the Examiner is never to be taken literally. An applicant should remember that the Examiner may not be actually rejecting his application. The Examiner may in fact be quite prepared to admit the application, and is only trying to give the applicant a chance to explain away some reference or some difficulty rather than have him wait until the registration is granted and become involved in a litigation, when it may then be difficult for him to make the explanation.

CHAPTER 2 Manner of Examination of an Application for Registration; Action by the Examiner; Response by the Applicant; Abandonment; Revival RULE 605. Order of examination; priority of action. - (a) Applications shall be examined for registrability in the order in which the complete requirements for grant of filing date are received by the Office. Ordinarily, the order of the application number assigned to them by the Office will be followed and no application bearing a higher application number shall be examined in advance of the applications with lower application numbers unless the filing date of the application bearing the higher number is earlier than those bearing a lower number. (b) Priority of action and/or examination may be granted upon petition under oath with payment of fees and upon order of the Director, to trademark applications falling under any of the following: 1. Re-filing by the same registrant or assignee of a mark previously registered but cancelled for failure to meet the maintenance requirement. 2. Re-filing by the same applicant of a mark previously filed but abandoned and can no longer be revived. 3. An application for registration of a mark, names or abbreviation of names, logos of any nation, intergovernmental or international organizations. 4. An application for registration of a mark, names, abbreviation of names, logos of any sports competition conducted within a short period of time or when periodically conducted, the TM registration is necessary to promote goodwill or image before the commencement of the sports activity. 5. An application for registration of mark, names, abbreviation of names, logos of product and services of applicants introduced and/or participating in a trade mission and/or exposition local or abroad and will be conducted within a short period of time. 6. An application for registration of mark, names, abbreviations of names, logos of a religious, social or charitable, educational activity the early registration of which is necessary to achieve its purpose or objective. 7. Domain names (as service mark); and, 8. Trademarks, servicemarks, and tradenames used or to be used in Information

and Communications Technology (ICT) infrastracture. [As amended by Office Order No. 20 (2001)] RULE 606. Jurisdiction of the Examiner. - The Examiners shall have original jurisdiction over the examination of all applications for registration and over their allowance for publication in the IPO Gazette for purposes of opposition. Their decision, when final, shall be subject to petition and appeal to the Director. Applicants, their attorneys or agents shall take up the problems arising from their pending applications only with the respective Examiners in charge and with no other person in the Office. RULE 607. Examination of the application; Action by the Examiner. (a) If, after the examination, the applicant is found not entitled to registration for any reason, he will be so notified by the Examiner. He will be advised of the reasons therefor and of any formal requirements or objections, and he will be given such information and references as may be helpful to him in the further prosecution of his application. (b) All Examiners are required to include all grounds of objection existing at the time of the issuance of an action in that action. Piece meal action shall be prohibited.

Rule 608. Disclaimers. The basic purpose of disclaimers is to make of record, that a significant element of a composite mark is not being exclusively appropriated apart from the composite. The following portions of a mark when forming part of the composite mark, must be disclaimed to permit registration, namely (a) a generic term; (b) a descriptive matter in the composite mark; (c) a matter which does not function as a trademark, or service mark or a trade name. Such disclaimer shall not prejudice or affect the applicant's rights then existing under some other law or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant's rights to registration on another application of later date, where the disclaimed matter has become distinctive of the applicant's goods, business or services. Where the examiner determines that any portion of a mark contains unregistrable matter which must be disclaimed, he shall communicate his finding to the Applicant by means of an Action document. If the applicant fails to respond within the time allowed under these Rules, the finding of the examiner shall become final and the unregistrable matter shall be disclaimed. [as amended by Office Order No. 39 (2002)]

