Trademark Registry Module

Trademark Registry Module MIS-EDP Bureau User Requirements Specification Application Management Service Division Version 1

I Module/System Name:

TRADEMARK REGISTRY MODULE

II Description

This project supports the office’s strategic goal of providing effective and timely delivery of high quality and cost effective services. This entails development of new module for maintaining registered trademarks. The project provides an improved interface that is easy to use and comply with current & final workflow, data requirements and corresponding policies in trademark registry.

This is an enhancement of existing TEAMS PTASD module with the following additional features:

 Improved facility for forwarding of communication

 Facilitate viewing/saving of details of DAU 3 years.

 Pre-filled up and revised Office Action Template.

 Real-time access to corresponding payments done in FMS.

 Provision to view bibliographic data including the digitized documents.

 Facilitate complete workflow of cancellation of registered trademarks from automatic generation of trademarks for cancellation/removal from registry up to “Finally Cancelled” status.

 Generation of list of Recordal for publication in the e-gazette

Generally, Registry module has the following functionalities:

 Generation of list of Trademarks for Notice/s to File DAU/5th year/Renewal

 DAU Processing (3rd/5th)

 Recordal Processing

 Preparation of CTC

 Generation of Expired TMs

Reviewed / Conformed by:

Maryjane A. Larida Amelita Husmillo-Escalona Asst. Dir. Corazon DP. Marcial OIC-Dir. Lourdes F. Alabarca

TPR_URS v1.doc Author: Roger C. Tobongbanua Page 1 of 12

TPR-URS-D1-001 5/29/2018 10/17/2008 Trademark Registry Module MIS-EDP Bureau User Requirements Specification Application Management Service Division Version 1

III. Declaration of Actual Use (DAU)

DAU module generates list of trademarks for preparation of notices to file and to pay DAU. This module also provides facility to examine and process DAU. It also generates office actions for DAU with deficiency in requirements, which are then forwarded for mailing.

Functionalities of the DAU, scope and entities that interact with the system is shown in Figure 1.0.

Trademarks Publication & Registry (TPR) DB Job/ Procedure Module

Print/Forward Notice to File Generate list of TM for preparation of Notice to pay DAU/Renewal TEAMS DB

Process DAU SQL Agent

IPRS «extends» «uses»

FMS DB

Prepare/Forward Print Office Action Acknowledgement Receipt

Slip Printer

Figure 1.0 PROCESS DAU Use Case Diagram

2.0. PROCESS DAU Use Case

2.1. Description

The use case PROCESS DAU provides an interface for retrieving and verifying list of trademarks received with payment in filing DAU. These use case also provides interface for printing and forwarding notices for mailing.

2.2. Flow of Events

2.2.1. Pre-condition

2.2.1.1. User should enter the username and password properly. The system has a function to determine the accessibility right of the user. User is not allowed to login on two or more terminals at the same time.

2.2.1.2. The system executes the stored procedure for generating list of trademarks for preparation of notice to file DAU every end of the day. (See Table 1 and 2 for Sample Computation of Dates and Figure 2 for Diagram of Computation of Dates)

Table 1. Sample Computation of Dates for RA 8293

Note: The Cancellation date in the table is the date of cancellation to be reflected in the database and not the actual date when trademark has been cancelled. Surcharge is 50% of the renewal fee. Prerequisite in extension/grace period:  If request for extension was file within 3 year period;  If extension was filed within 3 year period, mark will not be cancelled automatically;  when extension is approved, 6 month extension will be given and deadline to file will be moved by 6 months; and  when extension is filed, approval/disapproval must be made within 5 days.

Table 2. Sample of Computation of Dates for RA 166

Note: If the date to prepare/send notice to file falls on holidays, Saturdays, Sundays and/or declared holidays of IP Phil., the notice will be generated on the next working day. The due date will not change, BUT if due date falls on a non-working day, the payment will be accepted on the next working day. Same ruling should be followed in payment period.

For all trademark applications filed under RA 166:  with priority application, filing of DAU is NOT REQUIRED; and  with pending status from January 1998 until December 2001, filing of DAU is REQUIRED. (For discussion with counterparts on how to determine these records.)

Non-Payment of DAU within 3 years from filing date Filing Date: 7/1/2000 CANCELLED, if registered 7/1/2003 003 1/1/03 7/2/2 Period to file DAU REFUSED, if pending (3 years) 6 mos Prepare/Send 1/1/04 Notice to file 6 mos Extension (if requested) Non-Payment Reg Date: Anniv. of Affidavit for 1/1/2001 1/1/2006 1/1/2007 5th anniv 9/1/05 7/1/06 4 mos 6 mos 1/2/2007 CANCELLED Prepare/ Period to EXPIRED 1 Send file /201 01/2 Notice to Affidavit th Anniv. file for 5 7/1/2010 1/1/2011 07/1/2011 4/1/2010 6 mos. 9 months Grace period w/ Prepare/Send surcharge Notice to file Period to file for Renewal Prepare/send 2nd Notice 5 days from anniversary date.

Figure 2.0 Diagram of Computation of Dates

Figure 3.0. Interface for generation and examination of list of trademarks with payment for 3rd, 5th, 10th, 15th, and renewal

2.2.2. Generate list of trademarks with payment for 3rd, 5th, 10th, 15th and renewal for examination.

Value Fields Required? Conditions/Remarks Yes No Relevant fields for the generation of Trademarks List: Official  User encodes the OR dates in Receipt mm/dd/yyyy format for the generation of (OR) Date trademarks with payment of DAU. Registration  User encodes the registration no. in Number ttyyyyxnnnnn format. If the user prefers to examine/assess a specific registration number only, he/she could use this field instead of Official Receipt Date.

