IP Orientation Seminar for UPLB 6 September 2012

Technology Transfer & Business Development Office Office of the Vice President for Development

UNIVERSITY OF THE PHILIPPINES

• IP and IPR, defined • Protected IP and IPR • The Technology Transfer Act of

2009 • The 2011 Revised IPR Policy

and Guidelines of the University of the Philippines

• Case studies and best practices

The Philippine Constitution

Civil Code of the

Philippines Republic Act (RA) No.

8293, aka Intellectual Property Code of the Philippines

RA No. 10055, aka the Technology Transfer Act of 2009

RA No. 8439, aka the Magna Carta for Scientists, Engineers, Researchers and S&T Personnel

International Agreements Paris Convention Berne Convention WTO-TRIPS Agreement Patent Cooperation Treaty Madrid Protocol

“The State shall protect and secure the exclusive rights of SCIENTISTS, INVENTORS, ARTISTS, and other gifted citizens to their INTELLECTUAL PROPERTY and CREATIONS, particularly when beneficial to the people, for such period as may be provided by law.”

By intellectual creation, the following persons acquire ownership:

The AUTHOR with regard to his literary, dramatic, historical, legal, philosophical, scientific, or other work

The COMPOSER, as to his musical composition

The PAINTER, SCULPTOR, OR OTHER ARTIST, with respect to the product of his art

The SCIENTIST OR TECHNOLOGIST or any other person with regard to his discovery or invention

The IP Code took effect on January 1,1998. It codified all prior laws on intellectual property rights. It created the Intellectual Property Office of the

Philippines (IPOPHL), with mandate to administer and implement State policies on IP.

IPOPHL is the sole and exclusive government agency tasked to examine applications for grant of letters patent and the registration of marks, utility models, industrial designs, integrated circuits, geographical indications, and copyright licenses.

IPOPHL adjudicates contested IPR cases

IP

Artistic and Literary/ Creative works

Inventions and

innovations in S&T

IPR

Copyright and related rights

Patents and other

Industrial Property Rights

IP Anything created by or any product of the human

mind and intellect that is fixed in tangible form and thus, capable of expression, communication, application, reproduction and distribution

IPR Rights attached to IP; metes and bounds of

ownership and other legal rights on IP

1. Exclusive Negative Rights

IPR owner has a MONOPOLY – an exclusive right to exclude anyone from copying, making, using, selling, offering for sale, and distributing the work/ invention.

2. Territory-specific 3. Time-limited 4. Property Right

Right granted by statute to the author or creator of original and derivative works (literary, scientific, scholarly, artistic), including software programs

Right that attaches at the moment of creation of the original works, whatever the form of expression, quality, content, or purpose; Provided such works are fixed in a tangible or material form

Author or creator is the copyright owner

Books, pamphlets, articles, other writings

Musical compositions, with or without words

Photographic works

Periodicals , newspapers Drawings, painting, architecture, sculpture, engraving, lithography or other works of art

Drawings or plastic works of S&T character

Lectures, sermons, addresses, thesis, dissertation, course materials

Works of applied art- ornamental designs, models for articles of manufacture

AV & cinematographic works, films, sound recordings

Dramatic or dramatico-musical compositions, choreographic works

Illustrations, maps, plans, sketches, charts and 3D works

Performing arts, sound recordings and broadcasting

Letters Pictorial illustrations and advertisements

Computer programs

▪ Dramatizations

▪ Translations

▪ Adaptations

▪ Abridgments

▪ Arrangements

▪ Alterations

▪ Collections

▪ Compilations

1. Economic Rights 2. Moral Rights 3. Other related rights

Reproduction

Dramatization, translation,

adaptation, abridgment

First Public Distribution

Public display/ performance, other

communication

Rental

Licensing, Assignment, Sale,

Transfer

Attribution of authorship Integrity of the works

(non-alterations, distortions,

mutilations, non-modifications, other derogatory action to works) Note: Unlike economic rights, moral rights are not subject to assignment or licensing

Student OWNS copyright of his thesis/ dissertation

Student automatically grants UP a NON-EXCLUSIVE, WORLDWIDE, ROYALTY-FREE COPYRIGHT LICENSE to reproduce, publish and publicly distribute copies of thesis/ dissertation

Student may request NON-DISCLOSURE AND WITHHOLDING OF ACCESS to thesis/ dissertation if he will file application/s for patent and protection of other IPRs

College, department, institute may WITHHOLD PUBLIC ACCESS to thesis/dissertation and the DEFENSE PROCEEDINGS if thesis/ dissertation contains confidential and/or proprietary information on a “patentable” or “registrable” INVENTION.

Exception: Confidential and Non-Disclosure Agreements (CNDA)

OP Memo No. PAEP 2012-03 dated February 2, 2012

Effective March 15, 2012: Thesis/ dissertation shall include a page on notice to UP Library/ instructions on whether Thesis/ Dissertation is made accessible to the public or not (UP Permission Page)

COPYRIGHT INFRINGEMENT (Sec. 216-217, IPC)

Violations of the rights of © owner

A criminal offense, punishable by imprisonment (1 yr. -6 yrs. 1 day) or fine (P50K-1.5M), or both

Remedies include injunction/ cease and desist order, civil damages

FAIR USE (Sec. 185, IPC)

Exception & defense against © infringement

Strictly private use Non-profit use by an

educational, religious or charitable institution

Use for teaching and research purposes

Current events reporting and information

Government use

Copyright Infringement Plagiarism

Copyright piracy; counterfeiting; violation of any of the legal and moral rights of copyright owner

Intellectual dishonesty in the attribution and integrity of published and unpublished works; a violation of right of UP to academic freedom

Criminal offense, punishable by imprisonment of 1 year to 6 years and 1 day and/or fine of P50K-P1.5M

Administrative disciplinary offense; punishable by dismissal/ expulsion from UP or withdrawal of diploma

Conviction as a felon “Academic” death

U.P. vs. Court of Appeals and Arokiaswamy ▪ G.R. No. 134625, Aug. 31, 1999; Sept. 18,

2002; Dec. 2, 2002 ▪ PhD Diploma withdrawn by UP-Board of

Regents, there being finding of “massive lifting from published sources” in the PhD dissertation of a UP student

Ruling: ▪ “ In this case, UP does not seek to discipline

private respondent (Arokiaswamy). What UP, through the BOR, seeks to do is to PROTECT ITS ACADEMIC INTEGRITY by withdrawing from respondent an academic degree she obtained by FRAUD.”

TYPE YEARS

Broadcasts 20

Applied Art 25

Photographic Works 50

Audio Visual Works & Recordings

50

Published Works Author’s lifetime + 50

Melody Lyrics Musical Arrangement Photograph Creative content &

Graphic Design for Album Cover

Enriched media content

Performer’s Right Producer’s Right

An idea is not copyrightable; an expression of the idea is. Copyright is distinct from material object. Copyright attaches on the work from the moment of creation. Registration and deposit of copyrighted work with National

Library, Supreme Court and IPOPHL is prima facie evidence of copyright ownership.

Fair use is a defense against copyright infringement. Plagiarism is a form of copyright infringement. In the academe,

it is intellectual dishonesty. Before the commercial use of copyrighted work, clear and

seek permission/license of copyright owner. After the protected period of copyright, the work becomes part

of the “free use” public domain.

J.K. Rowling, author of the 7 volumes Harry Potter book series

Best-selling book series in history

>400 M copies sold Translated into 65 languages 8 Movie adaptations and

Universal Studio themed park (Hogwarts )

Global brand with estimated value of US$15B

Rowling is named as one of Forbes Magazine’s 2011 ‘Billionaire circle’

A DISTINCTIVE and VISIBLE sign, symbol, emblem, or device used by the enterprise to differentiate its goods or products (trademark) or services (service mark) and shall include a stamped or marked container of goods.

Registered and protected TMs of UP AO No. PERR-06-55 dated 8.04.06

Use, manufacture, sale, offer to sell,

distribution and marketing of UP-branded merchandise without UP permission/ licensing is prohibited

Use and purchase of UP-branded goods from unauthorized sources shall not be allowed.

To prevent all third parties not having the owner’s consent from using in the course of business identical or similar signs or containers for goods or services where such use would result in a likelihood of confusion.

Additional right for owners of well-known

marks: Prevention extends to all kinds of goods and services that will indicate a connection with the registered mark

A badge of origin and authenticity

A critical input to corporate branding TM rights are acquired thru registration

Certificate of TM registration is valid for 10 years,

renewal for periods of 10 years ad infinitum

Well-known or internationally known marks cannot be registered by non-owner; neither will an identical, confusingly similar mark, including translations/ derivatives

Madrid Protocol allows filing of international TM application

Carolyn Davidson, a student of Portland State U, was commissioned in 1971 by Phil Knight, to design a logo that conveyed motion and will look good on a shoe

For the swoosh design, she got paid $2.00/hour for 17.5 hrs. or a total of $35.00

In 1983, she got 500 shares of stock of Nike, Inc.

worth $150.00 as a gift

40 years later, in 2011, Nike stocks are worth $643K and Carolyn still likes the logo and never gets tired looking at it.

2003: Established by a 26 y.o. entrepreneur, Edgar Injap Sia III

2010: Bought by Jollibee Foods Corp. for P3B, P200M of which was paid front-end

2011: Jollibee is largest food service company in the country with system-wide revenues of P82B and net income of P3.2B

Sia is 40th richest Filipino worth $140M in 2011

Invention patents Utility Models or petty patents Topographies or designs of integrated circuits Industrial Designs Trade Secrets/ Proprietary Info/ know-how Plant Variety Protection

Invention is any technical solution of a problem in any field of human activity, which is:

NEW (novelty; no prior art)‏

involves an INVENTIVE STEP (non-obvious)‏

INDUSTRIALLY APPLICABLE (useful and of commercial application)‏

Patent is a grant issued by a government giving an inventor the exclusive right for 20 years to exclude others from: MAKING

USING

IMPORTING

and OFFERING for SALE the product of his invention.

Active ingredient (molecule)‏

Combination of ingredients

Medical indication (effect of molecule on the human body)‏

Fixed dose combination

Process to manufacture the ingredient (pill, pill coating, liquid suspension, aerosol, capsule)‏

New use/s for the drug after filing of patent application

A non-alcoholic beverage intended to hydrate

and replenish electrolytes and carbohydrates

•Developed in 1965 by Dr. J. Robert Cade for

the University of Florida football team

“GATORS”

•License to produce and market Gatorade now

held by Quaker Oats - PepsiCo

•IP royalties amounting to $150 M up to 2007 to

University of Florida; $12M p.a. at 20% royalty

rate

Case Study 4: Gatorade Sports Drink

Utility Model is a “petty” patent for new and industrially applicable technical solution of a problem.

It is new and but lacks or has no inventive step.

Protected for 7 years.

Combination of lines, colors, 3D form, surface ornamentation

Protects the new

ornamental appearance of an article of manufacture.

To protect ID, register it with IPOPHL Certificate of registration is valid for 5 years,

renewable for 2 consecutive periods of 5 years each or total of 15 years

Application for registration must be filed within 2 years from its first commercial exploitation anywhere in the world

Layout design of integrated circuits is an original topography (picture of a surface) of elements, at least one of which is an active element, and of some or all interconnections of an integrated circuit, or such three-dimensional disposition prepared for an integrated circuit intended for manufacture.

Geographical indications are indications which identify goods as originating in the territory of a country, or a region or locality in the territory, where a given quality, reputation or other characteristics of the goods are essentially attributed to its geographical origin.

Examples: Havana, Darjeeling, Chianti, Champagne, Roquefort

Any plan, process, method, tool, formula, mechanism, compound or confidential business information known only to its owner and employees which provides an enterprise a competitive edge and thus, there is need to prevent the information from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information:

is secret

has commercial value

has been subject to reasonable steps to keep it

secret

R.A. No. 9168

Protect new plant variety which is distinct, uniform and stable

Sui generis law of plant varieties and animal breed

Covers all IP (creative works, marks, inventions and innovations in S&T, tangible research property, confidential and proprietary information) & IPR of the University

Adherence to tradition of openness in research Respect for author’s rights Automatic assignment of copyright on faculty’s

creative works, student’s thesis & dissertations, faculty/ researcher’s inventions and innovations

Limited access to thesis/ dissertations/ works with “patentable” and potentially “commerciable” inventions/ innovations

Technology transfer & IP commercialization, including spin-off & spin-out companies

Exclusive licensing for certain IP/IPR 40:60 Sharing of licensing royalties between

inventors and the University Portability of shares on income stream Mandatory inclusion of IP/IPR protection in all

University contracts

Inventors own the inventions Inventors shall disclose and assign their inventions to UP UP protects the inventions and pays for costs of patenting UP pitches, markets, and issues technology licenses and

other tech commercialization platforms, including spin-off companies

Inventors, wherever they may be, has 40% share on royalties and other income streams from technology commercialization

Inventors exclusively get the first royalty payment of P200K or less

Inventors must disclose the invention and assign the patent / IPRs to the University if the invention is: University R&D funded by GFA

UP provided funding support or substantial resources

Result of the performance of inventor’s regular assigned duties

Commissioned invention

Non-attribution to or discrete number of inventors

U.P. is presumed to own TRP of invention Examples : integrated circuit chips, software

applications, biological organisms, prototypes, compounds, extracts, assays, lab models and databases, lab notebooks, logbooks

Royalties

Upfront, milestones and other payments

Equity shares and dividends for Spin-off / spin-out companies

40%

Inventor

45% UP-CU

15%

UPS

Note: Author/ inventor gets the FIRST Two Hundred Thousand Pesos (P200,000.00) or less of the royalty received by U.P. from technology transfer or IP commercialization.

General Rule: Non-exclusivity of licenses to ensure public access to knowledge.

Exception

Exclusive licenses for inventions with significant investments of time and resources from lab to markets by way of incentive to licensee to bear risks of further development (e.g., drug discovery and development)

Gov’t/

Private RDIs Government

Funding Agencies

(GFA)

Universities

RDIs and

universities

are “default”

owners of IP

GFAs ensure

RDIs protect

and manage

IP

Researchers share in royalties

Allows spin offs

EXPECTED RESULTS:

- Increased ROI

from G- R&D

- More

innovation

Government enunciates primacy of tech transfer and not income generation Provides for management of conflict of interests Provides public (open) access policy

25 years (1974-1997) R&D project of UPM’s NIRPROMP

P85 M Funding from DOST

10 clinically-tested medicinal plants

1 Patent, 3 Utility Models, Trade secrets/know-how

Business Plans and Technology Licensing in 1997

28 Licenses Issued (1997-2011)

14 Licensees (1997-2011)

5 Licensed products 3 “success” products

Lagundi (Vitex negundo) Sambong (Blumea balsamefera)

Yerba Buena (Mentha cordifolia)

Tsaang Gubat (Carmona retusa)

Ampalaya (Mamordica charantia)

Niyug-niyugan (Quisqalis indica)

Bayabas (Psidium guajava) Akapulko (Cassia alata)

Ulasimang Bato (Peperomia pellucida)

Bawang (Allium sativum)

From initial remittance of P164,018.85 for royalties and license fees on Lagundi and Sambong products in 1997 to P13,856,915.13 in 2010. Total remittance of P50,046,894.79 for royalties and license fees from 1997 to 2010, 40% (P20 M) of which was remitted to inventors .

non-opioid drug for patients with severe

to chronic pain such as those with

cancer, HIV-AIDs, spinal injuries

1000x more potent than morphine

Dr. Baldomero ‘Toto’ Olivera, a UP

alumnus (BSBio, summa cum laude)

and UP professor, didn’t patent the

peptide

patented and commercialised by

another biotech company !!!!

Titanium Nitride Thin Film Formation in Metal (Tool Coating)

Two Color (Two Photon)

Excitation (2CE) with Focused

Excitation Beams & Raman Shifter

TTBDO is the University’s technology transfer office which also serves as an assisting and coordinating unit for all its 8 constituent universities (CU) all over PHL

TTBDO Director as head of unit, assisted by PDAs/ PhD technical experts

Functions: IP protection IP portfolio and expertise management Technology Licensing IP commercialization Culture of innovation and entrepreneurship

Prof. Reynaldo L. Garcia, PhD Director

Technology Transfer and Business Development Office University of the Philippines

L/G Quezon Hall, UP Diliman Campus Diliman, Quezon City 1101

Philippines

Tel. Nos. (632) 928-2665; 981-8500 loc. 2542 Email: techtransfer@up.edu.ph

Salamat Po.Salamat Po. ATTY. ELIZABETH R. PULUMBARIT University Legal Counsel Technology Transfer and Business Development Office University of the Philippines Email: erpulumbarit@up.edu.ph © 08 August 2012,6 Sep. 2012