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Knowing and Protecting Your Intellectual Properties and Intellectual Property Rights

Knowing and Protecting Your Intellectual Properties and Intellectual Property Rights

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Presentation on Knowing and Protecting Your Intellectual Properties and Intellectual Property Rights by Atty. Elizabeth R. Pulumbarit during the IP Orientation Seminar for UPLB, September, 2012
Presentation on Knowing and Protecting Your Intellectual Properties and Intellectual Property Rights by Atty. Elizabeth R. Pulumbarit during the IP Orientation Seminar for UPLB, September, 2012

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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

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

 

Republic Act (RA) No. 8293, aka Intellectual Property Code of the Philippines RA No. 10055, aka the Technology Transfer Act of 2009

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



Artistic and Literary/ Creative works Inventions and innovations in S&T

Copyright and related rights

Patents and other Industrial Property Rights

 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

 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, Musical compositions, with Photographic works other writings or without words
Periodicals , newspapers Drawings, painting, architecture, sculpture, engraving, lithography or other works of art Works of applied artornamental designs, models for articles of manufacture Illustrations, maps, plans, sketches, charts and 3D works Pictorial illustrations and advertisements Drawings or plastic works of S&T character

Lectures, sermons, addresses, thesis, dissertation, course materials Dramatic or dramaticomusical compositions, choreographic works Letters

AV & cinematographic works, films, sound recordings Performing arts, sound recordings and broadcasting Computer programs

▪ Dramatizations ▪ Translations ▪ Adaptations ▪ Abridgments ▪ Arrangements ▪ Alterations ▪ Collections ▪ Compilations

1. 2.


Economic Rights Moral Rights Other related rights

 

Reproduction Dramatization, translation, adaptation, abridgment First Public Distribution Public display/ performance, other

 

 

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 NONEXCLUSIVE, 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,

 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)

 

(Sec. 185, 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

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
Copyright piracy; counterfeiting; violation of any of the legal and moral rights of copyright owner Criminal offense, punishable by imprisonment of 1 year to 6 years and 1 day and/or fine of P50K-P1.5M Conviction as a felon

Intellectual dishonesty in the attribution and integrity of published and unpublished works; a violation of right of UP to academic freedom Administrative disciplinary offense; punishable by dismissal/ expulsion from UP or withdrawal of diploma “Academic” death

 U.P. vs. Court of Appeals and


▪ 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.”



Applied Art
Photographic Works Audio Visual Works & Recordings Published Works

50 50 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 UPbranded 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:

 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

Case Study 4: Gatorade Sports Drink
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

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


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

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.
40% Inventor
15% UPS

45% UP-CU

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

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)

Government Funding Agencies (GFA)

Gov’t/ Private RDIs

RDIs and universities are “default” owners of IP

Researchers share in royalties



GFAs ensure RDIs protect and manage IP

Allows spin offs

- 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 (19972011)  5 Licensed products  3 “success” products

Lagundi (Vitex negundo)
Yerba Buena (Mentha cordifolia) Ampalaya (Mamordica charantia) Bayabas (Psidium guajava) Ulasimang Bato (Peperomia pellucida)

Sambong (Blumea balsamefera)
Tsaang Gubat (Carmona retusa) Niyug-niyugan (Quisqalis indica) Akapulko (Cassia alata) 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

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

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