31/05/2019

OUTLINE
1st Regional Educators Conference Summit
“Enhancing the Skills of the 21st Century Teachers”
PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION
OF 21ST CENTURY EDUCATORS, INC. (PICEI21) OF RESEARCHERS AND EDUCATORS OF THE PHILIPPINES, INC. (POREP)

Understanding
the Role of Intellectual Property
in Basic and Higher Education
Keywords. intellectual property • Tech Transfer process
• University’s IP • IP management
The images/videos presented in this discussion are not in any
form be the property of the speaker. It is not the intention of the
NACI JOHN C. TRANCE, PECE
Director, Intellectual Property Management Office speaker to own or take credits on these images/videos.
24 May, 2019 Associate Professor IV
Iloilo Science and Technology University
The New Castle Hotel,
Iloilo City, Iloilo

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

OUTLINE Acknowledgment OUTLINE Tech Transfer Process

Reinvest in
Revenue Research +
Education
Commercialization

Research
Licensing

Pre-Disclosure

License to Assist formation

Iloilo Science and Technology Intellectual Property Office Existing of a Start-Up
University of the Philippines (IPOPHL) Business Business

(PHILIPPINES) Invention
Disclosure

Marketing to Find or
Form a Licensee

Protection

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

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OUTLINE Tech Transfer Process OUTLINE Managing IP: A way forward for Universities

Major
` Roles of a University
• Train and Develop Manpower
(EDUCATION)
• Generate new knowledge and products to benefit the
society
(RESEARCH)
• Transfer knowledge to society by fostering
entrepreneurship and industry involvement
(EXTENSION)

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

OUTLINE IP Creation and Utilization OUTLINE Managing IP: A way forward for Universities

Contribute to
Tertiary

C R E A T O R S
U S E R S

National
High School

Development
Elementary

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

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OUTLINE Managing IP: A way forward for Universities OUTLINE Intellectual Property

Exercise:
Use of Patent Documents
Identify all IPs of the given
• Provide technological information for research product/property
• Provide solutions to technical problems
• Avoid risk of R&D duplication
• Monitor trends in R&D activities
• Identify alternative technologies
• Identify patentability potential of R&D activities at early
stages of development
• Identify rights in the public domain
• Solve potential disputes involving patents
Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

OUTLINE Intellectual Property OUTLINE Intellectual Property

Patents: A patent is a legal document granting its holder the Industrial Designs: Industrial design protection allows its owner to
exclusive right to control the use of an invention, as set control the exploitation of the ornamental shapes associated
forth in the patent’s claims, within a limited area and time with products such as the stylish shape of a new sports car , the
by stopping others from, among other things, making, distinctive plastic casing of a certain type of computer or the
using or selling the invention without authorization. shape of a soft drink bottle.

For example, patents could be granted for a battery that

efficiently stores solar energy indefinitely and without
loss, a vaccine to protect against malaria or a new
compound for transforming fish bones into agricultural
fertilizer .

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

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OUTLINE Intellectual Property OUTLINE Intellectual Property

Trademarks: A trademark allows its owner to confirm the origin of his Copyright: A copyright refers to original expressions and “works of
goods to the public. authorship.” The person who creates a copyrighted work is
called an author .

Examples of copyrighted works include: paintings, photography,

music, dances, poems, novels etc. In addition, copyright applies
to some technical things that have an element of originality such
as computer software, technical specifications and related
documentation.

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Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

OUTLINE Intellectual Property OUTLINE Intellectual Property

REQUIREMENTS FOR PATENTABILITY PATENT PRINCIPLES

Substantive Requirements:  TERRITORIALITY - patents are only valid in the
country or region in which they have been granted
1.) NOVEL - NEW
 FIRST-TO-FILE –applicant who files first will get the
2.) INVENTIVE STEP – NOT-OBVIOUS patent
 DISCLOSURE –applicant shall disclose the invention
3.) INDUSTRIAL APPLICABILITY - USEFUL in a manner sufficiently clear and complete
- Quid pro quo principle – protection in exchange for
Formal Requirements:
disclosure
a) Patentable subject matter
b) Sufficiency of disclosure/enablement  CONDITIONAL – patents are granted only upon
c) A4 size, margins, page numbers, line numbers, compliance with the criteria of patentability
drawings, etc.

