What You Need to Know About
“JUAN’S THOUSAND INVENTIONS”
1) Who may avail?
Patent applicants who are resident inventors may avail of the waiver of fees under the Patent Protection Incentive Package (PPIP) also known as “Juan’s Thousand Inventions”.
2) Which patent applications are eligible for the waiver of fees?
The following patent applications which are filed on or after 22 March 2012 are eligible for the PPIP:
a) Inventions derived from work within an HEI which is an ITSO
b) Inventions of resident inventors who have collaborated with or contracted the services of an HEI which is an ITSO for patent search and prosecution
c) Inventions arising from collaborations between and among HEIs, including foreign HEIs, provided that at least one (1) HEI is an ITSO
3) When is the period to avail?
Patent applicants may avail of the PPIP until December 30, 2015.
Should they not be able to file the application on that date, they may request for an extension of time to file the application. The request should be signed by the President of the HEI and submitted to the Director General of IPOPHL on or before December 30, 2015.
4) Where should they go?
Patent applicants may request the ITSO managers of the HEIs which is an ITSO for assistance in their applications.
5) What are the benefits under the PPIP?
Under the PPIP, resident inventors with eligible patent applications may request IPOPHL to waive the requirement for the payment of the following fees:
Filing Fees and fees for excess claims
Fees for Formality Examination
Fees for Substantive Examination
Fees for Publication
Annuities from the 5th to the 15th year
Fees charged by and payable to IPOPHL in connection with the PCT application; and
Fees relating to the assignment of rights from the inventor to an HEI
This list is exclusive;other fees not mentioned above are not covered by the PPIP and cannot be waived by IPOPHL.
Examples of fees that cannot be waived are those relating to extension of time to file responses, petitions for revival, requests for early publication and requests for certified true copies.
6) Are the benefits under the PPIP automatically granted?
No. To avail of the benefits, the application must be endorsed by the HEI and certified by the DITTB-TTD.
7)What are the conditions for the waiver of fees?
a) For filing fees and fees for excess claims to be waived, the requirement that the patent application was first filed with IPOPHL must be complied with.
b) A PCT application for the corresponding application should be filed within twelve (12) months for subsequent fees to be waived.
c) For annuities to be waived, proof that commercialization of the subject patent is being actively pursued should be submitted.
d) Furthermore, patent prosecution shall be handled by an ITSO. All prosecution-related documents shall be signed by an ITSO and all communications from IPOPHL shall be sent only to the ITSO.
8) Are annuity fees automatically granted?
No. There must be a showing that there is bona fide effort to pursue commercialization for the annuity payments to be waived.
This will be reported to the DITTB-TTD which shall issue the certification for the waiver of fees.
9) If the Bureau of Patents issues office action for payment of fees what should the applicant do?
It is important that the applicant must respond to all Office Actions, including those that require payment of fees. The applicant must respond to the office action informing the examiner that the application is under the PPIP program and that the corresponding approval for the waiver of the fees has been obtained or has been requested from the DITTB-TTD.
Failure to respond to any Office Action within the reglamentary period may result in the withdrawal of the application.
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