RULE 609. Interview with the Examiners: when no interview is permitted. Interviews with Examiners concerning applications pending before the Office can be held only upon written request specifying the query he would want to propound and after payment of the required fee, but in respect of which the Examiner has the discretion to grant the interview or instead reply to the query in writing. The interview shall take place within the premises of the Office and during regular office hours as specified by the Examiner. All interviews or conferences with Examiners shall be reduced to writing and signed by the Examiner and the applicant immediately after the conference. Such writing shall form part of the records of the Office. Interviews for the discussion of pending applications shall not be held prior to the first official action thereon. RULE 610. Period for response, action by applicant. - The applicant has two (2) months from the mailing date of any action of the Examiner to respond thereto. Such response may be made with or without amendment and must include such proper action by the applicant as the nature of the action of the Examiner and the condition of the case may require. The period to respond may be extended upon written request and upon payment of the required fee but in no case shall the total period to respond exceed four (4) months from the mailing date of the Examiner's action requiring the response. RULE 611. Communications other than the original. - "Communication" shall mean any response filed with the Office except compliance with filing date requirements. The Office shall accept communications to it by telecopier, or by electronic means. When communications are made by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where required, the indication in letters of the name of the natural person whose seal is used, must appear. Within twenty-four (24) hours from receipt of the telefacsimile by a machine of the Office, the Examiner shall confirm the date of receipt of the telefacsimile by means of a notice requiring the applicant to pay the cost, as may be established by the Office from time to time, incurred by the Office to enable the Office to receive such telefacsimile. The original copy such communication and the payment of the cost herein provided must be received by the Office within one (1) month from date of receipt of the telefacsimile. Otherwise, the communication shall be deemed withdrawn and expunged from the records. In all cases, the burden of proof lies on the applicant that such documents have been received by the Office. RULE 612. Re-examination. - After response by the applicant, the application will be re-examined or reconsidered by the Examiner, and if the registration is again refused or formal requirements insisted upon, but not stated to be final, the applicant may respond again. RULE 613. Final Action. - On the first or any subsequent re-examination or reconsideration, the Examiner may state that the refusal of the registration or the insistence upon a requirement is final. Thus, the applicant's recourse is limited to an appeal to the Director or to a compliance with the requirement made by the

Examiner. RULE 614. Abandonment; Incomplete Response. - If an applicant fails to respond, or to submit a complete response, within the period given counted from the mailing date of an action of the Examiner, the application shall be deemed abandoned as of the day immediately following the last day of the aforesaid period.

RULE 615. Revival of Abandoned Application. - (a) An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, if it is shown to the satisfaction of the Director, and upon payment of the required fee, that the delay was due to fraud, accident, mistake, or excusable negligence. (b) A request to revive an abandoned application must be accompanied by a statement of the causes of the delay in submitting the complete response and by the proposed response, unless the same has been previously filed. Any application not revived within the specified time will be deemed forfeited upon the expiration of the three-month period to revive. (c) There shall be no revival of an abandoned application that has been revived once before on the same issue. RULE 616. Time less than four months; when request for extension should be made. - (a) The applicant may be required to prosecute his application in a time shorter than four months but not less than one (1) month from the mailing date of the examiner's action whenever such shorter time is deemed necessary or expedient. Unless the applicant is notified in writing that response is required in less than four months, a maximum period of four months is allowed. (b) The time for reply, when a time less than four months has been set, will be extended only for good and sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which the response of the applicant is due. In all cases, the maximum time within which to submit a response to an action shall not exceed four months from the mailing date of the action. RULE 617. Suspension of action by the Bureau. - Action by the Bureau may be suspended upon written request of the applicant for good and sufficient cause, for a reasonable time specified and upon payment of the required fee. The Examiner may grant only one suspension, and any further suspension shall be subject to the approval of the Director. An Examiner's action, which is awaiting a response by the applicant, shall not be subject to suspension. RULE 618. Provisional Allowance. - If the only issue remaining in an application based on foreign application claiming priority right is the submission of a certified

copy of the foreign or home registration, the Examiner may provisionally allow the application and suspend the submission of the certified copy of the foreign or home registration for a period not exceeding twelve (12) months counted from allowance. On request of the applicant and subject to the approval of the Director and payment of the required fee, said twelve month period may be extended for good cause by an additional period not exceeding twelve (12) months. Should the applicant fail to submit the certified copy of the foreign or home registration within the maximum period of twenty four (24) months counted from allowance, the applicant may waive his claim to priority right in writing and request that the application be considered based on intent to use. Said waiver and request shall be filed within two (2) months, without extension, counted from the expiration of the maximum twenty four (24) month period without need of any notice from the Office. Otherwise, the application shall be deemed forfeited. After submission of the request for conversion to intent to use and upon payment of the required fees, the application shall be published by the Office for opposition. Furthermore, the declaration of actual use shall be filed within three (3) years without extension and without need of notice counted from the date of the filing of request for conversion. Otherwise, the application shall be refused or the mark shall be removed from the register by the Director motu proprio. [As amended by Office Order No. 08 (2000)] RULE 619. Express Abandonment. - An application may be expressly abandoned by filing with the Bureau a written declaration of abandonment signed by the applicant himself or by the assignee of record.

CHAPTER 3 Amendments to the Application; Response to Objections of the Examiner RULE 620. Amendments to the Application. - The application may be amended to correct formalities, to overcome objections made by the Examiner, or for other reasons arising in the course of examination. RULE 621. Amendments to Description or Drawing. - Amendments to the description or drawing of the mark may be permitted only if warranted by the mark as shown on the labels originally filed, but may not be made if the nature of the mark is changed thereby. RULE 622. Manner of Making the Amendment. - In every amendment the exact word or words to be stricken out or inserted must be specified and the precise point indicated where the erasure or insertion is to be made. All such amendments must be on sheets of paper separate from the papers previously filed, and written on only one side of the paper. RULE 623. Prohibition against marking of papers or records of the Office by applicants. - The applicant or his representative shall not make any erasure,

addition, insertion, or mutilations of any papers or records of the Office. PART 7 Publication, Allowance And Issuance Of Certificate Of Registration RULE 700. Publication in the IPO Gazette; end of jurisdiction of the Examiner. An application for registration is subject to opposition proceeding before issuance of the certificate of registration. Thus, after examination or re-examination of an application for registration, if it should appear to the Examiner in charge of the examination thereof that the applicant is entitled to have his mark registered, the mark will, upon the recommendation of said Examiner, be ordered by the Director to be published in the IPO Gazette for opposition, and the applicant notified of such action. The jurisdiction of an Examiner over an application ceases after the Director has ordered the mark to be published for opposition. RULE 701. Examiner may Petition for the remand to his Jurisdiction, of an allowed application. - After allowance and within one (1) month from publication of the allowed application, the Examiner may again exercise jurisdiction over an application upon petition by him to the Director on the ground of newly discovered ex parte objections to the registration of the mark. After an application has been remanded to the Examiner, any amendment recommended by the Examiner may be approved by the Director and may be made without withdrawing the allowance, provided the payment for the issuance of the certificate has not been received by the Office. RULE 702. Examiner to be in charge of Publication for Opposition; Applications confidential prior to Publication. - The Examiner shall be in charge of all matters relating to the publication for opposition of all marks and trade names ordered by the Director to be published as provided in these Regulations. Access to files of pending applications will not be given to anyone prior to publication for opposition of the mark or trade name or name and other mark of ownership stamped on containers, without the written authority of the applicant. However, an index of pending applications stating the name and address of the applicant, a description of the mark or trade name or name and other mark of ownership, the goods, business or service or container with which the mark or trade name or name or other mark of ownership is used, the class number, the application number and filing date of the application will be available for public inspection as soon as practicable after filing. RULE 703. Allowance of application and Issuance of Certificate of Registration. (a) Upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition, whether or not verified and whether or not by means of the original copy, has been filed within one (1) month from the date of release for circulation

of the IPO Gazette publishing the application for opposition, and upon payment of the required fee, the office shall issue the certificate of registration. The Director of the Bureau of Legal Affairs shall issue such certification within two (2) months from the date of release for circulation of any IPO Gazette publishing applications for opposition. The issuance of the certificate of registration shall be published in the IPO Gazette and shall be entered on the records of the Office. (b) If the application is deficient in any formal matter relating to form, documents, or other papers necessary for the preparation and issuance of the certificate of registration or for the publication of such registration, the Examiner shall send a notice thereof to the applicant. The applicant shall complete such deficiency within two (2) months from mailing date of the notice; otherwise the application shall be declared abandoned. The abandoned application, however, may be revived subject to the requirements of these Regulations.

