- Guidelines on Intellectual Property Rights Assistance Program (IPRAP)
- TAPI Administrative Order No. 157-14
TAPI ADMINISTRATIVE ORDER NO. 157-14
|SUBJECT||:||Guidelines on Intellectual Property Rights Assistance Program (IPRAP)|
SECTION 1. Program Description.
This program provides assistance in securing intellectual property (IP) protection by TAPI pursuant to
In order to provide a holistic package of assistance to applicants, especially TAPI-assisted patent applications, other IP filings such as for utility model, industrial design, trademark and copyright applications are included in this program. Through this program, TAPI may also entertain other entities to request and secure appropriate IP before the Intellectual Property Office of the Philippines (IPOPhil).
SECTION 2. Objectives.
1. To encourage creative and inventive activities and investments in research and development by securing for the inventors the protection of appropriate IP Rights (IPR) and interests related to their inventions.
2. To facilitate technology transfer.
SECTION 3. Assistance Coverage.
1. Consultancy assistance in the form of:
1.1 Advisory services concerning rules of practice in patent cases;
1.2 Guidance in the:
1.2.1 Preparation of patent application documents including specification, claims and drawings;
1.2.2 Prosecution of the patent application.
2. Package of assistance for the following IPs:
2.1 Patents preparation of application, payment of applicable government and/or professional fees (i.e., filing fees and other fees for the prosecution of application and annuities up to grant of patent).
2.2 Utility Model preparation of application, payment of applicable government and/or professional fees (i.e., filing fees and other fees for the prosecution of application up to the issuance of certificate).
2.3 Industrial Design preparation of application, payment of applicable government and/or professional fees (i.e., filing fees and other fees for the prosecution of application up to the issuance of certificate).
2.4 Trademarks preparation of application and payment of applicable government and/or professional fees (i.e., filing fees and other fees for the prosecution of application up to the issuance of certificate). This is for DOST generated and assisted technologies only.
2.5 Copyright cost of filing fees.
SECTION 4. Eligibility.
1. Applicant should be any of the following, provided that Applicant certifies that he/it has no conflict of interest with any person or entity with regard the application:
1.1 a Filipino citizen;
1.2 a duly recognized academic or research institution; and/or
1.3 inventors organizations accredited by TAPI.
2. In addition, Applicant must:
2.1 be of good moral character and has not been convicted of any case involving moral turpitude; and
2.2 have no delinquent account with TAPI.
SECTION 5. Criteria for Screening.
A. Patent/UM Application
1. Complete documentary requirements (see Section 7)
2. Applied technology must not be disclosed or commercialized (i.e., sold in the market, or simply offered for sale) within two (2) months from the date of receipt of application.
3. Applied technology may be in the research stage, provided that the Applicant can certify that the research data needed to describe the invention is already consistent. ACIDSc
4. Technically feasible.
5. Winner of a TAPI organized invention contest is an advantage.
B. Industrial Design/Trademark/Copyright Application
1. Complete documentary requirements (see Section 7).
2. Application is in line with the existing DOST's thrusts or programs.
SECTION 6. Operating Procedures.
1. Applicant submits application with complete requirements for IPR assistance to TAPI Director.
2. The TAPI IPRAP checks completeness of disclosure and requirements. If complete, acknowledges receipt of the application. Otherwise, it notifies the Applicant and requests him/her to submit the needed information/requirements within 60 calendar days from receipt of communication from TAPI. If the Applicant fails to comply within the stipulated period the application is deemed withdrawn.
3. The TAPI IPRAP conducts evaluation based on criteria for screening in Section 5. For patent and UM, if technology is not in-line with the expertise of IPRAP staff, the Application is evaluated by a person or team designated/requested by the IPR Program Manager using the IPR evaluation form. If meritorious for assistance, Program Manager includes the application in the list of technologies for contract-out to the approved and qualified IP services providers. Otherwise, Applicant is informed of the disapproval of the Application.
4. TAPI IPRAP engages the services of an appropriate agent from TAPI/DOST or contracted IP consultancy firms and associations and ITSO for approved application except for copyright. A MOA or conforme letter between TAPI and the DOST/ITSO Patent Agent/IP consultancy firm/association and TAPI and the Applicant as parties are prepared for securing IP protection.
