Patent Protection Incentive Package for Philippine Inventors
Ignacio S. Sapalo
To encourage researchers and scientists in higher educational institutions to avail themselves of patent protection for their inventions, the Intellectual Property Office of the Philippines launched the PPIP this year.
PPIP (Patent Protection Incentive Package) aims to provide funds to pay for the government fees for patent filing and granting, including the annuity payment required to maintain a patent after its grant. It is a project of the Innovation and Technology Support Office (ITSO).
The patent system was established in the Philippines with the enactment of Republic Act 165 way back in 1947, but since then the number of patent filings by Filipino inventors is embarrassingly low.
Through the PPIP, the IPOPHL is taking up the challenge to increase that number significantly. Clearly, the most effective way would be to generate interest in the IP system among the science and engineering faculties of the country.
To this end, the IPOPHL created the ITSO franchise system. At present, there are 31 ITSO franchisees. ITSO seeks to build the institutional capacity of these schools and universities to conduct their own patent searches, draft their patent applications, and prosecute the applications before the patent office.
“ITSO SEEKS TO BUILD THE INSTITUTIONAL CAPACITY OF THESE SCHOOLS AND UNIVERSITIES TO CONDUCT THEIR OWN PATENT SEARCHES, DRAFT THEIR PATENT APPLICATIONS, AND PROSECUTE THE APPLICATIONS BEFORE THE PATENT OFFICE.”
The absence of venture capitalists in the Philippines and of private funds intended to finance entrepreneurs bold enough to invest in high risk start-up businesses, means there is real need for government support for this project. Under the incentive package, the IPOPHL shall waive its fees for the first 1,000 patent applications. Educational institutions in the country can now avail themselves of this financial support. IPOPHL will waive: (i) government filing fees and other subsequent fees, and (ii) government annuities from the fifth to the 14th year after granting of a patent.
- The invention to be patented is a product of researches conducted by, or in collaboration with, any higher education institution which is an ITSO franchisee.
- IPOPHL is the office of first filing.
- A corresponding Patent Cooperation Treaty (PCT) application must be filed within 12 months from the filing date of the application so that the applicant can avail itself of the subsidy for the registration of the patent and the government annuities. The cost for filing and processing the PCT application shall be shouldered by the applicant but with the assistance of IPOPHL a 90 percent reduction rate for developing countries is available.
- The patent applicant must actively pursue the commercialisation of the invention to qualify for the subsidy for government annuities.
- In case the patent or patent application is assigned or transferred to a non-educational institution at any time during the application or patent life, all fees subsequent to the assignment or transfer shall be paid for by the assignee.
Prior Art Search and Preparation of the Patent Application
- A prior art search and a preliminary evaluation of the invention to be patented must have been conducted by the ITSO.
- The description, claims and formal drawings (if any) must be drafted by an accredited patent agent who has passed the patent agent’s qualifying examination (PAQE) or who has taken the PAQE exam.
Filing and Prosecution of the Application
- All PPIP applications should be filed with IPOPHL between March 22, 2012 and December 20, 2012. (The closing date may be extended by the director general of IPOPHL.)
- Applications shall be filed in the name of the inventor, but rights thereto assigned to a school or university.
- The patent prosecution shall be handled by ITSO.
An interesting feature is the requirement that a corresponding PCT application be filed within 12 months of the filing date of the application. In effect, inventions covered by this project should aim to be sold in markets outside the Philippines, so obtaining patent protection in other countries through the PCT would be necessary. It is hoped that the PPIP will realise its potential as a catalyst of economic growth in the Philippines.