THE MANUAL FOR PATENT

EXAMINATION PROCEDURE

1
INTRODUCTION

The Intellectual Property Office of the Philippines’ (IPOPHL) 3-D IP vision is to have
“An Intellectual Property-Conscious Philippines in a Demystified, Development-
oriented and Democratized IP System by 2020”. One of its strategic goals is to deliver
timely and quality patents, utility models and industrial designs. In line with this strategic
thrust and in full consonance with the implementation of the Revised Implementing
Rules and Regulations for Patents, Utility Models and Industrial Designs which became
effective on February 2, 2012, the current Manual for Substantive Examination
Procedure (MSEP) was updated, revised and expanded to provide more
comprehensive patent examination guidelines. The expanded MSEP is now aptly called
the Manual for Patent Examination Procedure (MPEP).

The new MPEP covers not only revisions in the current substantive examination
procedures, but also includes important procedural aspects in the filing, formality
examination, publication, granting and post-grant of patents, the registration of utility
model and industrial designs, the Patent Cooperation Treaty (PCT) procedures and the
Community Review Process. More particularly, the MPEP aims to constitute uniform
procedures and practices amongst the examiners and administrative officers in the
Bureau of Patents (BOP) to facilitate the prosecution/adjudication of applications, grant
and registration procedures, and to further provide the stakeholders clear procedural
policies and examination practices adopted by the Bureau.

It will be noted that in this Manual, the text has been divided into Parts and Chapters,
each sub-divided into numbered Sections which are further sub-divided into paragraphs.
Cross-references to other paragraphs within this part are in a standard form quoting in
each case the Chapter, Section and paragraph number thus, e.g., under Part 2 of this
Manual relating to Substantive Examination: III, 6.5 means paragraph 6.5 in Section 6 of
Chapter III.

Marginal references indicate the relevant Sections of the IP CODE or the relevant
Rules of the Revised Implementing Rules and Regulations (Revised IRR), which
provide authority to what is stated. It is believed that such references avoid the need for
extensive quotation from the IP CODE and the Revised IRR themselves. In this part of
the Manual, the term “examiner” is used to mean the examiner entrusted with the
formality and substantive examination of the application.

With regard to the work at the Bureau of Patents, the attitude of the examiner is very
important. He should always try to be constructive and be helpful. While it would of
course be quite wrong for an examiner to overlook any major deficiency in an
application, he should have a sense of proportion and not to pursue unimportant
objections. He should bear in mind that, subject to the requirements of the IP CODE
and the Revised IRR, the drafting of the descriptions and claims of an application is the
responsibility of the applicant or his representative. It should hardly need stating that all
patent applications, regardless of their country of origin should receive equal treatment.

2
 TABLE OF CONTENTS

Page Number

PART 1
1. RECEIPT AND HANDLING OF MAILS AND PAPERS 6

1.1 Filing of Papers with the Intellectual Property Office

1.2 Application Number and Filing Date
1.3 Application Numbering System
1.4 Filing of the Application through the IP Satellite Offices (IPSO)
1.4.1 Direct Route Filing
1.4.2 PCT Filing
1.5 Maintaining Scanned Copies of Filed Application
1.6 Payment of Fees
1.6.1 Payment of annuities and renewal fees
1.7 Mailing of Official Actions and Communication Letters
1.8 Intellectual Property Office Business Hours
1.9 The Certificate of Transmittal
1.10 Other Proceedings Affecting the Application, Patent Grant and Registration
of Utility Model or Industrial Design

2. FORMALITY EXAMINATION OF APPLICATIONS 15

2.1 Encoding and Forwarding of Applications

2.2 Applications with Deferred Payment
2.2.1 Reconsideration for Setting Aside the Issuance of Notice of Forfeiture
2.3 Incomplete application
2.4 Formality Examination Proper
2.5 The Formality Examination Report and Supplementary Office Action
2.6 Voluntary Amendments
2.7 Submission of Additional Copies of the Documents
2.8 Unity of Invention
2.9 Publication of the Application in the IPO e-gazette
2.9.1 Early Publication of the Application
2.9.2 Publication of the Application Subjected of Restriction
2.9.3 Correction of the Title of the Invention before Publication
2.9.4 Inventor not Identified in the Application
2.9.5 Publication of Direct Route, Direct Route Divisional, PCT National Phase
Applications
2.9.6 Publication of Lapsed and Patents and Industrial Designs and Expired

3
 Utility Models
2.10 Request for Substantive Examination
2.11 Disposal and Expunging of Application Records

3. CLASSIFICATION AND SEARCH 29

3.1 Classifying Applications for Publication as a Patent Application Publication

3.2 How to Search
3.3 General Search Guidelines
3.4 The Search Report
3.5 Citing Documents in Foreign Language
3.6 Kind Codes
3.7 Validity of Dates displayed on the face of Patent Documents
and Non-Patent Literature
3.8 Special Cases (Scope of Search)
3.9 Searching Techniques
3.10 Special Problems after Search

4. PATENT COOPERATION TREATY (PCT) 39

4.1 Filing of the PCT International Application

4.2 PCT National Phase Entry
4.3 National Phase Entry Application containing amendments under PCT Article
19 or Article 34
4.4 Election of Earlier Philippine National Application
4.5 Withdrawal of Philippine Designation
4.6 The International Filing Date (Restoration of Right)
4.7 Submission of Priority Document under Rule 17.1 (a) and (b) of the PCT
4.8 Payment of Priority Fees and other Related Fees
4.9 Small Entity and Youth Filers
4.10 Correction and/or Addition of Priority Claims
4.11Publication PCT Application
4.12 PCT Divisional Application

5. UTILITY MODEL & INDUSTRIAL DESIGN 46

5.1 Utility Model Registration and Industrial Design Registration

5.2 Utility Model
5.3 Special Subject Matter of Industrial Design
5.3.1 Computer-Generated Icons
5.3.2 Changeable Computer Generated Icons
5.3.3 Partial Designs
5.4 Common Procedures
5.4.1 Publication of Utility Model and Industrial Design

4
 5.4.2 Utility Model and Industrial Design Applications filed under Section 31.
5.4.3 Resolution of the Adverse Information
5.4.4 Issuance Date and release of the Certificate Registration
5.5 Deferred Publication of Industrial Design

6. COMMUNITY REVIEW PROCESS 54

6.1 The Community Review Process

6.2 Components of the Community Review Process
6.2.1 The Industry Database
6.2.2 The Organizational Structure
6.3 Mechanics of the Community Review Process

PART 2
7. SUBSTANTIVE EXAMINATION 63
Chapter I: Introduction
Chapter II: Content of the Application (Other than Claims)
Chapter III: The Claims
Annex to Chapter II: Guidance on Assessment of Unity
Chapter IV: Patentability
Annex 1 to Chapter IV, 9: Guidance for the Assessment of Inventive Step
Annex 2 to Chapter IV, 9: Concerning Inventive Step
Chapter VI: Examination Procedure
Chapter VII: Examples

8. EXAMINATION GUIDELINES FOR PHARMACEUTICAL PATENT

APPLICATIONS INVOLVING KNOWN SUBSTANCES

9. EXAMINATION GUIDELINES FOR INFORMATION AND COMMUNICATIONS

TECHNOLOGY (ICT) RELATED PATENT APPLICATIONS

10. EXAMINATION GUIDELINES FOR BIOTECHNOLOGY RELATED PATENT

APPLICATIONS

11. COMPLEMENTARY GUIDELINES ON PATENT EXAMINATION PRACTICES

AND PROCEDURES

5
 PART 1

1. RECEIPT AND HANDLING OF MAILS AND PAPERS

Statutory Basis CONTENTS

1.1 Filing of Papers with the Intellectual Property Office

Sections 1(a) & (c) (i) In general, all businesses with the Intellectual Property
Final Provisions Office shall be transacted in writing and actions shall be based
exclusively on the written record. No attention will be paid to any
alleged oral promise, stipulation, or understanding in relation to
which there is a disagreement or doubt.

(ii) All correspondences concerning matters within the

jurisdiction of the Bureau shall be transacted in writing and 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.

Office Order No.195 (iii) When communication letters relate to the applications,
Series of 2011 patents or registrations the following information must be included
in the letter.

(a) Application/Patent Number/Registration Number;

(b) Filing Date/Issuance Date/Registration Date/ Date of
National Phase Entry for PCT applications;
(c) Name of the Applicant/ Patentee/Registrant
(d) Name of the agent and agent code, if any, or name of the
representatives and contact details; and
(e) Title of documents filed/submitted or purpose of the payment
(e.g., requests for extension, annuity payment, etc.).

(iv) Separate letters shall be written and submitted in relation to

each distinct subject matter of inquiry. Since each file must be
complete in itself, a separate copy of every letter to be filed in a
patent, patent file, or other proceeding must be furnished for each
file to which the letter pertains, even though the contents of the
letter filed in two or more files may be identical.

The filing of duplicate copies of correspondence in the file of an

application, patent, or other proceeding should be avoided, except
in situations in which the Office requires the filing of duplicate
copies such as the submission of additional sets of copies of the

6
 description and claims and drawings for grant or registration
purposes. The Office may dispose of duplicate correspondences in
the file of an application, patent or other proceedings. All
correspondences must bear the original signature of the
applicant/patent holder/registrant or his duly assigned agent or
representative.

R. 402 1.2 Application Number and Filing Date

(i) In filing the application, the bibliographic information of the

application shall be encoded into the Database of the Bureau.

After which, the documents making up the application shall be

marked with the date of receipt and application number. The
applicant shall be informed of the application number by an
acknowledgement letter which shall be promptly generated and
issued after the bibliographical details have been encoded.

For complete applications, an acknowledgement letter shall be

issued and shall include the application number, filing date (which
is the date of receipt)/date of national phase entry for PCT
applications, name of the applicant, and title of the invention, utility
model or industrial design and filing fees to be paid which shall be
generated in a Statement of Account (SOA).

For incomplete applications, the Bureau shall require the

applicant to submit the missing documents, and the filing date will
be the date when all the missing documents are received by the
Office. An acknowledgement letter of an incomplete application
shall be issued to the applicant and shall include the application
number, the date of receipt, name of the applicant, and title of the
invention, utility model or industrial design and filing fees to be paid
generated in the SOA, and shall also include a reminder to submit
the missing documents to complete the application within two (2)
months from the date of receipt, otherwise, the application shall be
deemed withdrawn.

(ii) When an application is filed by mail, the application shall be

forwarded to the receiving section of the Office. The filing date shall
be the date when the application was received by the post office as
long as it satisfies the requirements for the grant of a filing date.

If the mailed documents are incomplete, the Bureau shall

require the applicant to submit the missing documents, and the
filing date will be the date when all the missing documents are

7
received by the Office. An acknowledgement letter of a incomplete
application shall be issued to the applicant and shall include the
application number, the date of receipt, name of the applicant, and
title of the invention, utility model or industrial design and filing fees
to be paid generated in SOA, and shall also include a reminder to
submit the missing documents to complete the application within
two (2) months from the date of receipt, otherwise, the application
shall be deemed withdrawn.

In case telefax copies of the description and claims and

drawings are filed, the same will be accepted by the Office. The
filing date shall be the date when the telefax copies are received by
the office.

An application may be filed to the Office by telefax or email.

However, the original copy of the filing documents that were faxed
or emailed to the Office must be submitted within two (2) months
from the filing date. If the original filing documents are not
submitted within the required time period, the filing date of the
application shall be moved to the date when the Office receives the
same.

When the written communication or reply is filed with the Office

through mail, the actual date when such communication or reply is
received by the Office will be the official date of receipt.

1.3 Application Numbering System

The application numbering system of the Bureau shall consist of

a series of codes stating the type of patent protection category,
followed by the filing year and a chronological “six-digit” filing
number of the application as described hereunder.

a. Patent protection category code

1 - For invention category
2 - For utility model category
3 - For industrial design category
5 - For lay-out designs of integrated circuits

b. The Filing year, for example, 2014.

c. The filling date of an application shall be encoded by the

day/month/year, e.g.,07/02/2104 and which date is actually
read as February 7, 2014.

d. The “six-digit filing number, for example: 000001 or 000134.

8
 For example, a patent application that was filed as the first
application in the year 2014 shall have a patent application number
as follows: Philippine Patent Application no. 1/2014/000001.
Similarly, a utility model or industrial design applications that were
filed as the first applications in the year 2014 shall have the
following application numbers 2/2014/000001 or 3/2014/000001,
respectively. When the application has been granted or registered,
the patent, utility model or industrial design registration shall bear
the same number as the respective assigned application numbers.

Special codes for the “on-line” filing of utility models and

industrial designs shall be used. For example, in a utility model
application filed ”on-line”, the numerical digit “5” shall be included
in the application number, and hence, a utility model application
filed “on-line” may have an application number designated as
2/2017/050123.

For the purpose of patent search in the IPO website, the eleven
(11) digit number of the application or patent/registration numbers
shall be used. As in the previous example, to retrieve the
bibliographic data, description and drawings of the published
application, patent or registration, the application numbers or patent
or registration numbers must be entered in the patent number
search box in the following manner; 12014000001 or 22014000001
or 32014000001.

1.4 Filing of the application through the IP Satellite Offices

(IPSO).

1.4.1 Direct Route Filing

If a direct route application is filed through one of the IP Satellite

Offices (IPSO), the IPSO officer shall receive the application and
stamp the date of receipt of the application in the request form with
his initials besides the date. Furthermore, the IPSO Officer’s
complete name, designation and signature shall be written at the
bottom part of the request form to make the receipt of the
application official.

The application received by the IPSO officer shall be considered

as “mailed application” and tagged as such in the duty officer
module in order for the stamped date of the IPSO officer to be
considered as the filing date for the application as long as it
satisfies the requirements for the grant of a filing date.

9
 The application received by the IPSO shall be encoded by the
BOP duty officer in the duty officer module when the actual
applications are on hand. The acknowledgment receipt and
applicant’s copy shall be given to the IPSO unit to be sent to the
applicant.

If the IPSO Officer’s complete name, designation and signature

do not appear in the request form, the application shall be
considered as filed directly to the Office and the filing date of the
application shall be the actual date of receipt as long as it satisfies
the requirements for the grant of a filing date.

The IPSO shall immediately inform and send to the Bureau of the
filing details on the same day.

1.4.2 PCT Filing

If a PCT international application is filed through one of the IP

Satellite Offices (IPSO), the IPSO officer shall stamp the date of
receipt of the application in the “Date of actual receipt of the
purported international application” field within the “For
receiving Office use only” box located below Box No. X of the
last sheet of the PCT Request Form (PCT/RO/101).

The IPSO officer shall issue a provisional Acknowledgement

Receipt containing the Officer’s complete name, designation and
signature to the applicant with a copy retained for the benefit of
the IPOPHL main office.

Afterwhich, the IPSO shall forward the PCT international

application to the IPOPHL main office. Upon receipt of the
application, the BOP duty officer shall stamp the international
application number in the appropriate box of the PCT Request
Form and issue an Acknowledgment Receipt generated by the PCT
Receiving Office Administration System. The duty officer shall also
issue a Statement of Account indicating the prescribed fees.

The Acknowledgement Receipt and the Statement of Account

shall be forwarded to the IPSO Unit to be sent to the applicant.

The IPOPHL shall accord as the “International Filing Date”

and date of actual receipt of the purported international application
stamped by the IPSO officer provided that , on that date:
a. the applicant, or if there are several applicants at least one,
is a national or resident of the Philippines;
b. the language of the application is in English or Filipino;

10
 c. The international application contains at least the following
elements:
i. the name of the applicant is indicated in a way which
allows the identity of the applicant to be established,
ii. a part which in the face of it appears to be a
description, and
iii. a part which on the face of it appears to be a
claim or claims

The IPOPHL shall notify the applicant of the international

application number and international filing date of the application
through the Notification of the International Application Number and
of the International Filing Date Form (Form PCT/RO/105).

1.5 Maintaining Scanned Copies of Filed Application

For purposes of maintaining the records of the database of the

IPO, the documents of a new application shall be scanned before
forwarding the application to the Records Management Unit (RMU)
of the Bureau.

An application is complete if it contains the following

requirements, i.e., a request form for the grant of patent or
registration of a utility model or industrial design, a description,
drawings if necessary, one or more claims and an abstract of the
disclosure. If the application is complete it shall be assigned a filing
date and an application number following the application numbering
system of the Office.
2

1.6 Payment of Fees

R. 401 (i) The government fees such as the filing fee, search and
R. 401.1 publication fees and other related fees may be paid in full
immediately after the filing of the complete application or may be
paid within one (1) month from the date of filing of the complete
application. In case the fees are not paid in full or has not been fully
paid within the one (1) month extended period from the date of filing
the application shall be deemed forfeited. A forfeited complete
application may be re-filed by the applicant and it shall be treated as
a new application including the option to pay the filing fees within
one (1) month from the date of filing.

(ii) The fees shall be paid directly to the cashier in the receiving
section of the Office after the issuance of a corresponding
Statement of Account (SOA).

11
 1.6.1 Payment of Annuities and Renewal Fees

The fees for annuity payments in the case of patent grants and
the renewal payments in the case of industrial designs shall be paid
directly to the cashier in the receiving section of the Office after the
issuance of a corresponding Statement of Account (SOA).

Should there be additional design embodiments in the registration,

Memorandum- the fees per embodiment for the said design embodiments in
Circular No. excess of the original embodiment must also be paid in full. Unpaid
No. 14-001 additional embodiments in excess of the original embodiment shall
not be covered by the registration renewal.

Likewise, claims in excess of five (5) claims in a patent grant

must also be paid together with the annuity fee. Unpaid excess
claims shall be deemed lapsed.

1.7 Mailing of Official Actions and Communication Letters

R. 928 (b) The mailing date of the official actions or communication letters
shall be the reckoning date of the period to file the required
response. More particularly, the period for filing the response shall
be two (2) months from the mailing date of the official action or
communication letter. The examiner may grant a maximum of two
(2) additional “two-month extension periods” provided that the
aggregate period granted inclusive of the initial two (2) month
period to file the response shall not exceed six (6) months from the
mailing date of the official actions.

The applicant shall be required to immediately notify the office

regarding any change of address in order to avoid withdrawal of the
application for non- receipt of the official action. This requirement
shall be stated in the request form for a grant of patent, utility model
and industrial design.

In case an official action or communication letter requiring a

response from the applicant was returned to the Bureau together
with the registry return receipt (RTS), the RMU shall re-mail the
official action or communication letter. If the re-mailed official action
or communication letter was returned to the Bureau together with
the registry return receipt (RTS) for the second time, the examiner
shall withdraw the application and the withdrawn application shall
R. 929 be further published in the IPOPH e- gazette. The applicant may
R. 929.1 revive the application in accordance with Rules 929 and 929.1 of
the revised IRR.

12
 To assist in the assessment for the grant or disallowance of a
petition for revival with cost or without cost that may be filed later by
the applicant, the RMU shall maintain scanned copies of the
documents (description, claims, drawings, the request form and
other documents in the file wrapper) of the withdrawn application
together with the registry return receipts to serve as documentary
evidences.
1.8 Intellectual Property Office Business Hours
The schedule for acceptance of applications and payment of
fees for patents, utility models, industrial designs and layout-
designs of integrated circuits and other documents (i.e. requests for
certification, motions, petitions, affidavits) due for payments are as
follows:
i. Acceptance of applications and other documents. All
designated duty officers shall accept and examine
applications/documents for the purpose for granting Filing Dates
and/or issuance of Statement of Accounts (SOA) from 8:00 AM to
4:30 PM daily, Monday to Friday on a “First Come, First Served”
basis. No applications/documents due for payment shall be
received beyond the cut-off time.
Other documents which do not require the issuance of a SOA
for payment of fees shall not be covered by the cut-off period.
ii. Receiving of Payment of Fees. The Cashier Section shall start
receiving payments from 8:00 AM and shall continue until all the
accepted applications/documents due payment are processed.
Other duties of the Cashier Section, such as but not limited to
processing and releasing of checks for IPOPHL payables, shall be
undertaken from 8:00 AM to 5:00 PM.
iii. Observance of “No Noon Break” Policy. To ensure prompt
and quality service, the “No Noon Break” policy shall be observed.
The receiving and cashier sections are enjoined to schedule their
work period in such a way that their work area is manned during
office hours, including 12:00 PM noon to 1:00 PM.
1.9 The Certificate of Transmittal

For the mailing of official actions and communication letters, a

certificate of transmittal shall be prepared by the RMU officer. The
certificate of transmittal shall contain the following details: (a) the
application number, (b) the office document type, (c) list of
representatives or the name of the applicant/s, (d) name of the
examiner and (e) mailing date.

13
 The certificate of transmittal together with the official action or
communication letter shall be forwarded to the mailing section and
received by the officer in charge of mailing. The certificate of
transmittal shall be signed by the mailing officer and returned to the
RMU.

In case of a drop box which are provided by the Office, the

certificate of transmittal together with the official action or
communication letter shall be forwarded to the officer in charge of
handling the drop box documents. The certificate of transmittal
shall be signed by the officer and returned to the RMU upon receipt
and deposit of the documents on the drop box.

Part 12 of the 1.10 Other Proceedings Affecting the Application, Patent Grant
Revised IRR and Registration of Utility Model or Industrial Design

The Publication and Registry Unit (PRU) of the Bureau shall

record assignments, licenses and other instruments relating to any
transmission of rights, title or interests in and to inventions, and
patents or application for patents or inventions to which they relate.
It shall supervise and maintain records of annuity payments of
pending and granted patents and the renewal of industrial design
registrations. Under the supervision of the Director of Patents, the
PRU shall also process the surrender of patents, correction and
amendment of patents and other proceeding affecting the
application provided under Part 12 of the revised IRR.

1.11 Publication of Lapsed and Expired Patents and Expired

Industrial Design Registrations and Utility Models

For transparency and information for the public, the Publication

and Registry Unit (PRU) of the Bureau shall also published in the
IPOHL e-Gazette lapsed and expired patents and expired industrial
design registrations and utility models. The publication shall be
made on a quarterly basis.

14
2. FORMALITY EXAMINATION OF APPLICATIONS

Statutory Basis CONTENTS

2.1 Encoding and Forwarding of Applications

Sec. 20 After the requirements for filing a complete patent application

Sec.32 has been complied with and a filing date has been accorded in
R. 400 accordance with Sections 32 and 40, the application shall be
forwarded to the Bureau and assigned to the respective examining
divisions handling the particular field of technology relating to the
invention. The Records Management Unit (RMU) of the Bureau
shall be responsible for encoding, monitoring and forwarding the
applications to the examining divisions.

2.2 Applications with Deferred Payment

Sec. 41 The RMU shall segregate applications with deferred payment

within the one (1) month grace period. These applications shall not
be placed in a file wrapper until the filing fee has been paid. Upon
the full payment of the filing fee, the RMU shall immediately place
the application in a file wrapper and forward the application to the
appropriate examining division.

R.401 If the filing fee has not been paid within the one (1) month grace
period, the RMU shall forward the application to the examining
division for the forfeiture of the application. The examiner shall
prepare and send the notice of forfeiture to the applicant. The
notice shall state that a forfeited application cannot be revived.

R.401.1 The notice of forfeiture shall also inform the applicant that the
documents comprising the forfeited application may be retrieved
from the Bureau within four (4) months from the mailing date of the
notice by filing a formal written request. After which, the forfeited
application shall be expunged from the records and disposed of by
the Bureau.

2.2.1 Reconsideration for setting aside the issuance of the

Notice of Forfeiture for the non-payment of the filing fee within
the one (1) month prescribed period.

In case the filing fee of an application was paid within the

prescribed period, but the Office has inadvertently issued a notice
of forfeiture for the non-payment of the filing fee, the applicant may

15
 file a request for a reconsideration to set aside the notice of
forfeiture and restore the application to a pending status.

Upon the receipt of the applicant’s request for reconsideration,

the examiner shall conduct an investigation based on the available
mailing records with the post office and other relevant official
communication letters and evidences to verify if the actual payment
of the filing fee was indeed made within the prescribed period.
Based on the findings, the examiner shall prepare a memorandum
addressed to the Director of Patents either recommending or
disallowing the setting aside of the notice of forfeiture. The
memorandum shall also state the facts and circumstances based
on evidence arising for the payment or non-payment of the filing
fee. The Director shall decide whether or not to set aside the notice
of forfeiture of the application.

2.3 Incomplete Application.

Sec. 40 Incomplete applications shall be received by the office. The

R. 600 duty officer shall issue an “acknowledgement receipt for incomplete
application” which shall include the application number and the
date of receipt and shall also notify the applicant of the lacking
elements or documents to complete the application.

Sec. 41 The applicant shall be given a non-extendible period of two (2)

R. 601 months from the date of receipt to submit the lacking requirements
and the filing date accorded shall be the date when these are
completely submitted. Failure to submit the lacking requirements
within the prescribed period shall cause the withdrawal of the
application
.
The incomplete application shall be sent to the RMU for file
wrapping and forwarded to the appropriate examining division. The
application number and the date of receipt shall be indicated in the
file wrapper.

If the required documents have been submitted, the examiner

shall assign a filing date which shall be encoded in the
database/system. The assigned filing date shall be cited in all
succeeding communications between the Bureau and the
applicant/s. If the required documents to complete the application
have not been submitted within two (2) months from date of receipt,
the examiner shall withdraw the incomplete application.

16
 2.4 Formality Examination Proper

Sec. 42 The application shall be forwarded to the appropriate examining

R. 603 division and shall be assigned to the examiner for formality
examination to consider the following:

a. The payment of fees that have not been paid during the filing
of the application:

i. Additional claims fee in the excess of five(5) claims;

ii. Multiple dependent claims fee;

For fee calculation purposes, a multiple dependent claim will be

R.417 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.

Example 1: Multiple dependent claims fee calculation

Claims:
1. A product comprising…..
2. A product according to claim 1…
3. A product according to claim 1 or 2… (+1 claim fee)
4. A product according to claim 1…
5. A product according to claim 4..

Example 2: Multiple dependent claims fee calculation

Claims:
1. A compound of the formula (F)…..
2. A compound according to claim 1…
3. A compound according to claim 1…
4. A compound according to claim 3…
5. A compound according to any of the preceding claims… (+3
claims fee)

Example 3: Multiple dependent claims fee calculation

Claims:
1. A product comprising…..
2. A product according to claim 1…
3. A product according to claim 1 or 2…(+1 claim fee)
4. A product according to claim 3…(+1 claim fee)
5. A product according to claim 3…(+1 claim fee)

17
 Example 4: Multiple dependent claims fee calculation

Claims:
1. A product comprising…..
2. A product according to claim 1…
3. A product according to claim 1 or 2…(+1 claim fee)
4. A product according to claim 3…(+1 claim fee)
5. A product according to claim 4…

Example 5: Multiple dependent claims fee calculation

Claims:
1. A compound of the formula (I)…..
2. A compound according to claim 1…
3. A compound according to claim 1..
4. A compound according to claim 3…
5. A compound according to any of the preceding claims….…
… (+3 claims fee)
6. A compound according to claim 5.. … (+3 claims fee)

iii. fee for additional sheets in excess of thirty (30) (for the
abstract, description, claims and drawings and sequence listings);
iv. specific compounds/variations fees; and,
v. other costs (if applicable), such as the fee for the recordal of
the assignment and the fees for priority and multiple priority claims
and amendments of drawings.

b. The completeness and accuracy of contents of the request

for a grant of patent.

Sec. 32.2 If the inventor is not identified, the examiner shall require the
submission of a proof of authority indicating the name of the
inventor (such as a sworn statement by the inventor of his
inventorship or other proof authority pursuant to Section 32.2 of the
IP Code in relation to Section 13 of RA 165a). The proof of
authority shall be filed together with the amended request form for
a grant of patent indicating the name of the inventor/s.

c. For applications based on a foreign application which claims

Sec. 31 right of priority or multiple right of priorities, the examiner shall
R. 305 check the following:

i. if the country of origin which by treaty, convention or law,

affords similar privileges to Filipino citizens;
ii. If the local application expressly claims priority or multiple
priority;

18
 iii. if the application was filed within twelve (12) months from the
date the earliest foreign application was filed;
iv. if the application number, filing date, country of origin of the
foreign application corresponds to the information in the
request form;
v. if the disclosure of the foreign application corresponds to the
Philippine application; and
vi. if the fees for the claim for priority or multiple priority have
been fully paid.

If the foreign application is not in English, the examiner in his

examination report shall require the applicant to submit the English
translation of the corresponding home application within six (6)
months from the date of filing of the application. The examiner’s
report shall also include information that the six (6) month period
may be extended by the Director for an additional six (6) months
upon showing of good cause or in compliance with the treaties to
which the Philippines is or may become a member.

Regarding item 2.4 (c) (ii), the claim for priority may be
expressed in any of the filing documents such as, the request form
for the grant of a patent or a letter accompanying the filing of the
application, or by the submission of the certified true copy of the
corresponding home application.

The claim for priority date shall be acknowledged and

information regarding any formal defects shall be included in the
examiner’s formality examination report.

However, the evaluation of the claim for priority right with

regards to its allowance or disallowance shall be taken up during
the substantive examination of the application.

d. If the abstract, description of the invention, claims (as to

formality) and drawings are informally drafted, the examiner shall
require the applicant to submit an amended abstract, description
and claims and drawings made in accordance with the Revised
IRR. The examiner shall require the submission of the abstract if it
has not been submitted earlier during the filing of the application. A
photocopy of the amended abstract, description and claims and
drawings shall also be submitted to make the application available
for inspection in the IPO Library after its publication.

If the applicant has not filed an amended description and claims

and drawings as indicated in the examiner’s previous action, the
examiner may issue another communication letter to the applicant/s

19
 any time before the first publication of the application reminding him
to submit the same. The importance of amending the abstract,
description, claims and drawings at this stage of the patent
examination is to facilitate the proper preparation of the search
report, and to publish the application with formally amended
abstract, description, claims and drawings both for the benefit of
the inventor and the public in terms of properly and fully disclosing
the technology.

R. 602 (a) e. If the formality examination reveals that the drawings were
filed after the filing date of the application, and such drawings are
necessary in the understanding of the invention, the examiner shall
notify the applicant that the drawings shall not be considered in the
prosecution of the application unless a request that the application
be granted a new filing date which is the date when the drawings
are filed is submitted. The request must be made by the applicant
within two (2) months from the mailing date of the formality
examination report.

R. 602 (b) f. In case the drawings were not filed, the examiner shall
require the applicant/s to file the drawings within two (2) months
from the mailing date of the examiner’s report and the application
will be given a new filing date which is the date in which the
drawings are filed. The examiner shall be responsible in changing
the filing date of the application, if necessary, through the system.

R. 602 (c) The examiner shall delete missing drawings and references to
such drawings in the description filed after the filing date. However,
the applicant may submit the missing drawings together with a
request within two (2) months from the date of submission that a
new filing date, which is the date on which the drawings were filed,
be issued to the application

Upon assignment of the application, the examiner shall

immediately check if there are any defects relating to missing
drawings in the application. If there are such defects, the examiner
shall take immediate action in order to resolve the filing date issues
before the commencement of the formality examination.

Sec. 49 The examiner shall review the submitted drawings, and if there
are additional drawings beyond the original disclosure in the
description filed after the filing date of the application, the additional
drawings shall be denied entry. The examiner shall notify the
applicant when the additional drawings have been considered or
denied entry in the application.

20
R. 602 (d) The Bureau shall inform the applicant that the application will be
given a new filing date which is the date when the drawings are
filed. If the filing date has been moved to the date where the
drawings were received, the new filing date shall be cited in all
succeeding communications between the Bureau and the
applicant/s.

g. If the request for the grant of a patent and/or the patent

drawings is/are not signed, the examiner shall require the applicant
or his representative to sign the aforementioned documents.

2.5 The Formality Examination Report and Supplementary

Office Action

Sec. 42 The examiner shall prepare the formality examination report

indicating the informalities and defects in the application and render
other supplementary office actions, if necessary, such as requiring
the applicant to submit foreign search documents to aid in
conducting search and preparing the search report before the
technical preparation of the application for publication.

(a) In case of local applications, the report shall also include a

reminder to the applicant that the failure to respond to the formality
examination report requiring the submission of all or one of the
following requirements as contained therein, more particularly, the
submission of an amended description of the invention, drawings,
claims and abstract and correction of informalities in the request for
the grant of a patent shall cause the withdrawal of the application
after its first publication. Or, if the preparation of a search report is
not possible for failure to file the response to the technical
requirements of the formality examination report, or a meaningful
search could not be conducted, the application shall be published
without a search report and shall be withdrawn thereafter.

If the aforementioned requirements have not been submitted

before the technical preparation of the application for publication,
the bibliographic data, the abstract and any drawings as filed shall
be published in the IPOPHL E-gazette, and thereafter, the
application shall be deemed withdrawn in accordance with Sec. 42
of the IP Code..

However, in the withdrawal of the application under Sec. 42, the

notice of withdrawn application shall be submitted to the Office of
the Director for final resolution before mailing the same to the
applicant.

21
 In the case of a withdrawn application under Section 42, the
applicant may revive the application within four (4) months from the
mailing date of the notice of withdrawal and may subsequently file a
request for substantive examination within six (6) months from the
date of publication.

The application shall be published in the IPOPHL E-gazette with

a search report designated as an A1 document, or may be
published without a search report designated as an A2 document if
the disclosure of the invention is not sufficient or clear enough to
conduct a complete search and evaluation and that no search
report can be rendered at the time of its first publication. And, in
case the search report of an A2 published document is later made
available, the search report shall be published as an A3 document.

In case the subject matter of the invention in a patent application

is not clear, and that classification and prior art search cannot be
conducted, the examiner shall recommend the non-publication of
the patent application. The recommendation shall be submitted to
the Office of the Director for resolution.

Any amendments involving new matter in the response to be

Sec. 49
submitted in the revival of the application shall be denied entry. The
Examiner shall communicate the denial of the new matter and
require the applicant instead to submit an amended description or
claims or drawings deleting the aforesaid new matter contents.

(b) In case of foreign applications, the examiner by way of a

Sec. 39
supplementary office action independent from the formality
R. 612
examination report shall require the applicant to submit the
following:

(i) any search report conducted on the corresponding and/or

R.612.1
related applications abroad such as the European Patent Office
(EPO), United Kingdom (GB) Patent Office, or PCT Searching
Authorities in English language, and in case the search report is
available, photocopies of the relevant documents cited in the
search report;

(ii) if granted, a copy of the patent grant on the corresponding or

foreign related application;
(iii) a copy of the examination reports or decisions on the
corresponding or foreign related application and the status of the
corresponding foreign application; and
(iv) other documents which would facilitate the adjudication of

22
 the application.

For practical reasons, the supplementary office action shall be

transmitted by the examiner to the applicant on the tenth (10 th
month) from the filing date of the application or after eighteen (18)
months from the priority date in order to ensure that the foreign
search report and other necessary information for the adjudication
of the application are already available.

However, if the foreign search report and other related

information are not available, the applicant in his response shall
inform the Bureau showing a justifiable reason why the search
report is not yet available, otherwise, the application may be
withdrawn for not being responsive. In such a case, the applicant
may later submit the foreign search report when it becomes
available.

If the applicant/s fails to respond within two (2) months from the
612.2 mailing date of the office action or on such additional extension
dates for which to file the response requiring the submission of the
foreign search report, the application shall be deemed withdrawn.
The applicant may revive the application within four (4) months
from the mailing date of the notice of withdrawal in accordance with
the revised IRR.

And in case the application has not been revived before the
R. 800 (b)
technical preparation for publication or before the actual publication
date, the application shall not be published.

2.6 Voluntary Amendments

The applicant/s may file voluntary amendments to the abstract,

Sec. 49 description, claims and drawings before the technical preparation of
the application for publication, and such amendments shall be
entered in the application and shall be considered for publication. In
case the amendments were filed before or during the classification
and search by the examiner and before the submission for
technical preparation for publication, the extent of the search shall
also cover matters and technical features included in the voluntary
amendments.

New matter found in the voluntary amendments shall be denied

entry and only matters relating to the original disclosure shall be
published. The applicant shall be informed if the amendments filed
constitute new matter.

23
 2.7 Submission of Additional Copies of the documents

The failure to submit additional photocopies of the abstract,

description, claims and drawings if required by the examiner shall
not cause the withdrawal of the application.

In case an application has been withdrawn after the first

publication, the applicant may revive the application in accordance
with the revised IRR. The revived application shall be republished
as an A9 document and the corresponding republication fees shall
be paid.

2.8 Unity of Invention

R. 604 In case the application relates to more than one (1) group of
inventions which do not form a single inventive concept, the
examiner shall require the applicant to restrict the application to a
single invention.

The purpose of conducting the restriction requirement in the

formality examination stage is to facilitate the preparation of the
search report since the report shall be directed only to the elected
invention in the application. The restriction of an application at this
examination stage will further facilitate the preparation of the
search report/s of the divided application/s.

The examiner shall also include in his report that the later
application/s filed for inventions divided out shall be considered as
having been filed on the same day as the first application, provided
that, the later applications are filed within four (4) months after the
requirement to divide has become final.

2.9 Publication of the Application in the IPO e-gazette.

To facilitate the technical preparation of the application for

publication, the examiner shall submit the search report and
recommendation for publication together with the file wrapper of the
application before the “16-month” from the filing date of the
application. The application shall proceed to the RMU for recording
and safe keeping and only documents to be published shall be
forwarded to the publication and registry division (PRD) for the
technical preparation and publication.

The publication of the application shall be made in accordance

with the kind codes laid out by the Bureau. For the guidance of the
PRD, the examiner in his recommendation for publication shall

24
specify the kind code to be used which shall be indicated in the
actual publication of the application in the IPO gazette.

KIND CODES
Based on WIPO ST.16 STANDARDS

1. Philippine patent application published 18 months after filing

with the IPO

i. A1 document
Philippine patent application published with a search report

ii. A2 document
Philippine patent application published without a search
report (search report not available at the publication date)

iii. A3 document
Separate publication of the search report for the A2
document

iv. A4 document
Supplementary search report

v. A8 document
Corrected title page and other corrections of an A document,
i.e. A1, A2 or A3 document.

vi. A9 document
Corrected A document, i.e. A1, A2 or A3 document. .

vii. A10 document

Publication of divisional application with a search report.

2. Philippine Patent Grant

i. B1 document
Philippine patent publication (granted patent).

ii. B8 document
Corrected title page of a B1 document.

iii. B9 document
Corrected B1 document.

25
3. Utility Model Application

i. U1 (Utility Model Publication for Adverse information)

ii. U2 (Utility Model Republication with Amendments)
iii. U3 (Registered Utility Model)

4. Industrial Design Application

i. S1 (Industrial Design Publication for Adverse information)
ii. S2 (Industrial Design Republication with Amendments)
iii. S3 (Registered Industrial Design)

2.9.1 Early Publication of the Application.

In case of a request for the early publication of the application is

filed, the examiner shall check if all the requirements have been
complied with. The examiner may issue a communication letter to
the applicant if any of the requirements have not been submitted.
However, the non-response of the applicant shall not cause the
withdrawal of the application, but instead may cause the denial of
the request for the early publication.

2.9.2 Publication of Application subject of a Restriction.

If a restriction requirement has been raised by the examiner, the

whole application shall be published in the IPO gazette with a
notice that the application has been restricted to the elected group
of invention, together with the search report directed only to the
elected group of invention.

2.9.3 Correction of the Title of the Invention before

Publication.

The examiner shall correct the title of the invention for the
purpose of publishing the correct technical information regarding
the invention if a response to the requirement to amend the title in
the formality examination report has not been submitted before the
technical preparation for publication of the application. The
applicant shall be informed of the change of tile in the in the notice
of publication by the Bureau.

2.9.4 Inventor not identified in the Application

If inventor has not yet been identified before the publication of

the application, the application shall be published without the name

26
 of the inventor. A republication of the application shall be made
when the name of the inventor becomes available.

2.9.5 Publication of Direct Route, Direct Route Divisional, PCT

National Phase Applications

In consonance with the IPAS, the standard publication forms

shall be used for Direct Route applications, as well as, Direct
Route divisional applications and PCT National Phase divisional
applications.

In the case of Direct Route applications, a search report shall be

published together with the publication thereof. For Direct Route
divisional applications and PCT National Phase divisional
applications, a search report relating to the subject matter of the
divided group of invention shall be prepared and submitted by the
examiner-in-charge in case the divided group of invention has not
been initially covered by the search report of the corresponding
parent application.

To facilitate the publication of Direct Route applications, as well

as, the Direct Route divisional applications and PCT National
Phase divisional applications, the IPAS team shall incorporate the
following forms in the system.

2.9.6 Publication of lapsed and expired patents and industrial

design and expired utility model registrations

For the information of the stakeholders, the publication section

shall regularly publish in the IPOPHL e-gazette an updated list of
lapsed and expired patents and industrial design and expired utility
model registrations.

