Bureau of Patents – Intellectual Property Office of the Philippines (BOP-IPOPHL)
The Early Issuance of Search Report (ESR) is the patent filing system created by the Bureau of Patents – Intellectual Property Office of the Philippines (BOP-IPOPHL) to facilitate and hasten to file of patents of Filipino scientists.
The ESR requires the issuance of Search Reports (SR) on the patentability of inventions within six (6) months from the filing.
Fully implemented in 2018, the ESR streamlines and hastens the procedures for filing patents at the BOP, effectively allowing Filipino scientists to simultaneously apply for international patents as prescribed under the Patent Cooperation Treaty (PCT).
Background and Problem
As the filing for patents in the Philippines traditionally takes 18 months on average, many Filipino scientists are unable to submit their applications for international patents due to the 12-month requirement of the Patent Cooperation Treaty (PCT).
Through the ESR, the BOP-IPOPHL sought to expedite the local patent procedure from 18 months to 6 months on average, allowing Filipino inventors to file international patents within the prescribed 12-month period.
The ESR implementation was inspired by the European Patent’s Office (EPO) practice of issuing ESRs.
Solution and Impact
Along with more than 150 contracting nations/states, the Philippines is a signatory to the PCT. The Treaty allows an inventor to get international patent protection for an invention in multiple countries simultaneously within 12 months from the filing date of their first patent application in their home countries.
ESR improves the efficiency of patent searching and examination process at the BOP-IPOPHL. This ensures that the inventors receive early and accurate initial assessments of their inventions’ patentability (novelty, inventive step & industrial applicability). As such, it contributes to the agency’s mandate to provide timely and quality patents since the search report is a substantive requirement for publication of the application.
The issuance of search reports is monitored by the automation system installed that helps the agency follow up on existing applications.
Through the early release of search reports, Filipino inventors are provided ample time to reply to the assessments done by BOP-IPOPHL on the patentability of their work, as well as the opportunity to improve their applications (e.g., amendments, claims, etc.) Furthermore, faster patent protection processing means inventors can commercialize their technology at earlier dates.
The ESR was inspired by the European Patent’s Office (EPO) practice of issuing ESRs. So far, BOP-IPOPHL is the only ASEAN state implementing the ESR in patent applications.
The ESR is sustained through an automated system as an effective monitoring system and through monthly monitoring by the division chiefs; monthly reporting of the performance of the examining divisions to the Management Committee and division chiefs; and the even distribution of applications to examiners within the divisions. For example, when an uneven load of applications is due for examination, some are delegated to related divisions.
The IPOPHL is the only medium-sized IP Office that implements the ESR. Despite its institutional limitations, the BOP-IPOPHL, through the ESR, was able to issue 146 SRs of 182 applications filed from July – Dec 2017 and 191 of 239 from January – June 2018.