Lecture during the 9th Martin M. Posadas Memorial Research Forum held at the Virgen Milagrosa University Foundation, San Carlos City, Pangasinan, Philippines, on 23 February 2012. The audience was composed of professors, university researchers, and students. Some university models were also presented.

1. Fundamentals of Intellectual Property Rights (IPRs):
Perspectives for an Academic Setting
Caezar Angelito Estioko Arceo
Proud VMUF Alumnus
9th Martin M. Posadas Memorial Research Forum
Virgen Milagrosa University Foundation
San Carlos City, Pangasinan
23 February 2012

2. Ideas…
Ideas…
Ideas…
© 2005 by CAE Arceo
First used for the
Philippine Rice Research Institute

3. Our basic questions
1. What is an IPR?
2. Why is there a need for IPRs?
3. What can be protected as an IPR?
4. How can IPRs be protected?
5. What is in store for VMUF?

4. Question No. 1
What is an IPR?

5. 1. What is an IPR?
1.1 It is a right.
 Property rights which result from the
physical manifestation of original
thought
1.2 It is a property.
“Ownership of property is acquired
by occupation or by intellectual creation.”
-Civil Code of the
-Philippines (RA 386)
Beronio et al., 2008.

6. Question No. 2
Why is there a need for IPRs?

7. 2. Why is there a need for IPRs?
2.1 Because you have something new and useful.
INVENTOR INVENTION(S)
Johnson Fong Carbonless paper (PH18978, 11-
27-1985)
Virgilio Ecarma Cure for asthma, arthritis, bladder
stone, etc (US2005042313;
ZA200306583; ZA200306581;
PH30978)
Bonifacio Transporting fish by making it
Comandante “sleep” (WO2005039280)
Videoke (Roberto
del Rosario)

8. 2. Why is there a need for IPRs?
2.1 Because you have something new and useful.

9. 2. Why is there a need for IPRs? © 2007 by CAE Arceo
Claim Drafting Training for BPRE
2.1 Because you have something new and useful.
Primeau and Casad, 1905;
US Patent No. 795048.
…which does not necessarily need to be grandiose!

10. 2. Why is there a need for IPRs? © 2007 by CAE Arceo
Claim Drafting Training for PCARRD
2.1 Because you have something new and useful.
Cheng, 2006 Santos, 2004
Crow, 1924
Hubeny &
Frahm, 1924
Griffiths, 1927
Sharpe, 2006
Hammer, 1957
Cabili, 1996
Froehlich and
Froehlich, 1994
Lorber, 1972
THE PAPER CLIP FAMILY
…which does not necessarily need to be grandiose! Botsford, 1973

11. 2. Why is there a need for IPRs?
2.2 Because no one wants frustration.

12. 2. Why is there a need for IPRs?
2.2 Because no one wants frustration. “Armalite”
(Armando Lite)
Apollo lunar rover
(Agapito San Juan)
Nata de coco
(Teodula Afrika)
Some in the
Antibiotic loooooooong list of
(Abelardo Aguilar) Filipino “claims”

13. 2. Why is there a need for IPRs?
2.2 Because no one wants frustration.
Some in the
loooooooong list of
Filipino “claims”

14. 2. Why is there a need for IPRs?
2.2 Because no one wants frustration.
IRRI-PhilRice’s Leaf
color chart
THEN NOW

15. 2. Why is there a need for IPRs?
2.3 Because the law says so.
“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.”
Article XIV, Section 13
1987 Constitution

16. 2. Why is there a need for IPRs? “(T)o give priority to
invention and its utilization on the
country’s productive systems and
2.3 Because the law says so. national life… and provide
incentives to inventors, and
“The State xxx shall protect and
protect their exclusive rights to
secure the exclusive rights of
their invention, particularly when
scientists, inventors, artists and other
the invention is beneficial to the
gifted citizens to their intellectual
people and contributes to national
property and creations, particularly
development and progress…”
when beneficial to the people, for such
periods as provided in this Act.”
Section 2, RA 7459
Section 2, RA 8293 (Inventor and Invention Incentives Act)
“The state xxx shall protect and secure the
exclusive rights of breeders with respect to their
new plant variety particularly when beneficial to
the people for such period as provided for this
Act.”
Section 2(a), Republic Act No. 9168
(Plant Variety Protection Act of 2002)

17. 2. Why is there a need for IPRs?
2.3 Because the law says so.
Some International Treaties that cover IPRs
 Patent Cooperation Treaty (since 2001)
 Convention on Biological Diversity (since 1995)
 Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS Agreement) (since 1995)
 Rome Convention on Performers, Phonograms
and Broadcasting Organizations (since 1984)
 Budapest Treaty on Deposit of Microorganisms (since 1981)
 Convention Establishing the World Intellectual Property
Organization (since 1980)
 Paris Convention on Industrial Property (since 1965)
 Berne Convention on Literary and Artistic Works (since 1951)
 International Union for the Protection of New Varieties of Plants
(UPOV)
 Cartagena Protocol on Biosafety
 International Undertaking for Food and Agriculture

