IPOPHL Temporarily Suspends Strict Implementation of Rules on Payment of Filing Fee and 1st Publication Fee for Patents, Utility Models, and Industrial Designs

On 29 May 2023, the Intellectual Property Office of the Philippines ("IPOPHL") issued Memorandum Circular No. 2023-014 ("MC 2023-014"), which took effect on 1 July 2023, suspending the strict implementation of rule 401.1 of the 2022 Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs ("Rules") ("Rule 401.1"). Under Rule 401.1, if the Filing Fee and 1st Publication Fee for patent applications are not paid at the time of filing of the application, the application shall be considered as a failed application. In practice, however, if the Filing Fee and 1st Publication Fee are not paid either at the time the application is filed or within 24 hours from filing, the application is not considered to have been filed and there is no application to speak of.

However, IPOPHL has become aware that its external online payment gateway partners have encountered challenges in adapting their systems to align with the Rules such that late payments, up until one week from submission of applications to IPOPHL, have been accepted by the external online payment gateways. This has resulted in the assignment of an application number to applications which would have otherwise been considered as failed applications under Rule 401.1 for failure to pay the Filing Fee and 1st Publication Fee within the prescribed period.

As a compromise between the Rules and the present limitations in the external online payment gateway system, MC 2023-014 allows an applicant to pay the Filing Fee and 1st Publication Fee of its patent application within one week from the initial submission of the application with IPOPHL. The full payment of the Filing Fee and the 1st Publication Fee must actually be paid within the one-week period; otherwise, the application shall be considered to have failed, and a Notice of Failed Application shall be issued. IPOPHL stressed that this is an interim measure that will be implemented only until such time that the external online payment gateway system is able to align with the requirements of the Rules.