Fields that will be displayed upon pressing the “Generate” button: Registration  The system retrieves the registration # Number from TEAMS database in ttyyyyxnnnnn format. Trademark  The system retrieves the trademark from TEAMS database. Process  This is system generated for this specific Status module only, where: NP - Not Processed; OAI – Office Action Issued; Done – Completed Processing

2.2.3. Examination/Assessment of Requests.

2.2.3.1 Each trademark with DAU payment will go through examination stage. Screen to view bibliographic details is provided to help in examining the request, refer to View/Edit Bibliographic Data Use Case of Publication Module. The system will display the following information of each trademark for the examination / assessment of requests:

Value Fields Required? Conditions/Remarks Yes No Basic Information Registration  Number Registration Date  Status  Trademark  Registrant  The original owner of the trademark Address  Assignee  DAU (3 years) OR Number  The system retrieves Date of Payment  information from FMS - Cashier. Due Date  System generated: Filing Date + 3 years.

Date of Submission  The system retrieves information from FMS- Cashier: Date of Submission = Date of Payment. Date of Request for  The system retrieves Extension information from FMS – Cashier. Date of Request for Extension = Date of Payment Extended to  System generated: Due Date + 6 months Date of First Use  The user will encode the information if given in the DAU form. DAU History Anniversary  Due Date  OR Number  Date of Payment  Amount Paid  Date of Refiling  Processed By  DAU Details Anniversary  The system retrieves the information from TEAMS database. Type  The data will be chosen by the user: Use or Non-Use. Declaration of Non-Use will not be accepted for 3rd year DAU only for 5th year. Date of Filing DAU  The system retrieves the information from FMS- Cashier. OR Number  Amount Paid  Period to File 

TPR-URS-D1-001 5/29/2018 10/17/2008 Trademark Registry Module MIS-EDP Bureau User Requirements Specification Application Management Service Division Version 1 Date of Refiling  The user will encode the re-filed date. This happens when filing of DAU is pre- mature or before the filing period. This will not happen for 3rd year DAU and will not be accepted for 5th year DAU/Non-Use.

Figure 4. Interface for generation and previewing of Office Actions

TPR-URS-D1-001 5/29/2018 10/17/2008 Trademark Registry Module MIS-EDP Bureau User Requirements Specification Application Management Service Division Version 1 2.2.4. Generate/Preview office actions, if there is deficiency in the requirements.

2.2.4.1. The system has a function to generate templates of office action if the requirements of the request are insufficient and/or if payment is before the payment period.

Value Fields Required? Conditions/Remarks Yes No Relevant fields for the generation of the Office Action: Office Action Code  System generated Office Action Type  System generated Date Prepared  System generated Anniversary  Remarks  Period to File  Amount  Registrant  Affiant  Prepared by  User who prepared office action Mailing Date  System generated: Date Prepared + 3 days Filing Date  Office Action History: Office Action Code  Office Action Type  Anniversary  . Duration  Prepared by  Mailing Date  Remarks 

Note: The system has a function to validate the process status before generating office action. If the process status is “OAI” or “Done” the system will not generate the office action.

2.2.4.2. The user should save the information he/she entered before he/ she can preview it.

TPR-URS-D1-001 5/29/2018 10/17/2008 Trademark Registry Module MIS-EDP Bureau User Requirements Specification Application Management Service Division Version 1 2.2.4.3. The user has an option to preview the content and format of the office action of specific trademark before printing.

2.2.5. Save DAU Details and Print Acknowledgement Receipt.

2.2.5.1. The system allows the user to save DAU details and print acknowledgement that the DAU of a particular trademark has been processed. The DAU details enumerated in Sec. 2.2.3.1, are the data to be saved in the database.

Following are the data to be printed on the DAU paper via slip printer:

Value Fields Required? Conditions/ Remarks Yes No Registration No.  Date Filed  OR Number  Anniversary  Processed by 

Note: Following are the data to be saved to record user’s transaction per application:

Fields Value Transaction ID System Generated Registration No. Registration No. being processed Process ID Possible values are: Process Description Process ID Process Description TPR-DAU-01 Process DAU: 3 years TPR-DAU-02 Process DAU: 5 years TPR-DAU-03 Process DAU: 10 years TPR-DAU-04 Process DAU: 15 years TPR-DAU-05 Process DAU: Renewal Date Processed System Date

2.2.5.2. The system will automatically change the process status “Done” if the processing of DAU is completed and has been acknowledged through slip printing.

2.2.5.3. The system will automatically forward data for mailing of the original request for DAU with printed acknowledgement. Then, forwarding of physical document in sealed envelopes for mailing will follow.

2.2.6. Print/Forward Office actions for mailing.

2.2.6.1. In Preview Screen of the Office Actions, the system provides a button to print/forward corresponding data for mailing of those office actions.

Note: Following are the data to be saved to record user’s transaction per application

Fields Value Transaction ID System Generated Registration No. Registration No. being processed Process ID TPR-OAC-01 Process Description Prepare Office Action: DAU Date Processed System Date Remarks “Prepared and Forwarded Office Action: “ + Type of Office Action

2.2.6.2. The system will automatically change the process status from “NP” – not processed to “OAI” – office action issued.

2.2.6.3. Forwarding of physical document for mailing or for placing it to IP Phil mailbox will then follow. All office action for law firms with IP Phil box will be dropped in the box while individual filers and other law firms without IP Phil box will be mailed via courier.

2.3. Special Requirements/Additional Conditions/Other Policies

Attached are the templates of the office actions. The user can view the bibliographic data of each application in the list. The system-generated date mailed is printed in the office actions. Only one time DAU extension is allowed in 3rd year filing of DAU. 6 months after 10th year is allowed for filing of renewal with surcharge of 50%.

TPR-URS-D1-001 5/29/2018 10/17/2008