PART 8 Effect and Notice of Registration RULE 800. Rights Conferred. - (a) The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the mark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. (b) The exclusive right of the owner of a well-known mark which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use. RULE 801. Duration. - A certificate of registration shall remain in force for ten (10) 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 (1) 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 (1) 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. RULE 802. Non-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 803. Use 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 804. Use 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 805. Use 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 806. Certificates of Registration; Records and copies in registered cases. A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. After a mark or trade name or name or other mark of ownership has been registered, the statement, the drawings, and all documents relating to the case are subject to general inspection, and copies will be furnished upon payment of the required fees.

RULE 807. Contents of Certificate of Registration. - The certificate of 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.

RULE 808. Use of indications by Third Parties for Purposes Other than those for which the Mark is Used. - Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. PART 9 Other Proceedings Affecting the Application or Registration CHAPTER 1 Voluntary Surrender or Cancellation, Amendment, Disclaimer by the Registrant or by Assignee of Record, Correction of Mistakes RULE 900. Jurisdiction of the Examiner. - The Examiner shall have original jurisdiction over all matters relating to voluntary surrender, voluntary cancellation, voluntary amendment, and voluntary disclaimer of registration, and his decisions, when final, shall be subject to appeal to the Director in the same manner that final decisions of the Examiners in respect of applications for registration may be appealed to the Director. In all such matters, registrants or assignees, their attorneys or agents will deal with him exclusively, or with such other officials and employees whom the Director may designate to assist him. RULE 901. Cancellation upon Application by Registrant. - Upon application of the registrant, the Office may permit any registration to be surrendered for cancellation, and upon cancellation the appropriate entry shall be made in the records of the Office. The application for cancellation of registration shall be under oath and shall be duly authenticated or legalized if the registrant is a nonresident. RULE 902. Amendment or Disclaimer of Registration. - (a) Upon application of the registrant and payment of the prescribed fee, the Office, for good cause, may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Office upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof. (b) Upon application of the registrant and payment of the prescribed fee, a replacement certificate may be issued by the Office stating on its face the fact that it is a replacement and bearing the same entry regarding the amendment or disclaimer that was made on the certified copy of a lost or destroyed certificate. A duplicate original of such replacement certificate shall be kept in the records of the Office.

RULE 903. Correction of Mistakes Made by the Office. - Whenever a material mistake in a registration incurred through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating the fact and nature of such mistake shall be issued without charge, recorded and a printed copy thereof shall be attached to each printed copy of the registration. Such corrected registration shall thereafter have the same effect as the original certificate; or in the discretion of the Director of the Administrative, Financial and Human Resource Development Service Bureau a new certificate of registration may be issued in accordance with these Regulations and without charge. All certificates of correction heretofore issued and the registration to which they are attached shall have the same force and effect as if such certificates and their issuance had been authorized by the IP Code.

RULE 904. Corrections of Mistakes Made by Applicant. - (a) Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate upon the payment of the prescribed fee: Provided, That the correction does not involve any change in the registration that requires republication of the mark. (b) The application for correction must be under oath and must specify the mistake for which correction is sought, the manner in which it arose and must state that it occurred in good faith. (c) A copy of the certificate of correction shall be attached to each copy of the registration. RULE 905. Surrender, cancellation, amendment, disclaimer, and correction to be given publicity. - Notice of the cancellation, surrender, amendment, disclaimer, and correction shall be published in the IPO Gazette. The cost of publication shall be for the account of the registrant or assignee of record, except when the notice of correction refers to a mistake of the Office. CHAPTER 2 Recording of Assignments of Registration; or any other Instrument Affecting the Title to any Registered Mark, Including Licenses Division of Registration RULE 906. Assignment 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 907. Form of assignment or transfer. - (a) 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 908. Recordal 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. RULE 909. Assignment, 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 910. Date 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 911. A 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 912. Action may be taken by assignee of record in any proceeding in Office. - Any action in any proceeding in the Office which may or must be taken by a registrant or applicant may be taken by the assignee to the exclusion of the original owner, registrant, applicant or earlier assignee, provided the assignment has been recorded. Unless such assignment has been recorded, no assignee will be recognized to take action.