18. 2. Why is there a need for IPRs?
2.3 Because the law says so.
GATT-
IPR System WIPO TRIPS
Convention IP Code
GATT- PCT
Patent Paris Budapest TRIPS IP Code
RA 165
System Convention Treaty “Seed
CBD
Treaty”
Berne PD 49, as GATT-
Copyright Rome TRIPS IP Code
Convention amended by
System Convention
PD No. 1988
Trademark GATT-
system
Trademark during the
RA 166 TRIPS
IP Code
System Spanish
regime
Post IP
1888 1947 1951 1965 1972 1980 1981 1984 1995 1997 Code
© 2006 by Atty. Ronilo A. Beronio

19. 2. Why is there a need for IPRs?
2.4 Because you want an edge.
“Zombie cockroach”

20. Question No. 3
What can be protected as an IPR?

21. 3. What can be protected as an IPR?  The easiest IPR to protect.
 Obtained at the time of creation.
 Covers all forms of
3.1 Copyright. literary, scholarly, scientific, and artistic
creations.
 Includes literary and derivative works.
 Protection during the lifetime of the author and
50 years after his death

22. 3. What can be protected as an IPR?
EXCLUSIONS:
3.2 Patents. “It is an exclusive right
granted for a (1) Discoveries, scientifi
c theories and
product, process or an mathematical
“A Patent is a grant improvement of a product methods;
issued by the government or process which is (2) Mental
through the Intellectual new, inventive and useful.” acts, games, busine
ss models, computer
Property Office of the
programs;
Philippines (IP Philippines).” (3) Surgery, therapy or
diagnostic methods
on the human or
“A patent has a term of protection of twenty (20)
animal body.;
years providing an inventor significant commercial gain.” (4) Plant varieties or
animal breeds or
Source: http://ipophil.gov.ph/ essentially biological
process for the
production of plants
or animals.
(5) Aesthetic creations;
“A patent is a contract between and
the government and the inventor.” (6) Anything which is
contrary to public
order or morality.
- Sec. 22, RA 8293
- Dr. Karl Rackette

23. 3. What can be protected as an IPR?
3.2 Patents.
Novelty
1 Inventive step
An invention shall not be 2
considered new if it forms
part of a prior art. An invention involves an
inventive step if, having
- Sec. 23, RA 8293 regard to prior art, it is not
obvious to a person skilled in
3 Industrial
the art at the time of the filing
date or priority date of the
application claiming the
applicability invention
- Sec. 26, RA 8293
An invention that can be produced and
used in any industry shall be industrially
applicable.
- Sec. 27, RA 8293

24. 3. What can be protected as an IPR?
3.3 Utility Models.
Novelty
1 Inventive step
An invention shall not be 2
considered new if it forms
part of a prior art. An invention involves an
inventive step if, having
- Sec. 23, RA 8293 regard to prior art, it is not
obvious to a person skilled in
3 Industrial
the art at the time of the filing
date or priority date of the
application claiming the
applicability invention
- Sec. 26, RA 8293
An invention that can be produced and
used in any industry shall be industrially
applicable.
 “Petty patent”.
 Protected for seven (7) years.
- Sec. 27, RA 8293

25. 3. What can be protected as an IPR?
3.4 Industrial Designs
 Protects the aesthetic design of the product.

26. 3. What can be protected as an IPR?
Patents vs. Utility Models vs. Industrial Designs:
Original design
Version 1 Version 2
Version 3
Version 4
Please check your pencil

27. 3. What can be protected as an IPR?
3.5 Trademarks.
 Protects brands.
 Comprises words, marks, symbols, or any of their combination.
 Class-specific protection.

28. 3. What can be protected as an IPR?
Trade secrets
3.6 Other IPRs.
Plant Varieties
Geographical indications
“Basi”
“Carabao mango”
“Manila paper”
Layout designs
Domain names - Protected by RA 9150

29. Question No. 4
How can IPRs be protected?

30. 4. How can IPRs be protected?
4.1 Strategize. Who are potential
competitors?
Is this applicable
in an industry/
market?
What is the extent
of applicability?
Where can we find our
What could be the potential competitors?
future technology
landscape?

31. 4. How can IPRs be protected?
4.2 Always keep in mind: The “First-to-File” Rule.
First to File Rule. - If two (2) or more persons
have made the invention separately and
independently of each other, the right to the patent
shall belong to the person who filed an application for
such invention, or where two or more applications are
filed for the same invention, to the applicant who has
the earliest filing date or, the earliest priority date.
- Sec. 29, RA 8293
“If two (2) or more persons develop a new plant
variety separately and independently of each other,
the Certificate of Plant Variety Protection shall
belong to the person who files the application first.”
Section 20 , RA 9168

32. 4. How can IPRs be protected?
4.3 Institutionalize an “IP Policy”.
Inspiration: Definition of “Technology Transfer”
“Contracts or agreements involving the transfer
of systematic knowledge for the manufacture of a
product, the application of a process, or rendering
of a service including management contracts; and
the transfer, assignment, or licensing of all forms
of IPRs including licensing of computer softwares
except computer softwares developed for mass
markets.”
Section 4.2, RA 8293

