Third-Party Observation: An Alternative to Litigation

Introduction

Third-party observation is an administrative procedure under the Intellectual Property Code that allows the public to submit written objections to applications for (i) grants of patent, (ii) registration of geographical indications, and (iii) declaration of well-known trademarks.

Observations may be filed within a prescribed period following the publication of the application, after which the applicant may submit a response. This procedure excludes copyright, utility model, or industrial design applications, as these are not published prior to registration.

Jurisdiction

Third-party observations involving patents fall under the jurisdiction of the IBureau of Patents, while those concerning geographical indications and well-known marks are handled by the Bureau of Trademarks. The denial of a third-party observation and the subsequent registration of the objected application do not prevent an affected party from filing a separate petition for cancellation before the Bureau of Legal Affairs.[1]

Legal Framework

Patents

Following the publication of a patent application, any person may submit written observations on the patentability of the invention, relating to novelty, inventive step, and industrial applicability, supported by relevant prior art. Observations must be filed within six (6) months from the publication date in the form of a sworn statement identifying the affiant, stating the grounds for objection, along with supporting evidence and payment of the prescribed fees. Submissions that do not comply with these requirements will not be considered.

All third-party observations are communicated to the applicant, who may file comments within thirty (30) days from receipt. Both the observations and the applicant’s comments form part of the application record and are taken into account during examination. Upon request, the Office shall notify the third party of the status or final disposition of the application.[2]

Third-party observations may likewise be filed within six (6) months from the publication date of the PCT national phase entry listing.[3]

Declaration of Well-Known Marks

Any interested person who may be adversely affected by the declaration of a well-known mark may file a Notice of Third-Party Observation within one (1) month from the publication of the application, along with payment of the prescribed fee. A verified written observation, together with supporting documents, must be submitted within one (1) month from receipt of the notice by the Director of Trademarks. Failure to comply with this requirement results in dismissal of the observation.

The applicant may file a comment within one (1) month from receipt of the observation. The observation, any comment, and the recommendation of the consultative committee on well-known marks are considered by the Bureau of Trademarks in deciding the application. The filing periods may be extended for an additional one (1) month for good cause, subject to payment of the required fees.

In evaluating third-party observations and comments, a consultative committee on well-known declarations shall be constituted. The committee is composed of the following members: (a) Intellectual Property Rights Specialist V from the Bureau of Trademarks, (b) Assistant Director of the Bureau of Trademarks, and (c) Adjudication Officer from the Bureau of Legal Affairs.

The Director of Trademarks decides on the application following receipt of the consultative committee’s recommendation.[4]

Geographical Indications

Within one (1) month from the publication of an application for registration of a geographical indication, any interested person who may be damaged by its registration may file a Notice of Third-Party Observation with the Registrar, upon payment of the prescribed fee. A verified written observation with supporting documents must be submitted within one (1) month from receipt of the notice. Non-compliance results in dismissal.

The applicant may file a comment within one (1) month from receipt of the observation. Both the observation and the comment are considered by the Registrar in determining whether to grant or refuse protection. Filing periods may be extended on good and sufficient cause, subject to payment of the required fees.[5]

Summary

As an administrative procedure, third-party observation provides the public with an easier and cost-effective means to challenge patent applications. Its coverage has since been expanded to include declarations of well-known marks and the registration of geographical indications. This procedure serves as an accessible alternative to litigation before the courts or the Bureau of Legal Affairs for objecting to intellectual property applications.

[1] Section 47, IP Code (R.A. 8293, as amended)

[2] Rule 803, Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs (IPO Memorandum Circular No. 2022-016 dated July 4, 2022).

[3] Rule 803.1, Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs (IPO Memorandum Circular No. 2022-016 dated July 4, 2022).

[4] Rule 12, Regulations on Well-Known Marks (IPOPHL Memorandum Circular No. 2025-009 dated February 5, 2025).

[5] Article IX, Rule 21, GI Regulations (IPOPHL Memorandum Circular No 2022-022 dated October 5, 2022).