RULE 913. Clearance of Trademark License Agreement prior to recordal. - Any trademark license agreement shall be applied for clearance with the Documentation Information and Technology Transfer Bureau (DITTB) of the Office and shall be recorded only upon certification by the Director of the DITTB that the agreement does not violate Sections 87 and 88 of the IP Code. RULE 914. Division of Registration. - At any time during the life of a certificate of registration, and upon payment of the required fee, the owner of the registered

mark may request in writing and under oath that the registration be divided. The request must state the name and address of the owner of record or his representative of record, the mark, the number and date of issuance of the certificate to be divided, the goods and/or services into which the registration is to be divided specifying the number of the class of said goods and/or services according to the Nice Classification. The Bureau may grant the request to divide the registration provided that the division shall not involve any change in the registration that requires republication of the mark and provided that a single class shall not be subdivided. RULE 915. Cancellation 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 916. Contents 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. CHAPTER 3 Renewal of Registration RULE 917. Request for Renewal. - A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications: (a) An indication that renewal is sought; (b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the "right holder"; (c) The registration number of the registration concerned; (d) The filing date of the application which resulted in the registration concerned to be renewed; (e) Where the right holder has a representative, the name and address of that representative; (f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice

Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classifications; and (g) A signature by the right holder or his representative. (h) In case there has been material variation in the manner of display, five (5) sets of the new labels must be submitted with the application. RULE 918. When to file request for Renewal. - Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed.

RULE 919. Jurisdiction of the Examiner. - The Examiner shall have original jurisdiction over applications for renewal registration, and his decisions, when final, are subject to appeal to the Director under the conditions specified in these Regulations for appeals to the Director from the final decisions of the Examiners in respect of applications for registration. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons therefor. RULE 920. Need for appointing a resident agent. - If the registrant, assignee or other owner of the mark which is the subject of a petition for renewal registration is not domiciled in the Philippines, and if the petition for renewal is being filed by a person who is not his representative or resident-agent of record, the power of attorney appointing the person filing the petition as the representative of the registrant must be filed and, upon payment of the required fee, must be recorded before the Office can act upon the petition for renewal. RULE 921. Renewal 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 one-half (6 ) years shall be required to submit the declaration and evidence of actual use prescribed in these Regulations within one (1) 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 onehalf (6 ) 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 Regulations and, upon renewal, shall be reclassified in accordance with the Nice Classification. The renewal shall be for a duration of ten (10) 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 922. Prior 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. RULE 923. Refusal of renewal registration; appeal to the Director. - The application for renewal may be refused by the Examiner for any valid reason. The application for renewal may then be completed or amended in response to the refusal, or the case may be appealed to the Director if the refusal has become final. RULE 924. Certificate of renewal of Registration. - The Office may issue a certificate of renewal of registration in all cases where the request for renewal is approved and the registrant requests in writing and pays the required fee for the issuance of said certificate. The certificate of renewal of registration shall contain the number of the certificate of registration and the mark being renewed, the date of original issuance thereof, the duration of the renewal registration, all the data required to be contained in a certificate of registration provided in these Regulations including any limitation contained in the order of the Director approving the renewal of the registration.

PART 10 Registration of Stamped or Marked Container RULE 1000. Rules or registration of Trademarks and Service Marks to apply. Unless otherwise provided by these Regulations, the registration of container marks shall be the same as that of trademarks and service marks. RULE 1001. "Stamped or marked container" defined. - "Stamped or marked container" means, any container of goods upon which a mark is impressed or molded which will give a distinctive effect, provided that the mark cannot be deleted or removed from the container. The stamp or mark on the container must be legible and visible for registration. RULE 1002. No drawing required. - No drawing is required for this registration. In lieu of the drawing, two (2) photographs of the container, duly signed by the applicant or his representative, showing clearly and legibly the mark sought to be registered, shall be submitted. The photographs shall be of the same size as required for trademarks and service marks. No "sight" is required. RULE 1003. No Labels required; Sample may be required. - If the Examiner so requires, the applicant or his representative shall bring a sample of the container