2.10 Request for Substantives Examination

The applicant may file a request for substantive examination if he

R. 804 decides to pursue the grant for the patent.

A written request for substantive examination together with the

full payment of the corresponding fee shall be filed within six (6)
months from the date of publication of a patent application. The
substantive examination is conducted to determine whether a
patent application meets the requirement of patentability as
provided by the IP Code. Failure of the applicant to file a request

27
 for substantive examination and pay the corresponding fees within
the prescribed period shall result in the withdrawal of the
application. The request for substantive examinations, once filed,
shall be irrevocable. Fees paid therefor shall not be refunded.

2.11 Disposal and Expunging of Records by the Bureau of

Forfeited Application

R.401.1 An application shall be deemed forfeited if the required fees are

R. 929 not fully paid within the period prescribed in Rule 401.1 or if the
R. 929.1 application has been withdrawn and not revived in accordance with
Rules 929 and 929.1.

The application records of a forfeited application may be

retrieved by the applicant by filing a formal written request therefor
within four (4) months from the mailing date of the notice of
forfeiture of the application. The application records of the forfeited
application not retrieved within the prescribed period shall be
expunged from the records and disposed of by the Bureau.

More particularly, the RMU shall notify the applicant that the
application records may be retrieved by filing a formal written
request before the expiration of the four (4) month period from the
mailing date of the notice of forfeiture of the application. The RMU
shall further inform the applicant on the manner of disposing the
application records in case the “four-month” period to retrieve the
aforesaid application records has expired.

28
3. CLASSIFICATION AND SEARCH

Statutory Basis CONTENTS

3.1 Classifying Applications for Publication as a Patent
Application Publication

Philippines Patent applications filed on or after 1 January 1998

shall be published as a patent application publication pursuant to
RA 8293, unless certain exceptions apply.

(i) Patent application publications shall be classified according

to the latest version of International Patent Classification
(IPC) at the time of classification and search.
(ii) The selection of a primary classification of a patent
application publication shall be based on the application
inventive concept using the claims as a guide. A primary
classification could be any IPC class/subclass. A secondary
classification shall be based on other inventive concepts
(mandatory) or valuable disclosure (discretionary), and may
be any IPC class/subclass.
(iii) The classification data shall be printed on the front page of
the publication.
(iv) During the formality examination, applications are classified
prior to the projected publication date, using programs
designed to enable entry of certain data required for
publication of patent applications.
The examiner shall study the claims (including amended claims,
if any), in the light of the description of the invention and proceed to
conduct classification and search to determine the relevant prior art
documents.

The latest version of International Patent Classification at the

time of classification and search shall be used. In accordance with
the Strasbourg Agreement Concerning the International Patent
Classification, the Philippines is required to indicate on its issuing
documents the classification symbols of the International Patent
Classification 2006 (Eighth Edition), hereinafter referred to as
“IPC.”

The complete IPC symbols shall be placed in the on the spaces

provided in the application file wrapper during the classification and

29
search of the application.
A classification form indicating the proper IPC class or classes
shall be issued by the examiner when an application is granted and
issued.
In selecting and deciding the proper IPC Classification Symbol
of the application, the examiner may use any or all of the following
approaches.
1. Check the classification used on patent documents with
similar technologies using keywords.
2. Use the catchword index of the IPC Internet publication
a. See the fifth tab at
http://www.wipo.int/classifications/ipc/spc8/?lang=en).
b. Use the natural language classification tool

(http://www.wipo.int/tacsy/)
3.2 How to Search

After having obtained a thorough understanding of the invention

disclosed and claimed in the application, the examiner shall search
for prior art as disclosed in patents and other published documents,
i.e., non-patent literature (NPL). Any document used in the
rejection of a claim is called a reference. An inventor name search
shall also be conducted to identify other applications and/or patents
which may be applicable as references for double patenting rejec-
tions.

In the case of a divisional application, the corresponding parent

application shall be taken into consideration and reviewed by the
examiner for any additional pertinent prior art. Where the cited prior
art of a parent application has been reviewed, this fact should be
made of record.

For national stage applications filed under the PCT route, the
examiner shall consider the prior art documents cited in an
international search report (ISR) as well as the search reports from
other patent offices.

The first search shall cover the invention as described and

claimed, including the inventive concepts toward which the claims
appear to be directed. The examiner shall also complete the search
notes form attached in the file wrapper and indicate the date(s) on

30
which the search was conducted. Any updates in the search
including the relevant or pertinent database and the search queries
and classifications employed shall also be noted and indicated on
the search notes.

3.3 General Search Guidelines

In the examination of an application for patent, the examiner

shall conduct a thorough search for the relevant prior art. The
search shall cover the claimed subject matter and any features
disclosed in the application which might be claimed as an
amendment.

Planning a thorough search of the prior art requires three

distinct steps, namely:

A. Identifying the field of search;

B. Selecting the proper search tool(s); and
C. Determining the search strategy for each search tool

A. Identifying the field of search

(i) When determining the field of search, three reference

sources must be considered - domestic patents (including
patent application publications), foreign patent documents,
and non-patent literature (NPL).
(ii) The field of search shall be prioritized starting with the
area(s) where the invention would most likely be found in the
prior art.
(iii) A proper field of search normally includes the subclass in
which the claimed subject matter of an application would be
properly classified.
(iv) In outlining the field of search, the examiner shall take note
of every class and subclass under the IPC and other
organized systems of literature which covers the subject
matter claimed.
(v) The examiner may consult with other examiners and division
chiefs, especially with regards to applications claiming an
unfamiliar subject matter.
(vi) Detailed guidance on the choice and use of specific search
tools can be established only within the context of the
special requirements of each examining divisions.

B. Selecting the Search Tools

(i) After determining the field of search, the examiner shall

31
 select the proper search tools in conducting the search.
Examiners are provided access to a wide variety of both
manual and automated search tools.

(ii) Choice of search tools depends on the examiner’s current

search needs. It is based on the examiner’s knowledge of
the coverage, strengths and weaknesses of the available
search tools.

(iii) Search tool knowledge is particularly important for

examiners in active and highly advanced arts where patent
documents may represent a reference source of limited
value. Search in these areas should include consideration of
Non-Patent Literature (NPL) and employ the effective use of
tools specialized to cover NPL pertinent to their search
needs.

(iv) Search needs in some technologies, e.g., chemical

structures, DNA sequences, are very specialized and can
only be met using a specialized search tools.

(v) Search tool selection in crowded, highly developed arts

where most claimed inventions are directed to
improvements, patent documents, including patent
application publications, may serve as the primary reference
source.

C. Determining the search strategy for each search tool

(i) An appropriate search strategy shall be determined by the

examiner on a case to case basis and in consultation with
other examiners, division chiefs, and/or trained professional
on-line search personnel, where appropriate.

(ii) Each division shall develop supplemental specific guidance

and training for the examiners in order to acquire specialized
skills needed to determine an appropriate field of search in
their specific arts. This will augment general training and
information on search tools that is normally provided
therefor.

(iii) Automated search tools covering patent documents usually

provide both a classified and text search capability. A
combination of text search with other criteria, in particular
classification, would normally constitute a thorough search.

32
 (iv) The traditional method of browsing through all patent
documents in one or more classifications will continue to be
an important part of the search strategy when it is difficult to
express search needs in textual terms.

(v) Text searching can still be useful by employing broader text

terms, with or without classification parameters.

3.4 The Search Report

R. 701.1 The search report shall be prepared before the publication of the
application, preferably at 16th month from the date of filing, and
shall be published together with the application (including
description, drawing, claims and abstract) after the expiration of
18th months from the filing date.

The search report shall:

(i) mention those documents available at the Office at the

time of drawing up the report, which may be taken into
consideration in assessing the novelty and inventive step
of the invention;

(ii) 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;

(iii) contain the classification of the subject matter of the

application in accordance with the latest version of the
International Patent Classification (IPC); and

(iv) include relevant documents cited in a search established

in the corresponding foreign application.

The format to be used in citing relevant document shall be made

R. 806 in accordance with the provisions of R.806 and R.806.1. The
R. 806.1 references cited must be clearly identified and the relevant
passages thereof must also be identified as precisely as possible.

Sec. 24.1 Applications cited as prior art under Sec.24.1 must have been
published. Unpublished withdrawn or forfeited applications may not
be cited.

33
3.5 Citing Documents in Foreign Language

The examiner shall only cite a document in a foreign language

(e.g. Japanese, German or French, etc.) if based on his judgment,
the document is a relevant prior art as evidenced by the drawings,
an English abstract, or any corresponding document in English or
Filipino.

Duplicate or substantially duplicate versions of a foreign

language description, in English or some other language known to
the examiner, can sometimes be found. It is possible to cite a
foreign language description as a reference, while at the same time
citing an English language version of the description with a later
date as a convenient translation if the latter is in fact a translation.
Questions as to content ad disclosure in such cases must be
settled based on the description which was used as the reference.

If a Philippine patent being considered as a reference claims the

priority of a previously filed foreign application, it may be desirable
to determine if the foreign application has issued or has been
published, to check and verify if there is an earlier date.

If a foreign patent or description claims the priority of an

application in another foreign country, it may sometimes be
desirable to check the latter to determine if the subject matter is
already patented or published at an earlier date. Equivalent
versions of foreign descriptions, i.e., members of the same patent
family, are often available in English or other languages known to
the examiner.

All printed publications (non-patent publications) may be used

as references, and the date to be cited in the search report is the
publication date thereof.

Cancelled matter in the application file of a Philippine patent or

Philippine patent application publication is a proper reference as of
the filing date.

3.6 Kind Codes

The Office shall adhere to the World Intellectual Property

Organization (WIPO) Standard ST.16 Code on each of its
published patent documents. WIPO Standard ST.16 codes (kind
codes) include a letter, and in many cases a number, used to
distinguish the kind of patent document (e.g., publication of an
application for a utility patent (patent application publication),

34
patent, utility model or design) and the level of publication (e.g., first
publication, second publication, or corrected publication). Detailed
information on Standard ST.16 and the use of kind codes by patent
offices throughout the world is available on the WIPO web site at
http://www.wipo.int/scit/en under the links for WIPO standards and
other documentation. (Refer to 4.1 Section 2.9, Part B, Formality
Examination of Applications of this Manual)

3.7 Validity of dates displayed on the face of Patent

documents and non-patent literature

The examiner is not required to prove either the date or the

occurrence of events specified on the description of a patent or
patent application, or in official journals of foreign patent offices,
which the Office has in its possession. The date of receipt of
copies by the Office, as shown by Office records or stamped on the
copies, need only to be stated by the examiner, when necessary.

3.8 Special Cases (Scope of Search)

The following are special cases that shall define the scope of
the prior art search to be conducted.

If the claims of the application lacks unity of invention. The

examiner, during the formality examination report, may raise a
restriction requirement and the search report shall be conducted
only on the elected invention made by the applicant.

In the event that the applicant did not elect a group of invention,
the examiner shall consider the first group of invention as the
subject for the search. Search on subsequently filed divisional
applications shall be made, published separately from its parent
application. And the payment of the annual fees of the divisional
applications shall be based on the dates of the annuity payments of
the parent application.

3.9 Searching Techniques

1. Searching using the Internet

In order to find proof of an availability date on the internet, the

examiner may use online tools that will allow denoting the history of
updates in a website. By typing in the URL, an archived version of
the web can be surfed. One tool that is used in this determination
is the Internet archive at http://www.archive.org, enter the URL then
press “Take Me Back”.

35
 2. Patent Family Information

Patent family information is available through free databases.

3. Other additional searches during substantive

examination

a. An additional search may be necessary in the following

cases:

(i) where no search report (e.g. because of obscure

claims) has been issued after the main search;
(ii) an amendment was filed where the deficiencies which
Sec. 49
rendered a meaningful or complete search impossible
have been corrected, provided that such amendment
does not contravene Sec.49; and
(iii) the original search no longer covers the scope of the
submitted amended claims.

b. Exceptionally, an additional search may be required if the

applicant refuses an acknowledgement of prior art, or if the
examiner believes that material relevant to obviousness
might be found in technical fields not taken into account
during the main search.

c. The examiner is not barred from looking for additional

relevant documents anytime during substantive examination
of the application. The examiner may also consider relevant
R. 803 documents supplied by a third party (third party observation)
as a prior art during prosecution.

4. “Topping-up search”

a. The examiner should also make a search for any additional

Sec. 24.2 conflicting Philippine applications falling under Sec.24.2, so
R. 204 (d) called “topping-up” search. This is because the searchable
collection of the Philippine applications may not be complete
in respect of such material at the time the main search is
made.

b. “Topping-up” search should be made so as to cover all

published Philippine applications filed up to one year or
more after the filing of the application under consideration,
since priority dates claimed (if any) may not be accorded to
all or part of the application, but may be only accorded to the

36
 appropriate part of a conflicting application.

c. If the examiner is unable to complete this "topping-up"

search at the first examination stage, he should ensure that
such search is completed before the application is reported
to be in order for the grant of a patent.

d. The grant of a patent should not be substantially delayed for

the reason that the “topping-up” search was not completed
due to publication delays concerning older, potentially
conflicting Philippine applications. However, in cases where
the examiner has knowledge of such conflicting applications
which would have been cited against novelty, the publication
of the conflicting application, should, if possible, be
accelerated and the recommendation for grant of the
application under examination should be upheld.

3.10 Special Problems after Search

Assuming that a search has been made and documents are

already cited, there are two special problems that may arise
occasionally in respect of such documents. These are the
following:

a. Doubts with regard to the fact of public availability and

doubts concerning the precise date of publication of a
document have not, or not fully, been removed.

(i) Based on sound reasons and arguments of the

applicant, the examiner should consider whether to
investigate the matter further during the substantive
examination stage of the application.

b. The applicant disputes the relevance of the cited prior art

document in a foreign language.

(ii) The applicant should give specific reasons. The

examiner should consider whether, in the light of
these reasons and based from other prior art
available to him, he is justified in pursuing the matter.
If so, he may try to obtain from the applicant a
translation of the document (or merely the relevant
part of it, if that can be easily identified), or at least
statements concerning specific questions relating to
the disclosure in the document.

37
4. THE PATENT COOPERATION TREATY (PCT)

Statutory Basis CONTENTS

4.1 Filing of PCT International Application
4.2 PCT National Phase Entry

An international application enters the national phase when the

applicant furnishes the Intellectual Property Office (IPO) the
following documents not later than thirty (30) months from the
earliest priority date, or the international filing date if there is no
priority claim:

a. A duly filled-up request form for the national phase entry;

b. A copy of the international application in English (unless
already transmitted by the IB), or the English translation of the
international application if filed in another language; and
c. The filing fee.

The filing fee shall be paid within one (1) month from the date of
entry into the national phase, and if the applicant fails to pay the
filing fee, the application shall be deemed withdrawn. In this case,
the Office shall issue a Notice of Withdrawn Application. The
withdrawn application may be revived in accordance with Rules
929 or 929.1.

An international application which claims the priority of an earlier

Philippine national application shall be exempt from payment of
the filing fee.

Subject to the payment of an extension fee for late entry equal to

fifty percent (50%) of the filing fee prescribed in the IPO Fee
Structure, the entry into the national phase may be extended by
one (1) month.

An international PCT application shall be considered to have

entered national phase if it satisfies the following conditions:

a. Entry into the national phase in the Philippines was made

within thirty (30) months from the priority date or within
thirty-one (31) months from the priority date (late entry)
provided that the late entry fee is paid.

b. The copy of the international application submitted within

thirty (30) months from the priority date or within thirty-one

38
 (31) months from the priority date (late entry) is in English.

c. If the late entry fee is not paid, the applicant shall be

invited to pay the late entry fee together with the surcharge
of 50% of the late entry fee within two (2) months from the
mailing date of said invitation. If the late entry fee and
surcharge are not paid within the prescribed time period,
the application shall be withdrawn and subject for revival
as provided under Rules 929 and 929.1.

d. The designation of the Philippines was not withdrawn

through a Notice of Withdrawal (Form PCT/IB/372) filed by
the applicant and/or a Notification of Withdrawal (Form
PCT/RO/136) issued by the receiving Office during the
international phase.

e. The application was not withdrawn during the international

phase through a Notice of Withdrawal (Form PCT/IB/372)
filed by the applicant and/or a Notification of Withdrawal
(Form PCT/RO/136) issued by the receiving Office or
through a Notification that the International Application
Considered to be Withdrawn (Form PCT/RO/117) issued
by the receiving Office.

If the application fails to meet the above-mentioned conditions,

the international application shall be denied national phase entry
and will no longer proceed with the national phase processing and
substantive examination and the applicant shall be duly notified on
this matter.

In case an application entering the national phase has a priority

claim, the reckoning date for counting the period within which to file
for a national phase entry shall be the earliest priority date of the
application. If the priority date was not declared in the National
Phase Entry Application Form, the Office shall accept the National
Phase application based on the international filing date.

However, if the application was found to have a priority claim

and the entry to the national phase was made beyond the thirtieth
(30th) month or beyond the thirty-first month (31st) from the priority
date, the applicant shall be notified that the application will not be
considered as a national phase entry application.

If not all of the elements of the international application being

submitted for national phase entry are in English, the duty officer

39
R. 35 Pro PCT for patents shall not accept the application. The elements of the
international application shall consist of the description, claims,
abstract and drawings (if any).

4.3 National Phase Entry Application containing amendments

under PCT Article 19 or Article 34

Where the application entering the National Phase was

amended during the international phase under PCT Article 19 or
Article 34, as the case may be, the English translation of the
amendments must be submitted together with the application or
within thirty-one (31) months from the earliest priority date,
otherwise, those amendments shall be cancelled and shall no
longer be considered.

Where the elements of a national phase entry application and, if

applicable, amendments under PCT Article 19 or PCT Article 34
have been found to contain some pages with texts not in English,
including text matter in the drawings, the applicant shall be invited
to submit the English translation thereof within two (2) months from
the mailing date of the invitation. If the English translation thereof
is not submitted within two (2) months from the mailing date of the
invitation, the concerned page or text shall be considered
cancelled.

4.4 Election of Earlier Philippine National Application

Where the national phase application claims the priority of an

earlier Philippine national application, but the applicant did not elect
only one of the applications for further prosecution, the applicant
shall be invited to elect only one application for further prosecution
within two (2) months from the date of mailing of the invitation, or
within a longer period which the Bureau may allow but not to
exceed six (6) months from the date of entry into the national
phase.

Where the applicant fails to elect only one application, the

Bureau shall elect, on behalf of the applicant, the national phase
entry application and withdraw the earlier Philippine national
application if the substantive examination report for the latter has
not been issued yet on or before the date of national phase entry.
In case the substantive examination report has been issued on the
Philippine national application, the same shall be continued for
prosecution and the national phase entry application shall be
withdrawn.

40
 4.5 Withdrawal of Philippine Designation

Where the designation of the Philippines was withdrawn:

1. Through a Notice of Withdrawal (Form PCT/IB/372) filed by

the applicant and/or a Notification of Withdrawal (Form
PCT/RO/136) issued by the receiving Office during the international
phase; or
2. The application was withdrawn during the international phase
through a Notice of Withdrawal (Form PCT/IB/372) filed by the
applicant and/or a Notification of Withdrawal (Form PCT/RO/136)
issued by the receiving Office; or
3. Through a Notification that the International Application
Considered to be Withdrawn (Form PCT/RO/117) issued by the
receiving Office;

The applicant shall be invited to file a request to the Bureau for

R. 928 (b)
review of the matter, within two (2) months from the mailing date of
the invitation under Rule 928 (b) of the Revised IRR.

If the applicant fails to submit said request within the

R. 37 Pro-PCT prescribed time limit, the international application is not and will not
be accepted for national phase examination. A notice of forfeited
application shall be sent to the applicant for failure to comply with
Rule 37 (Pro-PCT).

4.6 The International Filing Date (Restoration of Right)

The international filing date of the application must be within

twelve (12) months from the priority date taking into account
Saturdays, Sundays, non-working holidays and differences on the
working days among different PCT Contracting States.

If the international filing date is beyond twelve (12) months from

the priority date, the applicant shall be notified that the IPOPHL
has notified the International Bureau (IB) that the Restoration of
Right of Priority under Rules 26bis.3(j), 49ter.1(g), and 49ter.2 of
the PCT is not compatible with the national laws of the Philippines.

Thus, any restoration of right of priority requested by the

applicant during the international phase does not apply in the
Philippines. Therefore, the priority claim is hereby disregarded and
the effective filing date shall be the international filing date.
R. 17.1 (a) (b) 4.7 Submission of Priority Document under Rule 17.1 (a) and
(b) of the PCT.
Pro-PCT

41
 The priority claim of an international application designating or
electing the Philippines shall not be disregarded by the Bureau,
where the priority document is received by the IB not later than
sixteen (16) months after the priority date in accordance with Rule
17.1 (a) and (b) of the PCT.

If the priority document is not submitted to the IB within sixteen

(16) months after the priority date in accordance with Rule 17.1 (a)
and (b) of the PCT, the applicant may submit to the Bureau a
certification from the national Office concerned stating the following
data regarding the application the priority of which is claimed:
a. name of the applicant,
b. filing date,
c. application number. and
d. title of the application.

The certification, and its English translation if not in English,

together with payment of the fee for extension of time to submit
priority document and the surcharge for late payment provided for
in the IPOPHL Fee Structure, shall be submitted within six (6)
months from the date of entry of the international application into
the national phase without need of notice.

The certification and its English translation if not in English shall

not require legalization. Failure of the applicant to comply with this
rule shall be ground to disregard the priority claim.

4.8 Payment of Priority Fees and other Related Fees

The fee for request for right of priority must be paid at the time
of filing the request. If the fee is not paid, the Office shall invite the
applicant to pay the fee within two (2) months from the mailing date
of the invitation. Failure to do so shall invalidate the priority claim
of the application.

In case of multiple priority claims, the corresponding multiple

priority claim fee shall be paid upon filing of the claim for multiple
priority. This means that if there is more than one priority claim the
fee for request for right of priority must be paid for each of those. If
the fee is not paid within two (2) months from the mailing date of
the invitation of the Office, the unpaid priority claim shall be
considered invalid.

If the claims fee is not fully paid within one (1) month from the
mailing date of the invitation of the Office or the claims fee is not

42
fully paid within the time limit prescribed during substantive
examination of the application, the claim or claims concerned shall
be deemed deleted.

Furthermore, the application shall be deemed withdrawn if the

substantive examination fee is not paid within six (6) months from
the date of entry into the national phase.

4.9 Small Entity and Youth Filers

If the applicant declares itself as a small entity or a youth filer in

the National Phase Entry Application Form, the fees applicable
shall be those listed under the small entity column of the IPOPHL
Fee Structure with the youth filer getting a 50% discount from the
fee listed therein; provided, that the applicant has submitted a
written statement to that effect.

A small entity is any natural or juridical person whose assets

are worth one hundred million (P100M) or less; or, any entity,
agency, office, bureau or unit of the Philippine government
including government-owned or controlled corporations, state
universities and colleges and government-owned or government-
run schools.

A youth filer is any natural person or a group of natural persons

who has not or all of whom have not reached his/her/their twenty-
second (22nd) birthday at the time of filing the application.

If the written statement is not submitted, the applicant shall be

bound to pay the prescribed fees under the big entity column.

4.10 Correction and/or Addition of Priority Claims

According to Rule 26bis of the PCT, the applicant may correct a

priority claim or add a priority claim to the request by a notice
submitted to the receiving Office or the IB within a time limit of
sixteen (16) months from the priority date or, where the correction
or addition would cause a change in the priority date, 16 months
from the priority date as so changed, whichever 16-month period
expires first, provided that such a notice may be submitted until the
expiration of four months from the international filing date.

The decision of the receiving Office or the IB concerning such

request shall be made through a Notification Relating to Priority
Claim (Form PCT/RO/111 and Form PCT/IB/318).

43
R. 306.3 A request for correction or addition of priority claim during the
national phase is no longer permissible since the time limit under
Rule 26bis of the PCT has already expired even if the applicant
applies Rule 306.3 of the Revised IRR for Patents, Utility Models
and Industrial Designs. According to Rule 306.3, the applicant
shall be given two (2) months from the filing date to submit a
priority claim where such priority could have been claimed when
the application was filed.

R. 4.1 Pro-PCT One would think that, in such a case, the submission of an
additional priority claim should be accepted. However, it must be
noted that the filing date of the PCT application is the international
filing date, and not the date of national phase entry as provided by
Rule 4.1 of the Pro-PCT. According to Rule 4.1, an international
application, which has been accorded an international filing date in
accordance with the Treaty and PCT Regulations, shall have the
effect of a national application for a patent or utility model,
respectively, regularly filed with the Intellectual Property Office as
of the international filing date, which date shall be the actual filing
date in the Philippines.

In this regard, the due date stated in Rule 306.3 has already
expired at the time when the international application has not yet
entered the national phase with respect to the Philippines, in which
case the national law of the Philippines still does not apply.
Therefore, Rule 306.3 is not applicable and the addition of a priority
claim shall be refused.

4.11 Publication PCT Application

In the event of a discrepancy in the bibliographic data of the

PCT application and in the absence of an expressed request for
rectification/change from the applicant, the Bureau shall recognize
the bibliographic data as shown on the front page of the
international publication or the changes based on Form
PCT/IB/306.

For Invention applications, a National Phase Entry Application

Report shall be issued. For Utility Model applications, the result of
the processing thereof shall be noted for reference of the examiner
under the Utility Model Examining Division in the Examiner’s Note
of the automation system being used by the Office.

The National phase entry applications shall be published in the

E-Gazette Patents after initial processing by the PCT Section. It

44
shall be presented under the heading: List of International
Applications filed as National Phase Entry.

The publication shall be in a listing format consisting of the

following information: international application number, domestic
application number, date of national phase entry, title, applicant,
and agent.

4.12 PCT Divisional Application

PCT parent applications together with the divisional applications

received by the PCT section shall be forwarded to the records
section for assignment to the substantive examining divisions.
Moreover, divisional applications shall be assigned to the
substantive examiner handling the corresponding parent
application.

The publication of a PCT divisional application in the IPO e-

gazette shall include the bibliographic data, the divided claims and
the international search report. A request for substantive
examination shall be filed by the applicant within six (6) months
from the date of publication of the divisional application.

The date of payment of the annual fees of a PCT divisional

application shall be made upon the expiration of four (4) years from
the date of the international publication of the parent PCT
application, and on each subsequent anniversary of such date.

The claims of the divisional application shall be reviewed by the

examiner to determine whether the divided claims are covered by
the International Search Report (ISR). If the claims of the PCT
divisional applications are not covered by the ISR, a new search
report covering such claim or claims shall be conducted by the
examiner and subsequently be published in the IPO e-gazette
together with the bibliographic data.

45
5. UTILITY MODEL AND INDUSTRIAL DESIGN PROCEDURE

Statutory Basis CONTENTS

5.1 Utility Model and Industrial Design Registration

R. 1405
R. 1406 The utility model application shall be registered without
R. 1505 substantive examination. The utility model and industrial design
R. 1506 applications shall undergo formality examination in accordance with
Part 17 the guidelines provided in Part 1 of this Manual and subject to
adverse information proceedings under Part 17 of the revised IRR.

5.2.1 Utility Model Converted from Invention Patent

When a published invention application has been converted to a

utility model application, the said utility model application shall be
deemed registered from the first publication of the converted patent
application.

Sec. 111 5.2.1 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.

5.3 Special Subject Matter of Industrial Design

5.3.1 Computer-Generated Icons

R. 1500 To be directed to statutory subject matter, industrial design

applications for computer-generated icons must comply with the
“article of manufacture” requirement of Rule 1500 of the Revised
IRR.

A. Guidelines for examination of design patent applications for

computer-generated icons

The following guidelines have been developed to assist

IPO/BOP personnel in determining whether industrial design
applications for computer-generated icons comply with the “article

46
 of manufacture” requirement of Rule 1500 of the Revised IRR.

1. General Principle Governing Compliance With the “Article of

Manufacture” Requirement

Computer-generated icons, such as full screen displays and

individual icons, are 2-dimensional images which alone are surface
ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd.
Pat. App. & Int. 1992) (computer-generated icon alone is merely
surface ornamentation). The IPOPHL considers industrial designs
for computer-generated icons embodied in articles of manufacture
to be statutory subject matter eligible for industrial design
registration and protection under Rule 1500. Thus, if an application
claims a computer-generated icon shown on a computer screen,
monitor, other display panel, or a portion thereof, the claim
complies with the “article of manufacture” requirement of Rule
1500. Since a registrable industrial design is inseparable from the
R. 1500 object to which it is applied and cannot exist alone merely as a
R. 1501 scheme of surface ornamentation, a computer-generated icon must
be embodied in a computer screen, monitor, other display panel, or
portion thereof, to satisfy Rules 1500 and 1501.

“We do not see that the dependence of the existence of a design

on something outside itself is a reason for holding it is not a design
‘for an article of manufacture.’ ” In re Hruby, 373 F.2d 997, 1001,
153 USPQ 61, 66 (CCPA 1967) (design of water fountain
patentable design for an article of manufacture). The dependence
of a computer-generated icon on a central processing unit and
computer program for its existence itself is not a reason for holding
that the design is not for an article of manufacture.

B. Procedures for Evaluating Whether Design Patent

Applications Drawn to Computer-Generated Icons Comply With the
“Article of Manufacture” Requirement

The examiner shall adhere to the following procedures when

reviewing industrial design applications drawn to computer-
generated icons for compliance with the “article of manufacture”
requirement of Rule 1500.

1. Read the entire disclosure to determine what the

applicant claims as the design and to determine whether
the design is embodied in an article of manufacture.

Since the claim must be in formal terms to the design “as

shown, or as shown and described,” the drawing provides

47
 the best description of the claim. Rule 1513.4.

2. Review the drawing to determine whether a computer

screen, monitor, other display panel, or portion thereof,
is shown.

Although a computer-generated icon may be embodied in

only a portion of a computer screen, monitor, or other display
panel, the drawing “must contain a sufficient number of views
R. 1514 to constitute a complete disclosure of the appearance of the
R. 1513.1 article.” In addition, the drawing must comply with Rules 413
and 414.1 – 414.15.

3. Review the title to determine whether it clearly

describes the claimed subject matter. (Rule 1513.1)

The following titles do not adequately describe a design for

an article of manufacture under Rule 1513.1: “computer icon”;
or “icon.” On the other hand, the following titles do adequately
describe a design for an article of manufacture under Rule
1513.1: “computer screen with an icon”; “display panel with a
computer icon”; “portion of a computer screen with an icon
image”; “portion of a display panel with a computer icon
image”; or “portion of a monitor displayed with a computer icon
image.”

4. Review the description to determine whether a

characteristic feature statement is present. If a
characteristic feature statement is present, determine
whether it describes the claimed subject matter as a
computer-generated icon embodied in a computer
screen, monitor, other display panel, or portion thereof.
See McGrady v. Aspenglas Corp., 487 F.2d 859, 208
USPQ 242 (S.D.N.Y. 1980) (descriptive statement in
design patent application narrows claim scope).
R. 1500 5. If the drawing does not depict a computer-generated icon
embodied in a computer screen, monitor, other display
panel, or a portion thereof, in either solid or broken lines,
object the design as not registrable reject the claimed
design for failing to comply with the article of manufacture
requirement.

6. If the disclosure as a whole does not suggest or

describe the claimed subject matter as a computer-
generated icon embodied in a computer screen,
monitor, other display panel, or portion thereof, indicate

48
 that:

R. 1513.4 (a) The claim is fatally defective under Rule 1513.4; and
Sec. 49 (b) Amendments to the written description, drawings and/or
claim attempting to overcome the rejection will ordinarily be
entered, however, any new matter will be required to be
canceled from the written description, drawings and/or
claims. If new matter is added, the claim should be rejected
under Section 49.

7. If the disclosure as a whole suggests or describes the

claimed subject matter as a computer-generated icon
embodied in a computer screen, monitor, other display
panel, or portion thereof, indicate that the drawing may be
amended to overcome the rejection under Rule 1513.4.
Suggest amendments which would bring the claim into
compliance with Rule 1513.4.

Upon reply by applicant: (a) enter any amendments; and (b)

review all arguments and the entire record, including any
amendments, to determine whether the drawing, title, and
specification clearly disclose a computer-generated icon
embodied in a computer screen, monitor, other display panel, or
portion thereof.

5.3.2. Changeable Computer-Generated Icons

Computer generated icons including images that change in

appearance during viewing may be the subject of a design claim.
Such a claim may be shown in two or more views. The images are
understood as viewed sequentially, no ornamental aspects are
attributed to the process or period in which one image changes into
another. A descriptive statement must be included in the
specification describing the transitional nature of the design and
making it clear that the scope of the claim does not include
anything that is not shown. Examples of such a descriptive
statement are as follows:

“The subject matter in this patent includes a process or period in

which an image changes into another image. This process or
period forms no part of the claimed design;” or

“The appearance of the transitional image sequentially

transitions between the images shown in Figs. 1-8. The process or
period in which one image transitions to another image forms no

49
part of the claimed design;” or

“The appearance of the transitional image sequentially

transitions between the images shown in Figs. 1-8. No ornamental
aspects are associated with the process or period in which one
image transitions to another image.”

5.3.3 Partial Designs

A part of an article itself can be the subject of a partial design

registration and is thus separately protected. For partial designs to
be registrable, the following requirements must be complied with:

1. In the application form, the partial design, that is, the

subject matter of the application, must be explicitly
described.
2. The title of the article for a partial design must recite the title
of the whole article of which the partial design is included.
3. In the drawings, the part of the design for which protection
is sought shall be shown in solid lines and the environment
or surrounding area shall be shown in broken or dashed
lines.
4. A partial design application will be examined in the same
manner as a regular design application as provided in the
revised IRR.
Example:

50
 5.4 COMMON PROCEDURES
5.4.1 Publication of Utility Model and Industrial Design
R.1414 The examiner shall check the completeness of the contents of
R.1517 the utility model and/or industrial design application and shall
immediately publish the applications in the IPOPHL e-gazette
provided the following formal requirements have been complied
with upon the filing of the application.

(i) The description, claim/s and drawings are made in accordance

with the revised IRR;
(ii) The filing fee and other required fees have been fully paid;
(iii) If priority is claimed, the priority documents are submitted;
and
(iv) Other additional formal requirements have been complied
with.
R. 1701
If the above requirements are complete, the examiner shall
publish, register and issue the certificate of registration of the utility
model and/or the industrial design application within two (2) months
from the filing date thereof; provided that no adverse information is
filed within the one-month publication period.
Sec. 31
R. 1602 An expeditious registration of industrial designs (ID) in five (5)
R. 305 days and utility models (UM) in fifteen (15) days from the date of
R. 1405 filing thereof shall be adopted. In order to qualify for the expeditious
R. 1505 registration process, the utility model and industrial design
R. 1406 applications as filed must meet the formality requirements as set
R. 1506 forth in Rules 1406 and 1506 of the Revised IRR.

For practical purposes and in order to achieve the release of the

certificate of registrations within two (2) months from the filing date
of the application, the examiner shall publish the industrial design
within five (5) days and the utility model within fifteen (15) days
from the filing date of the applications.

5.4.2 Utility Model and Industrial Design Applications filed

under Section 31.

In the case a utility model or industrial design application is filed

under Section 31 (item (iii) of the preceding section 5.4.1) and the
application was filed initially without the certified true copy of the
corresponding foreign application, the examiner shall nevertheless
proceed to publish the application provided that the above-
mentioned requirements in items (i), (ii) and (iv) have been
complied with during the filing of the application.

51
 The applicant shall be notified that the application may be
registered even without the submission of the certified copy of the
foreign application. However, the examiner shall further require the
applicant to submit the certified copy of the foreign application
together with an English translation within six (6) months from the
date of filing in the Philippines, and if the certified copy is not filed
within the required period, the Office shall consider the actual filing
date of the utility model or industrial design application as the
effective date of filing.

5.4.3 Resolution of the Adverse Information

If an adverse information against the application has been filed

within the “one-month” period as provided under the revised IRR,
the Director aside from issuing a registrability report motu proprio,
may constitute a “Committee of Three” to review and make
recommendations on the merits of the evidences submitted against
the registrability of the application in the adverse information.

The “Committee of Three” shall constitute two (2) technical

experts and one (1) legal expert. The committee shall convene to
review the description and claim/s of a published utility model
application or the general overall ornamental appearance of a
published industrial design application subject of the adverse
information against the prior art evidences contained in the
information. The committee shall prepare a recommendatory report
as to the registrability of the utility model or industrial design subject
of the adverse information within two (2) months from the date the
case was assigned.

The committee’s report may contain the following

recommendations:

1. To amend the claim/s to make it novel and differentiate it

from the prior art evidences in the adverse information.
2. To recommend the non-registrability of the published utility
model or industrial design subject of the adverse information
for lack of novelty.
3. To recommend the registrability of the published utility model
application or industrial design application subject of the
adverse information.

The report shall include important legal and technical

discussions explaining the basis for the committee’s
recommendation.

52
 The Director shall also consider the committee’s report in
deciding whether the published utility model or industrial design
applications subject of the adverse information should be registered
or not.

In case a recommendation of the committee to amend the claim/s

is taken into consideration by the Director in his final decision, the
Office shall require the applicant to submit such amendments
necessary to render the application novel and registrable within the
earliest possible time. Upon the submission of the amended claims
and description (if necessary), and if such amendments are
allowable based on the Director’s final decision, the application
shall be republished in the IPOPHL e-gazette and be issued a
certificate of registration.

In case a recommendation of the committee that the published

utility model or industrial design subject of the adverse information
is not registrable for lacking novelty is taken into consideration by
the Director in his final decision, the application shall be denied
registration. The applicant shall be notified of the Director’s
decision and further informed that he may file an appeal to the
Director General in accordance with Part 13 of the revised IRR.

In case a recommendation of the committee that the published

utility model or industrial design subject of the adverse information
is novel and registrable is taken into consideration by the Director
in his final decision, the application shall be registered and a
certification of registration shall be prepared and issued to the
applicant.

In case a cancellation case is lodged against a registered utility

model or industrial design subject of a previous adverse information
case, the findings in the committee report may serve as a reference
for the further adjudication of the cancellation case.

5.4.4 Issuance Date and Release of the Certificate of

Registration

If no adverse information was filed against the published utility

model or industrial design application within the one-month
publication period, the application shall be registered, and the
certificate of registration shall be released at least two (2) weeks
after the expiration of the publication date. This will allow any
adverse information timely filed thru registered mail but was
received by the Bureau after the one-month publication period to be

53
 considered for evaluation and decision by the Director of Patents.
The date of issuance of the utility model or industrial design
registration shall be the date of publication of the utility model or
industrial design application in the IPOPH e-gazette.

5.5 Deferred Publication of Industrial Design

Memorandum- To enable designers and companies applying for the registration

Circular No. 14- of industrial designs to keep them secret from competitors until
004 such time that these are placed in the market, applicants may opt
Rule 1517 to file a request for the deferred publication of the industrial design
application. The request may be filed simultaneous with the filing of
the application, or at any time prior to its publication in accordance
with Part 17 of the Revised Implementing Rules and Regulations
(IRR).

The maximum period allowed for the deferred publication of an

industrial design application shall be thirty (30) months from the
filing date or priority date of the application. In case the request for
the deferred publication is made after the filing of the application,
the allowable period for the deferred publication shall be the
remaining time from the allowed thirty (30) months deferred
publication period. The applicant/s may request for a specific time
for this Office to publish the application, provided it does not go
beyond the allowed deferment period of thirty (30) months.

Furthermore, as industrial design applications which satisfy the

formal requirements provided under Rule 1517 of the revised IRR
are immediately published by the Office within five (5) days from
the date of filing thereof, applicants are encouraged and strongly
advised to file their request for deferred publication upon the filing
of their applications. This is to prevent the inadvertent publication of
the design applications with subsequent requests for deferred
publications.

Upon the receipt of the request for the deferred publication of

the industrial design together with the corresponding payment of
fee thereof, the examiner shall suspend the formality examination
of the application until the thirty (30) months deferred publication
period has expired. If the fee for the deferred publication has not
been paid, the examiner through an office action shall require the
applicant to pay the corresponding fee. Upon the payment of the
fee, the thirty (30) months deferred publication period shall still
commence from the date the request was made. The non-payment
of the fee within the time as provided in the official action shall set
aside the request for the deferred publication.

54
 The examiner shall with due diligence keep a record of
applications with a request for deferred publication in order to avoid
the inadvertent publication of the same.

55
6. THE COMMUNITY REVIEW PROCESS
R. 802 6.1 The Community Review Process (CRP)
R.1700
The community review process seeks to enchance tranparency
and facilitate the flow of informaiotn regading patent, utiliyt model
and industrial design applications filed with the IPOPHL. However,
the community review proces shall run paralller to, and should not
delay the examination of applications, which shall proceed according
to the provisions of RA 8293 and the Revised Implementing Rules
and Regulations.

