OVERVIEW OF

INTELLECTUAL
PROPER T Y

IP Search and Documentation Division

(IPSDD)

@patentinfoPH
Intellectual Property and its
Importance
The IP Cycle

CREATION
PROTECTION

COMMERCIALIZATION
Intellectual Property
Everyone creates IP on a daily basis.
What is Intellectual Property (IP)?

Intellectual Property (IP) concerns creations

of the mind. IP can be:

literary or name, symbol, image

invention design
artistic work used in commerce
What is IP system?
IP can be protected by:

PATENTS INDUSTRIAL
TRADEMARKS
UTILITY MODEL COPYRIGHT AND DESIGNS
SERVICE MARKS
TRADE SECRET RELATED RIGHTS LAYOUT DESIGNS OF
COLLECTIVE MARKS
GEOGRAPHICAL INDICATIONS INTEGRATED CIRCUITS
 • The progress and well-being of humanity
rests on its capacity for new creations in
the areas of technology and culture.

Why Promote • The legal protection of these new

creations encourages the expenditure of
and Protect additional resources, which leads to
Intellectual further innovation.

Property? • The promotion and protection of

Intellectual Property spurs economic
growth, creates new jobs and industries,
and enhances the quality and enjoyment
of life.
Why Protect IP?
 “Innovation is the Cornerstone of
Europe’s 2020 Strategy”
- EC Innovation Union President, Jose Manuel Durao Barroso

 “The First Step in Winning the Future is

Encouraging American Innovation”
- US President, Barack Obama

 “In the Current Era…. Innovation is very

Much on the Table”
- Excerpt from the World Economic Forum 2012
What is the IP system for?
Striking a balance

INDIVIDUAL
OR PUBLIC
COMPANY

PATENT
SYSTEM

It allows individual and companies to recover the costs of

developing an invention and generate funds to develop new ideas
while allowing others to learn from the invention and build on this
knowledge.
What is the IP system for?
Enables people to earn

from what they invent or create

Examples of valuable IP
Apple is a technology company that leads innovation with its products
and software platforms, providing seamless experiences across
devices, and empowering people with breakthrough services.
US$ 184.154B

Coca-Cola is the flagship beverage brand of The Coca-Cola

Company, the world’s largest beverage company, refreshing
consumers with more than 500 brands.
US$ 69.733B

Harry Potter is a series of fantasy novels written by British author

J. K. Rowling. The novels chronicle the lives of a young
wizard, Harry Potter, and his friends.

US$ 25B
The IP System

I’m a I’m a
Competitor Free Rider

Make significant investments Benefit from their efforts

in developing new products
Can offer similar or
Heavy pressure may drive the identical products at a
innovator out of business cheaper price
The IP System

IP SYSTEM
Rights over the use of inventions, designs, brands,
literary and artistic works
Kinds of IP Rights

INDUSTRIAL
PROPERTY

INTELLECTUAL
PROPERTY
COPYRIGHT
AND RELATED
RIGHTS
COPYRIGHT
What is copyright?

Copyright is the rights that creators have over their literary and
artistic works.

Copyright protection extends only to expressions, and not to ideas,

procedures, methods of operation or mathematical concepts as
such.

Examples of copyright-protected work in the artistic, literary and

scientific fields include literary, dramatic, musical, artistic and
photographic works, scientific articles and computer programs and
databases.
How is copyright protected?

“Sana copyright ka na lang

para akin ka from the
moment of your
creation.”
What is the scope of protection?
- relate to the economic exploitation of the work
- are freely transferable or licensable

- relate to a moral interest of the author

- are always retained by the author

Section 184, IP Code

Statutory Fair Use
Who owns the copyright?
Literary & artistic works •Author

Works of joint authorship •Co-authors

Joint works, separable parts •Part’s author

Work not part of regular duties •Employee

Work part or regular duties •Employer

Commissioned works •Creator

Audio-visual works •Producer, director, etc

Letters •Writer
 What is the term of protection?

Original & Photographic &

Joint authorship Applied art
derivative works audiovisual works

•life of the author •life of last living •25 years from •50 years from
+ 50 years after author + 50 making publication/
his death years after his making
death
TRADEMARKS
What is a trademark?

A trademark is any visible sign used by an enterprise to

distinguish or differentiate its products and services from those of
another.