to the Bureau on a date and time specified by the Examiner. The sample shall not be left in the Office and shall be brought by the applicant or his representative with him immediately after the viewing thereof by the Examiner. PART 11 Petitions and Appeal RULE 1100. Nature of the function of Examiners. - The function of determining whether or not an application for registration or renewal thereof should be allowed or denied under the facts disclosed in the application and in the references consulted by the Examiner and under the applicable law (statutory and decisional), is a quasi-judicial function and involves the exercise of judicial discretion. Thus, with respect to such function, the Director cannot lawfully exercise direct control, direction and supervision over the Examiners but only general supervision, exercised through a review of the recommendation they may make for the grant of registration and of other actions, and through a review of their adverse decisions by petition or appeal. RULE 1101. Petition to the Director to question the correctness of the action of an Examiner on a matter not subject to appeal. - Petition may be filed with the Director from any repeated action or requirement of the Examiner which is not subject to appeal and in other appropriate circumstances. Such petition, and any other petition which may be filed, must contain a statement of the facts involved and the point or points to be reviewed. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition. The Examiner, as the case may be, may be directed by the Director to furnish a written statement setting forth the reasons for his decision upon the matter averred in the petition, supplying a copy thereof to the petitioner. The mere filing of a petition will not stay the maximum period of four months counted from the mailing date of the Examiner's action subject of the appeal for replying to an Examiner's action nor act as a stay of other proceedings. RULE 1102. Appeals to the Director. - Every applicant for the registration of a mark or other mark of ownership may, upon the final refusal of the Examiner to allow registration, appeal the matter to the Director. Appeal may also be taken to the Director from any adverse action of the Examiner in any matter over which these Regulations give original jurisdiction to the Examiner. A second adverse decision by the Examiner on the same grounds may be considered as final by the applicant, petitioner, or registrant for purposes of appeal.

RULE 1103. Effect of a final decision of an Examiner which is not appealed. - A final decision of an Examiner which is not appealed to the Director within the time permitted, or, if appealed, the appeal is not prosecuted, shall be considered as

final to all intents and purposes, and shall have the effect of res judicata in respect of any subsequent action on the same subject matter. If an application is considered abandoned for failure of the applicant to respond to an action of the examiner on the merits e.g. citation of confusingly similar marks, the order declaring the application as abandoned which has become final shall likewise have the effect of res judicata. RULE 1104. Time and manner of appeal. - Any petition or appeal must be taken by filing the petition in duplicate or a notice of appeal, as the case may be, and payment of the required fee within two (2) months from the mailing date of the action appealed from, must specify the various grounds upon which the appeal is taken, and must be signed by the petitioner or appellant or by his attorney of record. The period herein provided shall, in no case, exceed the maximum period of four (4) months from the mailing date of the action appealed from. RULE 1105. Appellant's brief required. - In case of an appeal, the appellant shall, within two (2) months, without extension, from the date of filing of the notice of appeal, file a brief of the authorities and arguments on which he relies to maintain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dismissed. RULE 1106. The Examiner's answer. - The Examiner shall furnish a written statement in answer to the petition or appellant's brief, as the case may be, within two (2) months from the order of the Director directing him to submit such statement. Copy of such statement shall be served on the petitioner or appellant by the Examiner. RULE 1107. Appellant's reply. - In case of an appeal, the appellant may file a reply brief directed only to such new points as may be raised in the Examiner's answer, within one (1) month from the date copy of such answer is received by him. RULE 1108. Appeal to the Director General. - The decision or order of the Director shall become final and executory fifteen (15) days after receipt of a copy thereof by the appellant unless within the said period, a motion for reconsideration is filed with the Director or an appeal to the Director General has been perfected by filing a notice of appeal and payment of the required fee. Only one motion for reconsideration of the decision or order of the Director shall be allowed. RULE 1109. Appellant's brief required. - The appellant shall, within one (1) month from the date of filing of the notice of appeal, file a brief of the authorities and arguments on which he relies to maintain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dismissed. RULE 1110. Director's comment. - The Director shall submit within one (1) month his comments on the appellant's brief if so required by the Director General.

RULE 1111. Appeal to the Court of Appeals. - The decision of the Director General shall be final and executory unless an appeal to the Court of Appeals is perfected in accordance with the Rules of Court applicable to appeals from decisions of Regional Trial Courts. No motion for reconsideration of the decision or order of the Director General shall be allowed.