5. For in-house preparation of patent/UM application, the Director of TAPI issues a special order (SO) authorizing a TAPI patent agent to perform the task of preparing, filing and prosecuting the patent or utility model registration application. The SO will not apply if it is within TAPI Patent Agent's regular function. As needed, the patent agent instructs the illustration draftsman on the formal drawings to be prepared.
6. TAPI IPRAP forwards the disclosure to the patent agent or to the contracted IP service providers, who will directly communicate with the Applicant to draft and finalize the application.
7. Once filed, Agent submits the application details to TAPI such as stamp-received forms and statement of account, which TAPI shall forward to the Applicant for reference purposes. Agent proceeds in the prosecution of the application until the final action of the IPOPhil is received.
8. TAPI IPRAP coordinates and monitors the preparation, filing and prosecution of the patent/UM/ID/TM registration application. It shall process the payment of professional and applicable government fees as per the scope of applicable instructions (i.e., MOA/Conforme letter).
9. For Applicants who personally filed or prepared their patent/utility model/industrial design applications at IPOPhil., TAPI may provide the filing fees without the pre-evaluation of the invention/UM/ID. A conforme letter between the applicant and TAPI will be prepared and filing fees will be shouldered by TAPI and pay directly to IPOPhil. In case of reimbursement, a check will be prepared in the name of the inventor/researcher/RDIs applicant.
10. Once the patent/IP registration has been issued by IPOPhil., TAPI IPRAP shall provide/forward the original copy to the applicant and retain photocopy in their file for record purposes.
SECTION 7. Checklist of Requirements.
1. For patent/UM application:
1.1 Fully filled up invention disclosure form;
1.2 Full disclosure of the technology with electronic copy;
1.3 Preliminary search report;
1.4 Certification that a working model/proof of concept is available;
1.5 Copy of the research undertaking agreement for research-based applications with funding from a government or private sponsor; and TaDAIS
1.6 For Applicants with research agreements, the application is requested by the funding agency or the R&D institute.
1.7 For payment of filing fees only:
1.7.1 a copy of the final draft of specification and claim for filing at IPOPhil, request for patent/UM/ID application with necessary drawings; or
1.7.2 one (1) set complete original of the patent/UM/ID application together with the specification and claims stamped received by the IPOPhil and the Statement of Account (SOA) as proof of filing of the application with the IPOPhil. The SOA should have been issued within two weeks; or
1.7.3 For reimbursement of filing fees:
1.7.4 Original Official Receipt (OR) from IPOPhil. within the month from the date of filing;
1.7.5 A copy of the specifications/claims and drawings (when applicable) stamped received by IPOPhil;
1.7.6 A copy of the other documents from IPOPhil.
2. For Industrial Design application:
2.1 Fully filled up IP disclosure form;
2.2 Full disclosure of the design with electronic copy;
2.3 Certification that a working model is available for inspection.
3. For Trademark Application:
3.1 Fully filled up application form which contains a certification of actual use.
If the trademark is not yet used, at least an undertaking that the said trademark will be used within six (6) months from the receipt of application.
3.2 Full description of the trademark, including all representative figures and their variants.
4. For Copyright Application:
4.1 Fully filled up application form;
4.2 Two (2) copies of published work for copyright application.
5. Endorsement letter according to Section 5, if applicable.
6. Figures, if applicable, to substantially represent and describe the application. Depending on the application, figures may be in the form of illustrations, drawings, flowcharts, graphs, and others, which contain proper description of the parts. If drawings are needed in the application but are not available from the Applicant, at least photos that significantly represent and describe the application are included and properly described in the application.
SECTION 8. Effectivity.
This Order shall supersede previously issued guidelines and shall take effect fifteen days after publication in the Official Gazette or newspaper of general circulation. SITCEA
Taguig City, Philippines, October, 2014.
(SGD.) EDGAR I. GARCIA
Department of Science and Technology
Technology Application and Promotion Institute
Published in the Official Gazette, Vol. 111, No. 8 Page 1156 on February 23, 2015.