PATENT/UTILITY MODEL/INDUSTRIAL DESIGN Rationale Guided by DLSU-­‐D’s Intellectual Property (IP) Policy, the University aims to promote innovation and development, one of which is through patenting. However, not all inventions are patentable and, in some cases, patenting is not the best option for protection. Furthermore, a patent application is not always granted. Thus, the University offers other related IP services such as Utility Model (UM)/Industrial Designs (ID) that likewise protects a certain technology or invention. These Services varies in terms of its registration processes and fees. Ownership – the provision for ownership of Patents/ Utility Models/ Industrial Designs as stated in the University Intellectual Policy shall apply. Application 1. Rules on Initial Application 1.1. Consultation – the inventor shall express his/her intention to file for a Patents/ Utility Models/ Industrial Designs to the ITSO of DLSU-­‐D. The ITSO of DLSU-­‐D shall assign an IP expert for a specific application. 1.2. Submission of Documents – After consultation, the inventor must submit all the documents to the ITSO of DLSU-­‐D. The Patents/ Utility Models/ Industrial Designs/ Trade Secrets application will not push through unless all documents are complete. All documents must be written in English, printed in A4 size paper, and must submitted in a blank long brown envelope. 1.2.1.
Signed Non-­‐Disclosure Agreement (to be issued by the University) 1.2.2.
Abstract of the Invention 1.2.3.
Detailed Description of the Invention 1.2.4.
Background of the Invention 1.2.5.
Detailed embodiments of the Invention 1.2.6.
Invention Drawings 1.2.7.
Claims (where applicable) 1.2.8.
Filled-­‐up Inventor Information Sheet 1
2. Rules on Payment – after submitting the required documents, the inventor/applicant is required to pay the necessary fees. 2.1. Drawing Fee (optional) – Computer-­‐aided drawing at Php 500 per A4 sheet of paper, black and white. 2.2. Upon signing of the contract, the inventor must pay fifty (50%) percent of the total amount. The balance shall be paid/filed at the Accounting Office at least three (3) days before filing the documents to the IPOPHL. The Patents/ Utility Models/ Industrial Designs application shall not be forwarded to the IPOPHL unless the payment is settled/filed. 2.3. If the Utility Models/ Industrial Designs application is a result of a downgraded patent application handled by the University, the Search and Drafting fees are waived. However, additional fees related to this downgrade, shall be paid for by the applicant. 3. Contract Signing – the ITSO of DLSU-­‐D shall schedule a contract-­‐signing with the inventor in not more than seven (7) working days from the date when the complete documents are submitted (item 1.2). 4. Prior Art Searching – The ITSO of DLSU-­‐D shall assign a patent searcher to conduct the search. This shall take in not more than five (5) working days after the contract signing. The Patent searcher shall submit the search report to the ITSO Manager. When the invention passed the novelty criteria, the invention shall proceed to Claims Drafting. Otherwise, the Patents/ Utility Models/ Industrial Designs application cannot push through. In this case, the invention can be modified by the inventor or the inventor can withdraw from the application. If the inventor wishes to modify his/her invention, he/she should pay another search fee. If the inventor withdraws from the application, the Claims Drafting fee shall be refunded. 5. Drawing – In case wherein the applicant opts to acquire the service of DLSU-­‐
D to translate or redraw their manually-­‐drawn and/or incomplete drawings of the invention, the ITSO of DLSU-­‐D can provide drawing services, using computer-­‐aided drawing software for a fee. 6. Claims Drafting – After the search report has been submitted, the ITSO of DLSU-­‐D shall assign a drafter who will write the Claims. The drafter shall be a different person from the searcher. During the course of writing the Draft, the inventor shall be in constant communication with the drafter for clarification and modification purposes. The writing of the Claims shall not be more than ten (10) working days. 7. IPOPHL Application – The Patents/Utility Models/Industrial Designs application shall be forwarded to the IPOPHL Office by the ITSO of DLSU-­‐D through a representative in not more than five (5) working days after the required documents was completed. 2
8. Rules on Notice of Actions – Notice of Actions issued by the IPOPHL shall be replied to by the University on behalf of the Applicant. The ITSO of DLSU-­‐D shall explain to the client the nature of the Notice of Action. The client can withdraw from the application or they can amend the invention and re-­‐apply. The ITSO of DLSU-­‐D, through its representative, shall give suggestions as to the best option for the client’s invention. However, the client shall have the final decision. 9. Prosecution – In cases wherein the invention’s novelty is challenged by a third party, the ITSO of the University may recommend the service of an IP lawyer. 10. Breach of Contract by the Agent -­‐ Failure of the Agent to comply with the provisions in this Agreement shall be subject to penalty and administrative action. 10.1. Penalty -­‐ The Agent shall return all payment made by the Applicant plus ten percent (10%) interest within ten (10) working days after the date of notice. 10.2. Administrative Case – The rules pertaining to administrative cases stipulated in the DLSU-­‐D Faculty Manual shall be implemented. 11. Breach of Contract by the Inventor – 11.1. If the Inventor/s is/are an External Client/s – In the event that no communication has been made with the University within four weeks, a of Notice of Abandonment of Contract shall be sent to the Inventor/s. 11.2. If the Inventor/s is/are an Internal Client/s – In the event that no progress and communication has been made with the University within two weeks, a Notice of Abandonment of Contract. All fees incured for shall be charged to the Inventor/s. 12. Rules on Internal/External Application Rules on First-­‐to-­‐File System – the ITSO of DLSU-­‐D shall observe the first-­‐to-­‐
file system in processing the application. The university has the right to refuse an application if it finds significant similarity to an existing application. Furthermore, the University reserves the right not to reveal the nature of the refusal of the application. 3
TRADE AND SERVICE MARKS
1. Ownership: As stated in Section 9 of the IP Policy, these shall be owned by
the University. If however, marks for application and filing shall come from
an external client, the said marks shall be owned by the External
Client/Applicant.
