IPOPHL Patent Agent cheat sheet

Patentable invention requires novelty, inventive step, and industrial applicability (IP Code Sec. 21).

Novelty is destroyed if the invention was publicly known, used, or described in a printed publication before the filing date, subject to the 12-month grace period for certain disclosures (Sec. 25).

Inventive step: an invention is not patentable if it would have been obvious to a person skilled in the art at the filing date.

Exclusions from patentability include discoveries, scientific theories, mathematical methods, methods of treatment by surgery or therapy, and living organisms (Sec. 22).

The right to a patent belongs to the inventor, their heirs, or assigns; joint inventors own equally unless agreed otherwise (Sec. 28).

First-to-file rule: priority is determined by the earliest filing date of a complete application (Sec. 29).

A patent application must contain a request, description, claims, drawings (if necessary), and abstract (Sec. 32).

The term of a patent is 20 years from the filing date, subject to payment of annual fees (Sec. 50).

Compulsory licensing may be granted after 4 years from filing or 3 years from grant, whichever is later, on grounds such as insufficient working (Sec. 93).

A utility model protects any new and industrially applicable technical solution, not requiring inventive step (IP Code Sec. 109).

Utility model registration requires novelty and industrial applicability; inventive step is not a condition.

The term of a utility model is 7 years from the filing date, without renewal (Sec. 109.3).

A utility model application may be converted from a patent application or vice versa before grant (Sec. 110).

Substantive examination of a utility model may be requested by any person; otherwise registration proceeds on formal examination.

A utility model cannot cover processes, methods, or uses; it is limited to products or devices.

The same prior art test applies as for patents, but with a lower threshold for inventive height.

Annual fees are due on the anniversary of the filing date; non-payment leads to lapse (Sec. 109.4).

An industrial design is any composition of lines or colors or any three-dimensional form giving a special appearance to a product (IP Code Sec. 112).

A design must be new and ornamental; it must not be dictated solely by technical function.

The term of an industrial design registration is 5 years from filing, renewable for two additional 5-year periods (Sec. 118).

A design application must include drawings or photographs of the design and a description of its features.

Priority may be claimed based on an earlier foreign application within 6 months (Paris Convention).

Examination is formal; substantive examination occurs only if a third party files an opposition or requests examination.

A design is not registrable if it is contrary to public order or morality or if it consists of national symbols.

The creator has the right to be mentioned; the registration confers exclusive rights to prevent others from making, selling, or importing articles bearing the design.

The PCT allows filing a single international application in one language with one receiving Office for multiple designated States.

An international application has international filing date, international search, and international publication phases.

Chapter I: international search and preliminary examination optional; Chapter II: international preliminary examination on demand.

The international search report (ISR) and written opinion are issued by the International Searching Authority (ISA).

Priority claim under PCT must be made within 12 months of the earliest application (with 2-month restoration possible).

National phase entry in the Philippines is within 30 months from the priority date (IP Code Sec. 37).

The PCT does not grant a patent; it only postpones national processing.

The international application must contain a request, description, claims, drawings, and abstract.

Amendments under PCT Article 19 may be filed with the International Bureau after the ISR; Article 34 amendments during Chapter II.

Search strategies include keyword, classification (IPC/CPC), and citation-based searching.

The IPOPHL maintains an online patent database and the ASEAN PatentScope provides access to regional filings.

Prior art search should cover patents, utility models, scientific literature, and non-patent literature.

The IPC (International Patent Classification) is the primary classification system used by IPOPHL.

Search reports should document databases, search strings, and date of search for validity.

Novelty search aims to find a single prior art reference disclosing all features of the claimed invention.

Freedom-to-operate search focuses on active patents in a jurisdiction that could be infringed.

Patent family search helps identify equivalent filings in multiple jurisdictions.

Search results should be analyzed for relevance and date relative to the filing/priority date.

The IPOPHL Examination Guidelines for Patents set out the procedure for substantive examination, including unity of invention and clarity of claims.

Examiners issue a first office action; applicant must respond within 2 months, extendible for another 2 months (Sec. 47).

Substantive examination may be requested at filing or within 6 months from publication (Sec. 42).

Patent analytics metrics include number of filings, grants, pendency, and technology fields.

