Philippines Implements a System of Pre-Grant Third Party Review in Patent Applications

September 11, 2014

The Intellectual Property Office of the Philippines (IPOPHIL) has announced its much-delayed implementation of a pre-grant Community Review Process (CRP) for patent applications.  In a gathering of industry representatives held at the IPOPHIL on September 10, 2014, the Director of the Bureau of Patents announced that the Bureau of Patents will adopt the CRP effective September 1.  He explained that this move is aimed at diffusing knowledge and information to relevant stakeholders, and to promote transparency in the granting of invention patent, utility model and industrial design registrations.  The CRP was initially mandated under the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs, which called for a community review process for invention patent, utility model and industrial applications pursuant to Rule 802 and Rule 1700.

The CRP concept is inspired by the public participation process during patent examination in other jurisdictions.  In the European patent system, the European Patent Convention provides that any person may present observations concerning the patentability of an invention described in a European patent application.  Likewise, a third party observation system relating to novelty and inventive step was also introduced for PCT applications, which can be made at any time from the publication of the PCT application until the expiration of twenty (28) months from the priority date.  And in Japan, third-party observations are accepted by the Japanese Patent Office at any time after a patent application or an application for utility model registration is filed, even after a decision is made to grant a patent or utility model registration.

IPOPHIL’s adoption of the CRP involves a different approach from the similar practices in other jurisdictions.  Under the CRP mechanism, IPOPHIL maintains a list of industry associations, government agencies, schools, universities and other stakeholders.  Once an invention patent, utility model or industrial design application is published, the relevant stakeholders are notified and provided with the bibliographic information of such application.  In the case of utility model or industrial design application, a concerned stakeholder may file a written adverse information within thirty (30) days from the date of publication.  With respect to invention patent application, a concerned stakeholder has six (6) months from publication or from the date of request for substantive examination, whichever is later, to file a third party observation.  Upon filing of an adverse information or third party observation, the Director can either refuse registration, require an amendment of the application, or recommend the application for registration.

With the launch of the CRP, the IPOPHIL hopes to encourage the community to provide useful information to patent examiners during the application review process.  Feedback from stakeholders is particularly useful in light of the absence of substantive examination in utility model and industrial applications.  A stakeholder can timely file an adverse information prior to registration.

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