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Patents & Patent Application

Frequently Asked Questions

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What is a patent?
Patent is a grant issued by the government that gives an inventor exclusive rights to exclude others from making, using, importing, and selling/trading his invention or the product of his invention. In return, the inventor must disclose all information regarding the invention to the public. [1]

Why register a patent?
There are other benefits gained from registering patents aside from the inventor having a monopoly on the new invention. The new technology would open a new market for investments which benefits the economy. Should the inventor prefer not to engage in business, s/he could license or sell the rights to the invention to entrepreneurs who could utilize the technology. DOST gives incentives to start-up companies that market the new technology making the production of new technology even more attractive. The patent also energizes research and development. The disclosed but protected patent information contributes technical knowledge that can be used as the basis of newer innovations.

Is my invention patentable?
According to Section 21, Chapter II of Part II of the Intellectual Property Code, for an invention to be patentable, it must satisfy the following criteria:

  • is new (novel)
    The inventor must show that the patentable invention is not a part of prior art. According to Section 24, prior art comprises the information that is available to the public
    Note: An essay about prior art and its effect on patent application can be seen here.[2]
  • involves an inventive step
    The invention should be inventive enough that it is not obvious to a person skilled in the art. The person skilled in the art is a person who has normal skills in a particular field but not necessarily a genius or an expert on the field.
    For example, any coconut oil producer can easily and obviously produce virgin coconut oil from fresh coconuts. However it is not obvious that one can produce VCO and coconut flour from coconut residue. [3]
  • is industrially applicable
    If the invention is impractical and of no use like a battery-less solar-powered flashlight, it is better not to patent it at all.

What cannot be patented?
According to Section 22, Chapter II of Part II of the Intellectual Property Code, the following are not patentable:

  • Discoveries, scientific theories and mathematical methods
    Note: Discovery is when one observes and acquires knowledge about something. Discoveries might lead to inventions but are not inventions themselves. For example, by observing the mechanics of bird flight, one can be inspired to produce a patentable aircraft. However, the discovery of the mechanics of bird flight itself is not patentable.
  • Mental acts (imagination), games or business schemes, and computer programs
    Note: Computer programs are considered as “works” and are copyrightable. In some countries, these are patentable.
  • Methods used for therapy, surgery, diagnosis and treatment on humans or animals
    Note: Products (ex. drugs) that are used for these methods are patentable.
  • Plant varieties and animal breeds and their biological production
    Note: Micro-organisms, non-biological production and microbiological methods are exempt and therefore patentable
  • Aesthetic creations or “artistic works” (books, songs, paintings etc.)
    Note: Artistic works are copyrightable
  • Anything which is contrary to public order or morality

Note: Utility Model applications are also not valid for these things.

What is a utility model?
According to Chapter XII of Part II of the Intellectual Property Code, a utility model or UM is a registration for new and industrially applicable technical solution of a problem. It has less stringent qualifications compared to patents since the invention need not include an inventive step. However, the exclusive right for UM’s lasts for only seven years compared to a patent’s protection which lasts for twenty years.

Note: Things that are not patentable a seen in Section 22, Chapter II of Part II of the Intellectual Property Code also affects utility models.

What is an industrial design?
According to Chapter XIII of Part II of the Intellectual Property Code, an industrial design is a composition that gives an industrial product or handicraft a distinct appearance or pattern. The industrial design can only be registered if it is new.

The term for industrial design registration last for five years from the filing date of the application. The registration can be renewed but not more than two consecutive 5-year periods.

Who may seek UP support for patent application?
Under the UP Intellectual Property Rights (IPR) policy, all UP faculty, researchers administrative personnel, and students, including visiting researchers, faculty, and students may seek UP support for patent application.

What inventions should be disclosed to the University and who shall own them?
The University shall own all patents to the following inventions and should be disclosed by their creators in accordance with UP System IPR Guidelines. These are:

  • inventors that are supported by a specific allocation of University funds or other University resources such as facilities, equipment, utilities, including services of its employees working within the scope of their employment;
  • inventions produced at the direction and control of the University in pursuit of a specific project or purpose regardless of the source of funding;
  • works whose inventorship could not be attributed to one or a discrete number of inventors despite the application of processes provided in these rules;
  • works conceived or first reduced to practice by employees, faculty or students in the University in the course of performance of their duties;
  • those that may be stipulated by contract as inventions commissioned by the University.

May the University waive its “Rights to Patent”?
Yes. In accordance with UP System IPR Guideline,s the University may release patent rights to inventors if:

  • The University elects not to file a patent application and the inventor is prepared to do so.
  • If no application is filed one year after the disclosure of the invention or from the time that the University is reasonably presumed to have known of its existence.
  • The waiver would facilitate the transfer of technology or its access to the general public.

Where and when can I file a patent application?
The Office of the Vice Chancellor for Research and Development (OVCRD) through its Intellectual Property and Technology Transfer Section assists UP Diliman personnel undertaking R&D activities in the protection (patenting/copyrighting), marketing or licensing of their work. The office is open Mondays to Fridays, from 8:00 am to 12:00 nn and 1:00 pm to 5:00 pm, except on public holidays. Tel. No.  981-8500 loc. 8763; E-mail: techtransfer.ovcrd(at)upd.edu.ph

Note: If you wish to have exploratory talks with the Vice-Chancellor for Research and Development and the Research Dissemination and Utilization Office Director, just contact the numbers above.

What do I need to submit?

  • Letter to the Vice-Chancellor for Research and Development (through Channels) requesting assistance to apply for a patent
  • Accomplished Invention Disclosure Form [*]

IPO Philippines Requirements:

  • Accomplished Patent, Industrial design or Utility Model Application Form
    • Note: Forms can be obtained from the Forms Download section of the IPO website
  • Specifications, claims, abstract, and drawings
  • Detailed background of invention, utility model, or industrial design
  • Declaration of Inventorship

What is the protocol for seeking UP support for patent application?
Please see flowchart.

References:

  1. Intellectual Property Office of the Philippines website 
  2. An essay about prior art and its effect on the patentability of your invention
  3. A PROCESS FOR THE PRODUCTION OF FOOD GRADE, LOW FAT AND MEDIUM FAT COCONUT FLOUR AND VIRGIN COCONUT OIL FROM COCONUT RESIDUE
    (Patent Number: 12000000286 in IPO Philippines)
  4. Primer on Governing Principles and Policies on Intellectual Property Rights of the University of the Philippines
  5. UP System IPR Guidelines (Revised 2011)

Compiled by:
Cedrik Ben Gayares
May Japson

Reviewed by: Dr. Corazon D. Villareal
In consultation with: Atty. Vyva Victoria M. Aguirre

Disclaimer:
This is not a comprehensive legally precise document in seeking assistance for patent application but rather a quick guide to inform faculty and researchers of the University.

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* The Invention Disclosure Form is the initial step in the process of determining the commercial viability of your invention. Completion of the form will assist OCVRD in having a record of the date of conception of the invention and provide relevant information that would help in the evaluation, subsequent protection and commercialization of the intellectual property created out of the invention.