2. Scope of Service: The scope of service for trade and service marks are the
following:
(a) Trademark Search per Class of goods,
(b) Preparation and Filing of Application per Class of goods,
(c) Preparation of Formal Drawings (optional),
(d) Response to Official Actions,
(e) Request for Extension of Deadlines,
(f) Facilitating of Publication Fee and
(g) Facilitating of Issuance of Certificate of Registration.
3. Mutual Obligations: The party contracting the service shall be bounded by
the following mutual promises:
(a) Within three (3) days after signing an Agreement, the Applicant shall
provide the details including design and description of logos, or symbols
and pictures and other visual elements/representations of his/her
application, then the “University” shall proceed to perform Trademark
Service for the Applicant.
(b) Upon receipt of item 1 as enumerated in the above section, the “University”
shall accomplish items 1 and 2 under the Scope of Service, and item 3 as
an option, for not more than fourteen (14) working days. The Applicant
may refund the amount he/she paid to the University in case the Searcher
and ITSO Manager fails to accomplish the said items.
(c) Upon Response to Official Actions, Request for Extension of Deadlines,
Facilitating of Publication Fee and Facilitating of Issuance of Certificate of
Registration, it will take a minimum of 12 months for these services to be
realized from the filing date of the Trademark Application, exclusive of
IPOPHL’s actions.
(c) It shall be the responsibility of the “University” to exhaust all of their
expertise and skills in order to deliver a comprehensive Trademark Service.
The Service shall terminate after the transmittal of the original COR to the Applicant.
However, another set of agreement shall be applied by the applicant through the
services of University for filing its Declaration of Actual Use (3 years from filing date,
regardless if registered or not within that period), 5th, 10th and 15th Affidavit of Use.
The University and the Applicant agree that they will take all steps necessary and
reasonably required, at their own expertise to submit all necessary documents required
for Filing for Trademark Application, conduct meetings when necessary and fully
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cooperate with each other to achieve IPOPHL's issuance of Certificate of Registration
(“COR”) for a Trademark Application.
The Applicant has an option to seek the University’s services in drawing the mark for
a fee.
All fees herein stated are exclusive of fees as required by IPOPHL. These fees shall
be paid by the applicant.
In addition, all efforts will be taken by both parties in resolving any problems arising
in the Scope of Services.
4. PROFESSIONAL FEE: In consideration of the services to be performed by the
University, the Applicant agrees to compensate the University for an agreed sum
(inclusive of tax) based on the matrix formulated for trade and service marks
application.
5. TERMS OF PAYMENT. The above Fee shall be paid in the following manner:
a. 50% initial payment of the Applicant upon acceptance; and
b. 50% upon the submission of the University’s report to the applicant
6. DURATION OF SERVICES. The duration of the service will start from date of
signing of the agreement until its registration. 1 year, if application will run with at
least 2 official actions only. The filing shall be made by the University.
7. CONFIDENTIALITY. The University will not at any time or in any manner,
either directly or indirectly, use for personal benefit or divulge, disclose or
communicate in any manner any information that is proprietary to the Applicant.
Official Correspondences should be addressed to the ITSO of University, as well as
the Applicant. The University will protect such information and treat it as strictly
confidential.