33. 4. How can IPRs be protected?
4.3 Institutionalize an “IP Policy”.
Default terms of IPR ownership (RA 8293)
Type of IPR Employer Employee
Patent If part of employee’s regular If not part of regular duties,
Utility model duties, unless there is an even if employee uses the
Industrial design agreement, express or time, facilities, and
Integrated circuit implied, to the contrary. materials of the employer.
Layout design
Copyright If part of employee’s regular If not part of regular duties;
duties, unless there is an however, works of
agreement, express or government employees are
implied, to the contrary. not copyrightable.
Plant varieties or plant If resulting from the If there is a written
breeders’ right performance of regular stipulation allowing the
duties, unless there is a employee to own the plant
written stipulation to the variety even if it is part of
contrary. regular duties.

34. 4. How can IPRs be protected?
4.3 Institutionalize an “IP Policy”.
Usual contents of an IP Policy:
 University IPR ownership
 Incentive and incentive system for IPR
 Covered IPRs and required undertakings
 Non-disclosure terms
 Who are covered and their obligations
 An IP Policy Statement

35. 4. How can IPRs be protected?
4.3 Institutionalize an “IP Policy”.
Sample invention disclosure process flow (Singapore model)
Inventor
Prior art inputs Invention Commercial
search 2-4 weeks disclosure assessment
No relevant Close prior Low commercial Abandon
prior art art potential
Can be Freedom
designed to operate
around No relevant prior
art
Drafting and filing

36. 4. How can IPRs be protected?
4.4 Sustain the gains.

37. Question No. 5
What is in store for VMUF?

38. 5. What are in store for VMUF?
5.1 IPRs as leverage.

39. 5. What are in store for VMUF? © 2007 by CAE Arceo
Claim Drafting Training for PCARRD
5.1 IPRs as leverage.
Inventor’s wish
Patent Examiner Trial court
Patent Agent
$$$$ PATENT CLAIMS Infringers
“Future” Market
Competitors

40. 5. What are in store for VMUF?
5.2 Some university models.

41. 5. What are in store for VMUF?
5.2 Some university models.

42. 5. What are in store for VMUF?
5.2 Some university models.

43. 5. What are in store for VMUF?
5.3 Exploration of a network.
http://www.ipophil.gov.ph

44. 5. What are in store for VMUF?
5.4 Streamlining R&D and commercialization efforts.
Faculty and student initiatives
University R&D University IP Office Other university arms
Public Affairs
Rewards/Incentives
R&D proposals Prior art search
Community/Client Inputs
Publication
Technology
R&D clearance Transfer
system Agreements
Commercialization
R&D internal funding IPR registration
Tech Maturity/ Extension Outputs
Review & Monitoring
Refinement
R&D external funding External Linkages

45. An invitation from the oldest research council in Asia…
University researchers to become
members and to access our
research grant,
and
Masters thesis and Ph.D.
dissertation students for our
meager thesis grant.
Please visit
http://nrcp.dost.gov.ph

46. Question No. 6
Do you have any question?
…and thank you!
© 2012 by
Caezar Angelito Estioko Arceo
Registered Patent Agent in the Philippines
(Non-chemical field, 2006; Chemical, 2007)
Mentor, Patent Agent Qualifying Examinations 2011
cangear@yahoo.com
http://www.youtube.com/cangear
http://www.twitter.com/cangear
http://www.slideshare.net/cangear
http://www.scribd.com/cangear

47. Credits
http://wipo.int/amc/en/domains/
Photo Source
Armalite http://www.policemag.com/Channel/Weapons/News/2010/04/29/ArmaLit
e-Introduces-SPR-Mod-1-Rifle.aspx
Apollo Lunar Rover http://nssdc.gsfc.nasa.gov/planetary/lunar/apollo_lrv.html
Videoke http://georgedelapaz.blogspot.com/2012/01/videoke-blues.html
Agapito Flores http://inventors.about.com/od/filipinoscientists/a/Agapito_Flores.htm
Fluorescent lamp http://americanlightingandchemicals.com/long_life_lamps.html
Nata de coco http://www.thefilipinoentrepreneur.com/2008/04/03/how-to-make-nata-
de-coco.htm
Antibiotic http://www.shopyourmeds.com/antibiotics/buy-erythromycin
Integrated circuit http://ee.uwa.edu.au
Money inventor http://www.toonpool.com/cartoons/caveman%20wife%20money%20invention_11
3801
Pen holders http://www.thinkgeek.com/clearance/on-sale/d1ef/
http://www.made-in-china.com/showroom/candyl89/offer-
detailpQxEnlYyomcW/Sell-Acrylic-Pen-Holder.html
http://www.chinawholesalegift.com/7/acrylic-pen-holder/
http://oker88.en.made-in-china.com/offer/HbaQxikDuIcm/Sell-Pen-Holder-Pencil-
Holder-Plastic-Holder-Hedgehog-Pencil-Holder-Injection-Mold-Blow-Mold-
Rubber-Mold-Plastic-Mold-Molding-Tooling.html