6.2 Components of the Community Review Process

6.2.1 The Industry Database

An industry database shall be created containing the list of

recipients of the published information such as industries, regulatory
government agencies, schools and universities. Furthermore, other
recipients may also include any interested person or entity who
notified IPOPHL of its interest to be a recipient of published
information of any particular field of technology. The recipients shall
be classified and grouped according to the IPC-ISIC Concordance
provided by the World Intellectual Property Organization (WIPO).
The database shall be regularly updated and made available to the
IPOPHL-IPAS, the Intellectual Property Satellite Offices (IPSO) and
the Innovation and Technology Support Offices (ITSO). The
database shall contain the following information:

a. The names of the recipient industries, government

agencies, schools or universities;
b. The corresponding industry code (WIPO IPC- ISIC
Groupings) of the recipients;
c. The contact numbers of the recipients; and
d. The address and e-mail address of the recipients.

6.2.2 The Organizational Structure

1. A Clearing-House committee shall be created to manage the

general community review process and the contents of the industry
database. The committee shall have the following functions:

a. It shall regularly coordinate with the Department of Trade

and Industry (DTI), the IPSO and ITSO support groups
and the Management Information Systems Bureau (MIS)
in updating and populating the contents of the Industry
Database. The updating of the database shall be made

56
 on a quarterly basis. The updating shall specifically take
into consideration any changes in the address and contact
numbers of the recipients. It shall also include in the
database other interested parties and entities notifying the
IPOPHL of its interest to be a recipient of the published
information.
b. It shall identify, select and group the recipient industries,
government agencies, schools or universities according to
the the IPC-ISIC Concordance provided by the World
Intellectual Property Organization (WIPO).
c. It shall directly coordinate with the designated community
review officer (CRP Officer) in the publication section on
matters relating to the identification and selection of the
relevant recipients of the published information, and the
updating of the industry database.
d. It shall from time to time monitor the sending of published
information and the feedback coming from the recipients.
e. It shall conduct meetings to regularly to assess the
operation of the community review process.

2. A Community Review Officer (CRP Officer) shall be

designated in the publication section and shall be a member of the
Clearing-House committee. The CRP Officer shall have the
following functions:

a. He shall monitor the published information relating to

utility model and industrial design applications at least
twice a week and patent applications for first publication
on a weekly basis.
b. He shall coordinate with other members of the “Clearing-
House” Committee in identifying and selecting the
recipients of the published information based on the
classification and groupings in the industry database.
c. He shall transmit the published information together with
the notice of published information to the relevant
recipient industries, government agencies, schools or
universities within the time period specified in the Office
Order.
d. He shall furnish a copy of the published information to
the IPSO and ITSO support groups.
e. He shall further assist in the updating of the industry
database.

57
 6.3 Mechanics of the Community Review Process
The following steps shall be undertaken in identifying, selecting
and transmitting the published information to the relevant industry,
regulatory government agencies, schools and universities and other
interested parties or entities.

1. Before the publication of the bibliographic information of the

patent, utility model or industrial application in the electronic
gazette of the IPOPHL, the patent examiner shall identify and
select the industry classification of the patent, utility model or
industrial design application to be published. The
corresponding classification number shall be indicated in the
recommendation for allowance or notice of publication forms
before the applications are submitted for publication. The
industry classification shall be based on the IPC-ISIC
Concordance as provided by the World Intellectual Property
Organization (WIPO).

2. After the publication of the application, the CRP Officer in

consultation with the other members of the Clearing House
committee shall identify and select the recipients of the
published information from the industry database with respect
to the classification number indicated in the recommendation
for alllowance or notice of publication forms. The CRP Officer
and other members of the Clearing House committee may
further identify and select additional recipients of the
published information based on his interest and knowledge in
the particular field of technology or subject matter covered by
the patent, utility model or industrial design application.

3. Upon selection and identification of the recipients, the CRP

Officer shall transmit the published information together with a
notice of published information form to the relevant industry
association, regulatory government agency, school or
university via email. The notice of published information shall
include the number of the published application, title and date
of publication and the acknowledgement of receipt of the
published information. The timelines for transmitting the
published information to the recipients are as follows:

R. 1701 a. The sending of the published information involving utility

model and industrial design applications shall be made by
the Bureu of Patents within five (5) working days from the
time the application was published in the electronic
gazette in order to allow recipients to review and file their
adverse information within the thirty (30) day period

58
 provided by Rule 1701.
b. For patent applications, the time to transmit the published
R. 803
information shall be fifteen (15) working days and
interested parties may file third party observations to the
patent application within six (6) months from publication
date of the application in the electronic gazette under Rule
803.

4. The published information shall also be transmitted to the

Intellectual Property Satellite Offices (IPSO) and the
Innovation and Technology Support Offices (ITSO). The IPSO
and ITSO support groups shall further assist in dessiminating
the published information to relevant industries, government
agencies, schools and universities. The IPSO and ITSO
support groups shall also assist in populating and updating the
contents and information in the Industry Database.

5. The acknowledgement receipt in the notice of published

information shall include an invitation to parties to submit their
comments, observations and adverse information directly to
the Bureau of Patents in accordance with Rules 803 and 1701
of the the Revised Implementing Rules and Regulations for
Patents, Utility Models and Industrial Designs (Revised IRR).
Furthermore, the notice shall also inform parties that they may
inquire and seek clarification through the IPSO and ITSO
support groups which shall also facilitate the exchange of
information between the examiner and the interested party,
including possible conference and preliminary discussions
with the interested party.

59
6.4 FLOWCHARTS FOR COMMUNITY REVIEW PROCESS

Application

Formality
Examination

Publication Filing of Adverse

Information
(Within one
month)
Community
Review Process
(CRP)
Director of
Denied
Patents
UM/ID
Registration
Appeal

60
PATENT EXAMINER BOP PUBLICATION
Determines and SECTION
indicates the Industry Publishes the patent,
Code in the utility model and
Recommendation for industrial design
Allowance/Registration applications n IPO e-
Form gazette

CRP OFFICER
Identifies from the
industry database the
relevant industry, IPSO Technical
ITSO Technical
government agency,
Support Group Support Group
university and sends the
published information.
The IPSO & ITSO
technical groups are
copy furnished.

COMMUNITY
REVIEWERS
1. Industries
2. Government
Agencies
3. Universities

61
62
 PART 2

“Part 2” of the Manual for Patent Examination Procedure (MPEP) relating to the
SUBSTANTIVE EXAMINATION OF PATENT APPLICATIONS has been written with the
aim of providing a comprehensive reference guide for both IPO patent examiners and
the general public on matters of patent law and interpretation. Also included in “Part 2”
are the following chapters which deal on the patent examination guidelines for
inventions relating specialized emerging technologies, to wit:

a. THE EXAMINATION GUIDELINES FOR PHARMACEUTICAL PATENT

APPLICATIONS INVOLVING KNOWN SUBSTANCES;

b. THE EXAMINATION GUIDELINES FOR INFORMATION AND

COMMUNICATIONS TECHNOLOGY (ICT) RELATED PATENT APPLICATIONS; and

c. THE EXAMINATION GUIDELINES FOR BIOTECHNOLOGY RELATED PATENT

APPLICATIONS.

A “COMPLEMENTARY GUIDELINES ON PATENT EXAMINATION PRACTICES

AND PROCEDURES” by Engr. Feliciano P. Del Mundo, Jr has also been included as a
reference material. “Part 2” of the Manual gives instructions as to the practice and
procedure to be followed in the various aspects of the substantive examination of
Philippine patent applications in accordance with Republic Act No. 8293 (“IP CODE”)
and the Revised Implementing Rules and Regulations (Revised “IRR”). They are
addressed primarily to the staff in the IPO, but it is hoped that they will also be of
assistance to the parties to the proceedings and patent practitioners.

7. SUBSTANTIVE EXAMINATION

Statutory Basis CONTENTS

CHAPTER I - INTRODUCTION TO CHAPTER 7 OF THE
MANUAL

1. General

1.1 Chapter 7 of the Manual for Patent Examination Procedure

(MPEP) relating to the SUBSTANTIVE EXAMINATION OF
PATENT APPLICATIONS has been written with the aim of
providing a comprehensive reference guide for both IPO patent
examiners and the general public on matters of patent law and
interpretation.

1.2 “Part 2” of the Manual is intended to cover normal occurrences.

63
 It is therefore to be considered only as general instruction. The
application of “Part 2” to individual patent application is the
responsibility of the examining staff and they may depart from
these instructions in exceptional cases. Nevertheless, the parties
can expect the Office to act as they are revised. It should be noted
also that “Part 2” does not constitute legal provisions. For the
ultimate authority on practice in the IPO, it is necessary to refer
firstly to the IP CODE and the Revised IRR.

2. Format

2.1. In this part of the Manual, reference has been consistently

made to the accompanying “Complementary Guidelines on Patent
Examination Practices and Procedures” on matters relating to
patent practice and procedures. In addition, the “Complementary
Guidelines on Patent Examination Practices and Procedures” also
includes a body of decided cases on patentability and practical
patent practices that would be very helpful in the substantive
examination, as well as in the formality examination of the patent
application.

2.2 In this part also, an attempt has been made to deal with the
requirements of the application in earlier Chapters and to
concentrate matters of procedure in Chapter VI. However, it has
not always proved practicable to draw a hard and fast line between
these aspects of the work.

CHAPTER II - CONTENT OF THE APPLICATION

(OTHER THAN CLAIMS)

1. General Requirements

Sec. 32.1 The requirements of the Philippine patent application are set out in
R. 404 Section 32.1 and Rule 400. The application must contain:

(a) a request for the grant of a Philippine patent;

(b) a description of the invention;
(c) drawings necessary for the understanding of the invention;
(d) one or more claims;
(e) an abstract.

This chapter deals with all these requirements, in so far as they are
the concern of the examiner carrying out substantive examination,
with the exception of item (d) which is the subject of Chapter III.
Item (e) is dealt with first.

64
 For practical purposes, more particularly in the filing of patent
applications constituting voluminous documents, the documents
making up the application filed in writing may be accepted by the
Office in two (2) copies.

2. Abstract

Sec. 37 2.1 The purpose of the abstract is to give brief technical information
R.411 about the disclosure as contained in the description, claims and
drawings. It useful as a searching tool for the examiner. Therefore,
it should give sufficient information to make it possible to judge
whether there is a need to consult the description claims and
drawings. 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 of the
invention.
2.2 The abstract relates to the application as filed and published,
and its final form is settled before publication of the application. It is
therefore not necessary to bring it into conformity with the content
of the published patent even if this should differ in substance from
that of the application. The examiner should therefore not seek any
amendment of the abstract after publication of the application. He
should, however, note that the abstract "shall merely serve for
technical information". It should also provide guidance to reader in
order to obtain additional information from the description, claims
and drawings. It has no legal effect on the application containing it;
for instance, it cannot be used to interpret the scope of protection
or to justify the addition to the description of new subject-matter.

2.3 More particularly, the abstract should

(a) commence with the title of the invention,

(b) indicate the technical field to which the invention relates,

(c) preferably not contain more than one hundred fifty words,

(d) if necessary, contain the chemical formula (in the case of

chemical applications) which, among those contained in the
application, best characterizes the invention,

(e) not contain statements on the value of the invention or on its

speculative application,

(f) be accompanied by a figure, if appropriate, and

65
 (g) comprise reference signs between parenthesis following
each main technical feature mentioned in the abstract and
illustrated by a drawing.

3. Request for grant and title

3.1 The items making up this request are dealt with in Section 34,
Sec. 34 Rules 403 and 404.
R.403
R.404 3.2 The request shall be made on a form drawn up by the Office
(Rule 403). 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.

3.3 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);

(g) Signature of the applicant or resident agent/representative;

and

(h) an invitation for the applicant or resident

agent/representative to inform the Office of any change in address
in order to avoid the non-receipt of office actions and notices.

The requirements are checked during formality examination.

R.410
3.4 The title should be "as short and specific as possible". It should
also be indicated on the first page of the description. The title
should clearly and concisely state the technical designation of the
invention and should exclude all fancy names which do not define

66
 the technical subject with which the invention is concerned. Very
long titles and vague titles such as “chemical process” or “electric
circuit” are objectionable. They do not give an adequate indication
of the technical designation of the invention. Examples of fancy
names: “wonderful new product" or "improved machine" The
examiner should bear in mind that the title is also used for search
and documentation purposes.

4. Description
Sec. 35.1
R.405 4.1 The application must "disclose the invention in a manner
R.406 sufficiently clear and complete for it to be carried out by a person
skilled in the art". The meaning of "person skilled in the art" is
discussed in IV, 9.6.

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. The sufficiency of the disclosure is to be
assessed on the basis of the application as a whole, including the
information given in the claims, description and drawings, if any.

The enabling disclosure shall contain a clear and detailed

R.406.1 description of at least one way of doing the invention using working
examples. It shall contain a sufficient and clear disclosure of the
technical features of the invention including the manner or process
of making, performing, and using the same, leaving nothing to
conjecture.

In case of chemical substance and pharmaceutical subject matter,

the disclosure may include one or more representative
embodiments or working examples, a description of the result of
the pharmacological test in the case of pharmaceutical subject
matter, if available, and all compounds which may include their
claimed activity.

The provisions relating to the content of the description are set out
R.407 in Rule 407 (In particular, 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;

67
 (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) Where appropriate, refer to the different elements involved

in the invention by the use of reference letters or numerals
(preferably the latter). Such letters or numerals should be
properly depicted in the drawings. In case of an
improvement, the detailed description shall particularly
point out the improved concept that may be regarded as
novel and inventive and must be described in relation to
the technical feature that belongs to the prior art for a clear
and complete understanding of the improvement;

(e) Briefly describe the figures of the drawings, if any;

(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.

The description shall be presented in the manner and order

specified here above, 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.

The purpose of the provisions of Sec.35.1 and Rule 407 is:

(i) to ensure that the application contains sufficient technical

information to enable a skilled person to put the invention as
claimed into practice; and

(ii) to enable the reader to understand the contribution to the art

which the invention as claimed has made.

R.410 4.2 The title of the invention should appear as a heading on the first
page of the description. The title shall be in technical terms
particularly referring to the technical feature or features of the
invention. The invention should then be placed in its setting by
specifying the technical field to which it relates.

68
R.407 (a) 4.3 The description should also mention any background art of
R.407 (b) which the applicant is aware, and which can be regarded as useful
R. 416(b) for understanding the invention and its relationship to the prior art;
identification of documents reflecting such art, especially patent
specifications, should preferably be included. This applies in
particular to the background art corresponding to the first or "prior
art" portion of the independent claim or claims (see III, 2.2). The
insertion into the statement of prior art of references to documents
identified subsequently, for example by the search report, may be
required, where necessary, to put the invention into proper
perspective. For instance, while the originally filed description of
prior art may give the impression that the inventor has developed
the invention from a certain point, the cited documents may show
that certain stages in, or aspects of, this alleged development were
already known. In such a case the examiner may require a
reference to these documents and a brief summary of the relevant
contents. The subsequent inclusion of such a summary in the
description does not contravene the proviso of Sec.49. The latter
merely lays down that, if the application is amended, for example
by limiting it in the light of additional information on the background
art, its subject-matter must not extend beyond the content of the
Sec. 49 application as filed. But the subject-matter of the Philippine patent
application within the meaning of Section 49 is to be understood –
starting off from the prior art – as comprising those features which,
Sec.35.1 in the framework of the disclosure required by Sec.35.1, relate to
the invention (see also VI, 5.3). References to the prior art
introduced after filing must be purely factual. Any alleged
advantages of the invention must be adjusted if necessary in the
light of the prior art. New statements of advantage are permissible
provided that they do not introduce into the description matter
which could not have been deduced from the application as
originally filed (see VI, 5.4).
Sec. 24.2
R.204 (b) If the relevant prior art consists of another published Philippine
patent application falling within the terms of Sec. 24.2, the fact that
this document falls under Section 24.2 (see also Rule 204(b)) may
be explicitly acknowledged, thus making clear to the public that the
document is not relevant to the question of inventive step (see IV,
9.2).

4.4 Since the reader is presumed to have the general background

technical knowledge appropriate to the art, the examiner should not
require the applicant to insert anything in the nature of a treatise or
research report or explanatory matter which is obtainable from
textbooks or is otherwise well known. Likewise, the examiner
should not require a detailed description of the content of cited prior

69
 documents. It is sufficient that the reason for the inclusion of the
reference is indicated, unless in a particular case a more detailed
description is necessary for a full understanding of the invention of
the application (see also II, 4.18 below). Lists of several reference
documents relating to the same feature or aspect of the prior art
are not required; only the most appropriate need be referred to. On
the other hand the examiner should not insist upon the excision of
any such unnecessary matter, except when it is very extensive (see
II. 7.3 below).

4.5 The invention as claimed should be disclosed in such a way

that the technical problem, or problems, with which it deals can be
appreciated and the solution can be understood. To meet this
requirement, only such details should be included as are necessary
for elucidating the invention. In cases where the subject matter of a
dependent claim can be understood either by the wording of the
claim itself or by the description of a way of performing the
invention, no additional explanation of this subject matter will be
necessary. A mention in the description that a particular
embodiment of the invention is set out in the dependent claim will
then be sufficient.

Where the invention lies in realizing what the problem is, this
should be apparent, and, where the means of solving the problem
(once realized) are obvious, the details given of its solution may, in
practice, be minimal. When there is doubt, however, as to whether
certain details are necessary, the examiner should not insist on
their excision. It is not necessary, moreover, that the invention be
presented explicitly in problem and solution form. Any
advantageous effects which the applicant considers the invention to
have in relation to the prior art should be stated, but this should not
be done in such a way as to disparage any particular prior product
or process. Furthermore, neither the prior art nor the applicant's
invention should be referred to in a manner likely to mislead. This
might be done, e.g. by an ambiguous presentation which gives the
impression that the prior art had solved less of the problem than
was actually the case. Fair comment as referred to in II, 7.2 below
is, however, permitted. Regarding amendment to, or addition of, a
statement of problem (VI, 5.7c).

4.6 If it is decided that an independent claim defines a patentable

invention, it must be possible to derive a technical problem from the
application. In this case the requirement of Rule 407(1) (c) is
R.407 (c) fulfilled.

4.7 If drawings are included they should first be briefly described,

70
 in a manner such as: "Figure 1 is a plan view of the transformer
housing; Figure 2 is a side elevation of the housing; Figure 3 is an
R.407 (d) end elevation looking in the direction of the arrow `X' of Figure 2;
R.407 (e) Figure 4 is a cross-section taken through AA of Figure 1." When it
is necessary to refer in the description to elements of the drawings,
the name of the element should be referred to as well as its
number, i.e. the reference should not be in the form:"3 is connected
to 5 via 4" but, "resistor 3 is connected to capacitor 5 via switch 4".

4.8 The description and drawings should be consistent with one

another, especially in the matter of reference numbers and other
signs, and each number or sign must be explained. However,
where as a result of amendments to the description whole
R. 414.12 passages are deleted, it may be tedious to delete all superfluous
references from the drawings and in such a case the examiner
should not pursue an objection under Rule 414.12, as to
consistency, too rigorously. The reverse situation should never
occur, i.e. all reference numbers or signs used in the description or
claims must also appear on the drawings.

4.9 A detailed description of at least one way of carrying out the

invention must be given. Since the application is addressed to the
person skilled in the art it is neither necessary nor desirable that
details of well-known ancillary features should be given, but the
description must disclose any feature essential for carrying out the
invention in sufficient detail to render it obvious to the skilled person
R.407 (f) how to put the invention into practice. In many cases a single
Sec. 35.1 example or single embodiment will suffice, but where the claims
cover a broad field the description should not usually be regarded
as satisfying the requirements of Sec.35.1 unless it gives a number
of examples or describes alternative embodiments or variations
extending over the area protected by the claims. However, regard
must be had to the facts of the particular case. There are some
instances where even a very broad field is sufficiently exemplified
by a limited number of examples or even one example (see also III,
6.3). In these latter cases the application must contain, in addition
to the examples, sufficient information to allow the person skilled in
the art, using his common general knowledge, to perform the
invention over the whole area claimed without undue burden and
without needing inventive skill. If the examiner is able to make out a
reasoned case that the application lacks sufficient disclosure, the
onus of establishing that the invention may be performed and
repeated over substantially the whole of the claimed range lies with
the applicant (see VI, 2.4).

R. 407 (c) 4.9a In order that the requirements of Sec.35.1 and Rule 407(1) (c)

71
R.c407 (f) and (f) may be fully satisfied it is necessary that the invention is
described not only in terms of its structure but also in terms of its
function, unless the functions of the various parts are immediately
apparent. Indeed in some technical fields (e.g. computers), a clear
description of function may be much more appropriate than an
over-detailed description of structure.

4.10 It is the responsibility of the applicant to ensure that he

supplies, when he first files his application, a sufficient disclosure,
Sec. 35.1 i.e. one that meets the requirements of Sec. 35.1 in respect of the
invention as claimed in all of the claims. If the claims define the
invention, or a feature thereof, in terms of parameters (see III,
4.7a), the application as first filed must include a clear description
of the methods used to determine the parameter values, unless a
person skilled in the art would know what method to use or unless
all methods would yield the same result (see III, 4.10, 2 nd
paragraph). If the disclosure is seriously insufficient, such a
deficiency cannot be cured subsequently by adding further
examples or features without offending against the proviso of Sec.
Sec. 49 49, which requires that the subject-matter content of the application
must not be extended (see VI, 5.3 to 5.8b). Therefore in such
circumstances the application must normally be refused. If however
the deficiency arises only in respect of some embodiments of the
invention and not others, it could be remedied by restricting the
claims to correspond to the sufficiently described embodiments
only, the description of the remaining embodiments being deleted.

4.11 Occasionally applications are filed in which there is a

fundamental insufficiency in the invention in the sense that it cannot
be carried out by a person skilled in the art; there is then a failure to
satisfy the requirements of Sec. 35.1 which is essentially
irreparable. Two instances thereof deserve special mention.

The first is where the successful performance of the invention is

dependent on chance. That is to say, the skilled person, in
following the instructions for carrying out the invention, finds either
that the alleged results of the invention are unrepeatable or that
success in obtaining these results is achieved in a totally unreliable
way. An example where this may arise is a microbiological process
involving mutations. Such a case should be distinguished from one
where repeated success is assured even though accompanied by a
proportion of failures - as can arise, e.g. in the manufacture of small
magnetic cores or electronic components; in this latter case,
Sec. 35.1 provided the satisfactory parts can be readily sorted by a non-
destructive testing procedure, no objection arises under Sec. 35.1.

72
 The second instance is where successful performance of the
invention is inherently impossible because it would be contrary to
Sec. 21 well-established physical laws – this applies e.g. to a perpetual
Sec. 27 motion machine. If the claims for such a machine are directed to its
Sec. 35 function, and not merely to its structure, an objection arises not only
under Sec. 35 but also under Sec. 21 and Sec.27 that the invention
is not susceptible of industrial application (see also IV, 4.1).

R. 407 (g) 4.12 The description should indicate explicitly the way in which the
Sec. 21 invention is “industrially applicable”, if this is not obvious from the
Sec. 27 description or from the nature of the invention. The expression
“industrially applicable” (Sec.21 and Sec.27) means the same as
"capable of exploitation in industry” (Rule 407 (g)). In view of the
broad meaning given to the expression by Sec. 27 (see IV, 4.1), it
is to be expected that, in most cases, the way in which the
invention can be exploited in industry will be self-evident, so that no
more explicit description on this point will be required; but there
may be a few instances, e.g. in relation to methods of testing,
where the manner of industrial exploitation is not apparent and
must be made so.

4.13 The manner and order of presentation of the description

should be that specified in Rule 407, i.e. as set out above, "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". Since the responsibility for clearly and
completely describing the invention lies with the applicant, the
examiner should not object to the presentation unless satisfied that
such an objection would be a proper exercise of his discretion.
Some departure from the requirements of Rule 407 is acceptable,
provided the description is clear and orderly and all the requisite
information is present. For example, the requirements of Rule
407((c) may not be applicable where the invention is based on a
fortuitous discovery, the practical application of which is recognized
as being useful, or where the invention breaks entirely new ground.
Also, certain technically simple inventions may be fully
comprehensible with the minimum of description and but slight
reference to prior art.

4.14 Although the description should be clear and straightforward

with avoidance of unnecessary technical jargon, the use of
recognized terms of art is acceptable, and will often be desirable.
Little known, or especially formulated technical terms may be
allowed provided that they are adequately defined and that there is
no generally recognized equivalent. This discretion may be
extended to foreign terms when there is no equivalent in the

73
 language of the proceedings. Terms already having an established
meaning should not be allowed to be used to mean something
different if this is likely to cause confusion. There may, however, be
circumstances where a term may legitimately be borrowed from an
analogous art. Terminology and signs must be consistent
throughout the application.

4.14a In the particular case of inventions in the computer field (see

IV, 2.3), program listings in programming languages cannot be
relied on as the sole disclosure of the invention. The description, as
in other technical fields, should be written substantially in normal
language, possibly accompanied by flow diagrams or other aids to
understanding, so that the invention may be understood by those
skilled in the art who are deemed not to be programming
specialists. Short excerpts from programs written in commonly
used programming languages can be accepted if they serve to
illustrate an embodiment of the invention.

4.15 When the properties of a material are referred to, the relevant
units should be specified if quantitative considerations are involved.
If this is done by reference to a published Standard (e.g. a
Standard of sieve sizes), and such Standard is referred to by a set
of initials or similar abbreviation, it should be adequately identified
in the description.

Physical values must be expressed in the units recognized in

international practice, wherever appropriate in terms of the metric
system using system international (SI) units. Any values not
meeting this requirement must also be expressed in the units
recognized in international practice.

As Rule 418(e) indicates, for mathematical formula the symbols in

R. 418 (e)
general use must 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.

4.16 The use of proper names, trademarks or similar words to

refer to materials or articles is undesirable in so far as such words
merely denote origin or where they may relate to a range of
different products. If such a word is used, then where it is
necessary in order to satisfy the requirements of Sec.35.1, the
product must be sufficiently identified, without reliance upon the
word, to enable the invention to be carried out by the skilled
person. However, where such words have become internationally

74
accepted as standard descriptive terms and have acquired a
precise meaning (e.g. "Bowden" cable, "Belleville" washer,
"Panhard" rod) they may be allowed without further identification of
the product to which they relate.

4.17 If the examiner has reason to suspect that a word used in the
description is a registered trade mark, he should ask the applicant
either to acknowledge the word as such or to state that, so far as
he is aware, the word is not a registered trade mark. If, on the other
hand, an applicant states that a word is a registered trade mark and
the examiner happens to know that this statement is incorrect, he
should ask the applicant to amend accordingly.

4.18 References in Philippine patent applications to other

documents may relate either to the background art or to part of the
disclosure of the invention.

Where the reference relates to the background art, it may be in the

application as originally filed or introduced at a later date (see II,
4.3 and 4.4 here above).

Where the reference relates directly to the disclosure of the

invention (e.g. details of one of the components of a claimed
apparatus) then the examiner should first consider whether
knowing what is in the document is in fact essential for carrying out
the invention as meant by Sec. 35.1. If not, the usually used
expression "which is hereby incorporated by reference", or any
expression of the same kind should be deleted from the
description. If matter in the document referred to is indeed essential
to satisfy the requirements of Sec. 35.1, the examiner should
require the relevant passage to be expressly incorporated into the
description, because the patent specification should, regarding the
essential features of the invention, be self-contained, i.e. capable of
being understood without reference to any other document. Such
incorporation is, however, subject to the following restrictions:

(a) it must not contravene the proviso of Sec. 49

(b) documents not available to the public on the date of filing of

the application can only be considered when:

(i) a copy of the document was furnished to the Office on or

before the date of filing of the application; and
(ii) the document was made available to the public no later
than on the date of publication of the application under

75
 Sec.44.1 (e.g. by being present in the application file at
the IPO and therefore made public under Sec.44.2.)

If, for the disclosure of the invention, another document is referred

to in the application as originally filed, the relevant content of the
Sec.24.2
other document is to be considered as forming part of the content
of the application for the purpose of citing the application under
Sec. 24.2 against later applications. For documents not available to
the public before the filing date of the application this applies only if
conditions (i) and (ii) above are fulfilled.

Because of this effect under Sec.24.2 it is very important that,

where a reference is directed only to a particular part of the
document referred to, that part should be clearly identified in the
reference.

5. Drawings
R. 413
R. 414 5.1 The requirements relating to the form and content of drawings
are set out in Rules 413 and 414.1 to 414.15. Most of these are
R. 414.12 formal but the substantive examiner may sometimes need to
consider some of them, e.g. the requirements of Rule 414.12
(consistency in the use of reference signs). Drawings showing the
prior art may be included if it is helpful in understanding the novel
and inventive features of the invention and must be designated by
a legend such as “Prior Art”.

5.2 In case of amendments or replacement of drawings (Rules

R. 414.1 414.1, 414.15 and 923), if the quality of the drawing is not brought
R. 414.15 as nearly as possible to a uniform standard of excellence suited for
R. 923 a good and clear visualization of the invention and does not
conform to the standard requirements for the preparation of
technical drawings, to give the best results in the interests of the
inventors, the Office, and the public, the examiner must request the
applicant to present the drawings of sufficient quality, before the
application will be allowed. Thus, objection should be raised where
the drawings are not made upon smooth non-glossy white paper
with sufficient thickness and durability.

5.3 After the application has been accorded a filing date,

R. 919 submission of drawings of corrected or amended form or contents
Sec. 49 is not admissible and has to be refused in case of broadening of
the disclosure or addition of new matter (see proviso of Sec.49 and
Rule 919).

6. Inventions relating to micro-organisms and biological

76
 material

6.1 According to Section 22.4, “plant varieties and animal breeds or

Sec. 22.4 essentially biological process the production of plants and animals”
are excluded from patentability. This provision does not apply to
“microorganisms and non-biological and microbiological
processes”.

For other biological materials not falling under the matter excluded
from patentability as referred to in Section 22.4 the same provisions
apply as for inventions implying microorganisms, where recognized
depository institutions for such other biological material exist. This
has particular importance for plant seeds and cell lines deposited
with recognized depositories.

The term "biological material" can be considered to mean any

material containing genetic information and capable of self-
reproducing or of being reproduced in a biological system. It
includes both micro-organisms and seeds.

6.2 Applications relating to micro-organisms are subject to the

R. 408 special provisions set out in Rules 408 and 409. If an invention
R. 409 concerns a microbiological process or the product thereof and
involves or relates to the use of a micro-organism or other
biological material which is not available to the public and which
cannot be described in the patent application in such a manner as
to enable the invention to be carried out by a person skilled in the
art, then the disclosure is not considered to have satisfied the
requirements of sufficiency (Sec.35.1) unless the requirements of
Rules 408 and 409 have been met.

In particular,

(a) a culture of the biological material must have been deposited

with a international depositary institution recognized by the IPO,
such as the ones recognized by the Budapest Treaty on the
International Recognition of the Deposit of Biological material for
the Purposes of Patent Protection of 28 April 1977, not later than
the date of filing of the application,

(b) the depositary institution and the file number of the culture
deposit are stated in the application,

(c) the deposited culture is made available upon request to any

person from the date of publication of the patent application.

77
A list of recognized depository institutions is available at the Bureau
of Patents.

6.3 The examiner must form an opinion as to whether or not the

biological material is available to the public. Alternatively the
biological material may be known to be readily available to those
skilled in the art, e.g. a biological material such as baker's yeast or
Bacillus natto which is commercially available; or it may be a
standard preserved strain, or other biological material which the
examiner knows to have been preserved in a recognized
depository and to be available to the public. Alternatively, the
applicant may have given in the description sufficient information as
to the identifying characteristics of the biological material and as to
the prior availability in a depositary institution recognized by the
IPO. In any of these cases no further action is called for. If however
the applicant has given no information, or insufficient information,
on public availability, and the microorganism or other biological
material is a particular one not falling within the known categories
such as those already mentioned, then the examiner must assume
that the microorganism or biological material is not available to the
public.

He must also examine whether the micro-organism or other

biological material could be described in the patent application in
such a manner as to enable the invention to be carried out by a
person skilled in the art (see II, 4.11 here above and IV, 3.5.

6.4 If the biological material is not available to the public and if it

could not be described in the application in such a manner as to
enable the invention to be carried out by a person skilled in the art,
the examiner must check:

(i) whether the application as filed gives such relevant information

as is available to the applicant on the characteristics of the
biological material. The relevant information under this provision
concerns the classification of the biological material and significant
differences from known biological material. For this purpose, the
applicant must, to the extent available to him, indicate
morphological and biochemical characteristics and the proposed
taxonomic description. The annexed list (see Annex 1 to the
present Chapter II) contains in this respect indications for certain
types of biological material to guide the applicant in the normal
case.

The information on the microorganism or other biological material in

question which is generally known to the skilled person on the date

78
of filing is as a rule presumed to be available to the applicant and
must therefore be provided by him. If necessary, it has to be
provided through experiments in accordance with the relevant
standard literature.

For characterizing bacteria, for example, the relevant standard

work would be R.E. Buchanan, N.E. Gibbons: Bergey's Manual of
Determinative Bacteriology.

Against this background, information should then be given on every

further specific morphological or physiological characteristic
relevant for recognition and propagation of the microorganism or
other biological material, e.g. suitable media (composition of
ingredients), in particular where the latter are modified.

Abbreviations for biological material or media are often less well

known than the applicant assumes and should therefore be
avoided or written in full at least once.

If biological material is deposited that cannot replicate itself but

must be replicated in a biological system (e.g. viruses,
bacteriophages, plasmids, vectors or free DNA or RNA), the above-
mentioned information is also required for such biological system.
If, for example, other biological material is required, such as host
cells or helper viruses, that cannot be sufficiently described or is
not available to the public, this material must also be deposited and
characterized accordingly. In addition, the process for producing
the biological material within this biological system must be
indicated.

In many cases the above required information will already have

been given to the depositary institution (see Rule 6.1(a)(iii) and
6.1(b) Budapest Treaty) and need only be incorporated into the
application.

(ii) whether the name of the depositary institution and the accession
number of the deposit have been supplied at the date of filing. If the
name of the depositary institution and the accession number of the
deposit have been submitted later, it should be checked whether
they have been filed within the relevant period. If that is the case it
should then further be checked whether on the filing date any
reference has been supplied which allows relating the deposit with
the later filed accession number. Normally the identification
reference which the depositor himself gave to his deposit is used in
the application documents. The relevant document for later filing
the missing data could be a letter containing the name of the

79
 depositary institution, the accession number and the above-
mentioned identification reference or alternatively the deposit
receipt, which contains all these data.

In addition, the depositary institution named must be an

international institution recognized by the IPO.

(iii) whether the deposit was made by a person other than the
applicant and, if so, whether the name and the address of the
depositor are stated in the application or have been supplied within
the relevant period. In such a case the examiner must also check
whether the depositor gave his unreserved and irrevocable consent
to the deposited material being available to the public. A document
will be required confirming that the depositor has authorized the
applicant to refer to the deposited biological material in the
application and has given his unreserved and irrevocable consent
to the deposited material being made available to the public.

(iv) The examiner, in addition to the checks referred to under (i) to

(iii) above, may ask for the deposit receipt issued by the depositary
institution (see Rule 7.1 Budapest Treaty) or for equivalent proof of
the deposit of a biological material if such proof has not been filed
before (see (ii) above). This is to provide evidence for the
indications concerning the depositary institution and the accession
number made earlier by the applicant.

If any of these requirements (i) – (iv) is not satisfied the application

should be refused (Sec.51) for lack of sufficient disclosure of the
invention (Sec.35.1), since the biological material in question
cannot be considered as having been disclosed pursuant to
Sec.35.1 by way of reference to the deposit.

Concerning inventions relating to micro-organisms and biological

material, reference is also made to the examples comprised in VII,
5.7.

7. Prohibited matter

7.1 There are three categories of specifically prohibited matter

R. 412 (a) identified in R.412(a):
- statements or other matter contrary to “public order” or
morality;

- statements disparaging the products or processes of any

particular person other than the applicant, or the merits or

80
 validity of applications or patents of any such person., with
mere comparison with the prior art not being considered as
disparaging per se; and

- any statement or other matter obviously irrelevant or

unnecessary under the circumstances.

If an application contains prohibited matter within the meaning of

R. 412 (b) this Rule, the Bureau shall omit it when publishing the application,
indicating the place and number of words or drawing omitted
(R.412(b).

The omission, from the publication of the application, of the first

category is the most important one. Examples of the kind of matter
coming within this category are: incitement to riot or to acts of
disorder; incitement to criminal acts; racial, religious or similar
discriminatory propaganda; and grossly obscene matter.

7.2 It is necessary to discriminate in the second category between

libelous or similarly disparaging statements, which are not allowed,
and fair comment, e.g. in relation to obvious or generally
recognized disadvantages, or disadvantages stated to have been
found and substantiated by the applicant, which, if relevant, is
permitted.

7.3 The third category is irrelevant matter. It should be noted

however that such matter is specifically prohibited under the (R.412
(b) iii)) only if it is "obviously irrelevant or unnecessary", for
instance, if it has no bearing on the subject-matter of the invention
or its background of relevant prior art. The matter to be removed
may already be obviously irrelevant or unnecessary in the original
description. It may, however, be matter which has become
obviously irrelevant or unnecessary only in the course of the
examination proceedings, e.g. owing to a limitation of the claims of
the patent to one of originally several alternatives.

7.4 When matter is removed from the description, it must not be

incorporated into the patent specification by reference to the
corresponding matter in the published application or in any other
document.

7.5 Generally, matter falling under the first category will be dealt
with during formality examination, as well as matter obviously
falling within the second category. Although this is not explicitly
mentioned in R.412, if any such matter has not been so recognized
and has therefore not been omitted from the publication of the

81
 application, it should be removed during substantive examination of
the application, i.e. before publication of the granted patent,
together with any other prohibited matter.

CHAPTER III – THE CLAIMS

1. General

Sec. 32.1 (d) 1.1 The application must contain "one or more claims".
R. 400
Sec. 36.1 1.2 These must:

(i) "define the matter for which protection is sought";

(ii) "be clear and concise";

(iii) "be supported by the description".

Sec. 75 1.3 Since the terms of the claims determine the extent of the
protection conferred by a Philippine patent or application, clarity
of claim is of the utmost importance. The claims do not, however,
stand in isolation and are not to be interpreted in a strictly literal
sense. For a full understanding of how claims should be
interpreted it is necessary to refer to Sec.75 (see also III, 4.1 – 4.3
Sec. 75.1 here below), which specifies
- that the extent of protection conferred by the patent shall be
determined by the claims, which are to be interpreted in the
light of the description and drawings, and
Sec. 75.2
- that, for the purpose of determining the extent of protection
conferred by the patent, due account shall be taken of
elements which are equivalent to the elements expressed in
the claims, so that a claim shall be considered to cover not only
all the elements as expressed therein, but also equivalents.

A generally accepted approach is to interpret the claims having

regard to the description and any drawings in such a way that fair
protection to the patentee for his contribution to the art is combined
with a reasonable degree of certainty for third parties. Thus the
area of protection should not, in one extreme be interpreted as that
defined by the strict literal meaning of the wording of the claims
with the description and drawings being used only to resolve any
ambiguity in the claims, nor in the other extreme, as what might be
deduced from the description and drawings by a person skilled in
the art, with the claims serving only as guide.

82
 2. Form and content of claims
R. 416 (a)
2.1 The claims must be drafted in terms of the "technical features
of the invention". This means that claims should not contain any
statements relating, for example, to commercial advantages or
other non-technical matters, but statements of purpose should be
allowed if they assist in defining the invention. It is not necessary
that every feature should be expressed in terms of a structural
limitation. Functional limitations may be included provided that a
person skilled in the art would have no difficulty in providing some
means of performing this function without exercising inventive skill.
Claims to the use of the invention in the sense of the technical
application thereof are allowable.

R. 416 (a)(b) 2.2 Rule 416 (a) and (b) defines the two-part form which a claim
should adopt “wherever appropriate”. The first part or preamble
should contain a statement indicating "the designation of the
subject-matter of the invention" i.e. the category or general
technical class of apparatus, product, process, use etc., to which
the invention relates, followed by a statement of “those technical
features which are necessary for the definition of the claimed
subject-matter but which, in combination, are part of the prior art".
This statement of prior art features is applicable only to
independent claims and not to dependent claims (see III, 3.5 here
below). It is clear from the wording of R.416 that it is necessary
only to refer to those prior art features which are relevant to the
invention. For example, if the invention relates to a photographic
camera but the inventive step relates entirely to the shutter, it would
be sufficient for the first part of the claim to read: "A photographic
camera including a focal plane shutter" and there is no need to
refer also to the other known features of a camera such as the lens
and view-finder. The second part or "characterising portion" should
state the "technical features which, in combination with the features
stated in sub-paragraph (a) (the first part), it is desired to protect"
i.e. the features which the invention adds to the prior art. If a single
document in the state of the art according to Sec. 24.1, e.g. cited in
the search report, reveals that one or more features in the second
part of the claim were already known in combination with all the
features in the first part of the claim and in that combination, have
the same effect as they have in the full combination according to
the invention, the examiner should require that such feature or
features be transferred to the first part. Where however a claim
relates to a novel combination, and where the division of the
features of the claim between the prior art part and the
characterising part could be made in more than one way without
inaccuracy, the applicant should not be pressed, unless there are

83
 very substantial reasons, to adopt a different division of the
features from that which he has chosen, if his version is not
incorrect.

2.3 Subject to what is stated in paragraph 2.3b here below, final

sentence, the applicant should be required to follow the above two-
part formulation in his independent claim or claims, where, for
example, it is clear that his invention resides in a distinct
improvement of an old combination of parts or steps. However as is
indicated by R.416, this form need be used only in “appropriate”
cases. The nature of the invention may be such that this form of
claim is unsuitable, e.g. because it would give a distorted or
misleading picture of the invention or the prior art. Examples of the
kind of invention which may require a different presentation are:

(i) the combination of known integers of equal status, the

inventive
step lying solely in the combination;

(ii) the modification of, as distinct from addition to, a known

chemical process e.g. by omitting one substance or
substituting one substance for another; and

(iii) a complex system of functionally interrelated parts, the

inventive step concerning changes in several of these or in
their inter-relationships.

In examples (i) and (ii) the two-part R.416 form of claim may be
artificial and inappropriate, whilst in example (iii) it might lead to an
inordinately lengthy and involved claim. Another example in which
the two-part R.416 form of claim may be inappropriate is where the
invention is a new chemical compound or group of compounds. It is
likely also that other cases will arise in which the applicant is able
to adduce convincing reasons for formulating the claim in a
different form.

2.3a There is also another special instance in which the two-part

Sec. 24.2 R.416 form of claim should be avoided. This is when the only
relevant prior art is another Philippine patent application falling
within the terms of Sec. 24.2. Such prior art should however be
clearly acknowledged in the description (see II, 4.3).

2.3b When determining whether or not a claim is to be put in the

Sec. 24.2 form provided by R.416, second sentence, it is important to assess
whether this form is "appropriate". In this respect, it should be
borne in mind that the purpose of the two-part form of claim is to

84
 allow the reader to see clearly which features necessary for the
definition of the claimed subject matter are, in combination, part of
the closest prior art. If this is sufficiently clear from the indication of
prior art made in the description, to meet the requirement of
R.407(b), the two-part form of claim should not be insisted upon
R. 407 (b) (see II, 4.3).

The claims, as well as the description, "may contain chemical or

R. 418 (d) mathematical formulas" but not drawings. "The claims may contain
tables" but "only if their subject-matter makes the use of tables
desirable". In view of the use of the word "desirable" in R.418(d),
the examiner performing substantive examination should not object
to the use of tables in claims where this form is convenient.

Physical values shall be expressed in the units recognised in

R. 418 (e) 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 recognised 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.

3. Kinds of claim – Categories

Categories

Sec. 21 3.1 Sec.21 of the IP-code defines a patentable invention as “any

technical solution of a problem in any field of human activity which
is new, involves an inventive step and is industrially applicable”. It
may be, or may relate to, a product, or process, or an improvement
of any of the foregoing. The revised IRR classify inventions
according to the following types (“statutory classes of inventions”,
R. 201 R.201):

(a) A product, such as a machine, a device, an article of

manufacture, a composition of matter, a microorganism;
(b) A process, such as a method of use, a method of
manufacturing, a non-biological process, a microbiological
process;
(c) Computer-related inventions; and
(d) An improvement of any of the foregoing.

R. 415 (b) Inventions may be claimed using different "categories" of claims,

85
i.e. "products, process, apparatus or use" claims. For many
inventions, claims in more than one category are needed for full
protection. In fact, there are only two basic kinds of claim, viz,
claims to a physical entity (product, apparatus) and claims to an
activity (process, use). The first basic kind of claim ("product claim")
includes a substance or compositions (e.g. chemical compound or
a mixture of compounds) as well as any physical entity (e.g. object,
article, apparatus, machine, or system of co-operating apparatus)
which is produced by man's technical skill. Examples are: "a
steering mechanism incorporating an automatic feed-back circuit...”
"a woven garment comprising...” "an insecticide consisting of X, Y,
Z"; or "a communication system comprising a plurality of
transmitting and receiving stations". The second basic kind of claim
("process claim") is applicable to all kinds of activities in which the
use of some material product for effecting the process is implied;
the activity may be exercised upon material products, upon energy,
upon other processes (as in control processes) or upon living
things (see however IV, 3.4 and 4.3).

3.2 In addition an applicant may sometimes wish to have claims

which, although worded differently, really fall within the same
category and apparently have effectively the same scope. The
examiner should bear in mind that the presence of such different
claims might assist an applicant in obtaining full protection for his
invention. Consequently, while an examiner should not allow an
unnecessary proliferation of independent claims (see III, 5
concerning conciseness here below), he should not adopt an over-
academic or rigid approach to the presence of a number of claims
which are differently worded but apparently of similar effect.

3.3 Subject to the conditions for unity of invention being satisfied

(see III, 7 here below), R.415(b) states that an application may
contain more than one independent claims in the same category
"where it is not appropriate, having regard to the subject-matter of
the application, to cover this subject-matter by a single claim”. This
means that the examiner may allow two or more independent
claims in the same category in appropriate cases provided that
there is a unifying inventive concept (Sec.38) and that the claims as
a whole satisfy the requirement of Sec. 36 that they should be
concise (see III, 5.1 here below). In applying this principle the
examiner should have regard to the remarks made in III, 3.2 here
above concerning claims of apparently similar scope. However,
there are other circumstances where it may not be appropriate to
cover the subject-matter of an invention by a single independent
claim in a particular category, for example, where the invention
relates to an improvement in two separate but inter-related articles

86
 which may be sold separately, but each carry out the same
inventive idea, such as an electric plug and socket or transmitter
and receiver. As another example, for an invention concerned with
electrical bridge-rectifier circuits it might be necessary to include
separate independent claims to a single-phase and poly-phase
arrangements incorporating such circuits since the number of
circuits needed per phase is different in the two arrangements.
Justification for two independent claims in the product-category
may also be present in the case of an invention residing in a part of
a more complex apparatus where the various parts thereof are
separately manufactured, and the part and the whole apparatus
may be sold separately (e.g. an incandescent body for a lamp, and
the lamp provided with such a body). Further examples are where
the invention resides in a group of new chemical compounds and
there are a number of processes for the manufacture of such
compounds.

Independent and dependent claims

R. 415 (b)(c) 3.4 All applications will contain one or more “independent" claims
directed to the essential features of the invention. Any such claim
may be followed by one or more claims concerning "particular
embodiments" of that invention. It is evident that any claim relating
to a particular embodiment must effectively include also the
essential features of the invention, and hence must include all the
features of at least one independent claim.

R. 415 (c) 3.5 Any claim which includes all the features of any other claim is
termed a "dependent” claim. Such a claim must contain, if possible
at the beginning, a reference to the other claim, all of whose
features it includes (see, however, III, 3.7a here below for claims in
different categories).

Since a dependent claim does not by itself define all the

characterising features of the subject matter which it claims,
expressions such as "characterized in that" or "characterized by"
are not necessary in such a claim but are nevertheless permissible.
A claim defining further particulars of an invention may include all
the features of another dependent claim and should then refer back
to that claim. Also, in some cases a dependent claim may define a
particular feature or features which may appropriately be added to
more than one previous claim (independent or dependent). It
follows that there are several possibilities: a dependent claim may
refer back to one or more independent claims, to one or more
dependent claims, or to both independent and dependent claims.

87
 3.5a According to R.415(c), 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. 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.

3.6 All dependent claims, however referred back, must be grouped

together to the extent and in the most appropriate way possible.
The arrangement must therefore be one which enables the
association of related claims to be readily determined and their
meaning in association to be readily construed. The examiner
should object if the arrangement of claims is such as to create
obscurity (Sec.36.1) in the definition of the subject-matter to be
protected. In general, however, when the corresponding
independent claim is allowable, the examiner should not concern
himself unduly with the subject-matter of dependent claims,
provided he is satisfied that they are truly dependent and thus in no
way extend the scope of protection of the invention defined in the
corresponding independent claim (see III, 3.7a here below).

R. 416 (a)(b)
3.6a If the two-part form is used for the independent claim(s),
dependent claims may relate to further details of features not only
of the characterising portion but also of the preamble.

3.7 A claim, whether independent or dependent, can refer to

alternatives provided those alternatives are of a similar nature and
can fairly be substituted one for another and provided also that the
number and presentation of alternatives in a single claim does not
make the claim obscure or difficult to construe (see also III, 7.4
here below).

3.7a A claim may also contain a reference to another claim even if

it is not a dependent claim as defined in R.415(c). One example of
this is a claim referring to a claim of different category (e.g.
"Apparatus for carrying out the process of claim 1...", or "Process
for the manufacture of the product of claim 1..."). Similarly, in a
situation like the plug and socket example of III, 3.3 here above, a
claim to the one part referring to the other co-operating part (e.g.
"plug for cooperation with the socket of claim 1...") is not a
dependent claim.

88
 References from one claim to another may also occur where
alternative features which may be substituted for one another are
claimed in separate claims. Thus there may be a first independent
claim 1 for a machine including, inter alia, a feature X followed by
further claims for alternatives such as "A machine according to
claim 1 modified in that feature X is replaced by feature Y". In all
these examples, the examiner should carefully consider the extent
to which the claim containing the reference necessarily involves the
features of the claim referred to and the extent to which it does not.
In the case of a claim for a process which results in the product of a
product claim or a claim for the use of that product, if the product
claim is patentable then no separate examination for the
obviousness of the process or use claim is necessary (see IV,
9.5a). In all other instances, the patentability of the claim referred to
does not necessarily imply the patentability of the independent
claim containing the reference.
R. 417
3.8 Calculation of Claims Fees. Any application comprising of more
than five (5) claims, independent 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 claims fee have not been
fully paid in due time, they may still be 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 fully paid within the time limit and
the grace period or the claims fee is not fully paid within the time
limit prescribed during substantive examination of the application,
the claim or claims concerned shall be deemed deleted.

4. Clarity and interpretation of claims

Sec. 36.1
Sec. 75 4.1 The requirement that each claim shall be clear applies to
individual claims and also to the claims as a whole. The clarity of
the claims is of the utmost importance in view of their function in
defining the matter for which protection is sought. In view of the
differences in the scope of protection (Sec.75) which may be
attached to the various categories of claims, the examiner should
ensure that the wording of a claim leaves no doubt as to its
category (process, apparatus, product, use).

4.2 Each claim should be read giving the words the meaning and
scope which they normally have in the relevant art, unless in
particular cases the description gives the words a special meaning,
by explicit definition or otherwise. Moreover, if such a special
meaning applies, the examiner should, so far as possible, require

89
 the claim to be amended whereby the meaning is clear from the
wording of the claim alone. The claim should also be read with an
attempt to make technical sense out of it. Such a reading may
involve a departure from the strict literal meaning of the wording of
the claims.
R. 418 (f)
The terminologies used in the claims and the description have to be
consistent with each other.
Sec. 75
Sec. 36.1 4.3 Any inconsistency between the description and the claims
should be avoided if having regard to Sec. 75, it may throw doubt
on the extent of protection and therefore render the claim unclear
(Sec.36.1). Such inconsistency can be of the following kinds:

(i) Simple verbal inconsistency.

R. 415 (d) For example, there is a statement in the description which suggests
R. 918 that the invention is limited to a particular feature but the claims are
not so limited; also, the description places no particular emphasis
on this feature and there is no reason for believing that the feature
is essential for the performance of the invention. In such a case the
inconsistency can be removed either by broadening the description
or by limiting the claims. Similarly, if the claims are more limited
than the description, the claims may be broadened or the
description may be limited.

(ii) Inconsistency regarding apparently essential features.

For example, it may appear, either from general technical

knowledge or from what is stated or implied in the description, that
a certain described technical feature not mentioned in an
independent claim is essential to the performance of the invention,
or in other words is necessary for the solution of the problem to
which the invention relates. In such a case the claim is unclear
(Sec. 36.1), because an independent claim must not only be
comprehensible from a technical point of view but it must also
define clearly the object of the invention, that is to say indicate all
the essential features thereof. If, in response to this objection, the
applicant shows convincingly, e.g. by means of additional
documents or other evidence, that the feature is not in fact
essential, he may be allowed to retain the unamended claim and,
where necessary, to amend the description instead. The opposite
situation in which an independent claim includes features which do
not seem essential for the performance of the invention is not
objectionable. This is a matter of the applicant’s choice. The
examiner should therefore not suggest that a claim be broadened

90
 by the omission of apparently inessential features.

(iii) Part of the subject-matter of the description and/or drawings is

not covered by the claims.

For example, the claims all specify an electric circuit employing

semi-conductor devices but one of the embodiments in the
description and drawings employs electronic tubes instead. In such
a case, the inconsistency can normally be removed either by
broadening the claims (assuming that the description and drawings
as a whole provide adequate support for such broadening) or by
removing the "excess" subject-matter from the description and
drawings. However if examples in the description and/or drawings
which are not covered by the claims, are presented, not as
embodiments of the invention, but as background art or examples
which are useful for understanding the invention, the retention of
these examples may be allowed.

4.3a General statements in the description which imply that the

extent of protection may be expanded in some vague and not
precisely defined way should be objected to. In particular, objection
should be raised to any statement which refers to the extent of
protection being expanded to cover the "spirit" of the invention;
objection should likewise be raised, in the case where the claims
are directed to a combination of features, to any statement which
seems to imply that protection is nevertheless sought not only for
the combination as a whole but also for individual features or sub-
combinations thereof.

4.4 An independent claim should specify clearly all of the essential

R. 415 (a)(b) features needed to define the invention except in so far as such
R. 416 (a) features are implied by the generic terms used, e.g. a claim to a
"bicycle" does not need to mention the presence of wheels. If a
claim is to a process for producing the product of the invention,
then the process as claimed should be one which, when carried out
in a manner which would seem reasonable to a person skilled in
the art, necessarily has as its end result that particular product;
otherwise there is an internal inconsistency and therefore lack of
clarity in the claim. In the case of a product claim, if the product is
of a well-known kind and the invention lies in modifying it in certain
respects, it is sufficient if the claim clearly identifies the product
and specifies what is modified and in what way. Similar
considerations apply to claims for apparatus.

Where patentability depends on a technical effect, the claim must

be so drafted as to include all the technical features of the invention

91
which are necessary for obtaining this technical effect and therefore
essential.

4.5 Relative or similar term such as "thin", "wide" or "strong" in a

claim may render the scope of the claim vague and uncertain and
should not in general be used. However, if the term has a well-
recognised meaning in the particular art, e.g. "high-frequency" in
relation to an amplifier, and this is the meaning intended its use is
permissible. Where the term has no well-recognised meaning it
should be replaced by a more precise wording found elsewhere in
the original disclosure. Where there is no basis in the disclosure for
a clear definition, and the term is not essential having regard to the
invention, it should normally be retained in the claim, because to
excise it would generally lead to an extension of the subject-matter
beyond the content of the application as filed - in contravention of
the proviso in Sec. 49. However an unclear term cannot be allowed
in a claim if the term is essential having regard to the invention.
Equally, an unclear term cannot be used by the applicant to
distinguish his invention from the prior art.

4.5a Particular attention is required whenever the word "about" or

similar terms such as "approximately" are used. Such a word may
be applied, for example, to a particular value (e.g. "about 200°C")
or to a range (e.g. "about x to about y"). In each case, the examiner
should use his judgement as to whether the meaning is sufficiently
clear in the context of the application read as a whole. However,
the word can only be permitted if its presence does not prevent the
invention from being unambiguously distinguished from the prior art
with respect to novelty and inventive step.

4.5b The use of trademarks, trade names, proper names and

similar expressions in claims should not be allowed unless their use
is unavoidable; they may be allowed exceptionally if they are
generally recognized as having a precise meaning (see also II, 4.16
and 4.17). They may be used exceptionally if their use is
unavoidable and they are generally recognised as having a precise
meaning.

4.6 Expressions, like "preferably", "for example", "such as" or "more

particularly" should be looked at carefully to ensure that they do not
introduce ambiguity. Expressions of this kind have no limiting effect
on the scope of a claim; that is to say, the feature following any
such expression is to be regarded as entirely optional.

4.7 The monopoly defined by the claims must be as precise as the

invention allows. As a general rule, claims which attempt to define

92
the invention or a feature thereof by a result to be achieved should
not be allowed, in particular if they only amount to claiming the
underlying technical problem. However, they may be allowed if the
invention either can only be defined in such terms or cannot
otherwise be defined more precisely without unduly restricting the
scope of the claims and if the result is one which can be directly
and positively verified by tests or procedures adequately specified
in the description and involving nothing more than trial and error or
known to the person skilled in the art and which do not require
undue experimentation. For example, the invention may relate to
an ashtray in which a smouldering cigarette end will be
automatically extinguished due to the shape and relative
dimensions of the ashtray. The latter may vary considerably in a
manner difficult to define whilst still providing the desired effect (for
functional features see III, 2.1 and 6.5). So long as the claim
specifies the construction and shape of the ashtray as clearly as
possible, it may define the relative dimensions by reference to the
result to be achieved, provided that the specification includes
adequate directions to enable the reader to determine the required
dimensions by routine test procedures not involving ingenuity.
However claims of this kind are generally undesirable and should
be allowed only when the invention does not admit of precise
definition independently of the result achieved. Any claim which
includes a subordinate clause prefaced by words such as “so that”
or “the arrangement being such that” requires special consideration
from this point of view.

4.7a Where the invention relates to a product, e.g. a chemical

compound, it may be defined in a claim in various ways, viz., by its
chemical formula, as a product of a process (if no clearer definition
is possible) or exceptionally by its parameters.
Parameters are characteristic values, which may be values of
directly measurable properties (e.g. the melting point of a
substance, the flexural strength of a steel, the resistance of an
electrical conductor) or may be defined as more or less
complicated mathematical combinations of several variables in the
form of formulae.

Characterization of a product, i.e. a chemical compound, solely by

its parameters should, as a general rule, not be allowed. It may
however be allowable in those cases where the invention cannot be
adequately defined in any other way, i.e. independently of the result
to be achieved, provided that those parameters are usual in the art
and can be clearly and reliably determined either by indications in
the description or by objective procedures which are usual in the
art. This can arise, e g. in the case of macromolecular chains. The

93
 same applies to a process related feature which is defined by
parameters.

Whether the methods of and the means for measuring the

parameters need also to be in the claims is treated in III, 4.10 here
below.

Cases in which unusual parameters or a non-accessible apparatus

for measuring the parameter(s) are employed should be closely
examined, as they might disguise lack of novelty (see IV, 7.5).

4.7b Claims for products defined in terms of a process of

manufacture are admissible only if the products as such fulfil the
requirements for patentability, i.e. inter alia that they are new and
inventive. A product is not rendered novel merely by the fact that it
is produced by means of a new process. A claim defining a product
in terms of a process is to be construed as a claim to the product
as such and the claim should preferably take the form "Product X
obtainable by process Y", or any wording equivalent thereto, rather
than "Product X obtained by process Y".

Concerning the protection afforded by process claims see Sec.78.

Sec. 78
4.8 If a claim commences with such words as: "Apparatus for
carrying out the process etc..." this must be construed as meaning
merely apparatus suitable for carrying out the process. Apparatus
which otherwise possessed all of the features specified in the
claims, but which would be unsuitable for the stated purpose, or
which would require modification to enable it to be so used, should
not normally be considered as anticipating the claim. Similar
considerations apply to a claim for a product for a particular use.
For example, if a claim refers to a "mould for molten steel", this
implies certain limitations for the mould. Therefore, a plastic ice
cube tray with a melting point much lower than that of steel would
not come within the claim. Or for example if a claim refers to "A
hook for a construction site crane" this implies e.g. particular
dimensions and strength in the hook. Therefore a “fish-hook for
catching small fish” could never anticipate the claim, but a hook
having the necessary dimensions and strength and possessing all
the other features specified in the claim would deprive the claim of
novelty whether it was stated to be for use in a crane or not.
Similarly, a claim to a substance or composition for a particular use
should be construed as meaning a substance or composition
which is in fact suitable for the stated use; a known product which
prima facie is the same as the substance or composition defined in

94
 the claim, but which is in a form which would render it unsuitable for
the stated use, would not deprive the claim of novelty, but if the
known product is in a form in which it is in fact suitable for the
stated use, though it has never been described for that use, it
would deprive the claim of novelty.

An exception to this general principle of interpretation is provided

Sec. 22.3 by Sec. 22.3 which allows a claim to a known product (substance)
or composition where the claim is to a known product (substance)
or composition for use in a surgical, therapeutic or diagnostic
method, provided that its use in any such method is not comprised
in or rendered obvious by the prior art.

4.8a Where a claim in respect of a physical entity (product,

apparatus) seeks to define the invention by reference to features
relating to the entity's use, a lack of clarity can result. This is
particularly the case where the claim not only defines the entity
itself but also specifies its relationship to a second entity which is
not part of the claimed entity (for example, a cylinder head for an
engine, where the former is defined by features of its location in the
latter). Before considering a restriction to the combination of the
two entities, it should always be remembered that the applicant is
normally entitled to independent protection of the first entity per se,
even if it was initially defined by its relationship to the second entity.
Since the first entity can often be produced and marketed
independently of the second entity, it will usually be possible to
obtain independent protection by wording the claims appropriately
(for example, by substituting "connectable" for "connected"). If it is
not possible to give a clear definition of the first entity per se, then
the claim should be directed to a combination of the first and
second entities (for example, "engine with a cylinder head" or
"engine comprising a cylinder head").

It may also be allowable to define the dimensions and/or shape of

a first entity in an independent claim by general reference to the
dimensions and/or corresponding shape of a second entity which is
not part of the claimed first entity but is related to it through use.
This particularly applies where the size of the second entity is in
some way standardised (for example, in the case of a mounting
bracket for a vehicle number-plate, where the bracket frame and
fixing elements are defined in relation to the outer shape of the
number-plate). However, references to second entities which
cannot be seen as subject to standardisation may also be
sufficiently clear in cases where the skilled person would have little
difficulty in inferring the resultant restriction of the scope of
protection for the first entity (for example, in the case of a covering

95
sheet for an agricultural round bale, where the length and breadth
of the covering sheet and how it is folded are defined by reference
to the bale's circumference, width and diameter). It is neither
necessary for such claims to contain the exact dimensions of the
second entity, nor do they have to refer to a combination of the first
and second entities. Specifying the length, width and/or height of
the first entity without reference to the second would lead to an
unwarranted restriction of the scope of protection.

4.8b To avoid ambiguity, particular care should be exercised when

assessing claims which employ the word "in" to define a
relationship between different physical entities (product,
apparatus), or between entities and activities (process, use), or
between different activities. Examples of claims worded in this way
include the following:

(i) cylinder head in a four-stroke engine

(ii) In a telephone apparatus with an automatic dialer, dial tone

detector and feature controller, the dial tone detector
comprising ...
(iii) In a process using an electrode feeding means of an arc-
welding apparatus, a method for controlling the arc welding
current and voltage comprising the following steps:...

(iv) In a process/system/apparatus ... the improvement

consists of ...

In examples (i) to (iii) the emphasis is on the fully functioning sub-

units (cylinder head, dial tone detector, method for controlling the
arc welding current and voltage) rather than the complete unit
within which the sub-unit is contained (four-stroke engine,
telephone, process). This can make it unclear whether the
protection sought is limited to the sub-unit per se, or whether the
unit as a whole is to be protected. For the sake of clarity, claims of
this kind should be directed either to "a unit with (or comprising) a
sub-unit" (e.g., "four-stroke engine with a cylinder head"), or to the
sub-unit per se, specifying its purpose (for example, "cylinder head
for a four-stroke engine"). The latter course may be followed only at
the applicant's express wish and only if there is a basis for it in the
application as filed, in accordance with the proviso of Sec.49.

With claims of the type indicated by example (iv), the use of the
word "in" sometimes makes it unclear whether protection is sought
for the improvement only or for all the features defined in the claim.
Here, too, it is essential to ensure that the wording is clear.

96
 However, claims such as "use of a substance ... as an anticorrosive
ingredient in a paint or lacquer composition" are acceptable on the
basis of second non-medical use (see IV, 7.6, second paragraph).

4.9 For the purposes of examination, a "use" claim of a form such

R. 415 (b) as "the use of substance X as an insecticide" should be regarded
as equivalent to a "process" claim of the form "a process of killing
insects using substance X". Thus a claim of the form indicated
should not be interpreted as directed to the substance X
recognisable (e.g. by further additives) as intended for use of an
insecticide. Similarly, a claim for "the use of a transistor in an
amplifying circuit" would be equivalent to a process claim for the
process of amplifying using a circuit containing the transistor and
should not be interpreted as being directed to "an amplifying circuit
in which the transistor is used", nor to "the process of using the
transistor in building such a circuit".

4.9a A claim to an apparatus or substance “when used in” a

particular process should be construed as a claim confined to the
use of the apparatus or substance in such a process, and its
novelty is therefore destroyed only by a disclosure to such use.
Preferably, the claims wording should be amended to read “Use of
the apparatus/substance for/in ... (process features) ...”. If the
apparatus or substance per se is known to be old, this fact should
be acknowledged in the description in order to ensure that the
nature of the invention in its proper perspective.

4.10 The claims must not, in respect of the technical features of

R. 415 (d) the invention, rely on references to the description or drawings
"except where absolutely necessary". In particular they must not
normally rely on such references as "as described in part... of the
description", or "as illustrated in Figure 2 of the drawings", or
substantially as described and illustrated in the accompanying
drawings”. A claim containing the latter phrase is known as an
omnibus claim. The emphatic wording of the excepting clause
precluding such references should be noted. The onus is upon the
applicant to show that it is "absolutely necessary" to rely on
reference to the description or drawings in appropriate cases. An
example of an allowable exception would be that in which the
invention involved some peculiar shape, illustrated in the drawings,
but which could not be readily defined either in words or by a
simple mathematical formula. Another special case is that in which
the invention relates to chemical products some of whose features
can be defined only by means of graphs or diagrams.

97
 A further special case is where the invention is characterised by
parameters. Provided that the conditions for defining the invention
in this way are met (see III, 4.7a here above), then the definition of
the invention should appear completely in the claim itself whenever
this is reasonably practicable. In principle the method of
measurement is necessary for the unambiguous definition of the
parameter. The method of and means for measurement of the
parameter values need not be in the claims when:

(a) the description of the method is so long that its inclusion would
make the claim unclear through lack of conciseness or difficult
to understand; in that case the claim should include a reference
to the description, in accordance with R.415(d),

(b) a person skilled in the art would know which method to employ,
e.g. because there is only one method, or because a particular
method is commonly used, or

(c) all known methods yield the same result (within the limits of
measurement accuracy).]

In all other cases the method of and means for measurement

should be
included in the claims as the claims shall define the matter for
which protection is sought Sec. 36.1

4.11 The use of references in the claims to features of the

R. 416 (c) drawings is not prohibited. On the contrary, if there are drawings,
R. 413 (b) and the technical features of the claims would be rendered more
R. 414.12 intelligible by relating these features to the corresponding features
of the drawings (e.g. where a complete machine has been
illustrated), then this should preferably be done by placing the
appropriate reference signs in parentheses after the features in the
claims. This should be done in both parts of claims having the two-
part form specified in R.416 (a)(b). These reference signs are not,
normally construed as limiting the scope of a claim, but merely act
as aids to an easier understanding of the claimed invention.

However, the use of reference signs is however not always

necessary in order to meet the requirements of Sec. 36. If the
absence of reference signs makes it very difficult to relate a claim
to the particular description, it is often possible to amend the
wording of the claim as an alternative to inserting reference signs
therein. Another acceptable alternative is to put the reference signs
in a corresponding statement of invention in the description.

98
 If text is added to reference signs in parentheses in the claims,
lack of clarity can arise Sec. 36.1. Expressions such as "securing
means (screw 13, nail 14)" or "valve assembly (valve seat 23, valve
element 27, valve seat 28)" are not reference signs in the sense of
R.416(c) but are special features, to which the last sentence of
R.416(c) is not applicable. Consequently, it is unclear whether the
features added to the reference signs are limiting or not.
Accordingly, such bracketed features are generally not permissible.
However, additional references to those figures where particular
reference signs are to be found, such as "(13 - Figure 3; 14 - Figure
4)", are unobjectionable.

A lack of clarity can also arise with bracketed expressions that do

R. 416 (c) not include reference signs, e.g. "(concrete) moulded brick". In
contrast, bracketed expressions with a generally accepted meaning
are admissible, e.g. "(meth)acrylate" which is known as an
abbreviation for "acrylate and methacrylate". The use of brackets in
chemical or mathematical formulae is also unobjectionable.

4.12 Generally, the subject-matter of a claim is defined by means

of positive features. However, the extent of a claim may be limited
by means of a "disclaimer"; in other words, an element clearly
defined by technical features may be expressly excluded from the
protection claimed, for example in order to meet the requirement of
novelty (over a document belonging to a different technical field), or
to exclude technically impossible or insufficiently disclosed subject-
matter. A disclaimer may be used only when the claim's remaining
subject-matter cannot be defined more clearly and concisely by
means of positive features. A disclaimer is generally a way of trying
to preserve the patentability of a generic claim by excluding from its
scope one or more particular examples in the prior art. There is no
standard wording or phrase in the description or claims for a
disclaimer. A specific prior art may be excluded by a disclaimer
even in the absence of support for the excluded matter in the
original application documents. However, care should be taken that
the wording of the disclaimer does not infringe the proviso of Sec.
49. For example, a disclaimer should not be accepted in case that
the disclosure of a document belonging to the same technical field
as the invention is to be excluded, and the inventive step for the
remaining subject-matter is argued on the basis of an exclusion not
originally disclosed in the application under examination.

4.13 "Comprising" vs. "consisting"

While in everyday language the word "comprise" may have both

the meaning "include", "contain" or "comprehend" and "consist of",

99
 in drafting patent claims legal certainty normally requires it to be
interpreted by the broader meaning "include", "contain" or
"comprehend". On the other hand, if a claim for a chemical
compound refers to it as "consisting of components A, B and C" by
their proportions expressed in percentages, the presence of any
additional component is excluded and therefore the percentages
should add up to 100%.

5. Conciseness, number of claims

5.1 The requirement that “each claim shall be concise” refers to

the claims in their entirety as well as to the individual claims. The
Sec. 36.1 number of claims must be considered in relation to the nature of the
invention the applicant seeks to protect. Undue repetition of
wording, e.g. between one claim and another, should be avoided
by the use of the dependent form. Regarding independent claims in
the same category see III, 3.3 here above. As for dependent
claims, while there is no objection to a reasonable number of such
claims directed to particular preferred features of the invention, the
examiner should object to a multiplicity of claims of a trivial nature.

6. Support in description

6.1 Each claim must be supported by the description. This means

Sec. 36.1 that there must be a basis in the description for the subject-matter
of every claim and that the scope of the claims must not be broader
than is justified by the extent of the description and drawings.

6.2 Most claims are generalisations from one or more particular

examples. The extent of generalisation permissible is a matter
which the examiner must judge in each particular case in the light
of the relevant prior art. Thus an invention which opens up a whole
new field is entitled to more generality in the claims than one which
is concerned with advances in a known technology. A fair
statement of claim is one which is not so broad that it goes beyond
the invention nor yet so narrow as to deprive the applicant of a just
reward for the disclosure of his invention. The applicant should be
allowed to cover all obvious modifications, equivalents to and uses
of that which he has described; after the date of filing, however, he
should be allowed to do so only if this does not introduce subject-
matter which goes beyond the disclosure of the initial application,
i.e. does not contravene the proviso of Sec. 49. In particular, if it is
reasonable to predict that all the variants covered by the claims
have the properties or uses the applicant ascribes to them in the
description he should be allowed to draw his claims accordingly.

100
 Where there is any serious inconsistency between the claims and
the description amendment to remove this will be required.

6.3 However, claims are sometimes speculative, in that their scope

Sec. 35.1 extends beyond the description to embrace possibilities not yet
Sec. 36.1 explored by the applicant, the effects of which cannot be readily
predetermined or assessed and the description gives merely an
indication of the full breadth of scope of the invention but no, or
inadequate, directions of how to put it into practice. In this case the
examiner may object that the invention in this respect is not
sufficiently disclosed (Sec.35.1) and that, consequently such claims
are not supported by description (Sec.36.1).

For instance, a claim in generic form, i.e. relating to a whole class

e.g. of products or machines, may be acceptable even if of broad
scope, if there is a fair support in the description, and there is no
reason to suppose that the invention cannot be worked through the
whole of the field claimed. Where the information given appears
insufficient to enable the person with ordinary skill in the art to
extend the teaching of the description to parts of the field claimed,
but not explicitly described by using routine methods of
experimentation or analysis, the examiner should require the
applicant to satisfy him that the invention can in fact be readily
applied, on the basis of the information given, over the whole field
claimed or, failing this, to restrict the claim to accord with the
description.

As a general rule, a claim should be regarded as supported by the

description unless exceptionally there are well-founded reasons for
believing that the skilled person would be unable, on the basis of
the information given in the application as filed, to extend the
particular teaching of the description to the whole of the field
claimed by using routine methods of experimentation or analysis.
Support must however be of a technical character; vague
statements or assertions having no technical content provide no
basis.

The examiner should raise an objection, or require further

evidence, only if he has strong, well-founded reasons for believing
that the description as filed provides inadequate support for that
claim. It follows that in other cases the applicant should be given
the benefit of the doubt. Where objection is raised, the reasons
should preferably be supported specifically by a published
document.

6.4 The question of support is illustrated by the following examples:

101
(a) A broad claim for “a process for influencing substances by
high-frequency electrical energy” may not be adequately
supported by the disclosure of a single example of such an
influence (e. g. removing dust from a gas) nor of influences on
a single substance.

(b) A claim relates to a process for treating all kinds of "plant

seedlings" by subjecting them to a controlled cold shock of
such duration and intensity that the specified results would
follow, whereas the description discloses the process applied
to one kind of plant only. Since it is well known that plants vary
widely in their properties, there are well-founded reasons for
believing that the process is not applicable to all plant
seedlings. Unless the applicant can provide convincing
evidence that the process is nevertheless generally applicable,
he must restrict his claim to the particular kind of plant referred
to in the description. A mere assertion that the process is
applicable to all plant seedlings is not sufficient.

Such a claim might thus only be permissible if it clearly emanates

from the description that the conditions set forth in relation to that
plant applied to other plants generally; but otherwise the claim
would not be adequately supported unless the description gave a
sufficient range of examples, relating to different kind of plants, to
enable a horticulturist to deduce how the process should be applied
to virtually any plant.

(c) A claim relates to a specified method of treating "synthetic

resin mouldings" to obtain certain changes in physical
characteristics. All the examples described relate to
thermoplastic resins and the method is such as to appear
inappropriate to thermosetting resins.

Unless the applicant can provide evidence that the method is

nevertheless applicable to thermosetting resins, he must restrict his
claim to thermoplastic resins.

It should be noted that, although an objection of lack of support is

an objection under Sec.36.1, it can often, as in the above
examples, also be considered as an objection of insufficient
disclosure of the invention under Sec.35, the objection being that
the disclosure is insufficient to enable the skilled person to carry out
the "invention" over the whole of the broad field claimed (although
sufficient in respect of a narrow "invention"). Whether the objection
is raised as lack of support or as insufficiency is unimportant in

102
 examination proceedings; but it is important in cancellation
proceedings since there only the latter ground is available (->
Sec.61.1).

6.5 A claim may broadly define a feature in terms of its function,

even where only one example of the feature has been given in the
description,
if the skilled reader would appreciate that other means could be
used for the same function (see also III, 2.1 here above). For
example, "terminal position detecting means" in a claim might be
supported by a single example comprising a limit switch, it being
obvious to the skilled person that e.g. a photoelectric cell or a strain
gauge could be used instead. In general, however, if the entire
contents of the application are such as to convey the impression
that a function is to be carried out in a particular way, with no
intimation that alternative means are envisaged, and a claim is
formulated in such a way as to embrace other means, or all means,
of performing the function, then objection arises. Furthermore, it
may not be sufficient if the description merely states in vague terms
that other means may be adopted, if it is not reasonably clear what
they might be or how they might be used.

6.6 Where certain subject-matter is clearly disclosed in a claim of

the application as filed, but is not mentioned anywhere in the
description, it is permissible to amend the description so that it
includes this subject-matter. Where the claim is dependent, it may
suffice if it is mentioned in the description that the claim sets out a
particular embodiment of the invention (see II, 4.5)].

7. Unity of invention

Independent claims

7.1 The Philippine application must "relate to one invention only, or

Sec. 38.1
to a group of inventions forming a single general inventive
R. 604 (a)
concept". The second of these alternatives, i.e. the single-concept
linked group, may give rise to a plurality of independent claims in
the same category (as in the examples given in III, 3.3 here above),
but the more usual case is a plurality of independent claims in
different categories.

The following guidelines, and in particular R.605, are consistent

with internationally harmonised unity of invention practices of many
patent offices.

103
 Concerning examples for the assessment of unity, reference is
made to III, Annex 1 and to VII, 4.

R. 605 (a) 7.2 R.605 (a) indicates how one determines whether or not the
R. 605 (b) requirement of Sec. 38.1 is fulfilled when more than one invention
Sec. 38.1 appears to be present. The link or “single general inventive
concept” between the inventions required by Sec.38.1 must be a
technical relationship which finds expression in the claims in terms
of the same or corresponding special technical features. The
expression "special technical features" means, in any one claim,
the particular technical feature or features that define a contribution
that the claimed invention considered as a whole makes over the
prior art. Once the special technical features of each invention have
been identified, one must determine whether or not there is a
technical relationship between the inventions and, furthermore,
whether or not this relationship involves these special technical
features. Moreover, it is not necessary that the special technical
features in each invention be the same. R.605 (a) makes it clear
that the required relationship may be found between corresponding
technical features. An example of this correspondence might be the
following: In one claim the special technical feature which provides
resilience might be a metal spring, whereas in another claim the
special technical feature which provides resilience might be a block
of rubber.

R. 605 (c) A plurality of independent claims in different categories may

constitute a group of inventions so linked as to form a single
general inventive concept.

R. 605 (d) In particular, the inclusion of any one of the following combinations
of claims of different categories in the same application is
permissible:

(1) in addition to an independent claim for a given product, an

independent claim for a process specially adapted for the
manufacture of the said product, and an independent claim for a
use of the said 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 said 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 said product and an independent claim for an
apparatus or means specifically designed for carrying out the said
process.

104
 It should be noted that a "product" need not be a substance or
composition but can be any physical thing resulting from man's
technical skill. It can be, for example, a device, a machine or an
assembly or a system.

Example (a):

1. Flame-retarding agent X,
2. Method of preparation of X
3. Use of X to treat a textile fabric.

Example(b)

(1) Method of making a cable by twisting the cores together in a

particular way.

(2) Apparatus particularly designed to twist the cores in the

particular way (of claim 1).

Sub-combinations of these groups of claims are also possible such

as, for example, product and process, product and use and process
and apparatus. Evidently these may be admitted within the
framework of unity of invention.

However, while a single set of independent claims according to any

one of the combinations (1), (2) or (3) above is always permissible,
R. 415 (b) an examiner is not obliged to accept a plurality of such sets which
could arise by additionally applying the provisions of R.415 (b). The
proliferation of claims arising out of a combined effect of this kind
should be allowed only exceptionally.

7.3 It is essential that a single general inventive concept link the

claims in the various categories. The presence in each claim of
expressions such as "specially adapted" or "specifically designed"
does not necessarily imply that a single general inventive concept
is present.

The requirement that the process be specially adapted for the

manufacture of the product is fulfilled if the claimed process
inherently results in the claimed product. The expression "specially
adapted" does not imply that the product could not also be
manufactured by a different process. It also does not imply that a
similar process of manufacture could not also be used for the
manufacture of other products.

105
The requirement that the apparatus or means be specifically
designed for carrying out the process is fulfilled if the apparatus or
means is suitable for carrying out the process and if there is a
technical relationship as defined in R.605 (a) between the claimed
apparatus or means and the claimed process. It is not sufficient for
unity that the apparatus or means is merely capable of being used
in carrying out the process. However, the expression "specifically
designed" does not exclude that the apparatus or means could also
be used for carrying out another process, or that the process could
also be carried out using an alternative apparatus or means.

7.3a Unity of invention should be considered to be present in the

context of intermediate and final products where:

(i) the intermediate and final products have the same

essential structural element, i.e. their basic chemical
structures are the same or, their chemical structures are
technically closely interrelated, the intermediate
incorporating an essential structural element into the final
product, and

(ii) the intermediate and final products are technically

interrelated, this meaning that the final product is
manufactured directly

(iii) from the intermediate or is separated from it by a small

number of intermediates all containing the same
essential structural element.

Unity of invention may also be present between intermediate and

final products of which the structures are not known - for example,
as between an intermediate having a known structure and a final
product with unknown structure or as between an intermediate of
unknown structure and a final product of unknown structure. In
such cases, there should be sufficient evidence to lead one to
conclude that the intermediate and final products are technically
closely interrelated as, for example, when the intermediate contains
the same essential element as the final product or incorporates an
essential element into the final product.

