Protecting Intellectual Property

Governing policies on intellectual property in UP

The Revised Intellectual Property Rights Policy of the University of the Philippines System were approved by the Board of Regents on June 3, 2011. The UP IPR Policies have been formulated and are being implemented to promote and support the University's research function, provide an institutional mechanism for recognition of research output and protection of IPR resources to propel and sustain further research; and to establish a protocol for resolving competing interests among the various constituencies and markets.

The "Revised Governing Principles and Policies on Intellectual Property Rights of the University of the Philippines System" is available here.

The policy applies to all faculty members, researchers, students, staff and visiting professors undertaking research and/or creative activities pursuant to any program, project, grant or contract under the auspices of the University.

These policy covers all research and/or creative activities, tangible research properties or outputs with or without patent or copyright protection, whether for commercial or non-commercial purpose, undertaken using any resource and including all technology transfer arrangements.

All types of intellectual property rights (IPRs) enumerated under the IP Code (RA 8293), namely, copyright and related rights, patents, trademarks and service marks, geographic indications, industrial designs, layout designs of integrated circuits, protection of undisclosed information and even plant variety protection are also covered by these policies.

Copyright

As a general rule, copyright of all works shall remain with the creator, except in cases of institutional or collaborative works. When copyright must be assigned to the university, creators shall disclose the existence and assign the copyright to the university.

1. Institutional Works

The University shall have exclusive ownership over institutional works. Institutional works include:

  1. works that are produced through research and development funded by any Philippine government agency or instrumentality, or government-owned and -controlled corporation from government appropriations and those source from government managed official development assistance funds.
  2. works supported by a specific allocation of university funds of substantial university resources other than the usual salary and resources made available to every faculty, researcher, student or staff;
  3. commissioned works or thos works created at the direction and control of the university through its officials or designates for a specific project or purpose;
  4. works whose authorship cannot be attributed to one or a discrete number of authors despite the application of processes prescribed; and
  5. works whose authorship cannot be attributed to one or a discrete number of authors because it is the result of simultaneous or sequential contributions over time by multiple authors.

2. Collaborative works

In the absence of any contractual stipulation to the contrary, if the works is the result of collaborative efforts between the University, an outside entity and the creator/s, the copyright shall be jointly owned by the university, the creator/s and the outside entity.

3. Waiver of ownership of copyright by the University

In case of institutional works and works of joint ownership with the University, the university through its designated officials may waive copyright in favor of the creator if all of the following conditions are met:

  • the waiver would enhance the transfer of technology or improve the access of the works by the public in general;
  • the waiver does not violate any existing contractual obligation and to the third parties; and
  • the participation of the University in the work is acknowledged by the creator in all publications of the work, whether local or international.

If the University is unable or has not decided to publish or exhibit the works within one year from its disclosure, its copyright is automatically waived in favor of the creator. The one-year period may also be waived by the University at the request of the creator if the work is to be published in a reputable international or local journal relevant to the academic discipline to which the work belongs. The contribution of the University shall be duly acknowledged in all publications or exhibitions of the work.

Patents

As a general rule, rights to patents shall belong to the inventors except in commissioned inventions where the University shall own all patents.

1. Commissioned Inventions

  • Inventions that are supported by a specific allocation of University funds or other University resources;
  • 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 existing processes or rules;
  • Those that may be stipulated by contract as commissioned inventions.

2. Disclosure and Assignment

Creators of commissioned inventions should disclose and assign the patent to these works to the University in accordance with existing rules and implementing guidelines which may be promulgated by the President of the University.

3. Inventions as a Result of Collaborative Efforts

The identification of inventorship, whether sole, primary or joint, shall be determined as follows:

  • by contractual stipulation;
  • by applications of the rules and standards of a publication primarily intended by the collaborative effort; and
  • by alternative modes of dispute processing including mediation and arbitration.

4. Inventions Funded by Outside Entities

In the event that funding for the research is sourced by the University, wholly or partially, from outside entities, the University shall negotiate with the funding entity with respect to the ownership of the invention, patent rights and royalty sharing subject to confirmation of the Board of Regents. The agreement shall bind parties including the inventors.

5. Required Assignment of Patent to the University

Regardless of the source of funding, patents to the following inventions shall be assigned to the University:

  • those conceived or first reduced to practice by employees, faculty or students in the university in the course of the performance of their duties;
  • those created through substantial use of University resources such as libraries, research facilities, buildings, utilities, equipment, tools, and apparatus, including services of its employees working within the scope of their employment.

6. Waiver by the University of Rights to Patent

In the absence of contractual obligation to third parties, the University may release patent rights to inventors if all of the following conditions are met:

  • the University elects not to file a patent application and the inventor is prepared to do so. It shall be presumed that the University elects not to file a patent application if no application is filed two years after the disclosure of the invention or from the time 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; and
  • the equity of the situation clearly indicates that such release should be given.

Neither waiver shall be given unless there is a written commitment that no further development of the invention shall be made involving the financial support or resources of the University, nor shall any waiver be made in violation of any contractual obligation of the university.

Trade and Service Marks

Trade and service marks are distinctive words or graphic symbols long associated with the University (e.g. Oblation, UP Seal, etc.) registered by the University with the Intellectual Property Philippines (IP Philippines). The University shall own trade or service marks relating to goods or services distributed by the University. These include names and symbols used by the University in conjunction with its computer programs or University activities and events.

Proprietary Information

Proprietary information includes information arising from University work. These include processes which may fall under the concept of "trade secrets."

Tangible Research Property (TRP)

These are research results which are in tangible form (i.e. integrated circuit chips, computer software, biological organisms, engineering prototypes) which cannot be the subject of any other kind of Intellectual Property protection are presumptively considered as owned by the university. All TRPs may not be used by outside parties without the consent of the University. In no case shall biological material in any form be the subject of patents or any form of acquisition.

Invention Disclosure Procedure

  1. All inventions and discoveries produced by the University personnel/unit/center shall be immediately disclosed in writing to the proper University authority. For this purpose, the University has devised the Invention Disclosure Form to be filled up by the inventorl/unit/college concerned.
  2. Where the invention or discoveries belong to the University, solely or jointly with others, or where the right to the patent is assigned to the University, the University shall act in all matters concerned with patenting, promotion, management and protection of patents, including the use of such inventions or discoveries for the purpose of industry or commerce.

Royalty Sharing

The university shall assign to the author(s), inventor(s) or creator(s) 100% of the first two hundred thousand pesos (or less) of the royalty received by the university from commercialization of the intellectual property. This amount may be adjusted on a yearly basis, taking into account factors such as inflation rate.

In excess of this amount, the author(s), inventor(s) or creator(s)shall receive at least 40% of the royalty received by the university. Collaborating authors or inventors shall share in accordance with the determination of their participation in the authorship or invention.

Twenty-five percent (25%) of the remainder of the royalty (i.e. 60%) shall go the the UP System, while seventy-five percent (75%) shall go to the constituent university, without prejudice to such policies or arrangement that the constituent university may have with respect to sharing its allocation of the net income with the department(s) or unit(s) from which the intellectual property originated.

Portability of Shares

Shares in royalty and other revenues such as upfront, milestones, and other payments shall be payable to the creator(s)/ inventor(s) of the the intellectual property even after retirement, termination of their employment with the university or their contract of service or in the case of students after their graduation from the university; provided further, that said reator(s)/ inventor(s) have not been dismissed from the university because of violations (e.g. selling or compromising university trade secrets). The department/ institute from which the invention originated shall also continue to receive its shares in royalty or other payments.