FINAL PROVISIONS SECTION 1. Correspondence. - The following regulations shall apply to correspondence between registrants/applicants and the Office or the Bureau: (a) Business to be transacted in writing. All business with the Office or Bureau shall be transacted in writing. Actions will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding. (b) Personal attendance of applicants and other persons unnecessary. Unless otherwise provided, the personal attendance of applicants and other persons at the Office is unnecessary. Their business can be transacted by correspondence. (c) Correspondence to be in the name of the Director of Trademarks. All Office letters with respect to matters within the jurisdiction of the Bureau must be sent in the name of the Director of Trademarks. All letters and other communications intended with respect to such matters must be addressed to him and if addressed to any other officer, they will ordinarily be returned. (d) Separate letter for each case. In every case, a separate letter shall be written in relation to each distinct subject of inquiry. (e) Letter relating to applications. When a letter concerns an application it shall state the name of the applicant, the mark or trade name or name or other mark of ownership sought to be registered, the application number and the filing date of the application. (f) Letters relating to registrations. When the letter concerns a registered mark, it shall state the name of the registrant, the mark registered, the number and date of the certificate of registration, and the classes of goods or services according to the Nice Classification. (g) Subjects on which information cannot be given. The Office cannot respond to inquiries as to whether or not a mark is acceptable for registration in advance of the filing of an application. On the propriety of making an application for the registration of a mark, the applicant must judge for himself or consult an attorney-at-law. The Office is open to him, and its records pertaining to all registrations granted may be inspected either by himself or by any attorney or agent he may call to his aid. Further than this the Office can render him no assistance until his application comes regularly before it in the manner prescribed by law and by these Regulations. A copy of the law, rules, or circular of information, with a section marked, set to the individual making an inquiry of the character referred to, is intended as a respectful answer by the Office. Examiners' digests are not open to public inspection. The foregoing shall not, in

any way, be interpreted to prohibit the Office from undertaking an information dissemination activity in whatever format, to increase awareness on the trademark law. SECTION 2. Fees and Charges to be Prepaid; Fees and Charges Payable in Advance. - Express charges, freight, postage, telephone, telefacsimile including cost of paper and other related expenses, and all other charges on any matter sent to the Office must be prepaid in full. Otherwise, the Office shall not receive nor perform any action on such matters. The filing fees and all other fees and charges payable to the Office shall be collected by the Office in advance of any service to be rendered. SECTION 3. Applications pending on Effective Date of the IP Code. - The following regulations shall apply to applications pending on the effective date of the IP Code on January 1, 1998 (referred to in this Section as "pending applications"): SECTION 3.1. Amendment of Pending Applications. - On or before December 15, 1998, all pending applications may be amended, if practicable, to bring them under the provisions of the IP Code. Accordingly, applicants with pending applications for registration in the former Supplemental Register who wish to pursue the grant of registration may amend their applications to comply with requirements for registration under the IP Code. SECTION 3.2. Filing 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 registrations 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 (3) 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 prorio.[As amended by Office Order No. 17 (1998)]

SECTION 3.3. Processing 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 3.3.1. Interference. - In all

cases where interference could have been declared under Republic Act No. 166, as amended, and its implementing rules and regulations, as amended, but the same can not be declared such as when one of the applications has been amended and prosecuted under the IP Code while the other application or applications were not, the application which first meets all the requirements for registration shall be allowed and published for opposition in the IPO Gazette in accordance with these Regulations. The other applicant or applicants shall have the right to file a notice of opposition, without need of paying the filing fee, to determine whether or not any of the applicant/s and or oppositor/s has the right to the registration of the mark, and, all other issues including the registrability of the mark. SECTION 3.4. Duration of Registration. - 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 (20) years or ten (10) years as follows: (a) Twenty (20) years, in the case of pending applications published for opposition prior to the effectivity of these Regulations with respect to which no notice of opposition was filed within the prescribed period under Republic Act No. 166 of thirty (30) days from release for circulation of the corresponding Official Gazette (BPTTT or IPO) as certified by the Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs. (b) Ten (10) years, in the case of pending applications published for opposition after the effectivity of these Regulations with respect to which no notice of opposition is filed as certified by the Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs in accordance with these Regulation. (c) Ten (10) years, in the case of pending applications subject of opposition or any other proceeding before the Office. SECTION 3.5. Duration 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 (10) years and shall be subject to the same requirements for renewal as a registration granted under the IP Code. SECTION 3.6. (a) Abolition of the Supplemental Register. - In compliance with the state policy declared in the IP Code, the IPO shall endeavor to issue certificates of registration that can stand up to scrutiny in infringement and other cases. Considering that (i) marks or trade names that are not registrable on the principal register under Republic Act No. 166 are registrable in the Supplemental Register; (ii) marks or trade names not registrable on the said principal register are not registrable under the IP Code; and , (iii) the Supplemental Register was abolished by the IP Code, all applications for registration in the Supplemental Register pending upon effectivity of the IP Code shall be examined in accordance with the IP Code and such applications which do not meet requirements for registration under the IP Code shall be rejected.