Different intermediate products used in different processes for the

preparation of the final product may be claimed provided that they
have the same essential structural element. The intermediate and
final products should not be separated, in the process leading from
one to the other, by an intermediate which is not new. Where
different intermediates for different structural parts of the final

106
 product are claimed, unity should not be regarded as being present
between the intermediates. If the intermediate and final products
are families of compounds, each intermediate compound should
correspond to a compound claimed in the family of the final
products. However, some of the final products may have no
corresponding compound in the family of the intermediate products
so that the two families need not be absolutely congruent.

The mere fact that, besides the ability to be used to produce final
products, the intermediates also exhibit other possible effects or
activities should not prejudice unity of invention.

7.4 Alternative forms of an invention may be claimed either in a

R. 605(b) plurality of independent claims (as indicated in III, 7.1 here above)
or in a single claim (but see III, 3.7 here above). In the latter case
the presence of the two alternatives as independent forms may not
be immediately apparent. In either case, however, the same criteria
should be applied in deciding whether or not there is unity of
invention, and lack of unity of invention may then also exist within a
single claim.

7.4a Where a single claim defines (chemical or non-chemical)

alternatives, i.e. a so-called "Markush grouping", unity of invention
should be considered to be present when the alternatives are of a
similar nature (see III, 3.7 here above).

A "Markush claim" can be considered as a shortened formulation of

a claim which claims "A compound selected from the group of
compounds consisting of ...........", wherein a very large number of
compounds would then be specified. It is a generic formulation of
chemical compounds each having a common basic structure plus
variable substituents, the substituents having a common property
or activity.

An example of such a Markush claim is:

A composition comprising a copper compound and a

dimerised thiourea derivative of Formula

wherein the two substituents R, which may be the same or

107
 different, are each independently selected from a substituted
or unsubstituted alkyl group having 1 to 18 carbon atoms, a
substituted or unsubstituted cycloalkyl group having 3 to 18
carbon atoms, a substituted or unsubstituted aralkyl group
having 7 to 30 carbon atoms, a substituted or unsubstituted
aryl group having 6 to 30 carbon atoms, a substituted or
unsubstituted acyl group having 2 to 20 carbon atoms, a
substituted or unsubstituted alkenyl group having 2 to 20
carbon atoms, and a substituted or unsubstituted
alkoxycarbonyl group having 2 to 20 carbon atoms; and B
denotes substituted or unsubstituted benzene ring, a
naphthalene ring, or a biphenyl ring; the molar ratio of
dimerised thiourea derivative to copper compound being from
8:2 to 1:2.

When the Markush grouping is for alternatives of chemical

compounds, they should be regarded as being of a similar nature
where:

(i) all alternatives have a common property or activity, and

(ii) a common structure is present, i.e. a significant structural

element is shared by all of the alternatives, or all
alternatives belong to a recognised class of chemical
compounds in the art to which the invention pertains.
A "significant structural element is shared by all of the alternatives"
where the compounds share a common chemical structure which
occupies a large portion of their structures, or in case the
compounds have in common only a small portion of their
structures, the commonly shared structure constitutes a structurally
distinctive portion in view of existing prior art. The structural
element may be a single component or a combination of individual
components linked together. The alternatives belong to a
recognized class of chemical compounds" if there is an expectation
from the knowledge in the art that members of the class will behave
in the same way in the context of the claimed invention, i.e. that
each member could be substituted one for the other, with the
expectation that the same intended result would be achieved. If it
can be shown that at least one Markush alternative is not novel,
unity of invention should be reconsidered.

7.5 Objection of lack of unity does not normally arise because a

claim contains a number of individual features whether presenting a
technical interrelationship (combination) or not (juxtaposition)

7.6 Lack of unity may be directly evident a priori, i.e. before

108
 considering the claims in relation to the prior art or may only
become apparent a posteriori, i.e. after taking the prior art into
consideration - e.g. a document within the state of the art as
defined in Sec. 24.1 shows that there is lack of novelty or inventive
step in a main claim thus leaving two or more independent claims
without a common inventive concept.

7.7 Although lack of unity may arise a posteriori as well as a priori,

Sec. 38.3 it should be remembered that lack of unity is not a ground of
cancellation in later proceedings. Therefore, although the objection
should certainly be made and amendment insisted upon in clear
cases, it should neither be raised nor persisted in on the basis of a
narrow, literal or academic approach. This is particularly so where
the possible lack of unity does not necessitate a further search.
There should be a broad, practical consideration of the degree of
interdependence of the alternatives presented, in relation to the
state of the art as revealed by the search report. If the common
matter of the independent claims is well-known, and the remaining
subject-matter of each claim differs from that of the others without
there being any unifying novel concept common to all, then clearly
there is lack of unity. If, on the other hand, there is a common
concept or principle which is novel and inventive then objection of
lack of unity does not arise. For determining what is allowable
between these two extremes, rigid rules cannot be given and each
case should be considered on its merits, the benefit of any doubt
being given to the applicant. For the particular case of claims for a
known substance for a number of distinct medical uses, see IV, 4.2.

Dependent claims

7.8 No objection on account of lack of unity a priori is justified in

respect of a dependent claim and the claim from which it depends
only because the general concept they have in common is the
subject-matter of the independent claim, which is also contained in
the dependent claim.

For example, suppose claim 1 claims a turbine rotor blade shaped

in a specified inventive manner, while claim 2 is for a "turbine rotor
blade as claimed in claim 1 and produced from alloy Z". The
common general concept linking the dependent with the
independent claim is "turbine rotor blade shaped in a specified
manner", irrespective of whether the alloy Z is novel and inventive
or not.

As another example, suppose that a main claim defines a process

for the preparation of a Product A starting from a product B and the

109
second claim reads: Process according to claim 1 characterised
by producing B by a reaction using the product C. In this case, too,
no objection arises under Sec.38.1, whether or not the process for
preparation of B from C is novel and inventive, since claim 2
contains all the features of claim 1. The subject matter of claim 2
therefore falls within claim 1.

Hence, there is no question of plurality of invention when one claim

is within the scope of another, even though the additional matter in
the narrower claim would have been capable of being claimed as
further invention.

Where, however, a claim is presented as dependent on another,

but in fact states that one or more features of the other claim are
omitted or are replaced by other features, there is the possibility of
lack of unity of invention. Likewise when alternatives are specified
in a single claim, the claim should be notionally rewritten as a
series of independent claims which then can be assessed for unity
of invention in the usual way.

If the independent claim appears to be not patentable, then the

question whether there is still an inventive link between all the
claims dependent on that claim needs to be carefully considered
(see III, 7.7 here above, non-unity "a posteriori"). It may be that the
"special technical features" of one claim dependent on this non-
patentable independent claim are not present in the same or
corresponding form in another claim dependent on that claim.

7.9 Concerning the procedure to be followed in case of lacking

unity, reference is made to Sec.38.2 and R.605 to 611 of the
revised IRR.

7.10 The Bureau may raise objections under Sec.38 during the
stage preceding publication (e.g. upon search) or during the
subsequent substantive examination.

ANNEX to CHAPTER III, 7

Guidance for the assessment of unity

1.General

An application should relate to one invention only. The reason for

this is that an applicant should file a separate application for each
invention, and pay corresponding fees for each application. If he

110
includes more than one invention in an application he might avoid
the fee payment.

2. Two approaches for examining unity of invention:

There are two ways of examining for unity of invention. The first
method is called the "common subject-matter approach", and is the
traditional method used, and the second method, for purpose of
explanation, is here called the "Rule 605 approach", and is
relatively new. This rule says that unity of invention exists only if
there is technical relationship between the claimed inventions and
they involve one or more of the same or corresponding special
technical features."

The above two methods should give the same result, but
nevertheless both are explained below.

2.1 The Rule 605 approach comprises the following steps:

Step 1:
Compare the subject-matter of the first invention (1st
independent claim) with the relevant prior art to determine
which are the "special technical feature(s)" defining the
contribution the invention, considered as a whole, makes over
the prior art. This means identify those features that make the
claim novel and inventive.
Step 2: Compare the "special technical features" of the first
invention identified in step 1 with the subject-matter of the
second invention (2nd independent claim), and determine
whether or not one or more of the same or corresponding
special technical features are present, i.e. do the two claims
contain the same features that are novel and inventive. If they
do, there is a technical relationship among the two inventions.

Step 3:
Conclude that there is a single general inventive concept if
such technical relationship is present. If on the other hand, no
such technical relationship exists, conclude that there is no
single general inventive concept, and, consequently, that unity
of invention is lacking.

Step 4:
Repeat the above for the remaining independent claims.

2.2 The "common subject-matter approach"

111
 The "common subject-matter" of two inventions (claims) is the
technical features which are common to the two inventions
(claims). In certain cases, two apparently different technical
features may have a common technical effect, which
contributes to the "common subject-matter".

The "common subject-matter approach" involves the following

steps:

(i) identify the common subject-matter (CSM) of the independent

claims. Thus if claim 1 has the features a, b, c, d, e, and f, and
claim 10 has the features a, b, d, e, g, and h, the common
subject-matter comprises a, b, d, and e;

(ii) compare this CSM with the disclosure of the closest prior art
document to determine whether or not it is known (and,
possibly, also whether or not it is obvious) and

(iii) decide that there is no single inventive concept between the

independent claims, if said CSM is known (or obvious, and
vice versa).

3. "A priori" and "a posteriori" lack of unity

A lack of unity "a priori" is based on general knowledge of

the skilled person, whereas "a posteriori" is based on
knowledge from a particular prior art document.

To illustrate these terms in more detail, consider the following

set of claims:

1. A telephone
2. A telephone having a cradle switch
3. A telephone having a dial
4. A telephone having a rotary dial
5. A telephone having a pushbutton dial

Suppose that an application contains all of these claims. They

are all linked by a single general concept i.e. a telephone. If
the telephone is new and involves an inventive step, then
these claims form a group of linked inventions and are free
from an objection of non-unity.
If the telephone is not new or lacks an inventive step, Claim 1
would not be allowable, for lack of novelty. Claims 2 to 5 are
then no longer linked by a single general inventive concept.
Consequently, an objection of non-unity would arise, it being

112
 assumed that both the cradle switch and a dial themselves
are inventive.

If the claims had been in the form:

1. A telephone
2. A cradle switch
3. A dial
4. A rotary dial
5. A pushbutton dial,

It would have been clear from the start that there was non-
unity. The second example indicates what is meant by "a
priori". In the first example however, it was necessary to know
whether the concept of a telephone was or was not new and
inventive before one could decide as to the unity, so that here
the case of "a posteriori" arose. This is the much more
common case.

4. Claim containing alternatives (see III, 3.7).

Non-unity can sometimes arise where there appears to be

only one claim, for example:

A thermoplastic moulding composition which comprises a

polyphenylene etherstyrene resin composition (A); and as a
conductive material, aluminium aluminum flakes (B), a
combination of a aluminum flakes (B) with carbon fibres (C) or
conductive carbon black (D), or a combination of carbon fibres
(C) and conductive carbon black (D), or carbon fibres (C), in
an amount sufficient to make the composition shielding
against electromagnetic interference when moulded.

It must be first recognized that this claim should be regarded

as not one but five independent claims, i.e.:

1. A + B
2. A + B + C
3. A + B + D
4. A + C + D
5. A + C

If the combination of A with any conductive material is known,

then at first sight (a priori) there is non-unity. It must
nevertheless be considered whether the known combination
is such as to make the composition shielding against

113
 electromagnetic interference when moulded. It must also be
considered whether, having regard to the problem to be
solved, the materials B (aluminium aluminum flakes) and C
(carbon fibres) have something in common which makes
these materials particularly suitable for use in combination
with the particular resin composition A. Finally it should also
be considered whether, having regard to the state of the art,
any of the combinations involves an inventive step. It would
be wrong to raise only a non-unity objection if some of the
combinations did not involve an inventive step.

5. Independent claims for related articles

Having dealt with a few examples of claims which sometimes

looked alike but nevertheless exhibited non-unity, it may be
instructive to look at some claims which do not look at all alike
but which do exhibit unity.

1. A transmitter including carrier-frequency-hopping generating

means (16) for generating as an output a distinct sequence
of carrier frequencies (f(t)), modulating means (12,14,18)
responsive to both a message signal and the distinct
sequence of carrier frequencies for modulating the message
signal to produce as an output of the transmitter a carrier-
frequency-hopped single sideband signal, characterized in
that the distinct sequence of carrier frequencies is generated
in response to an assignment code (c(t)) received from a
remote receiver and representative of the distinct sequence
of carrier frequencies.

2. A receiver including carrier-frequency-hopping generating

means (24) for generating as an output a distinct sequence
of carrier frequencies related to a received carrier-frequency
hopped single sideband signal, and demodulating means
(22,26,28) responsive to both the received carrier-frequency
hopped single sideband signal and the distinct sequence of
carrier frequencies for demodulating the received carrier-
frequency-hopped single sideband signal to produce as an
output of the receiver the message signal related thereto,
and characterized by means (24) for generating for
transmission an assignment code (c(t)) representative of the
distinct sequence of carrier frequencies.

In this case a single general inventive concept can be

recognized in the transmission of an assignment code
representative of the distinct sequence of carrier frequencies.

114
 These claims are an example of independent claims in the
same category.

6. Claims in different categories

Independent claims
See examples a) and b) in Chapter III, 7.1 – 7.2

7. “Markush” claims

The assessment of unity in case of Markush claims is dealt

with under Chapter III, 7.4a

8. Different medical uses of a known substance

If an application discloses different medical uses of a known
substance, and the uses are new, then independent claims for
the substance having the different uses may be claimed.
There is no lack of unity since the unifying concept is the first
medical use of the substance, which is novel and inventive.

9. Further examples
Further examples concerning the assessment of unity can be
found in Chapter VII, 4 (Unity of invention).

CHAPTER IV - PATENTABILITY

1. General

Sec. 21 1.1 There are four basic requirements for patentability:

R.200
(i) There must be an "invention" that can be considered as a
“technical solution of a problem in any field of human
activity”.

(ii) The invention must be "industrially applicable".

(iii) The invention must be "new".

(iv) The invention must involve an "inventive step".

These requirements will be dealt with in turn in the following

sections IV, 2 and 3, 4, 5 to 8, and 9, respectively.

115
 1.2 In addition to these four basic requirements, the examiner
should be aware of the following two requirements that are
implicitly contained in the IP-code and the Implementing Rules and
Regulations:

Sec. 35.1 (i) The invention must be such that it can be carried out by a
R.909 (c) person skilled in the art (after proper instruction by the
application); this follows from Sec.35.1. Instances where the
invention fails to satisfy this requirement are given in C-II, 4.11.

(i) The invention must be a “technical solution to a problem”,

R. 407 (a) hence of a "technical” character", to the extent that it must relate
R. 407 (b) to a technical field, must be concerned with a technical problem,
R. 416 and must have technical features in terms of which the matter
for which protection is sought can be defined in the claim, see
also C-III, 2.1).

1.3 Sec.21 of the IP-code Convention does not require explicitly

or implicitly that an invention to be patentable must entail some
technical progress or even any useful effect. Nevertheless,
advantageous effects, if any, with respect to the prior art should be
stated in the description (R.407(1)(c)), and any such effects are
often important in determining "inventive step" (see IV, 9 here
below).

2. Inventions (See also 4.2, CGPEPP)

2.1 Sec.21 gives a definition of what is meant by "invention", but

Sec. 21 Sec.22 contains a non-exhaustive list of things which shall not be
Sec. 22 regarded as patentable inventions. It will be noted that the
exclusions in Sec.22.1 and Sec.22.2 are abstract (e.g. discoveries,
scientific theories etc.) and the exclusions in Sec.2.5 are non-
technical (e.g. aesthetic creations). In contrast to this, an
"invention" within the meaning of Sec.21 must be of both a
concrete and a technical character (see IV, 1.2 (ii) here above).

The exclusions under Sec.22.1, 22.2 and 22.5 are dealt with under
IV, 2.2 and 2.3 here below. The exclusions under Sec.22.4
(inventions in the biological field) and 22.6 (public order and
morality) are dealt with under IV, 3 here below. The exclusions
under Sec.22.3 (inventions in the medical field) and under Sec.27
(industrial applicability) are dealt with under IV, 4 here below.

2.1a Examples of what an invention may be are given in Sec.21,

Sec. 21 R.201 and R.415, i.e.
R. 201

116
R. 415 (a) A product, such as a machine, a device, an article of
manufacture, a composition of matter, a microorganism;
(b) A process, such as a method of use, a method of
manufacturing, a non-biological process, a microbiological
process;
(c) Computer-related inventions; and
(d) An improvement of any of the foregoing.

2.2 In considering whether the subject-matter of an application is

an invention within the meaning of Sec.21, there are two general
points the examiner must bear in mind.

Firstly, any exclusion from patentability under Sec.22.1 or Sec.22.2

will in general apply only to the extent to which the application
relates to the excluded subject-matter as such. Secondly, the
examiner should disregard the form or kind of claim and
concentrate on its content in order to identify the real contribution
which the subject-matter claimed, considered as a whole, adds to
the known art. If this contribution is not of a technical character,
there is no invention within the meaning of Sec.21. Thus, for
example, if the claim is for a known manufactured article having a
painted design or certain written information on its surface, the
contribution to the art is as a general rule merely an aesthetic
creation or presentation of information. Similarly, if a computer
program is claimed in the form of a physical record, e.g. on a
conventional tape or disc, the contribution to the art is still no more
than a computer program. In these instances the claim relates to
excluded subject-matter as such and is therefore not allowable. If,
on the other hand, a computer program in combination with a
computer causes the computer to operate in a different way from a
technical point of view, the combination might be patentable.

It must also be borne in mind that the basic test of whether there is
an invention within the meaning of Sec.22, is separate and distinct
from the questions whether the subject-matter is susceptible of
industrial application, is new and involves an inventive step.

2.3 The items of Sec.22.1, 22.2 and 22.5 will now be dealt with in
turn, and further examples will be given in order better to clarify the
distinction between what is patentable and what is not.

Discoveries
Sec. 22.1
R. 202 (a) If a person finds out a new property of a known material or article,
that is a mere discovery and therefore not patentable. If however a
person puts that property to practical use, an invention has been

117
 made which may be patentable. For example, the discovery that a
particular known material is able to withstand mechanical shock
would not be patentable, but a railway sleeper made from that
material could well be patentable. To find a substance freely
occurring in nature is also mere discovery and therefore not
patentable. However, if a substance found in nature has first to be
isolated from its surroundings and a process for obtaining it is
developed, that process is patentable. Moreover, if the substance
can be properly characterized either by its structure, by the process
by which it is obtained or by other parameters (see III, 4.7a) and it
is "new" in the absolute sense of having no previously recognized
existence, then the substance per se may be patentable (see also
IV, 7.3 here below). An example of such a case is that of a new
substance which is discovered as being produced by a micro-
organism.

Scientific theories
Sec. 22.1
R. 202 (a) These are a more generalized form of discoveries, and the same
principle applies. For example, the physical theory of
semiconductivity would not be patentable. However, new
semiconductor devices and processes for manufacturing these may
be patentable.

Mathematical methods
Sec. 22.1
R. 202 (a) These are a particular example of the principle that purely abstract
or intellectual methods are not patentable. For example, a shortcut
method of division would not be patentable but a calculating
machine constructed to operate accordingly may well be
patentable. A mathematical method for designing electrical filters is
not patentable; nevertheless filters designed according to this
method could be patentable provided they have a novel technical
feature to which a product claim can be directed.

Schemes, rules and methods for performing mental acts,

Sec. 22.2 playing games or doing business
R. 202 (c)
These are further examples of items of an abstract or intellectual
character. In particular, a scheme for learning a language, a
method of solving cross-word puzzles, a game (as an abstract
entity defined by its rules) or a scheme for organizing a commercial
operation would not be patentable. However, novel apparatus for
playing a game or carrying out a scheme might be patentable.

118
 Method of doing business, such as a method or system for
Sec. 22.2 transacting business without the technical means for carrying
R. 202 (d) out the method or system.

SAMPLE CASE: In 995 (OJ 2001, 441) the board addressed the
patentability of inventions relating to business methods. Claim 1 of
the main request was directed to a method for controlling a
pension benefits program by administering at least one subscriber
employer account.

The board stated that if the method was technical or, in other
words, had a technical character; it still might be a method for doing
business, but not a method for doing business as such. However,
all the features of claim 1, i.e. the individual steps defining the
claimed method, were steps of processing and producing
information having purely administrative, actuarial and/or financial
character. Processing and producing such information were typical
steps of business and economic methods. Thus the invention as
claimed did not go beyond a method of doing business as such and
was excluded from patentability under Art. 52(2)(c) EPC 1973 in
conjunction with Art. 52(3) EPC 1973. The board added that using
technical means for a purely non-technical purpose and/or for
processing purely non-technical information did not necessarily
confer technical character on any such individual steps of use or on
the method as a whole. The mere occurrence of technical features
in a claim did not turn the subject-matter of the claim into an
invention within the meaning of Art. 52(1) EPC 1973.

Programs for computers

Sec. 22.2
R. 202 (e) The basic patentability considerations here are exactly the same as
for the other exclusions listed in Sec.22. However, a data-
processing operation can be implemented either by means of a
computer program or by means of special circuits and the choice
may have nothing to do with the inventive concept but be
determined purely by factors of economy or practicality. With this
point in mind, examination in this area should be guided by the
following approach:

A computer program claimed by itself or as a record on a carrier is

not patentable irrespective of its content. The situation is not
normally changed when the computer program is loaded into a
known computer. If however the subject-matter as claimed makes a
technical contribution to the known art, patentability should not be
denied merely on the ground that a computer program is involved
in its implementation. This means, for example, that program-

119
 controlled machines and program-controlled manufacturing and
control processes should normally be regarded as patentable
subject-matter. It follows also that, where the claimed subject-
matter is concerned only with the program-controlled internal
working of a known computer, the subject-matter could be
patentable if it provides a technical effect. As an example, consider
the case of a known data-processing system with a small fast
working memory and a larger but slower further memory. Suppose
that the two memories are organized under program control, in
such a way that a process which needs more address space than
the capacity of the fast working memory can be executed at
substantially the same speed as if the process data were loaded
entirely in that fast memory.

The effect of the program in virtually extending the working memory

is of a technical character and might therefore support patentability.

Sec. 22.5 Aesthetic creations

R. 202 (h)
An aesthetic creation relates to an article (e.g. a painting or
sculpture) having aspects which are other than technical and the
appreciation of which is essentially subjective. If, however, the
article happens also to have technical features, it might be
patentable, a tyre tread being an example of this. The aesthetic
effect itself is not patentable, neither in a product nor in a process
claim. For characterized example a book by the aesthetic or artistic
effect of its information contents, of its layout or of its letter font,
would not be patentable, and neither would a painting
characterized by the aesthetic effect of its subject or by the
arrangement of colors, or by the artistic (e.g. Impressionist) style.
Nevertheless, if an aesthetic effect is obtained by a technical
structure or other technical means, although the aesthetic effect
itself is not patentable, the means of obtaining it may be. For
example, a fabric may be provided with an attractive appearance
by means of a layered structure not previously used for this
purpose, in which case a fabric incorporating such structure might
be patentable. Similarly, a book characterized by a technical
feature of the binding or pasting of the back, may be patentable,
even though the effect thereof is solely aesthetic, similarly also a
painting characterized by the kind of cloth, or by the dyes or
binders used. Also a process of producing an aesthetic creation
may comprise a technical innovation and thus be patentable. For
example, a diamond may have a particularly beautiful shape (not of
itself patentable) produced by a new technical process. In this
case, the process may be patentable. Similarly, a new printing
technique for a book resulting in a particular layout with aesthetic

120
 effect, may well be patentable, together with the book as a product
of that process. Again a substance or composition characterized by
technical features serving to produce a special effect with regard to
scent or flavor, e.g. to maintain a scent or flavor
for a prolonged period or to accentuate it, may well be patentable.

Presentations of information

Although there is no corresponding, explicit provision in the IP-code

and the IRR, mere representation of information characterized
solely by the content of the information will not usually be
patentable since it cannot be considered as a technical solution to
a problem. This applies whether the claim is directed to the
presentation of the information per se (e.g. by acoustical signals,
spoken words, visual displays), to information recorded on a carrier
(e.g. books characterized by their subject), gramophone records
characterized by the musical piece recorded, traffic signs
characterized by the warning thereon, magnetic computer tapes
characterized by the data or programs recorded), or to processes
and apparatus for presenting information (e.g. indicators or
recorders characterized solely by the information indicated or
recorded). If, however, the presentation of information has new
technical features there could be patentable subject-matter in the
information carrier or in the process or apparatus for presenting the
information. The arrangement or manner of representation, as
distinguished from the information content, may well constitute a
patentable technical feature. Examples in which such a technical
feature may be present are: a telegraph apparatus or
communication system characterized by the use of a particular
code to represent the characters (e.g. pulse code modulation); a
measuring instrument designed to produce a particular form of
graph for representing the measured information; a gramophone
record characterized by a particular groove form to allow stereo
recordings; or a diapositive with a soundtrack arranged at the side
of it.

2.4 Under certain circumstances, protection for non-patentable

items may be sought for by means of a utility model application or
an industrial design application (aesthetic aspects of an article of
manufacture) or by means of the law relating to copyright
(computer software as such).
Reference is made to the corresponding provisions in the IP-code
and the IRR.

3. Further exclusions from patent protection – Sec.22.6 and

Sec. 22.6 22.4

121
 3.1 Any invention, the publication or exploitation of which would
be contrary to "public order or morality” is specifically excluded from
patentability. The purpose of this is to exclude from protection
inventions likely to induce riot or public disorder, or to lead to
criminal or other generally offensive behavior (see also II, 7.1); one
obvious example of subject-matter which should be excluded under
this provision is a letter-bomb. This provision is likely to be invoked
only in rare and extreme cases. A fair test to apply is to consider
whether it is probable that the public in general would regard the
invention as so abhorrent that the grant of patent rights would be
inconceivable. If it is clear that this is the case, objection should be
raised under Sec.22.6; otherwise not.

3.2 Exploitation is not to be deemed to be contrary to "public order"

or morality merely because it is prohibited by law or regulation in
the Philippines. For example, a product could still be manufactured
under a Philippine patent for export to states in which its use is not
prohibited.

3.3 In some cases refusal of a patent may not be necessary. This

may result when the invention has both an offensive and a non-
offensive use: e.g. a process for breaking open locked safes, the
use by a burglar being offensive but the use by a locksmith in the
case of emergency inoffensive. In such a case no objection arises
under Sec.22.6, but if the application contains an explicit reference
to a use which is contrary to "public order or morality”, deletion of
R. 412 this reference should be required under the terms of R.412.

3.4 Also excluded from patentability are "plant or animal breeds

varieties or essentially biological processes for the production of
plants or animals". One reason for this exclusion is that, at least for
plant varieties, other means of obtaining legal protection are
available in most countries. The question whether a process is
"essentially biological" or “non-biological” (Sec.22.4, 2nd sentence)
is one of degree depending on the extent to which there is technical
intervention by man in the process; if such intervention plays a
significant part in determining or controlling the result it is desired to
achieve, the process would not be excluded. To take some
examples, a method of crossing, inter-breeding, or selectively
breeding, say, horses involving merely selecting for breeding and
bringing together those animals having certain characteristics
would be essentially biological and therefore not patentable. On the
other hand, a process of treating a plant or animal to improve its
properties or yield or to promote or suppress its growth e.g. a
method of pruning a tree, would not be essentially biological since

122
 although a biological process is involved, the essence of the
invention is technical; the same could apply to a method of treating
a plant characterized by the application of a growth-stimulating
substance or radiation. The treatment of soil by technical means to
suppress or promote the growth of plants is also not excluded from
patentability (see also IV, 4.3).

3.5 As expressly stated in Sec.22.4, 2nd sentence, the exclusion

from patentability referred to in the preceding paragraph does not
apply to microorganisms and non-biological and microbiological
Sec. 22.4 processes. The term "microbiological process" is to be interpreted
as covering not only industrial processes using micro-organisms
but also processes for producing new micro-organisms, e.g. by
genetic engineering. The product of a microbiological process may
also be patentable per se (product claim). A micro-organism can
also be protected per se (Sec.22.4, 2nd sentence). The term micro-
organism in general includes not only bacteria and yeasts, but also
fungi, algae, protozoa and human, and possibly animal and plant
cells, i.e. all generally unicellular organisms with dimensions
beneath the limits of vision which can be propagated and
manipulated in a laboratory, including plasmids and viruses.

3.6 In the case of microbiological processes, particular regard

should be had to the requirement of repeatability referred to in II,
4.11. As for biological material to be deposited under the terms of
R.408 and R.409, repeatability is assured by the possibility of
taking samples, and there is thus no need to indicate another
process for the production of the biological material.

4. Industrial application Sec.27 - Medical inventions Sec.22.3

4.1 An invention shall be considered “industrially applicable” if it

can be produced and used in any kind of industry. Agriculture is in
general considered as an industry as well. "Industry" should be
understood in its broad sense as including any physical activity of
"technical character" (see IV, 1.2 here above), i.e. an activity which
belongs to the useful or practical arts as distinct from the aesthetic
arts; it does not necessarily imply the use of a machine or the
manufacture of an article and could cover e.g. a process for
dispersing fog, or a process for converting energy from one form to
another. Thus, Sec.27 excludes from patentability very few
"inventions" which are not already excluded by the list in Sec.22
(see IV, 2.1 here above). One further class of "invention" which
would be excluded, however, would be articles or processes
Sec. 22.4, alleged to operate in a manner clearly contrary to well-established

123
2nd sentence physical laws, e.g. a perpetual motion machine. Objection could
arise under Sec.27 only in so far as the claim specifies the intended
function or purpose of the invention, but if, say, a perpetual motion
machine is claimed merely as an article having a particular
specified construction then objection should be made under
Sec.35.1 (see II, 4.11).

4.2 "Methods for treatment of the human or animal body by surgery

or therapy and diagnostic methods practiced on the human or
animal body” are excluded from patent protection. Moreover, they
will not in general be regarded as inventions which are industrially
applicable. “Products and composition for use in any of these
methods” are not excluded from patent protection.

Patents may, however, also be obtained for surgical, therapeutic or

diagnostic instruments or apparatus for use in such methods. Also
the manufacture of prostheses or artificial limbs, as well as taking
measurements therefor on the human body, would be patentable,
so that a method of manufacturing a prosthetic tooth which involves
making a model of a patient's teeth in the mouth would not be
excluded from patentability either, provided the prosthetic tooth is
fabricated outside of the body.

Patents may also be obtained for new products for use in these
methods of treatment or diagnosis, particularly substances or
compositions. However in the case of a known substance or
composition, this may only be patented for use in these methods if
the known substance or composition was not previously disclosed
for use in surgery, therapy or diagnostic methods practiced on the
human or animal body ("first medical use"). The same substance or
composition cannot subsequently be patented for any other use of
Sec. 27 that kind. A claim to a known substance or composition for the first
R. 208 use in surgical, therapeutic and/or diagnostic methods should be in
a form such as: "substance or composition X" followed by the
indication of the use, for instance"... for use as a medicament", "...
as an antibacterial agent " or "... for curing disease Y". In contrast
to what is stated in III, 4.8 these types of claims will be regarded as
restricted to the substance or composition when presented or
packaged for the specified use. This constitutes an exception from
the general principle that product claims can only be obtained for
(absolutely) novel products. However this does not mean that
product claims for the first medical use need not fulfill all other
requirements of patentability, especially that of inventive step. A
Sec. 22.3 claim in the form "Use of substance or composition X for the
treatment of disease Y..." will be regarded as relating to a method
for treatment explicitly excluded from patentability by Sec.22.3 and

124
therefore will not be accepted.

If an application discloses for the first time a number of distinct

surgical, therapeutic or diagnostic uses for a known substance or
composition, normally in the one application independent claims
each directed to the substance or composition for one of the
various uses may be allowed; i.e. objection should not, as a
general rule, be raised that there is lack of unity of invention.

A claim in the form "Use of a substance or composition X for the

manufacture of a medicament for therapeutic application Z" is
allowable for either a first or "subsequent" (second or further) such
application, if this application is new and inventive. The same
applies to claims in the form "Method for manufacturing a
medicament intended for therapeutic application Z, characterized in
that the substance X is used" or the substantive equivalents
thereof. In cases where an applicant simultaneously discloses more
than one "subsequent" therapeutic use, claims of the above type
directed to these different uses are allowable in the one application,
but only if they form a single general inventive concept (Sec.38).

4.3 It should be noted that Sec.22.3 excludes only methods of

treatment by surgery or therapy and diagnostic methods. It follows
that other methods of treatment of live human beings or animals
(e.g. treatment of a sheep in order to promote growth, to improve
the quality of mutton or to increase the yield of wool) or other
methods of measuring or recording characteristics of the human or
animal body are patentable provided that (as would probably be the
case) such methods are of a technical, and not essentially
biological character (see IV, 3.4 here above) and provided that the
methods are industrially applicable. The latter proviso is particularly
important in the case of human beings.

For example an application with a claim for a method of

contraception, which is to be applied in the private and personal
sphere of a human being, may not be considered “industrial
applicable”. However, an application containing claims directed to
the purely cosmetic treatment of a human by administration of a
chemical product could be considered as “industrially applicable”. A
cosmetic treatment involving surgery or therapy would not however
be patentable (see below).

A treatment or diagnostic method, to be excluded, would generally

have to be carried out on the living human or animal body. A
treatment of or diagnostic method practiced on a dead human or
animal body would therefore not be excluded from patentability by

125
virtue of Sec. Sec 22.3. Treatment of body tissues or fluids after
they have been removed from the human or animal body, or
diagnostic methods applied thereon, are not excluded from
patentability in so far as these tissues or fluids are not returned to
the same body. Thus the treatment of blood for storage in a blood
bank or diagnostic testing of blood samples is not excluded,
whereas a treatment of blood by dialysis with the blood being
returned to the same body would be excluded.

Regarding methods which are carried out on, or in relation to, the
living human or animal body, it should be borne in mind that the
intention of Sec.22.3 is to free from restraint non-commercial and
non-industrial medical and veterinary activities. Interpretation of the
provision should avoid the exclusions from going beyond their
proper limits.

However, in contrast to the subject-matter referred to e.g. Sec.22.1

and Sec.22.2, which are in general only excluded from patentability
if claimed as such, a claim is not allowable under Sec.22.3 if it
includes at least one feature defining a physical activity or action
that constitutes a method step for treatment of the human or animal
body by surgery or therapy or a diagnostic method step to be
exercised on the human or animal body. In that case, whether or
not the claim includes or consists of features directed to a technical
operation performed on a technical object is legally irrelevant.

Taking the three exclusions in turn:

Surgery defines the nature of the treatment rather than its purpose.
Thus, e.g. a method of treatment by surgery for cosmetic purposes
is excluded, as well as surgical treatment for therapeutic purposes.

Therapy implies the curing of a disease or malfunction of the body

and covers prophylactic treatment, e.g. immunization against a
certain disease or the removal of plaque.

Diagnostic methods likewise do not cover all methods related to

diagnosis. Methods for obtaining information only (data, physical
quantities) from the living human or animal body may not
necessarily excluded by Sec.22.3, if the information obtained
merely provides intermediate results which on their own do not
enable a decision to be made on the treatment necessary.
Examples of such methods include X-ray investigations, NMR
studies, and blood pressure measurements.

4.4 Methods of testing generally should be regarded as inventions

126
susceptible of industrial application and therefore patentable if the
test is applicable to the improvement or control of a product,
apparatus or process which is itself susceptible of industrial
application. In particular, the utilization of test animals for test
purposes in industry, e.g. for testing industrial products (for
example for ascertaining the absence of pyrogenetic or allergic
effects) or phenomena (for example for determining water or air
pollution) would be patentable.

4.5 It should be noted that "susceptibility of industrial application"

is not a requirement that overrides the restriction of Sec.22, e.g. an
administrative method of stock control is not patentable, having
regard to Sec.22.2 , even though it could be applied to the store of
spare parts of a factory. On the other hand, although an invention
must be industrially applicable and the description must indicate,
where this is not obvious, the way in which the invention is so
industrially applicable (see II, 4.12), the claims need not necessarily
be restricted to the indicated industrial application(s).

5. Novelty; prior art

5.1 Sec.21 requires an invention to be new in order to be

patentable. Sec.23 gives a negative definition of novelty, i.e. that
“an invention shall not be considered new if it forms part of a prior
art”. The "prior art" is defined in Sec.24.1 as consisting of
"everything which has been made available to the public anywhere
in the world, before the filing date or the priority date of the
Philippine application claiming the invention”.
The width of this definition should be noted. R.204(a), 1st sentence
indicates that there are no restrictions whatever as to the
geographical location where, or the language or manner (e.g. by
means of a written or oral description, by use, or in any other way)
in which the relevant information was made available to the public;
also no age limit is stipulated for the documents or other sources of
the information. There are however certain specific exclusions (see
IV, 8 here below). A prior use in a foreign country must however be
disclosed in printed documents or in a tangible form. Information is
deemed available to the public when it is not confidential or
restricted to the use by a selective group. Prior use and oral
disclosure, whether within or outside the Philippines, must be
proven with substantial evidence.

However, since the "prior art" available to the examiner will mainly
consist of the documents listed in the search report, the following
section IV, 5.2 deals with the question of public availability only in
relation to written description (either alone or in combination with an

127
 earlier oral description or use). Other kinds of prior art are
discussed in section IV, 5.4 here below.

5.2 A written description, i.e. a document, should be regarded as

made available to the public if, at the relevant date, it was possible
for members of the public to gain knowledge of the content of the
document and there was no bar of confidentiality restricting the use
or dissemination of such knowledge. For instance, German utility
models ("Gebrauchsmuster") are already publicly available as of
their date of entry in the Register of utility models
("Eintragungstag"), which precedes the date of announcement in
Sec. 21 the Patent Bulletin ("Bekanntmachung im Patentblatt"). The search
Sec. 23 report also may cite documents in which doubts with regard to the
Sec. 24.1 fact of public availability and doubts concerning the precise date of
publication of a document have not, or not fully, been removed. If
the applicant contests the public availability or assumed date of
publication of the document the examiner should consider whether
to investigate the matter further. If the applicant shows sound
R. 204 (a), reasons for doubting whether the document forms part of the "prior
1st sentence art" in relation to his application and any further investigation does
not produce evidence sufficient to remove that doubt the examiner
should not pursue the matter further. The only other problem likely
to arise for the examiner is where:

(i) a document reproduces an oral description (e.g. a public

lecture) or gives an account of a prior use (e.g. display at a
R.204 (a), public exhibition); and
2nd sentence (ii) only the oral description or lecture was publicly available
before the "date of filing" of the European application, the
document itself being published on or after this date.

In such cases, the examiner should start with the assumption that
the document gives a true account of the earlier lecture, display or
other event and should therefore regard the earlier event as
forming part of the "prior art". If, however, the applicant gives sound
reasons for contesting the truth of the account given in the
document then again the examiner should not pursue the matter
further.

5.3 It should be noted that the relevant date for establishing

whether a piece of prior art belongs to the state of the art is the
date of filing, or where a priority date has been validly claimed, the
priority date (Sec.24). If a priority date has not been validly claimed
(subject-matter claimed not disclosed in priority document), the
filing date will become the relevant date for this purpose. For
details, see V.

128
It should be remembered that different claims, or different
alternatives claimed in one claim, may have different relevant
dates, depending on the validity of the priority for the subject-matter
concerned. The question of novelty must be considered against
each claim (or part of a claim where a claim specifies a number of
alternatives) and the prior art in relation to one claim or one part of
a claim may include matter which cannot be cited against another
claim or part of a claim because the latter has an earlier relevant
date.

Of course if all the matter in the prior art was made available to the
public before the date of the earliest priority document, the
examiner need not (and should not) concern himself with the
allocation of priority dates.

5.2 In determining whether other kinds of prior art (which could be

introduced into the proceedings e.g. by a third party under
Sec.47) have been made available to the public, the following
issues will need to be considered, depending on the
circumstances and the type of prior art:

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.
(a) Information is deemed available to the public when it is not
confidential or restricted to the use by a selective group; and
(b) Prior use and oral disclosure, whether within or outside the
Philippines, must be proven with substantial evidence.
5.4a Prior art made available to the public by use or in any other
way Information is deemed available to the public when it is not
confidential or restricted to the use by a selective group

5.4b. Prior use and oral disclosure, whether within or outside the
Philippines, must be proven with substantial evidence.

Types of use and instances of prior art made available in any other
way:

Use may be constituted by producing, offering, marketing or

otherwise exploiting a product, or by offering or marketing a
process or its application or by applying the process. Marketing
may be affected, for example, by sale or exchange. The prior art
may also be made available to the public in other ways, as for
example by demonstrating an object or process in specialist
training courses or on television. Availability to the public in any

129
 other way also includes all possibilities which technological
progress may subsequently offer of making available the aspect of
the prior art concerned.

Matters to be determined as regards use:

When dealing with an allegation that an object or process has been

used in such a way that it is comprised in the prior art, the following
details will need to be checked:

Is the alleged use relevant at all?

R.204 (a), The date on which the alleged use occurred, i.e. whether there was
2nd sentence any instance of use before the relevant date (prior use).