8. APPLICABLE LAWS AND POLICIES. The Agreement shall be governed by
Section 109 of the Intellectual Property Code of the Philippines also known as
Republic Act No. 8293 and the Intellectual Property Policy and Its Implementing
Rules and Regulations of De La Salle University-Dasmariñas.
9. SEVERABILITY. If any provision of the Agreement shall be held to be invalid or
unenforceable for any reason, the remaining provision shall continue to be valid and
enforceable. If a court finds that any provision of the Agreement is invalid or
unenforceable, but that by limiting such provision it would become valid and
enforceable, then such provision shall be deemed to be written, construed, and
enforced as so limited.
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OWNERSHIP OF TRADE SECRET
1. General Rule: Rights to trade secrets shall belong to the inventor for as long as the
work was not funded or in any manner financially supported by the University,
whether or not it is part of the regular duties of the inventor, except if it falls under the
definition of University-owned intellectual property.
In case of multiple inventors, ownership shall be determined by the stipulation of the
parties. In case there is no stipulation, the ITSO of DLSU-D shall assist in
determining the inventors’ respective ownership in the work. In case the inventors
cannot agree, they shall have equal shares in the ownership of the intellectual property.
2. Exceptions to the General Rule – University-owned Intellectual Property:
Pursuant to section 9 of the IP Policy, rights to trade secrets shall belong to the
University if any one of the following circumstances exists:
(a) The invention was developed as part of the regularly assigned duties of the
inventor;
(b) The invention was developed using funds provided or administered by or thru
the University;
(c) The invention was developed making substantial use of the facilities or
resources of the University;
(d) Commissioned work by the University or “Work for Hire”;
(e) The ownership of the invention was assigned by the inventor to the
University;
(f) In case of students, the invention or work was developed when he/she
received financial support from the University in the form of tuition waiver,
scholarship, stipend or allowance, regardless of the amount; and
(g) Works whose inventors cannot be determined.
3. Rule on externally funded or sponsored projects: If the trade secret arose or was
related to an undertaking covered by distinct agreement of the inventor and a third
party using funds not provided or administered by or thru the University, the terms of
the agreement will prevail over these policies. In the absence of any contrary
provision of the agreement, these policies shall apply to externally funded or
sponsored research.
4. Rule on Student Works: In the case of student work, produced and submitted as
class assignments or as course requirements, these works are owned by students,
unless it fall under the instances stated under Section 7 of the IP Policy. The
University may claim rights over trade secrets over works contributed by University
employees in the course of their mentoring assignment as part of their regularlyassigned duties. In cases of University-owned intellectual property, the faculty
member/s and the student/s concerned may enter into an agreement prior to the
mentoring engagement specifying, among others, the ownership of the intellectual
property and sharing of royalties. The form of the agreement prior to mentoring
assignment shall be provided by the ITSO of DLSU-D. In case there is no agreement,
the ownership of the trade secret shall belong to the student.
5. Rule of Outside Consultants and Independent Contractors: The University
shall own the trade secret of any work produced by non-University employees who
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are contracted to perform certain work for the University as consultants or
independent contractors, unless specified otherwise in a written agreement between
the parties. Likewise, the University shall own the trade secret of any work produced
by University employees which are University-owned intellectual property who are
acting as consultants or independent contractors of third parties.
6. Rule When Inventor Cannot be Determined: In cases where the work has no
known inventor or where the name of the inventor is not indicated or cannot be
known, the University shall inform the academic community through public
announcement about the existence of such invention. If no one claims ownership of
the invention after 30 days from the notice, the University may claim ownership over
the work.
TRADE SECRET APPLICATION
1. Who may file: The owner of the trade secret, whether the University, University
employee/s or student/s and alumni may seek the assistance of the ITSO of DLSU-D
in the filing of the trade secret application.
2. Cost of Application: In case the trade secret is not owned by the University, the
inventor who seeks assistance of the ITSO of DLSU-D shall pay a service fee to the
ITSO of DLSU-D in an amount to be determined by the ITSO. In case of Universityowned intellectual property, all expenses related to the trade secret application shall
be paid by the University.
3. Documents to be submitted: The owner of the trade secret, whether the University,
University employee/s or student/s and alumni, must submit to the ITSO of DLSU-D
a non-disclosure agreement among themselves, clearly detailing the following:
(a) Ownership share of owner/s and sharing of royalties;
(b) A detailed description and process of the trade secret; and
(c) The date to which the agreement is duly signed and notarized.
4. Filing with the IPO Philippines: The ITSO of DLSU-D shall be responsible for
the filing of the trade secret application documents with the IPO Philippines
(IPOPHL) as well as the payment of all filing fees.
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