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
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OUTLINE Intellectual Property OUTLINE Intellectual Property

PATENT RIGHT NON-PATENTABLE INVENTIONS (Rule 202)

1. Discoveries, scientific theories
Exclude others from: 2. Mathematical methods
 making, using, offering for sale, selling or 3. Abstract Ideas
importing (product) 4. Schemes, rules and methods of
 using, and from manufacturing, dealing in, -performing mental acts
using, selling or offering for sale or -playing games
-doing business
importing (process) -programs for computers
5. Methods for treatment of the human or animal body by surgery
or therapy & diagnostic methods practiced on the human &
animal body

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Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS 24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP) The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

OUTLINE Intellectual Property OUTLINE Success Stories

NON-PATENTABLE INVENTIONS (Rule 202)

6. Plant varieties or animal breeds or essentially biological processes for
the production of plants and animals.
• Developed as an electrolytic thirst quencher for
use by its football team
• Formula was patented and acquired value
7. Aesthetic creations.
• Trademark – GATORADE

8. Anything which is contrary to public order or morality • “Since 1973, Gatorade has brought more than $80 million to
the university”, Joe Kays & Arline Phillips–Han, Gatorade-An
Idea That Launched An industry
• Patent expired after 17 years but the trademark remained in
force and continued to produce income for the university

Understanding the Role of Intellectual Naci John C. Trance
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo
24 May 2019
The New Castle Hotel, Iloilo City, Iloilo
1st Regional Conference Summit
“Enhancing the Skills of the 21st Century Teachers”
PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)
21
Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
24 May 2019 PHILIPPINE INSTITUTE PROFESSIONAL ORGANIZATION OF RESEARCHERS
The New Castle Hotel, Iloilo City, Iloilo OF 21ST CENTURY EDUCATORS, INC. (PICEI21) AND EDUCATORS OF THE PHILIPPINES INC. (POREP)

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OUTLINE Success Stories OUTLINE Success Stories

The Lagundi and Sambong Story of UP Manila IP AND IPR PROTECTION

By: Professor Nelia Cortes-Maramba as Project Coordinator and
Principal Investigator Patent No. 1-1997-57575: Sambong Tablet:
Herbal Composition and Uses Thereof (diuretic
and for kidney stone dissolution)

UM No. 2-1999-00164: Lagundi Pediatric Syrup,

Herbal Pharmaceutical Composition in Syrup
Form containing Lagundi as the Active
Ingredient*

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OUTLINE Success Stories OUTLINE Success Stories

PASCUAL LABORATORIES, INC.:

THE PIONEER LICENSEE, RISK-TAKER, AND NOW THE MARKET LEADER
Ilosone:
• Technologies Licensed: Lagundi Tablet, Lagundi Pediatric Syrup, The antibiotic from Iloilo
Sambong Tablet, Akapulko Lotion
• First license issued in November 1995 for Lagundi and Sambong • Dr. Abelardo Aguilar sent some soil samples to his employer, Eli
tablet and in 1999 for Lagundi Pediatric Syrup Lilly.
• Trademarks: Ascof (for Lagundi) and ReLeaf (for Sambong)
• Product Variants after Licensing: Strawberry- and Banana-flavored
• Isolation of Erythromycin
Lagundi Pediatric Syrup,
• Lilly filed for patent protection of the compound and was granted
• From initial remittance of P164,018.85 for royalties and license US patent 2,653,899 in 1953
fees on Lagundi and Sambong products in 1997 to P13,856,915.13
in 2010 • Product was launched commercially in 1952 under the brand
• Total remittance of P50,046,894.79 for royalties and license fees name Ilosone after Iloilo where the soil was collected
from 1997 to 2010

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OUTLINE Questions? OUTLINE End…

Thank You…

Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit Understanding the Role of Intellectual Naci John C. Trance 1st Regional Conference Summit
Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers” Property in Basic and Higher Education • Iloilo Science and Technology University, Iloilo “Enhancing the Skills of the 21st Century Teachers”
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