IPOPHL SEARCH

PROCEDURES

ENGR. SHERWIN B. LAGONOY

IPRS I
CHEMISTRY EXAMINING DIVISION
BUREAU OF PATENTS
OUTLINE

Patent Search in IPOPHL

Purpose
Prior Art
Search Workflow
Formulating a Search Strategy
Search Tools
Three-Person Search Team
Written Opinion
IPOPHL Standard Office Action Templates

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

WHY SEARCH?

To discover relevant prior art that is useful in

determining if the subject matter of the patent
application is novel and/or inventive
To recognize the current state of the art for a
particular technology field

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

PRIOR ART

everything made available to the public before

the filing date or priority date of the application
includes written disclosure, oral disclosure,
multimedia, prior use, information from the
internet

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

PRIOR ART (RA 8293, Sec.24)

Prior Art. Prior art shall consist of:

Everything which has been made available to the public
anywhere in the world before the filing date or the priority date of
the application claiming the invention; and
The whole contents of an application for a patent, utility model, or
industrial design registration, published in accordance with this
Act, filed or effective in the Philippines, with a filing or priority
date that is earlier than the filing or priority date of the
application: Provided, That the application which has validly
claimed the filing date of an earlier application under Section 31
of this Act, shall be prior art with effect as of the filing date of
such earlier application: Provided further, That the applicant or
the inventor identified in both applications are not one and the
same. (Sec. 9, R.A. No. 165a)

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

SEARCH WORKFLOW

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

UNDERSTANDING THE CLAIMS

Read and construe the claims

Consider the following
Can all the claims be searched?
Is there unity?

Should the search be limited to certain characteristic

features?
The search should cover the invention as
described and claimed, must include the
inventive concept

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

FORMULATING A SEARCH
STRATEGY
Consider specific search terms or keywords, IPC
marks, alternate spellings, analogous terms, time
restrictions, applicant/inventors name, etc.
Select the appropriate database to be used
Carry out a preliminary search. Are the search
terms giving a reasonable number of results?
More/less search terms necessary?
Look at the results. Are they in the right technology
field? Is a different search strategy appropriate in
view of the results obtained?

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

 DATABASES
and
SEARCH TOOLS

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

TYPES OF SEARCH DATABASES

1. Proprietary databases
2. Publicly available databases
3. IP Office databases
- provided by national and regional patent offices

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

PROPRIETARY DATABASES

Thomson Innovation http://www.thomsoninnovation.com

(Thomson Reuters)

WIPS Global (WIPS) http://www.wipsglobal.com

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

PUBLICLY AVAILABLE DATABASES

Google Patents https://patents.google.com/

https://www.google.com/advanced_patent_search

Google Scholar https://scholar.google.com/

Patent Lens or The https://www.lens.org/lens/

Lens
PubMed http://www.ncbi.nlm.nih.gov/pubmed/

PubChem http://pubchem.ncbi.nlm.nih.gov/search/

MedLinePlus(subset of the https://www.nlm.nih.gov/medlineplus/

PubMed database)
3GPP http://www.3gpp.org/

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

IP OFFICE DATABASES
World Intellectual http://www.wipo.int/patentscope/search/en (Patentscope)
Property Organization http://www.wipo.int/case/en/ (WIPO CASE)
(WIPO)
European Patent Office http://www.espacenet.com/access
(EPO)

United States Patent http://patft.uspto.gov

and Trademark Office
(USPTO)
Japan Patent Office https://www.j-
(JPO) platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage
IP Australia http://pericles.ipaustralia.gov.au/ols/auspat/ (AusPat)

Intellectual Property http://121.58.254.45/ipophilsearch/patentsearch.aspx

Office of the Philippines
(IPOPHL)

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

IPOPHL PATENT SEARCH

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

3-PERSON SEARCH TEAM

Rationale
Ensure quality of search
Institutionalize knowledge transfer
between senior and junior examiners
and across technology fields
More heads are better than one

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

3-PERSON SEARCH TEAM

Primary Secondary
Examiner Examiner

Division
Chief/
Assistant
Division
Chief/OIC

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

3-PERSON SEARCH TEAM

Additional members may be added as

deemed fit
Applied to ORIGINAL SEARCHES of
National and International Applications
The Secondary Examiner(s) shall be
drawn from experienced examiners in
the relevant technology

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

3-PERSON SEARCH TEAM

EXAMPLE: Chemical Group

Application: Antiviral Compound

Primary Examiner: MSBED Patent Examiner 1
Secondary Examiner(s): MSBED Patent Examiner 2
and/or
CED Patent Examiner
Division Chief: MSBED Supervisor

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

WRITTEN OPINION

a preliminary and non-binding opinion

on whether the invention appears to meet
the patentability criteria in light of the
search report results
established together with the search
report and sent to the applicant
conducted within 6 months from the filing
date
INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES
PURPOSE OF WRITTEN OPINION

aims to help local applicants in deciding

whether or not to proceed with filing a
corresponding PCT application

aims to help the applicant understand and

interpret the results of the search report,
being of special help in evaluating the
possibility of obtaining a patent

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

NON-ESTABLISHMENT OF SEARCH
REPORT & WRITTEN OPINION

Applicable only if ALL the claims are/have

excluded subject-matter (see Rule 202 of

the Revised IRR on Inventions)
unclear (the description, the claims, or the
drawings, fail to comply with the prescribed
requirements to such an extent that a
meaningful search could not be carried out)

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

 TEMPLATES FOR
SEARCH
AND
WRITTEN OPINION

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

SEARCH STRATEGY TEMPLATE

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

SEARCH REPORT TEMPLATE

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

WRITTEN OPINION TEMPLATE

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

NEXT STEP

Capacity building on Advanced Search

Subscription to additional commonly-used
proprietary databases used by other ISAs/IPEAs
(STN, IEEE, EPOQUENET)

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

 THANK YOU

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES