Knowing and Protecting Your Intellectual Properties and Intellectual Property Rights
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Transcript of Knowing and Protecting Your Intellectual Properties and Intellectual Property Rights
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: [email protected]
Salamat Po.Salamat Po. ATTY. ELIZABETH R. PULUMBARIT University Legal Counsel Technology Transfer and Business Development Office University of the Philippines Email: [email protected] © 08 August 2012,6 Sep. 2012