What has been used, in order to determine the degree of similarity

between the object used and the subject-matter claimed.

All the circumstances relating to the use, in order to determine

whether and to what extent it was made available to the public, as
for example the place of use and the form of use. These factors are
important in that, for example, the details of a demonstration of a
manufacturing process in a factory or of the delivery and sale of a
product may well provide information as regards the possibility of
the subject-matter having become available to the public.

5.4c Ways in which subject-matter may be made available

General principles

Subject-matter should be regarded as made available to the public

by use or in any other way if, at the relevant date, it was possible
for members of the public to gain knowledge of the subject-matter
and there was no bar of confidentiality restricting the use or
dissemination of such knowledge (see also IV, 5.2 with reference to
written descriptions). This may, for example, arise if an object is
unconditionally sold to a member of the public, since the buyer
thereby acquires unlimited possession of any knowledge which
may be obtained from the object. Even where in such cases the
specific features of the object may not be ascertained from an
external examination, but only by further analysis, those features
may nevertheless to be considered as having been made available
to the public.

If, on the other hand, an object could be seen in a given place (a

factory, for example) to which members of the public not bound to

130
secrecy, including persons with sufficient technical knowledge to
ascertain the specific features of the object, had access, all
knowledge which an expert was able to gain from a purely external
examination is to be regarded as having been made available to
the public. In such cases, however, all concealed features which
could be ascertained only by dismantling or destroying the object
will not be deemed to have been made available to the public
Agreement on secrecy

The basic principle to be adopted is that subject-matter has not

been made available to the public by use or in any other way if
there is an express or tacit agreement on secrecy which has not
been broken (concerning the particular case of a non-prejudicial
disclosure arising from an evident abuse in relation to the applicant,
see IV, 8 below), or if the circumstances of the case are such that
such secrecy derives from a relationship of good faith or trust.
Good faith or trust are factors which may occur in contractual or
commercial relationships.

Use on non-public property

As a general rule, use on non-public property, for example in

factories and barracks, is not considered as use made available to
the public, because company employees and soldiers are usually
bound to secrecy, save in cases where the objects or processes
used are exhibited, explained or shown to the public in such places,
or where specialists not bound to secrecy are able to recognize
their essential features from the outside. Clearly the above-
mentioned "non-public property" does not refer to the premises of a
third party to whom the object in question was unconditionally sold
or the place where the public could see the object in question or
ascertain features of it.

Example of the accessibility of objects used

A press for producing light building (hard fiber) boards was installed
in a factory shed. Although the door bore the notice "Unauthorized
persons not admitted", customers (in particular dealers in building
materials and clients who were interested in purchasing light
building boards), were given the opportunity of seeing the press
although no form of demonstration or explanation was given. An
obligation to secrecy was not imposed as, according to witnesses,
the company did not consider such visitors as a possible source of
competition. These visitors were not genuine specialists, i.e. they
did not manufacture such boards or presses, but were not entirely
laymen either. In view of the simple construction of the press, the

131
essential features of the invention concerned were bound to be
evident to anyone observing it. There was therefore a possibility
that these customers, and in particular the dealers in building
materials, would recognize these essential features of the press
and, as they were not bound to secrecy, they would be free to
communicate this information to others.
Example of the inaccessibility of a process

The subject of the patent concerns a process for the manufacture

of a product. As proof that this process had been made available to
the public by use, a similar already known product was asserted to
have been produced by the process claimed. However, it could not
be clearly ascertained, even after an exhaustive examination, by
which process it had been produced.

5.4d Prior art made available by means of oral description

Cases of oral description

The prior art is made available to the public by oral description

when facts are unconditionally brought to the knowledge of
members of the public in the course of a conversation, a lecture, a
conference, or by means of radio, television or sound reproduction
equipment (tapes and records).

Non-prejudicial oral description

The prior art will not be affected by oral descriptions under the
circumstances referred to in Sec.25 and in IV, 8 here below.

Matters to be determined in cases of oral description

Once again, in such cases the following details will have to be

determined:
When the oral description took place, what was described orally,
whether the oral description was made available to the public ; this
will also depend on the type of oral description (conversation,
lecture) and on the place at which the description was given (public
meeting, factory hall.

5.4e Prior art made available to the public in writing or by any

other means

For this prior art, the details such as those referred to above might
have to be determined, if they are not clear from the written or
otherwise made available disclosure itself .

132
5.5 A strict identity test is required to be applied in assessing
novelty. A single prior art reference must disclose each and every
element of a claimed invention in order to destroy novelty.
Equivalents are considered only in assessing inventive step.

6. Conflict with other Philippine applications

6.1 The prior art in addition comprises the whole content of other
applications for a patent, utility model or industrial design published
under Republic Act NO. 8293 (Sec.44 for patents), filed or effective
in the Philippines, with a filing date or a validly claimed priority date
that is earlier than the filing or priority date of the application under
examination, even if the earlier patent, utility model or industrial
design publication is published on or after the date of filing or the
priority date of the application being examined. This does not apply
when the applicant or the inventor identified in both applications is
one and the same. Concerning this case, see however IV, 6.4 here
below.

Hence, 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 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.

Whether a piece of prior art has to be taken into consideration or

not may depend on whether the priority dates of the application
under examination and of the earlier application have been validly
claimed (see Chapter V).

According to R.206 (b) such earlier applications are part of the prior
art only when considering novelty and not when considering
inventive step.

By the whole content of a Philippines application is meant the

whole disclosure, i.e. the description, drawings and claims,
including:

(i) any matter explicitly disclaimed (with the exception of

disclaimers for unworkable embodiments),

(ii) any matter for which an allowable reference (see II, 4.18,

133
 penultimate paragraph) to other documents is made or

(iii) prior art insofar as explicitly described.

However, the "content" does not include any priority document (the
purpose of such document being merely to determine to what
extent the priority date is valid for the disclosure of the Philippines
application (see V, 1.2)) nor, in view of Sec.37, last sentence, the
abstract.

6.1a Whether a published Philippine application can be a

conflicting application under Sec.24.2 is determined firstly by its
filing date and the date of its publication, which have to be before,
respectively on or after the filing date of the application under
examination. If such an application validly claims priority (see first
proviso in Sec.24.2), the priority date replaces the filing date for
that subject-matter in the application which corresponds to the
priority application. If a priority claim was abandoned or otherwise
lost with effect from a date prior to the publication, the filing date
Sec. 24.2 and not the priority date of such an application is relevant,
irrespective of whether or not the priority claim might have
conferred a valid priority right.

Further it is required that the conflicting application was still

pending at its publication date. If the application has been
withdrawn or otherwise lost before the date of publication, but
published because the Office could not stop its publication, the
publication has no effect under Sec.24.2 pursuant to Sec.25(b)(a).

6.2 Earlier application(s) not yet published

In cases where the application under examination is ready for grant
R. 204 (b) before the search for conflicting applications could be finalized (e.g.
2nd sentence because some of the potentially interfering applications have not
yet been published), see C-VI, 8.4.

6.3 The second proviso in Sec.24.2 specifies that an application

otherwise meeting the definitions given in Sec.24.2 does not belong
to the prior art to be taken into consideration if in this application
and in the application under examination one and the same.
Further, the IP-code does not deal explicitly with the case of co-
pending Philippines applications of the same effective date.

However, it is an accepted principle in most patent systems that

R. 206 (b) two patents shall not be granted to the same applicant for one

134
invention. This principle is e.g. reflected in R.915. In case an
applicant files two (2) or more applications covering the same
subject matter, only the application with the prior filing date or
priority date shall be considered for examination while all other
applications shall be deemed forfeited. However, it is permissible to
allow an applicant to proceed with two applications having the
same description where the claims are quite distinct in scope and
directed to different inventions.

However, in the rare case in which there are two or more

Philippines applications of the type referred to here above, from the
same applicant, and the claims of those applications relate to the
same invention (the claims conflicting in the manner explained in
VI, 9.6), the applicant should be told that he must either amend one
or more of the applications in such a manner that they no longer
claim the same invention, or choose which one of those
applications he wishes to proceed to grant.

6.4 Concerning applications of the same effective date and

received from two different applicants, see R.304, 2nd paragraph

7. Test for Novelty

7.1 It should be noted that in considering novelty (as distinct from

inventive step), it is not permissible to combine separate items of
prior art together (see IV, 9.7). However, if a document (the
"primary" document) refers explicitly to another document as
providing more detailed information on certain features, the
teaching of the latter may be regarded as incorporated into the
document containing the reference, if the document referred to was
available to the public on the publication date of the document
containing the reference. For conflicting applications, see III, 6.1
here above and II, 4.18.

The same principle applies to any matter explicitly disclaimed

(except disclaimers which exclude unworkable embodiments) and
to prior art insofar as explicitly described. It is further permissible to
use a dictionary or similar document of reference in order to
interpret a special term used in the primary document. The effective
date for novelty purposes (see IV, 7.3 here below) is always the
date of the primary document.

7.2 A document takes away the novelty of any claimed subject-

matter derivable directly and unambiguously from that document
including any features implicit to a person skilled in the art in what

135
 is expressly mentioned in the document, e.g. a disclosure of the
Sec. 24.2 use of rubber in circumstances where clearly its elastic properties
R. 204 (b), are used even if this is not explicitly stated takes away the novelty
2nd sentence of the use of an elastic material. The limitation to subject-matter
"derivable directly and unambiguously" from the document is
important.

Thus, when considering novelty, it is not correct to interpret the

teaching of a document as embracing well-known equivalents
R. 915 which are not disclosed in the documents; this is a matter of
obviousness.

7.3 In determining novelty a prior document should be read as it

would have been read by a person skilled in the art on the effective
date of the document. By "effective" date is meant the publication
date in the case of a previously published document and the date
of filing (or priority date, where appropriate) in the case of a
document according to Sec.24.2.

However, it should be noted that a chemical compound, the name

or formula of which was mentioned in a document, is not
considered as known unless the information in the document,
together, where appropriate, with knowledge generally available on
the effective date of the document, enable it to be prepared and
separated or, for instance in the case of a product of nature, only to
be separated.

7.4 In considering novelty it should be borne in mind that a generic

disclosure does not usually take away the novelty of any specific
R. 304, example falling within the terms of that disclosure, but that a
2nd paragraph specific disclosure does take away the novelty of a generic claim
embracing that disclosure, e.g. a disclosure of copper takes away
the novelty of metal as a generic concept, but not the novelty of any
metal other than copper, and one of rivets takes away the novelty
of fastening means as a generic concept, but not the novelty of any
fastening other than rivets.

7.5 In the case of a prior document, the lack of novelty may be

apparent from what is explicitly stated in the document itself.
Alternatively, it may be implicit in the sense that, in carrying out the
teaching of the prior document, the skilled person would inevitably
arrive at a result falling within the terms of the claim. An objection of
lack of novelty of this kind should be raised by the examiner only
where there can be no reasonable doubt as to the practical effect of
the prior teaching (for a second non-medical use, however, see IV,
7.6 here below). Situations of this kind may also occur when the

136
claims define the invention, or a feature thereof, by parameters
(see III, 4.7a). It may happen that in the relevant prior art a different
parameter, or no parameter at all, is mentioned. If the known and
the claimed products are identical in all other respects (which is to
be expected if, for example, the starting products and the
manufacturing processes are identical), then in the first place an
objection of lack of novelty arises. If the applicant is able to show,
e.g. by appropriate comparison tests, that differences do exist with
respect to the parameters, it is questionable whether the
application discloses all the features essential to manufacture
products having the parameters specified in the claims (Sec.35.1).

7.6 In determining novelty of the subject-matter of claims the

examiner should have regard to the guidance given in III, 4.4 to
4.13. He should remember that, particularly for claims directed to a
physical entity, non-distinctive characteristics of a particular
intended use, should be disregarded (see III, 4.8 to 4.9). For
example, a claim to a substance X for use as a catalyst would not
be considered to be novel over the same substance known as a
dye, unless the use referred to implies a particular form of the
substance (e.g. the presence of certain additives) which
distinguishes it from the known form of the substance. That is to
say, characteristics not explicitly stated, but implied by the
particular use, should be taken into account (see the example of a
"mold for molten steel" in III, 4.8).

It should further be borne in mind that a claim to the use of a known

compound for a particular purpose (second non-medical use),
which is based on a technical effect, should be interpreted as
including that technical effect as a functional technical feature, and
is accordingly not open to objection under Sec.23 and 24.1,
provided that such technical feature has not previously been made
available to the public. For claims to a second or further medical
use, see IV, 4.2, here above.

8. Non-prejudicial disclosures

8.1 There are three specified instances in which a prior disclosure

of the information contained in the application during the twelve
months preceding the filing date or the priority date of the
application shall not prejudice the applicant on the ground of lack of
novelty, viz. if such disclosure was made by

(a) The inventor;

(b) A foreign patent office, the Bureau or the Office, and the

137
 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 Sec.25.1, “inventor” also means any person
who, at the filing date of application, had the right to the patent
according to Sec.28.

(i) an evident abuse in relation to the applicant or his legal

predecessor - e.g. the invention was derived from the applicant and
disclosed against his wish; or

8.2 An essential condition in all instances is that the disclosure in

point must have taken place not earlier than twelve months
preceding the filing date or the priority date of the application.

8.3 Regarding the cases addressed in Sec.25.1(a) and (c) , the

disclosure might be made in a published document or at a
conference or in any other way.

8.4 Regarding the cases addressed in Sec.25.1(b), they might

occur

- whenever a patent office publishes an application by mistake

(e.g. after the application has been explicitly been
withdrawn, or publication before the date foreseen by the
law), or

- for example, when a person B who has been told of A's

invention in confidence, applies for a patent for this
invention. If so, the disclosure resulting from the publication
of B's application will not prejudice A's rights provided that A
has already made an application, or applies within six
months of such publication. In any event, having regard to
Sec.67, B may not be entitled to proceed with his application
(see VI, 9.7 to 9.11).

9. Inventive step

9.1 “An invention involves an inventive step if, having regard to the
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

138
 invention”. Novelty and inventive step are different criteria. Novelty
exists if there is any difference between the claimed invention and
Sec. 25.1 the known art. The question - Is there inventive step? - only arises
if there is novelty.

9.2 The "prior art" for the purposes of considering inventive step is
as defined in Sec.24.1 (see IV, 5 here above); it does not include
later published Philippine patent, utility model or industrial design
Sec. 25.1 (a) applications as referred to in Sec.24.2.

Sec. 25.1 (b) 9.3 Thus the question to consider, in relation to any claim defining
the invention, is whether at the priority date of that claim, having
regard to the art known at the time, it would have been obvious to
the person skilled in the art to arrive at something falling within the
terms of the claim. If so, the claim is bad for lack of inventive step.
The term "obvious" means that which does not go beyond the
normal progress of technology but merely follows plainly or logically
Sec. 25.1 (c) from the prior art, i.e. something which does not involve the
exercise of any skill or ability beyond that to be expected of the
Sec. 25.2 person skilled in the art. In considering inventive step, as distinct
Sec. 28 from novelty (see IV, 7.3 here above), it is fair to construe any
published document in the light of subsequent knowledge and to
have regard to all the knowledge generally available to the person
skilled in the art at the filing or priority date of the claim.

9.3a The invention claimed must normally be considered as a

whole. Thus it is not correct as a general rule, in the case of a
combination claim, to argue that the separate features of the
combination taken by themselves are known or obvious and that
"therefore" the whole subject-matter claimed is obvious. The only
exception to this rule is where there is no functional relationship
between the features of the combination i.e. where the claim is
merely for a juxtaposition of features and not a true combination
(see the example at 2.1 of the Annex 1 to this Chapter).

9.4 While the claim should in each case be directed to technical

features (and not, for example, merely to an idea), in order to
assess whether an inventive step is present it is important for the
examiner to bear in mind that there are various ways in which the
skilled person may arrive at an invention. An invention may, for
example, be based on the following:

(i) The formulation of an idea or of a problem to be solved

(the solution being obvious once the problem is
clearly stated).

139
 Example: the problem of indicating to the driver of a motor vehicle
at night the line of the road ahead by using the light from the
vehicle itself. As soon as the problem is stated in this form the
Sec. 67 technical solution, viz. the provision of reflective markings along the
road surface, appears simple and obvious.

(ii) The devising of a solution to a known problem.

Sec. 26 Example: the problem of permanently marking farm animals such

as cows without causing pain to the animals or damage to the hide
has existed since farming began. The solution ("freeze-branding")
consists in applying the discovery that the hide can be permanently
de-pigmented by freezing.

(iii) The arrival at an insight into the cause of an observed

phenomenon (the practical use of this phenomenon then
Sec. 24 being obvious).
R. 204 (a) (b)
R. 206 (b) Example: the agreeable flavor of butter is found to be caused by
minute quantities of a particular compound. As soon as this insight
has been arrived at, the technical application comprising adding
R. 204 (a), this compound to margarine is immediately obvious.
2nd sentence
Many inventions are of course based on a combination of the
above possibilities - e.g. the arrival at an insight and the technical
application of that insight may both involve the use of the inventive
faculty.

9.5 In identifying the contribution any particular invention makes

to the art in order to determine whether there is an inventive step,
account should be taken first of what the applicant himself
acknowledges in his description and claims to be known. Any such
acknowledgement of known art should be regarded by the
examiner as being correct unless the applicant states he has made
a mistake. However, the further prior art contained in the search
report may put the invention in an entirely different perspective from
that apparent from reading the applicant's specification by itself
(and indeed this cited prior art may cause the applicant voluntarily
to amend his claims to redefine his invention before his application
comes up for examination). In order to reach a final conclusion as
to whether the subject-matter of any claim includes an inventive
step it is necessary to determine the difference between the
subject-matter of that claim and the prior art and, in considering this
matter, the examiner should not proceed solely from the point of
view suggested by the form of claim (prior art plus characterizing
portion - see III, 2).

140
Considering the definition of an invention as given in Sec.21, when
assessing inventive step the examiner will normally apply the
following “problem and solution approach”:

In the problem and solution approach there are three main stages:

1. determining the closest prior art,

2. establishing the technical problem to be solved, and

3. considering whether or not the claimed invention, starting

from the closest prior art and the technical problem,
would have been obvious to the skilled person.
In the first stage, the closest prior art must be determined. The
closest prior art is that combination of features derivable from one
single reference that provides the best basis for considering the
question of obviousness. The closest prior art may be, for example:

(a) a known combination in the technical field concerned that

discloses technical effects, purpose or intended use, most
similar to the claimed invention or

(b) that combination which has the greatest number of technical

features in common with the invention and capable of
performing the function of the invention.

In the second stage, one establishes in an objective way the

technical problem to be solved. To do this, one studies the
application (or the patent), the closest prior art and the difference in
terms of technical features (either structural or functional) between
the claimed invention and the closest prior art and then formulates
the technical problem. In this context the technical problem means
the aim and task of modifying or adapting the closest prior art to
provide the technical effects that the invention provides over the
closest prior art.

The technical problem derived in this way may not be what the
application presents as "the problem". The latter may require to be
reformulated, since the objective technical problem is based on
objectively established facts, in particular appearing in the prior art
revealed in the course of the proceedings, which may be different
from the prior art of which the applicant was actually aware at the
time the application was filed.

The extent to which such reformulation of the technical problem is

possible has to be assessed on the merits of each particular case.

141
 For instance, any effect provided by the invention may be used as
a basis for the reformulation of the technical problem, as long as
said effect is derivable from the application as filed. It may also be
possible to rely on new effects submitted subsequently during the
proceedings by the applicant, provided that the skilled person
would recognize these effects as implied by or related to the
technical problem initially suggested.

The expression “technical problem” should be interpreted broadly; it

does not necessarily imply that the solution is a technical
improvement over the prior art. Thus the problem could be simply
Sec. 21, to seek an alternative to a known device or process providing the
1st sentence same or similar effects or which is more cost-effective.

Sometimes the technical features of a claim provide more than one

technical effect, so one can speak of the technical problem as
having more than one part or aspect, each corresponding to one of
the technical effects. In such cases, each part or aspect generally
has to be considered in turn.

In the third stage, the question to be answered is whether there is

any teaching in the prior art as a whole that would (not simply
could, but would) prompt the skilled person, faced with the
technical problem, to modify or adapt the closest prior art while
taking account of that teaching, thus arriving at something falling
within the terms of the claims, and thus achieving what the
invention achieves (see IV, 9.3 here above).

9.5a If an independent claim is new and non-obvious, there is no

need to investigate the obviousness or non-obviousness of any
claims dependent thereon, except in situations where the priority
claim for the subject-matter of the dependent claim has to be
checked because of intermediate documents (see e.g. V, 2.6.3).
Similarly, if a claim to a product is new and non-obvious there is no
need to investigate the obviousness of any claims for a process
which inevitably results in the manufacture of that product or any
claims for a use of that product. In particular, analogy processes
are patentable insofar as they provide a novel and inventive
product.

9.6 “Persons having ordinary skills in the art” should be presumed

to be an ordinary practitioner aware of what was common general
knowledge in the art at the relevant date. He should also be
presumed to have had access to everything belonging to the "prior
art", in particular the documents cited in the search report, and to
have had at his disposal the normal means and capacity for routine

142
work and experimentation.

If the problem prompts the person skilled in the art to seek its
solution in another technical field, the specialist in that field is the
person qualified to solve the problem. The assessment of whether
the solution involves an inventive step should therefore be based
on that specialist's knowledge and ability. There may be instances
where it is more appropriate to think in terms of a group of persons,
e.g. a research or production team, than a single person. This may
apply e.g. in certain advanced technologies such as computers or
telephone systems and in highly specialized processes such as the
commercial production of integrated circuits or of complex chemical
substances.

9.7 In considering whether there is inventive step (as distinct from

novelty (see IV, 7 here above), it is permissible to combine together
the disclosures of two or more documents or parts of documents,
different parts of the same document or other pieces of prior art,
but only where such combination would have been obvious to the
person skilled in the art at the filing or priority date of the claim
under examination. In determining whether it would be obvious to
combine two or more distinct disclosures, the examiner should
have regard to the following:

(i) Whether the content of the documents is such as to make it

likely or unlikely that the person skilled in the art, when
concerned with the problem solved by the invention, would
combine them – for example, if two disclosures considered
as a whole could not in practice be readily combined
because of inherent incompatibility in disclosed features
essential to the invention, the combining of these disclosures
should not normally be regarded as obvious.

(ii) Whether the documents come from similar, neighboring or

remote technical fields.

(iii) The combining of two or more parts of the same document

would be obvious if there is a reasonable basis for the
skilled person to associate these parts with one another. It
would normally be obvious to combine with a prior art
document a well-known textbook or standard dictionary; this
is only a special case of the general proposition that it is
obvious to combine the teaching of one or more documents
with the common general knowledge in the art. It would,
generally speaking, also be obvious to combine two
documents one of which contains a clear and unmistakable

143
 reference to the other (for references which are considered
an integral part of the disclosure, see 6.1 and 7.1 here
above. In determining whether it is permissible to combine a
document with an item of prior art made public in some
R. 207 other way, e.g. by use, similar considerations apply.

9.8 Annex 1 to this chapter ("Guidance for the assessment of

inventive step"), as well as Chapter VII (parts VII, 1 and VII, 5.4)
give examples of circumstances where an invention should be
regarded as obvious or where it involves an inventive step. It is to
be stressed that these examples are only guides and that the
applicable principle in each case is "was it obvious to a person
skilled in the art?" Examiners should avoid attempts to fit a
particular case into one of these examples where the latter is not
clearly applicable. Also, the list is not exhaustive.

9.9 It should be remembered that an invention which at first sight

appears obvious might in fact involve an inventive step. Once a
new idea has been formulated it can often be shown theoretically
how it might be arrived at, starting from something known, by a
series of apparently easy steps. The examiner should be wary of
“ex post facto” analysis of this kind. He should always bear in mind
that the documents produced in the search have, of necessity,
been obtained with foreknowledge of what matter constitutes the
alleged invention. In all cases he should attempt to visualize the
overall prior art confronting the skilled man before the applicant's
contribution and he should seek to make a "real life" assessment of
this and other relevant factors. He should take into account all that
is known concerning the background of the invention and give fair
weight to relevant arguments or evidence submitted by the
applicant. If, for example, an invention is shown to be of
considerable technical value, and particularly if it provides a
technical advantage which is new and surprising, and this can
convincingly be related to one or more of the features included in
the claim defining the invention, the examiner should be hesitant in
pursuing an objection that such a claim lacks inventive step. The
same applies where the invention solves a technical problem which
workers in the art have been attempting to solve for a long time, or
otherwise fulfils a long-felt need. Commercial success alone is not
to be regarded as indicative of inventive step, but evidence of
immediate commercial success when coupled with evidence of a
long-felt want is of relevance provided the examiner is satisfied that
the success derives from the technical features of the invention and
not from other influences (e.g. selling techniques or advertising).

9.10 The relevant arguments and evidence to be considered by the

144
examiner for assessing inventive step may be taken either from the
originally filed patent application, or be submitted by the applicant
during the subsequent substantive examination proceedings (see
IV-9.5 here above and VI, 5.7, 5.7a, 5.7c and 5.7d.

Care must be taken, however, whenever new effects in support of

inventive step are referred to. Such new effects may only be taken
into account if they are implied by or at least related to the technical
problem initially suggested in the originally filed application.
Otherwise they have to be considered as corresponding to another
invention that was not originally disclosed.

Example of such a new effect:

The invention as filed relates to a pharmaceutical composition

having a specific activity. At first sight, having regard to the relevant
prior art, it would appear that there is a lack of inventive step.
Subsequently the applicant submits new evidence which shows
that the claimed composition exhibits an unexpected advantage in
terms of low toxicity. In this case it is allowable to reformulate the
technical problem by including the aspect of toxicity, since
pharmaceutical activity and toxicity are related in the sense that the
skilled person would always contemplate the two aspects together.

The reformulation of the technical problem may or may not give rise
to an amendment, and subsequent insertion, of the statement of
the technical problem in the description. Any such amendment is
only allowable if it satisfies the conditions listed in VI, 5.7c. In the
above example of a pharmaceutical composition, neither the
reformulated problem nor the information on toxicity could be
introduced into the description without infringing the proviso of
Sec.49.

ANNEX 1 to CHAPTER IV, 9

Guidance for the assessment of inventive step

1. Application of known measures?

1.1 Inventions involving the application of known measures

in an obvious way and in respect of which an inventive
step is therefore to be ruled out:

(i) The teaching of a prior document is incomplete and at least

one of the possible ways of "filling the gap" which would

145
 naturally or readily occur to the skilled person results in
the invention.

Example: The invention relates to a building structure made

from aluminum. A prior document discloses the same
structure and says that it is of light-weight material but fails to
mention the use of aluminum.

(ii) The invention differs from the known art merely in the use of
well-known equivalents (mechanical, electrical or
chemical).

Example: The invention relates to a pump which differs from

a known pump solely in that its motive power is provided by a
hydraulic motor instead of an electric motor.

(iii) The invention consists merely in a new use of a well-known

material employing the known properties of that material.

Example: Washing composition containing as detergent a

known compound having the known property of lowering the
surface tension of water, this property being known to be an
essential one for detergents.

(iv) The invention consists in the substitution in a known device

of a recently developed material whose properties make
it plainly suitable for that use ("analogous substitution").

Example: An electric cable comprises a polyethylene sheath

bonded to a metallic shield by an adhesive. The invention lies
in the use of a particularly newly developed adhesive known
to be suitable for polymer-metal bonding.

(v) The invention consists merely in the use of a known

technique in a closely analogous situation ("analogous
use").

Example: The invention resides in the application of a pulse

control technique to the electric motor driving the auxiliary
mechanisms of an industrial truck, such as a fork-lift truck,
the use of this technique to control the electric propulsion
motor of the truck being already known.

1.2 Inventions involving the application of known measures

in a non-obvious way and in respect of which an
inventive step is therefore to be recognized:

146
 (i) A known working method or means when used for a different
purpose involves a new, surprising effect.

Example: It is known that high frequency power can be used

in inductive butt-welding. It should therefore be obvious that
high-frequency power could also be used in conductive butt
welding with similar effect; an inventive step would exist in this
case, however, if high-frequency power were used for the
continuous conductive butt welding of coiled strip but without
removing scale (such scale removal being on the face of it
necessary in order to avoid arcing between the welding
contact and the strip). The unexpected additional effect is that
scale removal is found to be unnecessary because at high
frequency the current is supplied in a predominantly
capacitive manner via the scale which forms a dielectric.

(ii) A new use of a known device or material involves

overcoming technical difficulties not resolvable by routine
techniques.

Example: The invention relates to a device for supporting and

controlling the rise and fall of gas holders, enabling the
previously employed external guiding framework to be
dispensed with. A similar device was known for supporting
floating docks or pontoons but practical difficulties not
encountered in the known applications needed to be
overcome in applying the device to a gas holder.

2. Obvious combination of features?

2.1 Obvious and consequently non-inventive combination of

features:

The invention consists merely in the juxtaposition or

association of known devices or processes functioning in their
normal way and not producing any non-obvious working inter-
relationship.

Example: Machine for producing sausages consists of a

known mincing machine and a known filling machine disposed
side by side.

2.2 Not obvious and consequently inventive combination of

features:

147
 The combined features mutually support each other in their
effects to such an extent that a new technical result is
achieved. It is irrelevant whether each individual feature is
fully or partly known by itself.

Example: A mixture of medicines consists of a painkiller

(analgesic) and a tranquilizer (sedative). It was found that
through the addition of the tranquilizer, which intrinsically
appeared to have no pain-killing effect, the analgesic effect of
the pain-killer was intensified in a way which could not have
been predicted from the known properties of the active
substances.

3. Obvious selection?

3.1 Obvious and consequently non-inventive selection

among a number of known possibilities:

(i) The invention consists merely in choosing from a number of

equally likely alternatives.

Example: The invention relates to a known chemical process

in which it is known to supply heat electrically to the reaction
mixture. There are a number of well-known alternative ways
of so supplying the heat, and the invention resides merely in
the choice of one alternative.

(ii) The invention resides in the choice of particular dimensions,

temperature ranges or other parameters from a limited
range of possibilities, and it is clear that these
parameters could be arrived at by routine trial and error
or by the application of normal design procedures.

Example: The invention relates to a process for carrying out a

known reaction and is characterized by a specified rate of flow
of an inert gas. The prescribed rates are merely those which
would necessarily be arrived at by the skilled practitioner.

(iii) The invention can be arrived at merely by a simple

extrapolation in a straightforward way from the known art.

Example: The invention is characterized by the use of a

specified minimum content of a substance X in a preparation
Y in order to improve its thermal stability, and this
characterizing feature can be derived merely by extrapolation
on a straight line graph, obtainable from the known art,

148
 relating thermal stability to the content of substance X.

(iv) The invention consists merely in selecting particular

chemical compounds or compositions (including alloys)
from a broad field.

Example: The prior art includes disclosure of a chemical

compound characterized by a specified structure including a
substituent group designated "R". This substituent "R" is
defined so as to embrace entire ranges of broadly-defined
radical groups such as all alkyl or aryl radicals either
unsubstituted or substituted by halogen and/or hydroxy,
although for practical reasons only a very small number of
specific examples are given. The invention consists in the
selection of a particular radical or particular group of radicals
from amongst those referred to, as the substituent "R" (the
selected radical or group of radicals not being specifically
disclosed in the prior art document since the question would
then be one of lack of novelty rather than obviousness). The
resulting compounds

a. are not described as having, nor shown to possess,

any advantageous properties not possessed by the
prior art examples; or

b. are described as possessing advantageous

properties compared with the compounds specifically
referred to in the prior art but these properties are
ones which the person skilled in the art would expect
such compounds to possess, so that he is likely to be
led to make this selection.

3.2 Not obvious and consequently inventive selection among

a number of known possibilities:

(i) The invention involves special selection in a process of

particular operating conditions (e.g. temperature and
pressure) within a known range, such selection
producing unexpected effects in the operation of the
process or the properties of the resulting product.

Example: In a process where substance A and substance B

are transformed at high temperature into substance C, it was
known that there is in general a constantly increased yield of
substance C as the temperature increases in the range
between 50 and 130 C. It is now found that in the temperature

149
 range from 63 to 65 C, which previously had not been
explored, the yield of substance C was considerably higher
than expected.

(ii) The invention consists in selecting particular chemical

compounds or compositions (including alloys) from a broad
field, such compounds or compositions having unexpected
advantages.
Example: In the example of a substituted chemical compound
given at (iv) under 3.2 above, the invention again resides in
the selection of the substituent radical "R" from the total field
of possibilities defined in the prior disclosure. In this case,
however, not only does the selection embrace a particular
area of the possible field, and result in compounds that can be
shown to possess advantageous properties (see IV, 9.10 and
VI, 5.7a) but there are no indications which would lead the
person skilled in the art to this particular selection rather than
any other in order to achieve the advantageous properties.

4. Overcoming a technical prejudice?

As a general rule, there is an inventive step if the prior art

leads the person skilled in the art away from the procedure
proposed by the invention. This applies in particular when the
skilled person would not even consider carrying out
experiments to determine whether these were alternatives to
the known way of overcoming a real or imagined technical
obstacle.

Example: Drinks containing carbon dioxide are, after being

sterilized, bottled while hot in sterilized bottles. The general
opinion is that immediately after withdrawal of the bottle from
the filling device the bottled drink must be automatically
shielded from the outside air so as to prevent the bottled drink
from spurting out. A process involving the same steps but in
which no precautions are taken to shield the drink from the
outside air (because none are in fact necessary) would
therefore be inventive.

5. Further examples
Further examples concerning the assessment of inventive
step can be found in Chapter VII, in particular parts VII, 1 (The
problem and solution approach) and VII, 5.4 (Chemical
problems, inventive step).

150
 ANNEX 2 to CHAPTER IV, 9

(CONCERNING INVENTIVE STEP)

1. The Problem and Solution Approach

The biggest danger in assessing inventive step is the use of

subjectivity and hindsight on the part of an examiner. The
examiner doing the search and the substantive examiner, after
reading a patent application, know the solution to a technical
problem and, as everyone knows, once you know the answer,
the problem doesn't seem that difficult after all. It is important,
therefore, not to use hindsight (or ex-post facto analysis) in
assessing an invention. It is equally important not to use criteria
such as "brilliant", "simple", "revolutionary", etc. in evaluating an
invention, since these are subjective criteria. These dangers
can be avoided by the use of the problem and solution
approach, whose use allows an objective analysis of an
invention.

In the problem and solution approach we first take a step

backwards from the invention to the closest prior art and then,
on the basis of a comparison of this prior art with the invention, a
so-called "objective problem" is formulated. Finally, the prior
art is searched for indications as to whether a solution to this
problem was available and would have been used.

This approach avoids the risk of hindsight. Moreover, it gives

results that are consistent and transparent since it relies more
on objective criteria than subjective judgement.

The basis for this approach is that every invention must be

based on a technical problem and a technical solution. Before
the method is explained some concepts are clarified.

Technical features: Structural (concrete) or functional

(performance) elements necessary to produce the technical
effects of the invention.

Examples: Structural elements could be: a transistor, a chemical

compound, a vessel for liquids, the structure of a molecule. etc.
Functional elements could be: a step in a procedure, elements
identified as "amplifying means", "a solvent", "heat conducting
means", etc.

Technical effects: Set of positive or negative results produced

151
by technical features of an invention. Technical effects usually
relate to the purpose or intended use of the invention.

Examples: Faster/slower performance, lighter, stronger, more

acidic, more efficient, etc.

Technical problem: The task or aim of modifying or adapting

the closest prior art to provide the technical effect that the
invention provides.

The invention: By this we mean the combination of all the

technical features as they are represented in a claim and their
associated technical effects.

Prior art or State of the art: This means all the technical
information that has already been made available to the public
before the applicant applied for the patent.

Differences: By this we mean those technical features of a

claim which are not found in a particular item of prior art.

Closest prior art: is that known combination of features that

provides the strongest basis for an obviousness objection. In
practice, this will generally be the item (usually a document) in
the technical field concerned, disclosing technical effects,
purpose or intended use, most similar to the invention. It should
be noted that the closest prior art may well be different for
considering the novelty and the inventive step of the same
claim. The reason for this is that for novelty consideration the
document having the most features of a claim (call this
document D1) is most relevant, whereas for inventive step the
technical effects of the features also have to be considered. D1
may not disclose the technical effects of the invention, in which
case another document D2 would be the closest for inventive
step purposes if it disclosed the technical effects.

Examples:

For a process invention, the closest prior art is usually a similar

process.

For a method-of-use invention, the closest prior art is usually a

disclosure of a similar use of the same product, or the same use
of a structurally similar product.

For a product invention, the closest prior art is usually another

152
product having the same intended use or purpose. This product
will normally also have the greatest numbers of technical
features in common with the invention.

For example: Suppose that the invention is concerned with an

improvement to a table. The closest prior art will normally be
another table having a comparable use. Most likely it will be the
table having the greatest number of structural elements in
common with the invention.

In chemical inventions, the purpose or intended use of a product

is often less related to similarities in structure than is the case in
other technical fields. This is because the structurally closest
prior art might not provide similar effects; rather, an alteration of
the chemical structure of a compound might change the possible
use of the product entirely. Therefore, the closest prior art for a
chemical product is usually the item providing effects close to or
the same as the effects provided by the invention.

For example: A compound used as a herbicide, when altered,

might no longer kill plants; rather, it might kill insects instead, so
it could be used as an insecticide. The prior art selected as
being the "closest" would thus be an insecticide. The herbicide,
although structurally the closest, would not be considered as the
closest prior art; in fact, it might not even be considered as
relating to the same technical field at all.

Persons having ordinary skills in the art: is a fictional person

taken to have available all the prior art and to be able to
understand it regardless of which language it is in, and all the
common general knowledge of the art in question, but to have
no inventive ability. In some advanced fields it may be
appropriate to consider what a team of workers would know. For
example, in the field of rockets, a team consisting of ballistic
experts, computer experts, rocket fuel experts, etc. would be
"the skilled person". At the same time the skilled person has no
imagination to be able to do inventive activity (see also 9.9
above).

Common general knowledge: what the normal skilled worker

in that art would know, together with what would be found in
standard textbooks.

By an Indication we mean here anything that would (not simply

could, but would) prompt the skilled person to amend, adapt or
modify a product or procedure, or combine the teaching of two

153
 items of prior art, with the expectation of a desired result. As
noted earlier, the skilled person's general knowledge would
sometimes provide the incentive to do something not described
specifically in a prior art document.

Ex-post-facto analysis or hindsight: Once the solution to a

problem is known the problem does not appear that difficult.
Thus, looking back once the solution is known and creating a
sequence of steps backward towards the prior art is not a
recommended way of examining for inventive step. A proper
way is to start from the prior art and to see which way the skilled
person would go, if at all.

2. The four steps used in the problem and solution

approach

Step 1: Determining the closest prior art

Study the application until you understand the technical features

of the invention and their associated technical effects, and the
overall effect, purpose or intended use of the invention.

Now consider each item of prior art individually.

For each item of prior art, identify the technical features and
technical effects that are common to the invention.

Identify the differences between the invention and each item of

prior art, and any technical effects that the differences achieve.

Decide which item represents the closest prior art.

After this sequence of steps you will have two documents, one
(the application) setting out the invention, and the other the prior
art that most closely resembles the invention. In the next stage of
the procedure, you will compare the invention with the closest
prior art and determine the technical problem in an objective
manner.

If, occasionally, you find it difficult to decide which of two

documents represents the closest prior art, you should carry out
the following procedure for each of these documents.

Step 2: Evaluating the difference between the closest prior

art and

154
 The next step is to determine the difference between the claimed
invention and the closest prior art. The difference will be that
structural or functional feature or features or method steps that
are in the claim but not in the closest prior art, and is called the
distinguishing feature.

Step 3: Formulating the technical problem

Based on this difference, a problem is formulated. This in turn is

based on the technical effect that the distinguishing feature(s)
provides. Usually, the effect of this feature is given in the
application itself, or it may be obvious from its description. For
example, a heat conducting body adjacent an electronic
component has the effect of conducting heat away from the
component. The corresponding problem may be formulated as
"cooling the electronic component".

In the description, the applicant often identifies the problem he

faced when he made the invention or when he drafted the
application. However, the applicant might not have had access to
all the prior art, particularly the closest prior art, or it might not
have been correctly appreciated. So the problem he faced might
have been completely or partly solved already, unknown to him,
and what he presents as the problem he solved might well have
been solved already in the documents found in the search report.
Hence there is the need to evaluate the actual technical problem
solved by the applicant. As a matter of terminology, the problem
originally identified by the applicant has sometimes been called
"the subjective problem". After the analysis and, where
necessary, the reformulation of the problem as set out above,
the technical problem that emerges is sometimes called "the
objective problem".

The correct formulation of the technical problem lies at the heart

of the problem/solution approach. If it is not correctly formulated,
difficulties will arise in attempting to arrive at the correct
evaluation of the inventive step. If the technical problem is
formulated too specifically, it could include elements of the
solution, and the invention might, unjustifiably, appear to be
obvious. If, on the other hand, the technical problem is
formulated too broadly, it could be that you will find a whole
range of alternative solutions in the prior art. This might require
extensive checking of each alternative.