The IPOPHL publishes statistics on patent applications and registrations on its website.

Examination guidelines require claims to be clear, concise, and supported by the description.

Unity of invention is assessed under PCT Rule 13; lack of unity leads to division requirement.

The Doctrine of Equivalents may be applied in infringement analysis but not during examination.

Examiners may cite prior art from any source, including foreign patents and non-patent literature.

The IPOPHL uses the ASEAN Patent Examination Co-operation (ASPEC) for work sharing among member states.

Technology transfer agreements involving IP must be registered with the IPOPHL if they contain certain restrictive clauses (IP Code Sec. 88).

Mandatory provisions include confidentiality, dispute resolution, and governing law.

Prohibited clauses include exclusive grantback, restrictions on use of competing technologies, and price-fixing (Sec. 87).

The IPOPHL may cancel or amend a license agreement that violates the law.

Voluntary licensing is encouraged; compulsory licensing is an exception.

Royalty rates are not fixed by law but must be reasonable and not anti-competitive.

The licensor must disclose relevant technical information and grant the licensee the right to exploit the technology.

The licensee must pay royalties and keep records; the licensor may audit.

Technology transfer agreements must be in writing and registered to be enforceable against third parties.

The IPOPHL Bureau of Legal Affairs (BLA) has original jurisdiction over IP infringement, unfair competition, and licensing disputes.

Mediation is mandatory for certain cases before the BLA; parties may settle amicably.

The IPOPHL may impose administrative penalties including fines, cease-and-desist orders, and cancellation of registrations.

Appeals from BLA decisions go to the Director General; further appeal to the Court of Appeals.

The IPOPHL has a mediation center and promotes alternative dispute resolution (ADR).

Criminal actions for trademark counterfeiting and piracy are filed with the regular courts.

Prescription period for civil actions is 4 years from the cause of action (IP Code Sec. 229).

The BLA may award damages and attorney's fees in infringement cases.

The IPOPHL's Enforcement Office conducts enforcement operations and may seize counterfeit goods.

A trademark is any visible sign capable of distinguishing goods or services, including words, names, symbols, and colors (IP Code Sec. 121).

Registration requires distinctiveness and prior use or bona fide intention to use.

The term of a trademark registration is 10 years from filing, renewable for 10-year periods (Sec. 134).

A Declaration of Actual Use (DAU) must be filed within 3 years from filing and within 1 year from renewal (Sec. 124.2).

Opposition may be filed within 30 days from publication in the IPOPHL Gazette (Sec. 134).

Collective marks and certification marks are registrable.

Well-known marks are protected even without registration (Paris Convention Art. 6bis).

The IPOPHL may cancel a registration for non-use after 5 years from registration.

Trademark infringement occurs when a mark is used in commerce that is likely to cause confusion.

Copyright protects original works of authorship in literary, artistic, musical, and scientific domains (IP Code Sec. 172).

Copyright arises upon creation; registration is not required but provides prima facie evidence of ownership.

The term for literary and artistic works is the life of the author plus 50 years after death (Sec. 213).

Works of applied art are protected for 25 years from creation.

Moral rights include attribution and integrity, and are perpetual.

Fair use allows limited use for criticism, comment, news reporting, teaching, and research (Sec. 185).

Copyright infringement includes reproduction, distribution, and public performance without authorization.

The IPOPHL's Bureau of Copyright and Related Rights handles copyright registration and disputes.

The Philippines has a voluntary copyright registration system with the National Library and IPOPHL.

A geographical indication (GI) identifies a good as originating in a territory where a given quality is attributable to that origin (IP Code Sec. 122).

GIs are protected under the IP Code and may be registered as collective or certification marks.

The IPOPHL may recognize GIs through registration or by sui generis protection.

A GI cannot be registered if it is generic or contrary to public order.

Protection of GIs is indefinite as long as the conditions are met.

The Philippines has a list of protected GIs, including 'Guimaras Mangoes' and 'Bicol Pili Nuts'.

The IPOPHL collaborates with the DA and DTI for GI promotion and protection.

Foreign GIs may be protected in the Philippines if they are protected in their country of origin.

Enforcement against misuse of GIs includes cease-and-desist orders and damages.