There are two types of marks: 1) According to composition and 2)

According to strength
What is a trademark?
1) According to composition
Combination of Word and Symbol/Design Symbol or Design

Wordmark Phrase/Slogan/Tagline

Three-dimensional Figure Stamped Container

 What is a trademark?
2) According to strength

APPLE LAYAS DURABLE BURGER

KODAK
OISHI
What is the scope of protection?
• Exclusive right, but

• Risk of loss of protection if,

― No declaration of actual use within 3 years from filing
― Found to be invalid
What is the term of protection?

Potentially perpetual (renewal every ten years)

GEOGRAPHIC
INDICATION
Geographic Indication
 A notice stating that a given
product originates in a given
geographical area

 relatively new in Phil. IP

regime

 territory, region, or locality

attributed
Examples ofIndication
Geographic

BORDEAUX WINE

COGNAC BRANDY
TRADE SECRETS
What is a trade secret?
• protected information which is not generally known
or readily accessible to persons that normally deal
with the kind of information
• has commercial value because it is secret
• has been subject to reasonable steps to keep it
secret by the person lawfully in control of the
information
 Secret formulation = ???

Special recipe = ???

PATENT
What is a Patent?

An exclusive right granted to the

owner by the government for a
period of time in exchange of the
full disclosure of their invention.
MAKING A DEAL
What’s in it for What’s in it for
me? us?
INVENTOR PUBLIC
The right to Everyone can
prevent others have access to
knowledge of
from making, the latest
using, advances in
distributing technology
and selling which, in turn,
the invention can help guide
without his further
permission. research and
development.
Who owns a patent?

INVENTOR ORGANIZATION ANYONE

The owner of a patent does not

necessarily be the inventor.
 How long and where?

20 years from the filing Patents are territorial.

date of the application without
You are only protected in
any possibility of renewal.
countries where you applied
for patent protection.
How long and where?

One vital outcome of the patent

system is to make a vast source
of information on new
technology available for
anyone to use at no
charge across all technical
fields.
What conditions must be met to obtain
patent protection?
01
It must be a technical solution to a problem in any field of human
new, involves an inventive step and is
activity which is

industrially applicable.
02
Its subject matter must be accepted as “patentable”
under law.

03
The invention must be disclosed in an application in a manner
sufficiently clear and complete.
 NON-PATENTABLE SUBJECT MATTER
Discoveries, Programs for Schemes, rules,
scientific computers and methods of
theories and performing
mathematical mental acts and
methods Methods for playing game.
treatment of
the human
Plant varieties or or animal Anything which
body is contrary to
animal breeds or
public order,
essentially
biological process health, welfare,
for the production or morality.
Abstract
of plants and Aesthetic
ideas
animals. creations
or theories
STATUTORY CLASSES OF INVENTIONS
1. A product , such as a machine, a device, an article of
manufacture, a composition of matter (food, medicine,
disinfectant, etc.), a microorganism;

2. A process , such as a method of use, a method of

manufacturing, a non-biological process, a microbiological
process;

3. Computer-related utility model; and

4. An improvement of any of the foregoing.

NOVELTY

An invention
is novel if
it does not
form part of
the prior
art.
 PRIOR ART
Body of existing knowledge before the date of
filing or priority date of the application.
Everything made available to the public by means of:

WRITTEN ORAL BY ANY

DISCLOSURE DISCLOSURE USE OTHER WAY

before the date of filing or priority date

 PRIOR ART
“A” filed in the
Philippines on “A” filed in
PRIOR SALE in Japan Japan
Jan 10, 2015

2015 JAN FEB JUN NOV DEC JAN 2016

“A” must be filed

“B” filed in “C” filed in in Japan on or
Japan Japan before Jan 10,
2016 to avail of
the effect of filing
date in the
Under the Paris Convention, the Philippines.
applicant enjoys a right of priority during
a period of 12 months for the * Only for Applicants from countries
party to the Paris Convention and
purpose of filing in other countries. World Trade Organization (WTO)
 NOVELTY
if not previously published or
disclosed in any form, anywhere in the world.
What if you publish your
inventions in a journal,
demonstrate, sell or
discuss your invention in
public before you file a
patent application, is it
still novel or new?
NON-PREJUDICIAL DISCLOSURE
If you have already
disclosed or published your
inventions in a journal,
demonstrate, sell or
discuss your invention in
public, you can still file a
patent within 12
months from the date
of disclosure or publication
FIRST-TO-FILE RULE
The right to a patent shall belong to
person who filed an
the

application for such

invention, or where two or more
applications are filed for the same
applicant
invention, to the

who has the earliest

filing date or the
earliest priority date.
NOVELTY TEST

Essential element:
- Spout
- Lid
- Body
- Handle
 INVENTIVE STEP

An invention is considered
inventive if it is not obvious to a
person skilled in the
art at the time of the filing date
or priority date of the invention.
PERSON SKILLED IN THE ART

• Skilled practitioner in the

relevant technical field

• Has access to the entire state

of the art

• Aware of general technical

knowledge

• Capable of routine work

INVENTIVE STEP TEST

+
PRIOR ART 1 PRIOR ART 2

What is the problem being solved?