155
Step 4: Is the invention obvious?

Given the objective technical problem and the prior art, the next
step is to determine whether there are any indications in the
prior art that would lead the skilled person to combine prior art
documents to achieve the technical effect that the invention
achieves, or to put it differently, to solve the same problem.

Example i): The statement "this numerical keypad could be used

on any electronic equipment where a series of numbers are to be
entered manually" would be an indication of the possibility of
replacing the traditional telephone dialling ring by that numerical
keypad.

Example ii): Readily recognisable (technical drawbacks) often

indicate to the skilled person that certain technical effects require
an improvement, e.g. "too slow, too heavy, too complicated, not
stable", "inefficient", etc.

Example iii): For commercial reasons or due to technical

drawbacks, the skilled person would, in some cases, be
prompted to seek an alternative way of providing the same
effects as the closest prior art provides.

If there are no indications in the prior art that would lead the
skilled person, faced with the technical problem and the prior art,
to consider combining the solution with the closest prior art to
achieve what the invention achieves, then the invention is not
obvious, because there is nothing that would lead the skilled
person from the closest prior art to the invention.

If there are such indications, the invention does not involve an

inventive step because the skilled person, faced with the
technical problem and the prior art, would consider combining
the solution with the closest prior art and arrive at the
subject-matter of the claim.

Where the claim is for a combination of technical features which

are functionally related to one another (which is usually the
case), the obviousness of the whole combination must be
established. Where however the claim is for a juxtaposition of
functionally independent parts, it is legitimate to apply the
problem-solution approach to each part separately; if each part is
thereby shown to be obvious, the whole claim is obvious.

156
Note that the word "would" has been emphasised above. This is
because it is clear that anything in the world could be combined
with anything else, but it is unfair to the applicant to show that
this is possible. Instead, it is necessary to demonstrate that,
starting from the closest prior art, the skilled person inevitably
would be led to combine it with another prior art, in order to build
up a logical chain of reasoning to show lack of inventive step
without using hindsight.

3. The sub-tests

Once the technical problem has been formulated using the

problem and solution approach, you have to evaluate whether or
not the invention as set out in the claim, is obvious. Deciding that
involves answering the question: "What would a person skilled in
the art do, when faced with that technical problem and having
regard to the state of the art?".

It was also mentioned here above that you start from the closest
prior art and then weigh up the rest of the prior art to determine
whether or not there are any indications that would have led a
skilled person from the closest prior art to the invention. In doing
this factors are used that are referred to as secondary
considerations or sub-tests. Sub-tests provide indicators or
pointers (also called indicia) that help the evaluator to arrive at a
decision.

Despite the usefulness of sub-tests, a technical evaluation of the

invention remains of primary importance, particularly during the
examination procedure. Answers to some sub-tests will seldom
be available at such an early stage of the procedure; the
marketing of products for example is unlikely to have started and
the public response will be unknown.

Generally, it will be the "negative" sub-tests that will be quoted by

the examiner; applicants may reply using "positive" sub-tests
when arguing against the examiner's opinion. The examiner thus
needs to have a thorough knowledge of the sub-tests, as well as
their uses and limitations.

There are positive sub-tests, i.e. those that indicate the presence
of inventive step, and negative sub-tests, which point to lack of
inventive step.

157
3.1 Sub-tests that usually provide negative pointers

(a) Aggregation or collocation

The invention consists merely in the juxtaposition (bringing

side-by-side) of known devices or processes, each functioning in
its normal way without interacting with the other elements, and
not producing any unexpected technical effect.

Example: Machine for producing sausages consists of a known

mincing machine and a known filling machine disposed side by
side.

(b) Simple and straightforward extrapolation from known facts

To extrapolate from already known measures to arrive at the

invention is a sign for obviousness.
Example 1: The invention is characterized by the use of a
specified minimum content of a substance X in a preparation Y in
order to improve its thermal stability, and this characterising
feature can be derived merely by extrapolation on a straight line
graph, obtainable from the known art, relating thermal stability to
the content of substance X.

Example 2: Care should be taken with extrapolation however, as

this example shows. A synthetic material has been known to
have very good static load-bearing properties. The invention
consists of making railway sleepers of this material, which are
subject to severe dynamic loading. It would be unfair to say that
it would be obvious to replace known sleeper material by the
new one since the dynamic load-bearing properties are
surprising.

(c) A change of size, form or proportion

The choice of a particular dimension from a limited range of

possibilities and resulting from routine trial and error or arrived at
by the application of normal design procedure points towards
obviousness.

Example: The invention relates to a process for carrying out a

known reaction and is characterized by a specified rate of flow of
an inert gas. The prescribed rates are merely those which would
necessarily be arrived at by the skilled practitioner.

(d) An exchange of material

158
The substitution of a newly developed material for one that had
been used in a known product, where the properties of the new
material indicate that it is likely to be suitable, is a pointer
towards obviousness.

Example 1: Washing composition containing as detergent a

known compound having the known property of lowering the
surface tension of water, this property being known to be an
essential one for detergents.

Example 2: A new rubbery material which is very wear resistant

comes onto the market and someone applies for a patent for a
motor tyre made from this material. This use would be obvious
considering the properties of the new material.

(e) Application of a technique known per se

In such a case it has to be established whether success could

reasonably have been expected. This is usually the case when
the known technique is applied in an analogous situation.

Example: The invention resides in the application of a pulse

control technique to the electric motor driving the auxiliary
mechanisms of an industrial truck, such as a fork-lift truck, the
use of this technique to control the electric propulsion motor of
the truck being already known.

(f) The use of well-known technical equivalents

One should consider whether the use of an equivalent involved

particular technical difficulties. If this is not the case, then the test
points towards obviousness.

Example: The invention relates to a pump which differs from a

known pump solely in that its motive power is provided by a
hydraulic motor instead of an electric motor.

(g) Filling a gap in the state of the art

When the teaching of the prior art is obviously incomplete, and

completion thereof would naturally or readily occur to the skilled
person, an inventive step has to be ruled out.

Example: The invention relates to a building structure made

from aluminium. A prior document discloses the same structure

159
and says that it is of light-weight material but fails to mention the
use of aluminium.

(h) Selection from a number of known possibilities without any

unexpected technical effect

This comes down to merely choosing from a number of equally

likely alternatives.

Example: The invention relates to a known chemical process in

which it is known to supply heat electrically to the reaction
mixture. There are a number of well-known alternative ways of
so supplying the heat, and the invention resides merely in the
choice of one alternative.

3.2 Sub-tests that might provide positive pointers

Technical considerations

(i) Overcoming a technical prejudice

This is normally a persuasive pointer towards "non-obviousness".

If there has been disbelief or scepticism by experts towards a
particular line of development and the prior art points away from
the proposed invention, that is taken as strong support for the
existence of an inventive step. However, the applicant must
provide evidence to demonstrate the existence of such a
prejudice at the priority date of the application. A mere allegation
that technical prejudice was present is not sufficient. It must also
be shown by the applicant that the technical prejudice was
generally known to the world and not just perceived by him only.

Example: Drinks containing carbon dioxide are, after being

sterilised, bottled while hot in sterilised bottles. The general
opinion is that immediately after withdrawal of the bottle from the
filling device the bottled drink must be automatically shielded
from the outside air so as to prevent the bottled drink from
spurting out. A process involving the same steps but in which no
precautions are taken to shield the drink from the outside air
(because none are in fact necessary) would therefore be
inventive.

(j) The invention overcomes difficulties by means of a new use

of a known process, of a known device or known material

This point is taken as a sign of non-obviousness if the difficulties

160
are not resolvable by routine techniques.

Example: The invention relates to a device for supporting and

controlling the rise and fall of gas holders, enabling the
previously employed external guiding framework to be dispensed
with. A similar device was known for supporting floating docks or
pontoons but practical difficulties not encountered in the known
applications needed to be overcome in applying the device to a
gas holder.

(k) Unexpected technical progress or technical advance

This point deals with improvements over the prior art which,
although a permanent aim in industry, are not a requirement for
patentability, in particular for inventive step. However, this test
may be relevant if a long period of research or of attempts to
make an improvement have failed to find a better solution. The
unexpected technical progress has to be demonstrated in
comparison with the closest prior art. Therefore it is sometimes
necessary for the applicant to support this pointer with
comparative tests. Examples of this pointer are such things as:
increase in performance, greater productivity, cheaper and more
economical production, the simplification of machines or
construction and manufacturing methods.

Example: The invention involves a special selection in a process

of particular operating conditions (e.g. temperature and
pressure) within a known range, such selection producing
unexpected effects in the operation of the process or the
properties of the resulting product.

(l) Surprising technical effect

An example of such an effect would be when the various

elements of the invention are known individually from different
sources in the prior art, but when combined in the particular way
of the invention, produce a technical effect that goes beyond
what would have been expected from a mere juxtaposition of
these known measures (This is sometimes called synergy). This
pointer is generally known as "the combination effect". It occurs
quite frequently in chemical inventions.

Example: A mixture of medicines consists of a painkiller

(analgesic) and a tranquilliser (sedative). It was found that
through the addition of the tranquilliser, which intrinsically
appeared to have no pain-killing effect, the analgesic effect of

161
 the pain-killer was intensified in a way which could not have
been predicted from the known properties of the active
substances.

Another occasion where we might speak of a surprising effect

would be when a known method or means is successfully used
for an entirely different purpose.

It is known that high frequency power can be used in inductive

butt welding. It should therefore be obvious that high-frequency
power could also be used in conductive butt welding with similar
effect; an inventive step would exist in this case. This would also
be the case if high-frequency power were used for the
continuous conductive butt welding of coiled strip but without
removing scale (such scale removal being on the face of it
necessary in order to avoid arcing between the welding contact
and the strip). The unexpected additional effect is that scale
removal is found to be unnecessary because at high frequency
the current is supplied in a predominantly capacitive manner via
the scale which forms a dielectric.

Care must be taken to ensure that all technical effects are

indeed caused by the features of a claim. Often an applicant
argues that his invention provides some effect, but it turns out
that the effect is not provided by the features of the claim, but by
some other feature. For his arguments to be relevant, this other
feature must be included in the claim.

It might be argued that unexpected or surprising effects are

subjective tests since different people react differently to a given
result. However, insofar as the effect can be measured
objectively (e.g. a greater efficiency or yield is produced) and
shown to be different from what one would expect from the prior
art, it is not subjective.

(m) Professional recognition or technical esteem

The opinion of experts and their admiration of the invention are

pointers towards non-obviousness of the invention. Of course, if
those experts are employed by or are related commercially to the
applicant, one should be careful about their opinions.

Commercial considerations

(n) Commercial or economic success

162
This pointer is not necessarily based on technical differences
between the invention and the state of the art; it should therefore
be treated with caution. Commercial success can only occur after
the invention has been on the market for a while (usually after the
examination of the application has finished). Thus, it cannot have
influenced the design of the invention before the filing date and so
cannot normally be used as an argument for inventive step.
Commercial success might be derived from a number of factors,
e.g. first to the market, skilful positioning, good selling techniques,
effective advertising, not to mention occasional good luck.
However, if it can be proved that commercial success is coupled
with another pointer such as the satisfaction of a long-felt want
and stems from technical features of the invention, it should be
accepted as being relevant.

(o) Licence acquired from the inventor

This pointer relates to the concept of commercial success. It

suggests an existing need for the invention and the related
commercial interest. If the rights were acquired by competitors of
the inventor, they will have carefully examined the value of the
invention before entering into any agreement. Usually they will not
be distracted by selling techniques or good advertising. It could be
a sign that the competitors are convinced that they could not win
an opposition or an infringement suit, thus pointing at
non-obviousness.

However, it might also be the cheapest and most convenient way

for a competitor to make money while avoiding trouble, since the
cost of defending an infringement case in court, even against a
patent thought to be invalid, could be greater than the cost of a
licence. In other instances, licences could also be exchanged
between competitors.

(p) Copying or infringement of the invention by competitors

This pointer also relates to the concept of commercial success.

The fact that someone copies an invention, regardless of the risk
of an infringement suit and the possible payment of damages is
not convincing one way or the other. While one could argue that it
supports the value of the invention to a certain extent, one could
also argue that it indicates that the copier is convinced that the
patent is not valid, i.e. there is no inventive step.

(q) Circumvention

163
 This concept can also be related to commercial success. The fact
that competitors try to produce a substitute for an invention (i.e.
trying to use the inventive idea in a legal manner) can be taken as
acknowledgement of the attractiveness of the invention and at the
same time recognition of the commercial value of the invention.

(r) Parallel applications abroad

Applicants sometimes say that a patent has been granted for the
invention in the US, Europe, or some other country, and imply that
it should similarly be granted in other countries. This argument
should be given some weight and, indeed, it is recommended that
"young" patent offices make use of results from experienced
patent offices.

Other considerations

(s) Long-existing prior art

This concept implies the question "If the invention is obvious, why
was it not done a long time ago?". If the elements of the invention
have been available for a long time and the particular combination
that would result in the invention has not been made, although the
result obtained by the invention is useful, this can be taken as a
sign of non-obviousness. However, this pointer is usually given
only limited weight because there may have been no particular
need or desire to solve that problem during that period of time.

(t) Overcoming technical difficulties or solving a technical

problem which others have been working on without success

This pointer covers a series of different aspects. We are not talking

here simply about difficulties or problems the inventor himself had
to overcome to achieve his result. The difficulties or problems must
have existed in the technical field concerned and were such that
the experts in this field were not able to overcome them. The length
of time during which the difficulties or problems were known and
the efforts made to remove them are important factors in this
context.

(u) Satisfaction of a long-felt want (the time factor)

If a need for a solution to a technical problem existed for a long

time, and the invention immediately satisfies that need, e.g. as
evidenced by immediate commercial success, that suggests that
the solution represented by the invention was not obvious.

164
(v) Failures and unsuccessful attempts

This means that others have tried to solve a technical problem

and failed. There is a strong relation with the "long-felt want" here
in so far as attempts are usually undertaken only if a need exists.
One needs to consider the nature of the attempts, the number of
attempts, the time span over which they were performed and the
skills of those who failed.

(w) Pioneer inventions

A pioneer invention can change the production methods of a

whole industry or create a totally new industry or branch of
industry which did not exist before. In the latter case, there cannot
be any doubt about non-obviousness, since there would not be
any close prior art available to compare it with. However, it is
often difficult to recognise the extent of the value of such
inventions at the examination stage. Examples that could be
quoted would be: the ball-point pen, the laser (actually the maser
came first), xerography.

(x) A (large) number of (sequential) steps have to be taken to

move from the closest prior art to the invention

This is considered to be a significant indicator of the presence of

inventiveness; the larger the number of steps, the less likely it is
to be obvious. Also, the larger the number of disclosures that
need to be combined to assemble all the technical features of the
claim, the less likely it is to be obvious to do so. Note that this is a
different criteria to that in (a) above.

(y) Special choice among a multitude of possible solutions

(selection inventions)

This pointer is effectively a "lucky invention" which expresses

quite clearly the extent of this concept. If an inventor found the
one, or a few, working solutions amongst a theoretically unlimited
number of unsuccessful ones, this is an indication for
non-obviousness. This test for inventive step is similar to the
unexpected effect test in (k) above.

(z) Unexpected additional (bonus) effects

It sometimes happens that, in addition to expected effects,
additional, unexpected effects or advantages occur. The question
then arises: can the presence of these unexpected effects be

165
taken as evidence of non-obviousness in cases where the
expected effects are due to routine development and, for this
reason, the invention would normally be regarded as obvious? In
such cases the number of options available to the skilled person
is to be considered. Where the choice is restricted, the lack of
alternatives may create a so-called "one-way-street" situation,
where normal development will lead almost inevitably to the
invention; the invention will then be taken to be obvious in spite of
an unexpected "bonus effect". This situation should be
contrasted with the multiple-choice situation such as commonly
arises e.g. in selection. A fanciful example of a one-way-street
situation is the following: A man at a junction of several roads is
looking for a bar and sees a bar along only one of the roads. He
goes down this road and into the bar, and finds a beautiful woman
there. In this case the woman is a bonus effect since the man did
not have a choice, he was forced to go down one road only.

Example 1

Suppose it is known from the prior art that, when one reaches a
particular compound in a series of known chemical compounds,
expressed in terms of the number of carbon atoms, there is a
consistently increasing insecticidal effect as one moves up the
series. The next higher member of the series, if it was not
previously known, then lies in a "one-way street". If this member
of the series, in addition to exhibiting the expected enhanced
insecticidal effect, proves also to have the unexpected effect of
being selective, i.e. of killing some insects but not others, it
nevertheless remains obvious.

Example 2

A further general case of a one-way street could be the

replacement of mechanical automatic control by electronic
automatic control. Suppose the mechanical control system in an
automatic gear box for a motor car is replaced by a
microprocessor controlled system, the microprocessor being able
to take account of all factors, i.e. accelerator pedal position,
engine revolutions etc., to select the most appropriate gear. When
the microprocessor system is used it is unexpectedly found that
the tyres of the car exhibit a significantly reduced wear and
therefore a longer life. This effect is a bonus effect, and the
invention remains obvious.

166
 CHAPTER V – PRIORITY
(See also 5.1.5, 5.1.6, 5.1.6.1, 5.1.6.2 CGPEPP)
Art. 4 4bis
Paris Convention The Philippines being a signatory state of the Paris Convention,
Art.4 and Art.4bis thereof do also apply in the Philippines

1. The right to priority

Sec. 40 1.1 A Philippine patent application is accorded as its date of filing

the date on which it satisfies the requirements of Sec.40 and Rule
600. This date remains unchanged except in the special
circumstances referred to in Sec.41 and Rules 600.1 to 602.

Sec. 29 The date of filing may be the only effective date of the application. It
will be of importance for fixing the expiry of certain time limits, for
determining the state of the art relevant to the novelty or
obviousness of the subject-matter of the application, and for
determining, in accordance with Sec.29 and R.304, which of two or
more Philippine applications from independent persons for the
same invention is to proceed to grant.

Sec. 31 1.2 However, in many cases, a Philippine application will claim the
R. 305 right of priority of the date of filing of an earlier application. In such
cases, it is the priority date (i.e. the date of filing of the earlier
application) which becomes the effective date for the purposes
mentioned in the preceding paragraph, except for the fixing of
certain time limits.

Sec. 31 1.3 For a valid claim to priority, the earlier application whose priority
R. 305 has been claimed must have been made by the applicant, it must
have been made in (or for) another country which by treaty,
convention or law affords similar privileges to Filipino citizens (e.g.
a signatory state of the Paris Convention),and the following
conditions must also be satisfied:

(a) the local application must expressly claim priority,

(b) it must be 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 must be filed within six (6) months from the date
of filing in the Philippines.

Pursuant to Rule 305, the six months period may be extended by

the Director for a maximum of six (6) months upon showing of good

167
 cause or in compliance with treaties to which the Philippines are or
may become a member.

The words "in (or for) another country which…“mean that priority
may be claimed of an earlier national regional or international
application. The earlier application may be for a patent or for the
registration of a utility model or for a utility certificate or for an
inventor's certificate. As long as the contents of the earlier
application were sufficient to establish a regular filing date, it can be
used to create a priority date, no matter what the outcome of the
application may later be; for example, it may subsequently be
abandoned or refused.

Art. 4C (2) 1.4 Normally (except as explained in V, 1.4a here below) the filing
Paris Convention date of the "first application" must be claimed as a priority, i.e. the
application disclosing for the first time any or all of the subject-
matter of the Philippines application. If it is found that the
application to which the priority claim is directed is in fact not the
first application in the above sense, but some or all of the subject-
matter was disclosed in a still earlier application in or for the same
country and originating from the same inventor, the priority claim is
invalid as far as the subject-matter was already disclosed in the still
earlier application.

Sec. 24.1 To the extent the priority claim is invalid, the effective filing date of
Sec. 24.2 the local application under examination is the date of its filing in the
Philippines. The previously disclosed subject-matter of the local
application is not novel, if the still earlier application referred to
above was published prior to the effective filing date of the local
application (Sec.24.1) or if the still earlier application is also a
Philippines application which was published on or after the effective
filing date of the local application in question (Sec.24.2), provided
the inventor or applicant identified in both the applications are not
one and the same.

Art. 4C (4) 1.4a A subsequent application for the same subject-matter and filed
Paris Convention in or for the same state shall be considered as the first application
for priority purposes if, at the date this subsequent application was
filed, the first application had been withdrawn, abandoned or
refused, without being open to public inspection and without leaving
any rights outstanding, and had not served as a basis for claiming
priority. The Office will not consider this question unless there is
evidence of the existence of an earlier application as, for example,
in the case of a United States continuation-in-part application.
Where it is clear that an earlier application for the same subject-
matter exists, and where the priority right is important because of

168
 intervening prior art (see V, 2.1 here below), the applicant should
be required to establish by evidence from an appropriate authority
(normally a national patent office) that there were no rights
outstanding of the in the earlier application in respect of the
subject-matter of the application being examined. If the earlier
application has been published, or it has been used for priority
purposes in another application, there are clearly rights
outstanding.

R. 306.1 1.5 Multiple priorities from different countries may be claimed - i.e.
R. 306.2 a Philippines application may claim rights of priority based on more
than one earlier application. The earlier application may have been
filed in or for the same or different states, but in all cases the
earliest application must have been filed not more than 12 months
before the date of filing of the Philippines application. If more than
one priority is claimed, time limits will be computed from the priority
date will be based on the earliest priority date.

R. 306.3 A technical feature of a Philippines application will be accorded the

priority date of the earliest priority application which discloses it. If,
for instance, the Philippines application describes and claims two
embodiments (A and B) of an invention, A being disclosed in a
French application and B in a German application, both filed within
the preceding 12 months, the priority dates of both the French and
German applications may be claimed for the appropriate parts of
the Philippines application; embodiment A will have the French
priority date, and embodiment B the German priority date, as
effective filing dates. If embodiments A and B are claimed as
alternatives in one claim, these alternatives will likewise have the
different priority dates as effective dates. If, on the other hand, a
Philippines application is based on one earlier application
disclosing a feature C and a second earlier application disclosing a
feature D, neither disclosing the combination of C and D, a claim to
that combination will be entitled only to the date of filing of the
Philippine application under examination itself. In other words, it is
not permitted to mosaic priority documents. An exception might
arise where one priority document contains a reference to the other
and explicitly states that features from the two documents can be
combined in a particular manner.

2. Determining priority dates

2.1 As a general rule, the examiner should not make any

investigation as to the validity of a right to priority. However, the
priority right assumes importance if prior art has to be taken into
account, which has been made available to the public within the

169
 meaning of Sec.24.1, on or after the priority date claimed and
before the date of the local filing (e.g. an intermediate document,
see IV, 5.3, or if the content of the Philippine patent application is
totally or partially identical with the content of another Philippine
application from a different applicant or inventor within the meaning
of Sec.24.2, such other application claiming a priority date within
that period. In such cases, (i.e. cases where the art in question
would be relevant if of earlier date) the examiner must investigate
whether the priority date(s) claimed may be accorded to the
appropriate parts of the application he is examining and should
inform the applicant of the outcome and whether, in consequence,
the particular prior art under consideration, e.g. the intermediate
document, or the other Philippine application forms part of the stat
e of the art within the meaning of Sec.24.

Also, in the case of possible conflict with another Philippine

application under Sec.24.2, it may be necessary in addition to
allocate priority dates to the appropriate parts of that other
application and to communicate this to the applicant analogously.
In the case of conflicting local applications, the examiner can only
take action once the earlier local application has been published.

R. 306.3 2.2 When the examiner needs to consider the question of priority
date, he should bear in mind all the matters which are mentioned in
V, 1.3 to 1.5 above. He should also remember that, to establish a
priority date, it is not necessary that the technical feature or
features of the invention for which priority is claimed should be
found among any claims in the previous application. It is sufficient
that the documents of the previous application taken as a whole
"specifically disclose" such technical feature or features. The
description and any claims or drawings of the previous application
should, therefore, be considered as a whole in deciding this
question, except that account should not be taken of subject-matter
found solely in that part of the description referring to prior art, or in
an explicit disclaimer.

2.3 The requirement that the disclosure must be specific means

that it is not sufficient if the elements in question are merely
referred to in broad and general terms. A claim to a detailed
embodiment of a certain feature would not be entitled to priority on
the basis of a mere general reference to that feature in a priority
document. Exact correspondence is not required, however. It is
enough that, on a reasonable assessment, there is in substance a
disclosure of all the elements of the claim.

2.4 The basic test to determine whether a claim is entitled to the

170
date of a priority document is the same as the test of whether an
amendment to an application satisfies the requirement of the
proviso in Sec.49 (see also VI, 5.4). That is to say for the priority
date to be allowed, the subject-matter of the claim must be
derivable directly and unambiguously from the disclosure of the
invention in the priority document, when account is taken of any
features implicit to a person skilled in the art in what is expressly
mentioned in the document.

As an example of an implicit disclosure, a claim to apparatus

including "releasable fastening means" would be entitled to the
priority date of a disclosure of that apparatus in which the relevant
fastening element was, say, a nut and bolt, or a spring catch or a
toggle-operated latch, provided the general concept of "releasable"
is implicit in the disclosure of such element.

2.5 If the tests set out in V, 2.2 to 2.4 here above are not satisfied
in relation to a particular earlier application, then the effective date
of the claim (or one of the embodiments claimed) will either be the
filing date of the earliest application which does provide the
required disclosure and of which the priority is validly claimed or, in
the absence of such, will be the date of filing of the Philippine
application itself (or the new date of filing if the application has
been re-dated under Sec.41).

2.6 Some examples of determining priority dates

Note: the dates used are merely illustrative; they do not take
account of the fact that filing may not be possible on weekends and
public holidays.

2.6.1 Intermediate publication of the contents of the priority

application:

P is the application from which priority is claimed by the PH

application, D is the disclosure of the subject-matter of P.

01.01.90 01.05.90 01.06.90

filing publication filing
P D PH

D is state of the art under Sec.24.1 when the priority claim of P is

not valid.

2.6.2 Intermediate publication of another Philippine application:

171
P1 is the application from which priority is claimed by PH1, P2 the
one from which PH2 claims priority. PH1 and PH2 are filed by
different applicants.

01.02.89 01.01.90 01.02.90 01.08.90 01.01.91

filing filing filing publication filing
P1 P2 PH1 PH1 PH2
A+B A+B A+B A+B A+B

PH1 is state of the art for PH2 under Sec.24.2 when the respective
priority claims of P1 and P2 are valid. This does not change if the
publication of PH1 takes place after the filing date of PH2.

The publication of PH1 is state of the art under Sec.24.1 if the

priority claim of P2 is not valid.

2.6.3 Multiple priorities claimed for different inventions in the

application, with an intermediate publication of one of the
inventions.

PH claims priority of P1 and P2, D is the disclosure of A+B.

01.01.90 01.2.90 01.03.90 01.06.90

filing publication filing filing
P1 D P2 PH
A+B A+B A+B+C Claim 1: A + B
Claim 2: A + B + C

Claim 1 has a valid priority of P1 for its subject-matter, thus

publication D is not state of the art under Sec.24.1 against this
claim. Claim 2 cannot benefit from the priority of P1, as it does not
concern the same subject-matter. Thus publication D is state of the
art under Sec.24.1 for this claim. It is immaterial whether claim 2 is
in the form of a dependent or an independent claim.

2.6.4 A situation in which it has to be checked whether the

application from which priority is actually claimed is the "first
application" in the sense of Art.4 C. (1) and (4) of the Paris
Convention:

P1 is the earliest application of the same applicant containing the

invention. PH claims the priority of the later US-application P2,
which is a “continuation-in-part" of P1. D is a public disclosure of
A+B.
01.07.89 01.01.90 01.06.90 01.12.90
filing filing publication filing

172
 P1 P2 (cip) D PH
A+B A+B A+B claim 1: A + B
A+B+C claim 2: A + B + C

The priority claim of P2 for claim 1 is not valid as P2 is not the "first
application" for this subject-matter in the sense of Art.4 C. (1) and
(4) of the Paris Convention, but P1, which has "left rights
outstanding" in that P2 is a "continuation-in-part" thereof. Therefore
Art.4 C. (4) of the Paris Convention does not apply and this is not
altered by an abandonment, withdrawal, refusal or non-publication
of P1.

D is prior art pursuant to Sec.24.1 against claim 1, but not against

claim 2, as the latter claim has the earlier priority of P2.

3. Claiming priority

Sec. 31 3.1 An applicant who wishes to claim priority must file a declaration
R. 305 of priority giving particulars of the previous filing, as specified in
R. 307 Sec.31 and Rules 305 and 307, together with a certified copy of the
previous application, and if necessary a translation of it into English

Sec. 31 3.2 At least the date and state of any filing from which priority is
R. 305 claimed must be stated at the time of filing the local application and
R. 603 (b) the file number of the priority application must be indicated during
formality examination. The certified copy of the priority document,
together with a translation into English, if necessary, must be filed
within 6 months of the priority date, which period may be extended
for a maximum of 6 months under special circumstances.
Where the earlier application is an international application, the
name of the state(s) for which it was filed must be stated.

3.3 If the required translation or declaration is not filed within the

time limit, the right of priority is lost for the Philippine patent
application.

CHAPTER VI – SUBSTANTIVE EXAMINATION PROCEDURE

This chapter sets out the general procedure for substantive

examination, together with guidance on particular matters where
necessary. It does not provide detailed instructions on matters of
internal administration.

1. The start of the substantive examination

1.1 In order that substantive examination of a patent application
can begin, the applicant is required to file a written request for

173
Sec. 48.1 examination according to Sec.48.1 within six months from the
Sec. 44 publication of the application (Sec.44) and to pay the required fees.
R.804 If the request is not filed and/or the fees are not paid within the six
months following publication, the application is deemed withdrawn.

1.2 The request for substantive examinations, once filed, shall be

irrevocable. Although the examination will be not be carried out any
Sec. 48.2 further, the fees will not be refunded.
R. 803.1
1.3 Formality examination (Sec.42), classification and search
(Sec.43) and substantive examination will not always be carried out
Sec. 42 by the same examiner. After the request for substantive
Sec. 43 examination has been received, the file relating to the application is
passed to the examining division competent for the substantive
examination of the application.

1.4 The file will normally be assigned to the examiner responsible

for the examination of applications in the technical field in which the
R. 906 particular application has been classified (R.906). Irrespective of
the classification, it may sometimes be more efficient to assign
applications having different classifications to the same examiner.
For instance, closely related applications, or parent and divisional
applications could be allocated to the same examiner. The
applications will be taken up for examination in the order in which
they have been filed, or in which the applicant’s responses have
been filed.

1.5 The substantive examiner is entrusted to carry out all the work
up to the point of a decision to grant a patent or refuse the
application, under the supervision of his superior. This means that
this examiner is entrusted to act on behalf of the Office in all
communications with the applicant up to that point, but he will in
general confer informally with his supervisors at any time if a
special point of doubt or difficulty arises (see VI, 7.1 here below).
Where reference is made in this part of the guidelines to the
"examiner", this normally means the examiner entrusted with the
work in this way, and it should be understood that this examiner is
always acting in the name of the Office.

2. Examination procedure in general

2.1 The purpose of the examination is to ensure that the application

and the invention to which it relates, meet the requirements set out
in the relevant Sections of the IP-Code and in the IRR so that a
patent can be granted. The prime task of the examiner is to deal
with the substantive requirements; the criteria by which an

174
 examiner shall judge whether they have been met, are dealt with in
detail, in so far as appears necessary, in the other chapters of this
part of the guidelines. Some of the formal requirements may be
dealt with by administrative staff, such as recording, monitoring
time limits and payment of fees etc.

2.2 The examiner's first step is to study the description, drawings

(if any) and the claims of the application. In carrying out his task,
the examiner will have in the file the documents making up the
R. 907 (a) application and a history of the proceedings up to the start of the
substantive examination. In particular, this examination file will
include the request for examination, description, drawings (if any)
and the claims as originally filed; any amendments proposed to
date; the search report with the applicant's comments (if any), and
references to or copies of any cited documents; formality
examination reports, priority documents together with any
translations etc.

It is usually a good practice to read the claims first, since unclear

passages stand out more clearly if the claims are read without first
reading the description. The next step is to understand the
invention by studying the description, the drawings (if any) and the
claims (at least once again) of the application. While reading the
application, the examiner should identify unclear, inconsistent, and
wrong statements. Then the claims should be read again to check
that they are consistent with the description and not too broad in
scope (i.e. properly supported by the description). After that the
prior art should be read and the claims examined for patentability.

2.3 When the examiner has studied and understood the claims
(including any amended claims), he should also make a search for
any additional conflicting Philippine applications falling within the
Sec. 24.2 area defined by Sec.24.2 (see VI, 8.4 here below).

Applications cited as prior art under Sec.24.1 must have been

published. Unpublished pending applications and unpublished
withdrawn and forfeited applications as such shall not be cited as
R. 910 prior art references.

2.3a In the case of foreign applications, the applicant will be

requested, as often as appropriate, to provide information on the
status of any foreign application relating to the same invention
Sec. 39 within a specified period. Copies of the documents cited in foreign
R. 612 search reports may be requested. In the case of relevant citations
in other languages than English, the examiner may request the

175
 submission of a corresponding patent (family member) in English.

Non-compliance with such requests has the effect that the

application will be considered withdrawn.

R. 612.2 2.4 Taking into account the documents (if any) cited in the search
report and any further documents found as the result of the search
referred to in VI, 2.3 here above, and taking account also of any
R. 907 (b) amendments that may have been proposed, or comments made,
R. 908 by the applicant, the examiner should identify any requirements of
R. 909 the IP code and IRR which, in his opinion, the application does not
R.912 satisfy. He will then write to the applicant giving reasons for any
objections he raises and inviting the applicant within a specified
period to file his observations or submit amendments. When the
applicant has replied with or without amendment, the examiner will
re-examine the application.

2.4a The examiner may base his objections on documents cited in

the foreign search reports and on the contents in foreign
examination reports or decisions. If such foreign examination
reports or decisions are negative and also apply to the claims as
filed in the Philippines, the examiner may raise prima facie
objection referring to these reports/decisions. Provided certain
claims (in English) have been granted after substantive
examination in a foreign country, the examiner can save time by
checking these for their compliance with the IP-code and the IRR,
and – if positive – suggest to the applicant to amend his Philippine
patent application accordingly.

2.5 At the re-examination stage, the examiner should be guided by

the over-riding principle that a final position (grant or refusal) should
be reached in as few actions as possible, and he should control the
Sec. 51 procedure with this always in mind. The process of communicating
R. 912 with the applicant described in VI, 2.4 here above shall be repeated
R. 913 (a) as often as necessary. Nevertheless, if it is clear that the applicant
R. 913 (b) is not making any real effort to deal with the examiner's objections,
either by amendments or by counter-arguments, then even at the
re-examination stage the examiner should bring the application
before his supervisor, who may approve the refusal of the
application. In any event, at some stage, the examiner will make a
short written recommendation to his supervisor either that the
application should be refused or that a patent should be granted
thereon. If the application is to be refused (final rejection, Sec.51),
a written reasoned decision will be prepared by the examiner
entrusted with the examination of the application. In preparing the
decision, the examiner must take care to abide by the general

176
 principle that the decision must be based on grounds or evidence
on which the applicant has had the opportunity to comment
(R.913(b)).

However, according to R.909, R.913, R.1302, a second adverse

action by the examiner on the same grounds may already be
considered as final by the applicant for the purpose of appeal.
R. 909
R. 913 The applicant may appeal against a final refusal or decision of
R. 1302 refusal. If the examiner considers in the light of the applicant's
R. 917 statement, that the appeal is admissible and well-founded, or if the
R. 1305 rejected claims have been cancelled (R.913), or if any other
objected deficiencies have been removed (R.917), he should rectify
its decision accordingly after receipt of the restricted claims or the
appellant’s brief according to R.1305.

Otherwise, the appeal will be considered by the Director of patents

and possibly higher instances as foreseen in R.1307 to 1311. If a
decision to refuse a patent is reversed on appeal, the application
R. 1307 may be referred back to the examiner for further examination. In
R. 1311 such a case, the further examination will normally be entrusted to
the examiner who performed the original examination. The
examiner is bound by the decision of the Director or any higher
instance.

2.6 If the examiner considers that a patent should be granted, he

will first inform the applicant, by the means of a Notice of
Allowability, of the claims which are allowed. Prosecution on the
merits is closed with the issuance of this Notice. Further fees (inter
alia the publication fee) will have to be paid by the applicant within
a specified time period. Once the requirements referred to in this
Notice are fulfilled, a Philippine patent is granted. For further details
of the granting procedure, see VI, 15 here below.

2.7 Reference is made to the Part 9 of the IRR, where the rules
relating to substantive examination are set out. The stages of this
procedure are considered in more detail in the following sections.

3. The first stage of examination

3.1 Following the publication of the application and prior to the

substantive examiner's first communication with the applicant, the
latter may file comments on the search report and amendments to
the description, claims or drawings. These amendments may be
submitted to avoid possible objections of lack of novelty or lack of

177
 inventive step in view of the citations listed in the search report; or
to meet any objections that might have led to a partial or
incomplete search report (i.e. at least some claims did not permit
of a meaningful search), or they may be suggested for some other
reason, e.g. to remedy some obscurity which the applicant himself
has noted in the original documents.

These amendments will of course only be considered provided a

request for substantive examination has been filed according to
Sec.48.1.

3.2 Such amendments being voluntarily made by the applicant, the

applicant is not restricted to amendment necessary to remedy a
defect in his application. It does not, however, mean that the
applicant is free to amend in any way he chooses. Any amendment
must satisfy the following conditions:

(i) It must not add subject-matter to the content of the

application as filed (see VI, 5.3 to 5.8b here below); and

(ii) it must not itself cause the application as amended to be

objectionable under the IP-code, e.g. the amendment
must not introduce obscurity (Sec.36.1).

If the amendments do not meet these conditions, the applicant

should be told that the amended application cannot be allowed.
Apart from the amendments referred to above, which are allowed
under Sec.49, the applicant may correct obvious errors (see VI, 5.9
here below).

3.3 The examiner's first substantive examination action should, as

a general rule, cover all objections to the application (but see VI,
3.6 here below). These objections may relate to formal matters
R. 907 (e.g. failure to comply with one or more of the requirements
R. 908 specified in R.407, 415 or 416), to substantive matters (e.g. the
subject-matter of the application is not patentable), or to both.

Substantive matters should normally be set out first. The letter

should be drafted in such a manner as to facilitate re-examination
of the amended application and, in particular, to avoid the need for
extensive re-reading (see VI, 4.2 here below).

The question of unity of invention (Sec.38) should be addressed as

early as possible. Concerning the assessment of unity and the
procedure to follow in case of lacking unity, reference is made to

178
 Sec.38.2, to R.604 to R.611 and to III, 7.

3.4 For each objection the letter should indicate the part of the
application which is deficient and the requirement of the IP code or
the IRR which is not met, either by referring to specific Sections or
R. 909 (b) Rules, or by other clear indication; it should also give the reason for
any objection where this is not immediately apparent. For example,
where prior art is cited and only part of a cited document is
relevant, the particular passage relied upon should be identified. If
the cited prior art is such as to demonstrate lack of novelty or
inventive step in the independent claim or claims, and if
consequently there is lack of unity between dependent claims, the
applicant should be warned of this situation (see VI, 5.2(i) here
below).

3.5 The letter should include an invitation to the applicant to file his
observations, to correct any deficiencies and, if necessary, to
submit amendments to the description, claims and drawings. It
R. 907 (b) must also state the period within which the applicant must reply.
R. 911 Failure to reply in due time will cause the application to be deemed
R. 928 withdrawn.

3.6 It is emphasized that the first sentence of VI, 3.3 here above
only sets out the general rule. There may be cases in which the
application is generally deficient. In these cases the examiner
should not carry out a
detailed examination (R.908), but should send a letter to the
applicant informing him of this fact, mentioning the major
deficiencies and saying that further examination is deferred until
these have been removed by amendment; the letter should specify
a period within which the deficiencies must be removed. There may
be other cases in which, although a meaningful examination is
possible, a fundamental objection arises, e.g. it is clear that certain
claims lack novelty and that the statement of claim will have to be
drastically recast, or there are substantial amendments which are
not allowable for one of the reasons stated in VI, 3.2 here above. In
such cases it may be more appropriate to deal with this objection
before making a detailed examination; if, e.g. the claims need re-
casting, it may be pointless to raise objections to the clarity of some
dependent claims as a consequence. However, if there are other
major objections these should be dealt with. Generally the
examiner should at the first examination stage seek to make the
maximum impact with the broad aim of bringing matters to a
conclusion (grant or refusal, as the case may be), without any
undue delay (R.908).

179
 3.7 When making the full examination, the examiner should
concentrate on trying to understand what contribution the invention
as defined in the claims adds to the known art. This should
normally be sufficiently clear from the application as filed
(R.407(1)c)). If it is not, the applicant should be required to
elucidate the matter (see II, 4.5); but the examiner should not raise
an objection of this kind unless he is convinced it is necessary,
since to do so might result in the applicant introducing additional
subject-matter and thus offending against the proviso of Sec.49
(see VI, 5.3 to 5.8b here below).