[as amended by Office Order No. 40 (2002)] (b) Release of Certificates of Registration of Applications in the Supplemental Register Allowed Prior to Effectivity of the IP Code. A Certificate of registration may be released covering an application for registration in the Supplemental Register provided that all the following requirements occurred prior to the effectivity of the IP Code, i.e. on or before 31 December 1997 : (1) such application had been allowed and the allowance was approved by Atty. Rosario N.E. Macatangay, Chief of the Trademark Examining Division of the then Bureau of Patents Trademarks and Technology Transfer as evidenced by the original copy of the Allowance in the file wrapper of the application; (2) Notice of Issuance of Certificate of Registration had been issued as evidenced by the original copy of the Notice in the file wrapper of the application or the applicant's original copy thereof, and (3) all the required fees were fully paid for by the applicant as evidenced by the original copy of the Official Receipt, a photocopy of which shall be submitted by the applicant to the Bureau for inclusion in the corresponding file wrapper. The Registration shall remain in force for twenty (20) years from the date of allowance, without possibility of renewal, and subject to compliance with all the requirements for maintenance of the registration. The mark shall be published in the IPO Gazette and may be subject to cancellation on grounds provided under the law. [as amended by Office Order No. 40 (2002)]

SECTION 3.7. Renewal of a Registration in the Supplemental Register. - The following regulations shall apply to the renewal of a registration in the Supplemental Register under Republic Act No. 166: SECTION 3.7.1 Registrations Subsisting on January 1, 1998. - The registration, or extension thereof, in the Supplemental Register under Republic Act No. 166 of a trade name or mark which was subsisting on the effectivity of the IP Code on January 1, 1998 shall remain in force for the entire term for which it was granted. However, such registration shall no longer be subject to renewal. SECTION 3.7.2 Registrations, or Extension Thereof, with Term Ending on or Before December 31, 1997. - The renewal of a registration, or any extension thereof, in the Supplemental Register whose term ended on or before December 31, 1997 may be granted as follows : (a) The application for renewal of registration in the Supplemental Register was seasonably filed including full payment of the required fee pursuant to Section 15 of Republic Act No. 166 and the applicable regulations; (b) Full compliance with all the requirements for renewal shall have been made by the applicant on or before December 31, 1998; (c) The renewal shall be for a term of twenty (20) years counted from the date of expiration of the registration or renewal subject of

the application; and, (d) The renewal herein granted shall no longer be subject to renewal. SECTION 3.7.3. Notice to Comply. - For the effective implementation of Section 3.7.2 (b), all concerned examiners together with the Chief of the Trademark Examining Division of the former Bureau of Patents Trademarks and Technology Transfer have been directed to mail to the applicants the corresponding notice to comply with requirements for renewal of registration, or extension thereof, on or before October 31, 1998. Further, applicants who have not received said notice may request for a copy thereof from the examiner concerned who shall issue said copy within two (2) working days from receipt of the request. SECTION 4. Repeals. - All rules and regulations, memoranda, circulars, and memorandum circulars and parts thereof inconsistent with these Regulations particularly the Rules of Practice in Trademark Cases, as amended, are hereby repealed; Provided that such earlier rules or parts thereof shall be continued only for the purpose of prosecuting applications for registration in the principal register filed as of December 31, 1997 wherein the applicants expressly elected to prosecute said applications under Republic Act No. 166; and, Provided, further, that there are no applicable provisions in these Regulations. SECTION 5. Separability. - If any provision in these Regulations or application of such provision to any circumstance is held invalid, the remainder of these Regulations shall not be affected thereby. SECTION 6. Effectivity. - These rules and regulations shall take effect fifteen (15) days after publication in a newspaper of general circulation. Done this 29th day of October 1998.