Divisional applications from earlier-filed divisional applications are now acceptable in IPOPHL
The Bureau of Patents issued on 17 September 2018 BOP Memorandum Circular No. 18-003, which sets a standard procedure for filing divisional applications and changes the rules on filing succeeding divisional applications.
A divisional application may arise in cases of restriction, following a lack of Unity of Invention rejection (‘mandatory divisional application’) or upon the applicant’s own initiative (‘voluntary divisional application’). Applicants may now file divisional applications from an earlier-filed divisional application. The conditions for filing and time limits to consider are as follows:
Mandatory divisional applications
A mandatory divisional application may be filed on a parent application if said parent application does not meet the requirements of Unity of Invention. It must be filed within four months from the date of election, or from the date the requirement for division becomes final. For uniform understanding of the reckoning period, an indication that the restriction is made final will be stated in the subsequent Office Action, and the four-month period shall be reckoned from the mailing date of the Office Action.
For a succeeding mandatory divisional application arising from an earlier divisional application wherein Unity of Invention rejection is raised, the four-month period will be counted from the date of election, or from the date the requirement for division becomes final in the earlier divisional application. For uniform understanding of the reckoning period, an indication that the restriction is made final will be stated in the subsequent Office Action, and the four-month period shall be reckoned from the mailing date of the Office Action.
Voluntary divisional applications
A voluntary divisional application may be filed on a pending parent application before the said parent application is withdrawn or patented, provided that the subject matter does not go beyond the content of the parent application.
Succeeding voluntary divisional applications may be filed and considered on a pending earlier divisional application, provided that the earlier divisional application is still pending.
IPOPHL launces new patent search tool
The IPOPHL deployed on 17 September 2018 a new patent and design search tool using the WIPO Publish platform. It allows the general public to search more easily for all granted inventions, as well as published and registered utility models, and industrial design applications.
In using the WIPO Publish search platform, patent information may be searched by entering keywords, names of applicants, patent application numbers and many other search criteria. It is also possible to apply filtering search mechanisms in the basic search mode or choose specific fields in an application’s bibliographic data in the advanced search mode.
The search tool is accessible via the following links:
- Invention and Utility model: http://onlineservices.ipophil.gov.ph/wopublish-search/public/patents
- Design: http://onlineservices.ipophil.gov.ph/wopublish-search/public/designs.
The old IPOPHL patent search tool is no longer be available as of 1 December 2018.
IPOPHL adopts revised patent examination guidelines
The Bureau of Patents issued in January 2018 revised examination guidelines on various technology fields.
The new guidelines on the examination of biotechnological applications focus on the patentability of micro-organisms, nucleic acids and polypeptides, antibodies, stem cells and transgenic cells, and plants and animals in the Philippines. The following are eligible for patent protection:
- a micro-organism that is isolated from its natural environment or produced by means of a technical process, eg, using a microbiological process, even if such micro-organism occurred in nature. If the micro-organism is isolated from its natural environment, the specification shall provide the characterising technical features of said micro-organism;
- biological materials, such as nucleic acids and genes or polypeptides and proteins found in the cells, whether DNA or RNA, that have been removed or isolated from the biological environment in which they naturally exist;
- antibodies that have been removed or isolated by technical means from the biological environment in which they naturally exist;
- applications relating to the use of stem cells and methods of obtaining, producing and manufacturing thereof, if the sources of said stem cells do not constitute direct destruction of human embryos; and
- inventions that concern plants and animals, provided that the invention is not technically confined to a single animal or plan variety.
The new guidelines on the examination of information communications technology and computer-implemented inventions focus on the patentability of inventions relating to, among others, information systems, communication systems, telecommunications, radio communications, computer-implemented systems and software-related systems. A claim directed to a computer program per se is an ineligible subject matter. Thus, a claim should be drafted in a manner wherein the program instructions are cooperatively working with a programmable device (eg, embodied in a tangible computer-readable recording medium or data carrier).
Finally, the revised guidelines on the examination of pharmaceutical applications involving known substances focus on the patentability of new forms of known substances, the new use of known substances and mere use of known processes, setting forth the following criteria for patentability:
- a new form of known substance is patentable if:
- the new form is not an inherent result that necessarily and inevitably flows from the explicit disclosure in the prior art;
- the new form resulted in enhancement of the known efficacy attributable to the known substance; and
- the enhancement is not drawn to an advantage or benefit that necessarily and inevitably follows from the subject matter expressly disclosed in the prior art;
- a new use of a known substance is patentable if:
- the new use is not a newly found working mechanism of the known medical use;
- the new use is not conceivable from the known working mechanism;
- the new use is not directed to a more specific concept of the known medical use; and
- the new use does not inevitably result from closely related pharmacological effects of the known substance; and
- a claim directed to a known process is patentable if:
- the known process resulted in a new product; and
- the known process employed a new reactant.
IPOPHL implements revised rules on mediation
The IPOPHL promulgated on 26 July 2018 the revised rules on mediation (IPOPHL Memorandum Circular No. 008) to shift from mandatory referral to mandatory mediation of intellectual property cases filed before the Office. The revised rules came into force on 5 October 2018, 30 days after they were published in a newspaper of general circulation and posted on the IPOPHL website.
Under the revised rules, the following cases are required to undergo mediation:
- administrative complaints for violation of intellectual property rights (IPV) and/or unfair competition;
- inter-partes cases;
- disputes involving technology transfer payments;
- disputes relating to the terms of a licence involving the author’s rights to public performance or other communication of his work; and
- Appeals to the Office of the Director General from the decisions of the Bureau of Copyright and Other Related Rights, the Bureau of Legal Affairs, and the Documentation, Information and Technology Transfer Bureau.
However, IPV cases with applications for temporary restraining orders or preliminary injunction or attachment, or other ancillary remedies, will only be submitted to mediation upon the joint written motion of both parties.
Under the revised rules, a case filed in any of the originating bureaux or an appeal to the Director General shall be submitted to the BLA’s Alternative Dispute Resolution Services (ADRS) immediately after the filing of the answer or comment to the appeal. The proceedings in the originating office are suspended until the case is returned by the ADRS.
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