3.8 Although the examiner must bear in mind all the requirements
of the IP-code and the IRR, the requirements which are most likely
to require attention in the majority of cases are sufficiency of
disclosure (see II, 4); clarity, especially of the independent claims
(see III, 4); novelty (see IV, 5); and inventive step (see IV, 9).

3.9 The examiner should not require or suggest amendments

merely because he thinks they will improve the wording of the
claims. A pedantic approach is undesirable; what is important is
that the meaning of the claims should be clear.

3.10 It must be emphasized that it is not part of the duty of an

examiner to require the applicant to amend the application in a
particular way to meet an objection, since the drafting of the
application is the applicant's responsibility and he should be free to
amend in any way he chooses provided that the amendment
removes the deficiency and otherwise satisfies the requirements of
the IP-code and the IRR. However, it may sometimes be useful if
the examiner suggests at least in general terms an acceptable form
of amendment, but if he does so he should make it clear that the
suggestion is merely for the assistance of the applicant and that
other forms of amendment will be considered.

3.11 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
R. 911 reconsideration, with or without amendment.

In order to be entitled to re-examination or reconsideration, the

applicant must make a request therefore 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,

180
 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
grant. The mere allegation that the examiner has erred will not be
received as a proper reason for such re-examination or
reconsideration.

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. To avoid objections under the proviso of Sec.49, he
should indicate and upon which passages of the application as filed
the amendments are based.

4. Further stages of examination

General procedure

4.1 Following the examiner's first letter and the applicant's reply,
the examiner re-examines the application taking into account
observations or amendments made by the applicant.
R. 912
4.2 The examiner should apply the same standard of examination
in relation to matters of substance at all stages in the processing of
an application. However, after the first examination stage, he will
not normally need to completely re-read the amended application if
he has drafted his first letter in a comprehensive way (see VI, 3.4
here above), but should concentrate on the amendments
themselves and any related passages, and on the deficiencies
noted in the letter.

4.3 In most cases, the applicant will have made a bona fide
attempt (see R.911(b)) to deal with the examiner's objections.
There are then two possibilities to consider. The first is that the
examiner, having taken account of the observations of the
applicant, considers that there is little prospect of progress towards
grant and that the application should be refused (Sec.51). In such a
case, the examiner should not as a rule refuse immediately but
should warn the applicant, e.g. by a short further written action, that
the application will be refused unless he can produce further more
convincing arguments or makes appropriate amendments within a
specified time limit. The second and more usual possibility,
however, is that the re-examination shows that there is good
prospect of bringing the procedure to a positive conclusion in the

181
form of a grant. In these latter cases, if there are still objections that
require to be met, the examiner will issue a further written action
pointing out the remaining deficiencies of the application.

If this re-examination, however, shows that the applicant has not

made any real effort to deal with these objections, the examiner
should consider recommending the application be refused
immediately. However, this would be an exceptional case.

4.4 If the matters are such that the applicant is likely to require time
to consider them, it will probably be preferable to deal with them by
means of a written action. If, however, there seems to be confusion
about points in dispute, e.g. if the applicant seems to have
misunderstood the examiner's argument, or if the applicant's own
argument is not clear, then it may expedite matters if the examiner
proposes an interview (to be requested by the applicant, see VI, 6
here below). On the other hand, if the matters to be resolved are
minor, or can quickly and easily be explained and dealt with, then
they might be settled more expeditiously by a short written action.

Discussion with the applicant or his representative at an interview is

more fully considered in VI, 6.

4.5 Similar considerations apply to later stages of re-examination

except that, having regard to the principle stated in VI, 2.5 here
above, the greater the number of actions which have already taken
place, the greater is the likelihood that the most appropriate action
is a final rejection or refusal under Sec.51.

4.5a Where the final decision is to refuse the application, care

should be taken that the decision does not offend against R.913(b),
2nd sentence.

Examination of amendments

4.6 Any amendment must satisfy the conditions listed in VI, 3.2
here above. When it was effected must also be established. After
publication of the search report and before receipt of the first
communication from the substantive examiner, the applicant may,
of his own volition, amend the description, claims and drawings,
provided a valid request for substantive examination has already
been made.

4.7 After receipt of the first communication from the examiner, the
applicant may amend the description, claims and drawings
provided that the amendment is filed at the same time as his reply.

182
 With his reply to the second communication from the substantive
R. 911 (c) examiner the applicant may amend again, but any amendment will
ordinarily need to be restricted to overcoming the objections raised
by the examiner. Other types of amendments will require the
consent of the examiner. Giving the examiner, this discretion is
intended to ensure that the examination procedure is brought to a
conclusion in as few actions as possible (see VI, 2.5 here above).

If an amendment is allowed, subsequent proceedings are based on

the Description, claims and drawings as amended. Consent to an
amendment does not necessarily imply that the application as
amended is free from any objection under the IP-code and/or IRR.
Distinctions should be drawn between different types of
amendments:

Amendments remedying a deficiency in response to the preceding

communication must always be allowed, provided they do not give
rise to some new deficiency. Amendments limiting a claim already
considered allowable should normally be allowed, as too should
those be improving the clarity of the description or claims in a
manner clearly desirable.

A further factor is the amount of alteration to the application

documents involved. Extensive reworking of the description or
claims may be a proper response to highly relevant further prior art
of which the applicant has only just become aware (e.g. either
through further citation by the examiner or through knowledge
obtained from another source). Regarding less extensive
amendments, the examiner should adopt a reasonable approach,
trying to balance fairness to the applicant against the need to avoid
unnecessary delay and excessive and unjustified additional work
for the Office.
Any subsequent request to withdraw an amendment is itself a
request for further amendment; thus, if this subsequent request
occurs after the second communication from the examiner, it will be
allowed only if the examiner consents. In exercising his discretion,
the examiner should bear in mind the length of the proceedings to
date and whether the applicant has already had sufficient
opportunity for amendments. He should refuse in particular
amendments reintroducing deficiencies previously pointed out to
and removed by the applicant.

In deleting subject-matter from an application the applicant should

avoid any statement which could be interpreted as abandonment of
that subject-matter. Otherwise this subject-matter cannot be

183
 reinstated.

4.8 Any request by an applicant to replace the text of the

application on whose basis a patent could be granted, with one that
has been extensively revised should be refused, unless the
applicant gives good reasons for proposing the changes only at this
stage in the proceedings. This applies particularly in cases where
the examiner has indicated that a version of the claims proposed by
the applicant is grantable and that the applicant has only to bring
the description into line with that version.

4.9 The Notice of Allowability closes the prosecution on the merits

and does not constitute an opportunity for the applicant to call into
question the outcome of the earlier procedure (see VI, 15 here
below for procedure upon grant). At this stage of the proceedings
the substantive examination has already been completed and the
applicant has had the opportunity to amend the application and
therefore normally only minor amendments which do not
appreciably delay the preparations for grant of the patent will be
allowed.

4.10 Once the decision to grant has been taken, further

amendments or corrections to the granted patent, can only be
requested on the basis of Sec.57, 58 or 59.

4.11 Paragraph 4.9 above do not prevent the examiner from

resuming the proceedings of his own motion where he becomes
aware of circumstances which are such as to render non-
patentable the subject-matter claimed. Such circumstances may be
brought to the examiner’s attention by the applicant or following
observations by third parties under Sec.47 and can be considered
up to the moment the final decision to grant is taken. In the
resumed proceedings, substantive amendments to resolve this
problem are possible.

4.12 If a request for amendment is to be refused under R.912(b)

R.912, the applicant must first be sent a communication giving the
reasons for refusing the amendment. The applicant may then make
a petition according to R.927. In the case of a situation as
described in e.g. VI, 4.9, the applicant should be invited at the
R. 912 (b) same time to request grant of the patent on the basis of the
R. 927 preceding acceptable version of the documents. If the applicant
maintains his request for the amendment, the application must be
refused under Sec.51 since, in these circumstances, there is no
text of the application which has been agreed by the applicant and
allowed by the examiner.

184
 4.13 Reference is made to the IRR, R.911,912,916-927 concerning
the provisions relating to amendments of the application
documents.

5. Amendments

Making the amendments

5.1 An applicant may amend the patent application during

examination, provided that such an amendment does not include
new matter outside of the scope of the disclosure contained in the
application as filed.

Sec. 49 The description, claims and drawings must be amended and

R. 916 revised when required, to correct inaccuracies of description and
R. 919 definition or unnecessary prolixity, and to secure correspondence
R. 918 between the claims, the description and the drawings.

The formal considerations relating to the technique of making

amendments are set out in R.920 to 926.

Allowability of amendments

R. 920 to 926 5.2 Amendments can consist of addition, replacement or deletion

of features originally present in the claims, the drawings or the
description.

Legally, the question of allowability of amendments is a question of

whether the application as so amended is allowable. An amended
application must of course satisfy all the requirements of the IP
Code and the IRR including, in particular, inventive step and the
other matters listed in VI, 3.8 here above (see also VI, 3.2 here
above). Also, however, especially when the claims have been
substantially limited, the examiner should bear in mind that the
following questions may require special consideration at the
amendment stage:

(i) Unity of invention:

Do the amended claims still satisfy the requirements of Sec.38.1?

If the documents cited in the search report seem to reveal lack of
novelty or inventive step in the concept common to all the claims
as filed, but the amended claims do not necessitate further search,
the examiner should consider carefully whether objection to lack of
unity is justified at this stage of the proceedings (see III, 7). If,

185
 however, the amended claims lack a common inventive concept
and a further search is necessary, objection should be raised.

(ii) Changing to unsearched subject-matter:

If amended claims are directed to subject-matter which has not

been searched (e.g. because it only appeared in the description
and the examiner did not find it appropriate to extend the main
search to this subject-matter), and which does not combine with
the originally claimed and searched invention or group of
inventions to form a single general inventive concept, such
amendments are not admissible. This applies particularly when
this unsearched subject-matter alone is now claimed.

Applicants should bear in mind that the examining procedure

should be brought to a conclusion in as few actions as possible,
thus the examiner may not allow further amendments (R.912, 2 nd
and 3rd sentence, R.927). See also VI, 4.7 here above).

It is important also to ensure that no amendment adds to the

content of the application as filed and thus offends against the
proviso in Sec.49 as explained in the following paragraphs.

Additional subject-matter

5.3 There is normally no objection to an applicant introducing, by

amendment, further information regarding prior art which is
relevant; indeed this may be required by the examiner (see II, 4.4
and 4.18). Nor will the straight-forward clarification of an obscurity,
or the resolution of an inconsistency, be objected to (e.g. under
Sec. 49 Sec.36.1, clarity or under R.918). When, however, the applicant
R. 916 seeks to amend the description (other than references to the prior
R. 919 art), the drawings, or the claims in such a way that subject-matter
which extends beyond the content of the application as filed is
thereby introduced, the application as so amended cannot be
allowed.

5.4 An amendment should be regarded as introducing subject-

matter which extends beyond the content of the application as filed,
and therefore unallowable, if the overall change in the content of
the application (whether by way of addition, alteration or excision)
results in the skilled person being presented with information which
is not directly and unambiguously derivable from that previously
presented by the application, even when account is taken of matter
which is implicit to a person skilled in the art. At least where the
amendment is by way of addition, the test corresponds to the test

186
for novelty given in IV, 7.2.

Under Sec.49 and R.919 it does not appear to be permissible to

add to an application matter present only in the priority document
for that application. For correction of errors see VI, 5.9 here below.

5.5 For example, if an application related to a rubber composition

comprising several ingredients and the applicant seeks to introduce
the information that a further ingredient might be added, then this
amendment should normally be objected to as offending against
the proviso in Sec.49. Likewise, in an application which described
and claimed apparatus "mounted on resilient supports", without
disclosing any particular kind of resilient support, objection should
be raised if the applicant seeks to add the specific information that
the supports are, or could be, e.g. helical springs (see, however, VI,
5.6 here below).

5.6 If, however, the applicant can show convincingly that the
subject-matter in question would, in the context of the invention, be
so well-known to the person skilled in the art that its introduction
could be regarded as an obvious clarification, the amendment may
be permitted. For example, in the matter of the rubber composition
referred to in VI, 5.5 here above, if the applicant were able to show
that the further ingredient which he sought to introduce was, say, a
well-known additive normally used in rubber compositions of that
kind as an aid to mixing and that its omission would generally be
questioned, then its mention would be allowable on the grounds
that it merely clarified the description and introduced nothing not
already known to the skilled person; however, if the introduction of
this additive brought about some special effects not originally
disclosed, an amendment mentioning this should not be allowed.
Similarly in the above-mentioned case of the resilient supports, if
the applicant were able to demonstrate that the drawings, as
interpreted by the skilled person, showed helical springs, or that the
skilled person would only consider helical springs for the mounting
in question, the specific mention of helical springs would be
allowable.

5.6a Where a technical feature was clearly disclosed in the original

application but its effect was not mentioned or not mentioned fully,
yet it can be deduced without difficulty by a person skilled in the art
from the application as filed, subsequent clarification of that effect
in the description does not contravene the proviso of Sec.49.

5.7 Amendment by the introduction of further examples should

always be looked at very carefully in the light of the general

187
considerations outlined in paragraphs VI, 5.3 to 5.6a here above,
and will not, in general, be admissible. The same applies to the
introduction of statements of new (i.e. previously not mentioned)
effects of the invention such as new technical advantages: for
example, if the invention as originally presented related to a
process for cleaning woolen clothing consisting of treating the
clothing with a particular fluid, the applicant should not be allowed
to introduce later into the description a statement that the process
also has the advantage of protecting the clothing against moth
damage.

5.7a Under certain circumstances, however, later filed examples

or new effects, even if not allowed into the application, may
nevertheless be taken into account by the examiner as evidence in
support of the patentability of the claimed invention. For instance,
an additional example may be accepted as evidence that the
invention can be readily applied, on the basis of the information
given in the originally filed application, over the whole field claimed
(see III, 6.4). Similarly, a new effect (e.g. the one mentioned in VI,
5.7 here above) may be considered as evidence in support of
inventive step, provided that this new effect is implied by or at least
related to an effect disclosed in the originally filed application (see
IV, 9.10).

5.7b Any supplementary technical information submitted after the

filing date of the application which cannot be incorporated in the
application documents as such will be added to the part of the file
which is open to public inspection under Sec.44.2. From the date at
which the information is added to the open part of the file, it forms
part of the state of the art within the meaning of Sec.24.1.

5.7c Care must also be taken to ensure that any amendment to, or
subsequent insertion of, a statement of the technical problem
solved by the invention meets the proviso of Sec.49. For example it
may happen that following restriction of the claims to meet an
objection of lack of inventive step, it is desired to revise the stated
problem (R.407(c)) mentioned in the description to emphasize an
effect attainable by the thus restricted invention but not by the prior
art. It must be remembered that such revision is only permissible if
the effect emphasized is one deducible by a person skilled in the
art without difficulty from the application as filed (see VI, 5.6a and
5.7 here above).

5.7d Features which are not disclosed in the description of the

invention as originally filed but which are only described in a cross-
referenced document which is identified in such description are

188
prima facie not within the content of the application as filed for the
purpose of the proviso of Sec.49. It is only under particular
conditions that such features can be introduced by way of
amendment into the claims of an application.

For, example such an amendment would not contravene Sec.49 if

the description of the invention as filed leaves no doubt to a skilled
reader that protection is or may be sought for such features, that
such features contribute to solving the technical problem underlying
the invention, that such features at least implicitly clearly belong to
the description of the invention contained in the application as filed
and thus to the content of the application as filed, and that such
features are precisely defined and identifiable within the disclosure
of the reference document.

5.8 Alteration or excision of the text, as well as the addition of

further text, may introduce fresh subject-matter. For instance,
suppose an invention related to a multi-layer laminated panel, and
the description included several examples of different layered
arrangements, one of these having an outer layer of polyethylene;
amendment of this example either to alter the outer layer to
polypropylene, or to omit this layer altogether would not normally
be allowable. In each case the specific panel disclosed by the
amendment example would be quite different from that originally
disclosed and hence the amendment would introduce fresh subject-
matter and therefore be unallowable.

5.8a The replacement or removal of a feature from a claim may, for

example, not contravene the proviso of Sec.49 provided the skilled
person would directly and unambiguously recognize that the
feature was not explained as essential in the disclosure, it is not, as
such, indispensable for the function of the invention in the light of
the technical problem it serves to solve, and the replacement or
removal requires no real modification of other features to
compensate for the change. In case of replacement by another
feature: the replacing feature must of course find support in the
original application documents, so as not to contravene the proviso
of Sec.49.

5.8b However, when the extent of a claim is to be limited because

of a coincidental overlap between the prior art and the claimed
subject-matter, and the claim's remaining subject-matter cannot be
defined more clearly and concisely by positive features, this
specific prior art may be excluded by means of a disclaimer.

189
Correction of errors
5.9 Correction of errors in the application documents is a special
case involving an amendment, therefore the requirements of the
proviso of Sec.49 apply likewise.

Where the mistake is in the description, claims or drawings, the

correction must be obvious in the sense that it is immediately
evident (at least once attention is directed to the matter):

(i) that an error has occurred; and

(ii) what the correction should be.

Regarding (i), the incorrect information must be objectively

recognizable for a skilled person using common general knowledge
from the originally filed application documents (description, claims
and drawings) taken by themselves.

Regarding (ii), the correction should be within the limits of what a

skilled person would derive directly and unambiguously, using
common general knowledge, and seen objectively and relative to
the date of filing, from the originally filed application documents.
Evidence of what was common general knowledge on the date of
filing may be furnished in any suitable form.

Such a correction is of a strictly declaratory nature and establishes

what a skilled person, using common general knowledge, would
already derive on the date of filing from the parts of a patent
application, seen as a whole, relating to the disclosure.

Requests for correction can only be considered until the decision to

grant a patent or to refuse the application has been taken.
Concerning correction of errors in a granted patent, reference is
made to Sec.57 and Sec.58.

6. Discussion with the applicant

6.1In this section the term "applicant" is intended to mean

"representative" where he has appointed one. Where the applicant
has appointed a representative, the communication should be with
that representative.

6.2 According to the IRR, Final Provisions, Sections 1(a)(b), all

business with the Office shall be transacted in writing. Actions will
be based exclusively on the written record, and no attention will be
paid to any alleged oral promise, stipulation or understanding.

190
 Unless otherwise provided, the personal attendance of applicants
and other persons at the Office is unnecessary. Their business can
be transacted by correspondence.

6.3 As regards information on any specific technical or scientific

matter pending final action by the Bureau, the applicant may, upon
request and upon the payment of a fee, request in writing a
conference with the examiner, specifying the query he would want
R. 903 to propound to the examiner. The examiner has the discretion to
R. 928 grant the request or to choose to reply to the query in writing.
Interviews for the discussion of pending applications shall not be
held prior to the first written official action thereon.

6.4 The circumstances in which it may be appropriate for the

examiner accept the request for an interview rather than send a
further written action are considered in VI, 4.4 here above. If the
applicant requests an interview the request should be granted
unless the examiner believes that no useful purpose would be
served by such a discussion.

6.5 When an interview is requested, the matters for discussion

should be clearly stated. When granting the request and making
the necessary arrangements, the examiner should record the
particulars and briefly indicate the matters to be discussed. The
R. 903 interview shall take place within the premises of the Bureau during
R. 928 regular working hours as specified by the examiner.

6.6 Solely the examiner dealing with the application will normally
conduct the interview. It should always be made clear to the
applicant that any agreement reached must ultimately be subject to
the approval of the examiner’s superior.

6.7 The interview is not a procedure as formal as a hearing before

the legal division; it shall nevertheless always be reduced to writing
and signed by both the examiner and the applicant immediately
after the interview. Such writing shall form part of the records of the
R. 903 Bureau.
R. 928
6.8 The recording of the interview depends upon the nature of the
matters under discussion. Where the interview is concerned with
the clarification of obscurities, the resolution of uncertainties, or
putting the application in order by clearing up a number of minor
points it will usually be sufficient if the examiner makes a note on
the file of the matters discussed and the conclusions reached, or
amendments agreed. If, however, the interview is concerned with
resolving weightier matters, such as questions of novelty, inventive

191
step, or whether the amendment introduces fresh subject-matter,
then a fuller note of the matters discussed should be made in the
file.

6.9 The records of interviews should always indicate whether the

next action is due to come from the applicant or the examiner.
Pending time limits may be extended.

6.10 If a fresh objection of substance is raised at an interview and

no amendment to meet it is agreed at the time, the objection must
be confirmed by a letter giving the applicant a fresh period within
which he may reply if he so wishes. Otherwise time limits may not
be altered as a result of an interview.

7. Work within the examining divisions

7.1 As stated in VI, 1.4 here above, the examiner may seek the
advice of other members of the examining division, such as his
assistant division chief or division chief, if necessary, at any stage
in the examination. Any action processed by the examiner will be
checked by his superior(s). With ongoing examination, a point will
be reached when it becomes appropriate for the examiner to refer
the case formally to his superior. This will arise if he considers that
a final action is appropriate, i.e. if it the application is in order to
proceed to grant; or, at the other extreme, if there seems no
possibility of amendment which would overcome his objections, or
if the applicant has made no serious attempt to meet these
objections and it therefore appears that the application must be
refused. Between these extremes there are other circumstances in
which reference to the superiors is appropriate, e.g. an interview
may be requested by the applicant because an impasse has been
reached.

7.2 If the examiner considers that the application satisfies the

requirements of the IP code and the IRR, and is thus in order to
proceed to grant he should usually make a brief written report. As a
general rule, it will be appropriate in this report for the examiner to
give the reasons why, in his opinion, the subject-matter as claimed
in the application is not obvious having regard to the state of the
art. He should normally comment on the document reflecting the
nearest prior art and the features of the claimed invention which
make it patentable, although there may be exceptional
circumstances where this is not necessary, e.g. where patentability
is based on a surprising effect. He should also indicate how any
apparently obscure but important points have ultimately been
clarified, and if there are any borderline questions which the

192
examiner has resolved in favor of the applicant, he should draw
attention specifically to these. The report may be made very brief
by including references pointing to the relevant file contents, e.g.
applicant’s reply etc.

7.3 When referring to his superior an application which is not in

order for grant of a patent, the examiner should make a written
report which sets out the points at issue, summarizes the case
history to the extent necessary to enable his superior to obtain a
quick grasp of the essential facts, and recommends the action to be
taken, e.g. refusal, or grant conditional upon certain further
amendments. As the superiors will require to study such cases
themselves, there is no need for a detailed exposition. It will be
useful however to draw attention to any unusual features or to
points not readily apparent from the documents themselves. If the
report recommends refusal and the issue seems clear cut, the
examiner may include with his report a draft reasoned decision for
issue by the Office (see VI, 2.5 here above); if the issue is not clear
cut, the drafting of the reasoned decision should be deferred until
the superior has studied the case.

7.4 When an application is referred to the superior, he will first

consider the case and will indicate his opinion on the course of
action to be taken. When further action is needed, the substantive
examiner will be entrusted with the work.

7.5 The superior should bear in mind that his function generally is
not to make a complete re-examination of the application. If,
following a discussion, the conclusions of the examiner entrusted
with the examination are generally considered to be reasonable,
they should be accepted.

7.6 If, in the opinion of the superior, the possibility exists of

amending the application to bring it into a form which meets the
requirements of the IP code and the IRR, then the examiner should
be entrusted with the task of communicating to the applicant that
the application should be refused on certain grounds unless
satisfactory amendments are submitted within a stated period. If,
within the time limit, satisfactory amendments are made, the
examiner will then report back to his superior recommending that
the application should proceed to grant. If not, he should report
back recommending refusal.

7.7 If, on the other hand, the examiner and his division chief are
satisfied that the applicant has had sufficient opportunity to amend
and that all the requirements are still not met, the examiner should

193
 issue a final rejection or a decision to refuse the application under
Sec. 51.2 Sec.51.1; this decision will normally be drafted by the examiner.
R. 913 The grounds of refusal must be stated, and full reasons must be
IRR Part 13 given; refusal may be based only on grounds on which the
applicant has had an opportunity to put forward comments. In
addition, the applicant's attention must be directed to the provisions
for appeal laid down in Sec.51.2, R.913(a)(b), and in Part 13 of the
IRR.

7.8 Any decision is issued by the examining division is signed by

the examiner and his superior(s).

8. Searching and the search report

The search report

8.1 The search report is prepared before the publication of the

application and published together with the application.
The search report normally is in the form prescribed by R.701.1.

Sec. 44.1 In cases where the application lacks unity, the search report may
R. 800 relate to more than one invention. In some exceptional cases
R. 701.1 provided only a incomplete search report will be available. Due to
obscurities in the application as filed.

8.2 Assuming that a search has been made and documents cited,
there are two special problems that may arise occasionally in
respect of such documents. The first is the date of publication of
the material in the document; this is dealt with in IV, 5.2 the other
problem concerns documents in a foreign language (e.g. Japanese,
German or French).

8.3 The search examiner will cite a document in a foreign

language only if he knows or has strong evidence leading him to
suspect (e.g. from drawings, from an abstract, or a corresponding
patent in English or Filipino), or from a translation produced by
himself or some other person familiar with the language of the
document) that the document is relevant. The substantive
examiner, in his first action, may cite the document on the basis of
similar evidence; an abstract or corresponding document in
English, if supplied by the search examiner, will also be cited. If,
however, the applicant disputes the relevance of the document and
gives specific reasons, the examiner should consider whether, in
the light of these reasons and of the other prior art available to him,
he is justified in pursuing the matter. If so, he may try to obtain from
the applicant a translation of the document (or merely the relevant

194
 part of it, if that can be easily identified), or at least statements
concerning specific questions relating to the disclosure comprised
in the document.

Search for conflicting Philippine applications

8.4 As stated in VI, 2.3 here above, the examiner will need to
make a so-called "topping-up" search for conflicting Philippine
applications falling within the area defined by Sec.24.2. This is
because the searchable collection of the Philippine applications
Sec. 24.2 may not be complete in respect of such material at the time the
main search is made. Since priority dates claimed (if any) may not
be accorded to all or part of the application but may be accorded to
the appropriate part of a conflicting application (see V, 2.1), this
search should be extended so as to cover all published Philippine
applications filed up to one year or more after the filing of the
application under consideration. If the examiner is unable to
complete this "topping-up" search at the first examination stage he
should ensure that such search is completed before the application
is reported to be in order for the grant of a patent.

In the cases in which an application is found to be in order before

this search can be completed (because of publication delays
concerning older, potentially conflicting Philippine applications), the
grant of a patent should not be substantially delayed for this reason
unless the examiner has knowledge of such a conflicting
application which would have to be cited against novelty. In this
case, publication of the relevant application, should, if possible, be
accelerated and the granting of the application in question should
be delayed.

Other additional searches during examination

8.5 An additional search will sometimes be required either at the

first stage of amendment or subsequently. This may arise for a
number of reasons. First, an additional search may be necessary
where only an incomplete search report (e.g. because of obscure
claims) has been issued after the main search, and subsequently
the deficiencies which rendered a meaningful or complete search
impossible have been corrected by amendment, or successfully
refuted by the applicant.

An additional search may also be necessary where the claims have

been so amended that their scope is no longer covered by the
original search.

195
 Exceptionally, an additional search may be required if the applicant
refuses an acknowledgement of prior art (see IV, 9.5), or if the
examiner believes that material relevant to obviousness might be
found in technical fields not taken into account during the main
search.

8.6 The substantive examiner is not barred from looking for a

relevant document whose existence he knows of or has reason to
suspect, if he can retrieve that document in a short time from
material available at the Office.

8.7 In the case of foreign applications, pursuant to Sec.39 and

R.612 and 612.1, the applicant will generally be requested to
provide copies of relevant documents relating to that foreign
application, e.g. search reports, examination reports, and citations.
Such requests may be issued during the whole procedure up to
grant, depending on the circumstances of the case. See also VI,
Sec. 39 2.3a and 2.4a here above.
R. 612
R.612.1 8.9 Concerning the formats to be used in citing relevant
documents, reference is made to R.806.The references cited
should be clearly identified, the relevant passages thereof should
be identified as precisely as possible.

The application may be published before eighteen (18) months but

R. 806 not earlier than six (6) months from the filing date, provided that:
(a) A written request for an early publication is filed before the
Director;
(b) The applicant attaches thereto a waiver on the confidentiality
disclosures of the application, under oath;
(c) The applicant agrees to have the application published
without a search report; and
(d) Full payment has been made of the early publication fees.

9. Formality Requirements for Patentability (See Chapter 2,

PART 1 of this Manual)

10. Special applications

Divisional applications

The Philippines are a signatory state of the Paris Convention. Art.4

G of the Paris Convention reads:
“G. – (1) If the examination reveals that an application for a patent
contains more than one invention, the applicant may divide the

196
 application into a certain number of divisional applications and
preserve as the date of each the date of the initial application and
the benefit of the right of priority, if any.

Paris Convention (2) The applicant may also, on his own initiative, divide a patent
Art. 4 G application and preserve as the date of each divisional application
the date of the initial application and the benefit of the right of
priority, if any. Each country of the Union shall have the right to
determine the conditions under which such division shall be
authorized.”

Sec.38.2 and R.604(b), R.606 to R.610 relate to the first case

(requirement for restriction, following a lack of unity objection) and
R.611 to the second case (division on own initiative).

10.1 Subsequent to the filing of a patent application, a divisional

application may be filed. The divisional application is accorded the
same filing date as the parent application, and has the benefit of
any right of priority of the parent application in respect of the
subject-matter contained in the divisional application. A Philippine
application may give rise to more than one divisional application. A
divisional application may itself give rise to one or more divisional
applications.
Sec. 38.2
R. 604 (b) 10.2 The applicant may file a divisional application of his own
R. 610 volition (voluntary division). The most common reason, however,
R. 611 for filing a divisional application is to meet an objection under
Sec.38.1 of lack of unity of invention (mandatory restriction). If the
examiner objects to lack of unity, the applicant is allowed a period
in which to limit his application to a single invention. Concerning
details of the procedure in case of lack of unity objection, reference
is made to the provisions of Sec.38.2 and R.604 to 610 and to III, 7.

10.3 Divisional applications may be filed on a pending application

before the parent application is withdrawn, abandoned or patented.
This means that the mere deletion of subject-matter in an
application is not prejudicial to the later filing of a divisional
application up to the events mentioned above. When deleting
subject-matter the applicant should, however, avoid any statements
which could be interpreted as abandonment. The applicant may
thus file a divisional application for the subject-matter deleted in the
parent application if he wishes to obtain protection for this subject-
matter.

10.4 The substantive examination of a divisional application should

in principle be carried out as for any other application but the

197
 following special points need to be considered.

The examination of a divisional examination should normally be

carried out as soon as possible by the examiner of the parent
application.

The claims of a divisional application need not be limited to subject-

matter already claimed in claims of the parent application; however
the subject-matter may not extend beyond the content of the parent
application as filed (see proviso in Sec.38.2). If a divisional
application contains subject-matter additional to that contained in
the parent application as filed and the applicant is unwilling to
remedy this defect by removal of that additional subject-matter, the
divisional application must be refused. It cannot be converted into
an independent application taking its own filing date. Moreover a
further divisional application for this additional subject-matter will
also be refused.

If the divisional application's subject-matter is restricted to only a

part of the subject-matter as claimed in the parent application, this
subject-matter must be directly and unambiguously derivable as
such a separate entity, which could be used outside the context of
the invention of the parent application.

10.5 The description and drawings of the parent application and the
or each divisional application should in principle be confined to
matter which is relevant to the invention claimed in that application.
However, the repetition in the description of a divisional application
of matter in the parent application need not be objected to unless it
is clearly unrelated to or inconsistent with the invention claimed in
the divisional application.

10.6 The parent and divisional applications may not claim the same
subject-matter (see IV, 6.4 and e.g. Sec.111 and R.915). This
means not only that they must not contain claims of substantially
identical scope, but also that one application must not claim the
subject-matter claimed in the other, even in different words. The
difference between the claimed subject-matter of the two
applications must be clearly distinguishable. As a general rule,
however, one application may claim its own subject-matter in
combination with that of the other application. In other words, if the
parent and divisional applications claim separate and distinct
elements A and B respectively which function in combination, one
of the two applications may also include a claim for A plus B. In
Sec. 111 such a case, both applications should contain appropriate cross-
R. 915 references which clearly set out the position.

198
 Applications resulting from a court order or decision under
Sec.67

10.7 In certain circumstances, before a patent has been granted on

a particular application, it may be adjudged as a result of a final
court order or decision that a person other than the applicant is
entitled to the grant of a patent thereon. In this event this person
may either (Sec.67.1):

(a) prosecute the application as his own application in place of the

applicant,

(b) file a new patent application in respect of the same invention,

or

Sec. 67 (c) request that the application be refused.

(See also IV, 8).

10.8 If the other person adopts the first of these alternatives he

becomes the applicant in place of the former applicant and the
prosecution of the application is continued from the position at
which it was interrupted.

10.9 If however the other person files a new application under

Sec.67.1(b), the provisions of Sec.38.2 apply to this new
application mutatis mutandis. This means that the new application
is treated as though it were a divisional application i.e. it takes the
date of filing and the benefit of any priority right of the original
application. The examiner must therefore ensure that the subject-
matter content of the new application does not extend beyond the
content of the original application as filed.

10.10 The IP code and the IRR are silent about cases where the
original application has been withdrawn or refused or was deemed
to be withdrawn and is thus no longer pending. Sec.67.1(b) does
not appear to exclude the filing of a new patent application in
respect of the same invention in such a case.

10.12 The IP code and the IRR are silent about cases where, by a
final court order or decision, it is adjudged that a third party is
entitled to the grant of a patent in respect of only part of the matter
disclosed in the patent application.

It would appear that in such a case, the foregoing considerations

199
 apply only to such part of the matter and that the option of
Sec.67.1(a) is not open to the third party and, regarding the option
of Sec.67.1(b), the new application must be confined to that part of
the original subject-matter to which he has become entitled;
similarly the original application must be confined to the subject-
matter to which the original applicant remains entitled. The new
application and the amended original application will stand in a
relationship to each other similar to that appertaining between two
divisional applications, and they will each stand in a relationship to
the original application similar to that in which divisional
applications stand in relation to the application from which they are
divided. The guidance set out in VI, 9.4, 9.5 and 9.6 here above
therefore applicable to this situation.

11. Time limits for response to communications from the

examiner, requirements on reply

11.1 The general considerations relating to such time limits are

set out in R. 928 and R. 929, R.929.1. The time limit for response
to a letter from the examiner should in general be between two
months.

If an applicant fails to prosecute his application within the required

time as provided in the IRR, the application shall be deemed
withdrawn.

11.2 The time limit for reply may be extended only for good and
sufficient cause, and for a reasonable time specified. Any such
request must be filed on or before the day on which the action by
R. 928 the applicant is due.
R. 929
R. 929.1 The examiner may grant a maximum of two extensions, provided
that the aggregate period granted including the initial period
allowed to file the response, shall not exceed six months from the
R. 928 (a) mailing date of the official action requiring such response.

An extension of the time limit may e.g. be appropriate, for instance,

R. 928 (b) if the applicant resides a long way from his representative and the
language of the proceedings (i.e. English, Filipino) is not one to
which the applicant is accustomed; or if the subject-matter of the
application or the objections raised are exceptionally complicated.

11.3 Prosecution of an application to save it from the deemed

withdrawal must include such complete and proper action as the
condition of the case may require. Any reply not responsive to the

200
 last official action shall not save the application from being deemed
withdrawn.

11.4 Such a reply must be a bona fide attempt to deal with all the
objections raised by the examiner. When the reply is a bona fide
attempt to advance the case, and is a substantially complete
response to the examiner’s action, but consideration of some
matter or compliance with some requirements has been
R. 928 (c) inadvertently been omitted, opportunity to explain and supply the
omission may be given.
However, if a serious objection raised in the examiner’s action has
not been dealt with at all and is still applying , the examiner may
refuse the application under Sec.51.1 and R.913.

R. 928 (d) 12. Examination of observations by third parties

R. 928 (e)
R.911 Within six (6) months from the date of publication of the application
or the request for substantive examination filed by the applicant,
whichever comes later, any person may present observations in
writing concerning the patentability of the invention including
matters pertaining to novelty, inventive step, and industrial
applicability while citing relevant prior art. Additionally, a
conference at the Office may be requested by the interested party
to obtain a better understanding of the application, the patent
prosecution process, and the patent system in general. The Office
shall acknowledge the receipt of any observation or request for
conference and may request for additional information or
Sec. 47 clarifications. All observations shall be communicated to the
R. 803 applicant who may comment on them within thirty (30) days from
the mailing date of the communication. Copies of any observation
filed, comments thereto by the applicant, and minutes of
conferences shall form part of the file wrapper in the subject
application.

The observation and comments, as well as discussion in the

conferences, shall be taken into consideration in examining the
patent application. The Office shall notify the parties who have
submitted observations or were present during the conferences of
the decision of the Office involving the patent application, if and
when it is granted registration, after issuance of the patent
certificate.

In the context of substantive examination, such observations are

only taken into account if a request for examination has been filed.

If, in whole or in part, they call into question the patentability of the

201
 invention, they must be taken into account by the examiner until the
end of the examination proceedings.

If the observations relate to alleged prior art available other than

from a document, e.g. from use, this should be taken into account
only if the alleged facts are either not disputed by the applicant or
proprietor or established beyond reasonable doubt.
Observations by third parties received after the conclusion of
proceedings will not be taken into account and will simply be added
to the file.

Since opposition proceedings before the Bureau of Patens are not

foreseen by the Code, observations by third parties may be
considered as an low-cost way of attacking a potential patent.
Petitions to cancel a patent (post grant) are handled by the Bureau
of Legal Affairs, Sec.61-66.

13. Oral proceedings

Formal oral hearings before the examiner are not foreseen in the IP
code or revised IRR.
Informal interviews/conferences with the examiner are addressed in
VI,6 here above.

14. Taking of evidence

14.1 This section deals only with the kind of evidence most likely to
arise in pre-grant proceedings, i.e. written evidence.

R. 903 14.2 An examiner would not, as a general rule, require evidence to

R. 928 be produced. The primary function of the examiner in proceedings
before grant is to point to the applicant any ways in which the
application does not meet the requirements of the IP-Code. If the
applicant does not accept the view of the examiner, then it is for the
applicant to decide whether he wishes to produce evidence in
support of his case and, if so, what form that evidence should take.
The examiner should afford the applicant a reasonable opportunity
of producing any evidence which is likely to be relevant. However,
this opportunity would not be given where the examiner is
convinced that no useful purpose would be served by it, or that
undue delay would result.

14.3 Written evidence could include the supply of information, or

the production of a document or of a sworn statement. To take
some examples:

202
 To rebut an allegation by the examiner of lack of inventive step, the
applicant might, in support of his case, supply information as to the
technical advantages of the invention. Again he might produce a
sworn statement, either from himself or from an independent
witness, purporting to show that workers in the art have been trying
for a long time unsuccessfully to solve the problem with which the
invention is concerned, or that the invention is a completely new
departure in the relevant art.

13.4 Concerning models, reference Is made to the provisions of

R.419 to 419.4.

15. Grant and publication of patent

15.1 If the application meets the requirements of the IP code and

the IRR, the Office shall grant the patent.

15.2 If the examiner considers that the application satisfies the

requirements of the IP code and the IRR and is thus in order to
proceed to grant he should make a brief written internal report
R. 419 to R. 419.4 recommending grant. This report may be called a votum. As a
general rule, it will be appropriate in this report for the examiner to
give the reasons why, in his opinion, the subject-matter as claimed
in the application is not obvious having regard to the state of the
art. He should normally comment on the document reflecting the
Sec. 50 nearest prior art, the technical problem solved, and the features of
R. 1000 the claimed invention which solve the problem and thus make it
patentable. He should also indicate how any major objections have
been met, or if they have been withdrawn the reason for this, for
example the applicant provided good counter arguments to show
that the objection was wrong. If there are any borderline questions
which the examiner has resolved in favor of the applicant, he
should draw attention to these. The internal report may be made
very brief by including references pointing to the relevant file
contents, e.g. applicant’s reply etc.

15.3 When an application which is not in order for grant of a patent,

despite one or more letters to the applicant and failure by him to
meet the objections raised, the application should be refused. The
examiner should make a written report which sets out the points at
issue, summarises the case history to the extent necessary to
enable someone else to obtain a quick grasp of the essential facts,
and recommends refusal. It will be useful to draw attention to any
Sec. 51.1 unusual features or to points not readily apparent from the
documents themselves.

203
 15.4 An application may only proceed to grant provided that all 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. 50.1
Rule 1000 15.5 The grant of the patent together with other information shall be
Sec. 52.1 published in the IPO Gazette within six (6) months.
R. 1002
Sec. 52.2 15.6 Any interested party may then inspect the complete
Rule 1003 description, claims and drawings of the patent on file with the
Office.

204
205
206
207