 INDUSTRIAL APPLICABILITY

An invention that can be

produced and used in any
industry shall be industrially
applicable.
FILING A PATENT
APPLICATION
Who may apply?

Natural Person

Juridical Person
What are the requirements for filing?

Request form
Abstract, Description, and Claims
Drawing, if any
Filing fee
Look for examples of patent applications
What
FORMALITY
happens
after filing
an
application?

SUBSTANTIVE
What happens after filing an application?

FORMALITY EXAMINATION
form

SUBSTANTIVE EXAMINATION
Patentability
requirements
How much is the filing fee?

BIG ENTITY (>100M) SMALL ENTITY (≤100M)

PhP 4,320.00 PhP 2,000.00

+ 1% Legal Research Fund

 Other common fees and charges
BIG ENTITY SMALL
ENTITY
Priority Claim
(Multiple Priorities = 1,800 x no. of Priorities 2,160 1,000
claimed)
Excess claim (in excess of 5) 360 180
Excess sheet (in excess of 30 pages) 36 18
Request fo Substantive Examination
(with in 6 months from the date of 1st
4,200 2,010
Publication)
(Optional upon filing)
+ 1% Legal Research Fund
SUMMARY OF GRANT PROCEDURE
FILING OF APPLICATION SEARCH REPORT PUBLICATION

Request!

GRANT OR REFUSAL SUBSTANTIVE EXAMINATION

ONCE GRANTED…

CANCELLATION

MAINTENANCE INFRINGEMENT
NOTABLE INVENTIONS

Amlodipine (1983 – Pfizer) Diesel engine (1892- Rudolf Diesel)

Anti-gravity shoes (1992 Michael Jackson)

UTILITY
MODEL
What is a Utility Model?

Any technical solution of a problem

in any field of human activity which is
new and industrially applicable
shall be registrable (Rule 1400 of IRR)
What is a Utility Model (UM)?

A Utility Model is a protection option, which

is designed to protect innovations that are not
sufficiently inventive to meet the inventive threshold
required for standard patents application.

A utility model system provides protection of so-

called “minor inventions” through a
system similar to the patent system.
What is a Utility Model (UM)?
In general, UMs are considered particularly suited
for protecting inventions that make
small improvements to,
and adaptations of, existing products or that
have a short commercial life.
CLASSES AND EXAMPLES OF PUBLISHED UM

MACHINE/
APPARATUS
CLASSES AND EXAMPLES OF PUBLISHED UM

PRODUCT
CLASSES AND EXAMPLES OF PUBLISHED UM

DEVICE
CLASSES AND EXAMPLES OF PUBLISHED UM

COMPUTER -RELATED
OR COMPUTER-
IMPLEMENTED
CLASSES AND EXAMPLES OF PUBLISHED UM

PROCESS OR METHOD

COMPOSITION/FORMULATION
 NON-REGISTRABLE SUBJECT MATTER
Discoveries, Programs for Schemes, rules,
scientific computers and methods of
theories and performing
mathematical mental acts and
methods Methods for playing game.
treatment of
the human
Plant varieties or or animal Anything which
body is contrary to
animal breeds or
public order,
essentially
biological process health, welfare,
for the production or morality.
Abstract
of plants and Aesthetic
ideas
animals. creations
or theories
FIRST-TO-FILE RULE
The right to a utility model shall
person who
belong to the

filed an application for

such utility model, or
where two or more applications are
filed for the same utility model, to the
applicant who has the
earliest filing date or
the earliest priority
date.
What kind of protection does a utility model offer?

• Right to prevent others from exploiting the

claimed utility model without the owner’s
consent, in the geographical area for
which the utility model was granted, for a
limited period of time.
 How long and where?

7 years from the filing UMs are territorial.

date of the application without
You are only protected in
any possibility of renewal.
countries where you applied
for patent protection.
How much is the filing fee?

BIG ENTITY (>100M) SMALL ENTITY (≤100M)

PhP 3,600.00 PhP 1,720.00

+ 1% Legal Research Fund

What are the main differences
between UM and patents?
PATENTS UM
- requires inventive step - no inventive step

- 20 years from filing date - 7 years from filing date

- with substantive - no substantive

examination examination

- applications published - published for 30 days prior

with search report after 18 to issuance of certificate
months

- can be enforced after grant - enforcement is determined

by the Registrability Report
What is a registrability report?

Registrability report is a document showing

the validity of the registration.
Shows the relevant prior art documents
related to your UM application.
Shows whether your UM is new or not.
If new, then, UM can be enforced by presenting your
UM registration certificate together with the
registrability report.
Can I obtain both a patent and a utility model
for the same invention?

An applicant may not file two (2)

applications for the same subject, one
for utility model registration and the other for
the grant of a patent whether simultaneously
or consecutively.
Some other examples of UM
INDUSTRIAL
DESIGN
What is an Industrial Design (ID)?

An Industrial Design
is an IPR that protects the
aesthetic features It is the physical
and visual design of appearance,
an article of manufacture. form, shape, contour,
ornamental and
aesthetic
features that are
protected.
What conditions must be met to obtain
patent protection?

New or original creation.

Article of manufacture.

Not dictated by technical or functional

considerations
Not contrary to public order, health and morals
How long does ID protection last?

5 years from the filing date

of the application.
two (2) consecutive periods
of five (5) years each

15 years
EXAMPLES OF INDUSTRIAL DESIGNS

116
EXAMPLES OF INDUSTRIAL DESIGNS
EXAMPLES OF INDUSTRIAL DESIGNS
INDUSTRIAL DESIGNS BY KENNETH COBONPUE
INDUSTRIAL DESIGNS BY KENNETH COBONPUE

@𝑘𝑒𝑛𝑛𝑒𝑡ℎ𝑐𝑜𝑏𝑜𝑛𝑝𝑢𝑒
DISTINCTION BETWEEN INDSTRIAL DESIGN
AND INVENTION/UTILITY MODEL

INDUSTRIAL DESIGN
INVENTION/UTILITY MODEL
Requirements for Filing an Industrial Design

• Request form
• Specification and claim
• Drawing(s)
• Filing fee
How much is the filing fee?

BIG ENTITY (>100M) SMALL ENTITY (≤100M)

PhP 3,600.00 PhP 1,720.00

+ 1% Legal Research Fund

• LAYOUT-DESIGN OF
INTEGRATED CIRCUITS

.. original topography or special arrangement

.. elements of an integrated circuit
.. term: 10 years

INTELLECTUAL PROPERTY OFFICE

OF THE PHILIPPINES
A bottle full of IP

BOTTLE
MANUFACTURING
- patent
- patent
- utility model - utility model
- design

LABEL CONTENTS
- designs - trade secrets
- trademarks
- copyright
Question
Who invented

• the personal computer (PC)?

• the point-and-click graphical user interface

(GUI)?

• the laser printer?

• the Ethernet?

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Intellectual Property Teaching Kit
Answer

They were all invented by Xerox PARC

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Intellectual Property Teaching Kit
What did Xerox PARC do wrong?

• They didn’t patent the technologies they invented,

and these technologies were later used by others
with great success.

• They did not keep them secret.

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Intellectual Property Teaching Kit
What do all these companies have in
common?
 Apple

 3Com

 Adobe Systems

 Microsoft

 IBM

 Hewlett Packard
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Intellectual Property Teaching Kit
• They all benefitted from inventions originally made by Xerox
PARC.

• Apple's Macintosh computer GUI was inspired by a tour of PARC

that Steve Jobs took in 1979. Later, Xerox’s GUI also inspired
Microsoft Windows.

• Xerox developed one of the first PCs – the ALTO - but IBM
became famous for inventing the PC.

• The laser printer is in HP’s hall of fame, but it was first invented
by Xerox.
What happens if you don’t protect
your IP?

You’re not protected!

Others will be happy to capitalize on

your ideas ... for free!

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Intellectual Property Teaching Kit
 How did Xerox learn from this
experience?
 XNE (Xerox New Enterprises)

– Licenses technologies for a fee or royalty

– Some are spun off, earning huge returns when the companies go
public on the stock market

 XIG (Xerox Innovation Group)

– R&D
– IP
– Business development for licensing
– New business opportunities

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Intellectual Property Teaching Kit
“Ang mundo ay isang malaking
Quiapo. Maraming snatcher,
maagawan ka. Lumaban ka.”
- Carmi Martin, No Other Woman
Any Questions?