Utility Models: Innovation tool for developing economies?

30 April 2021

Utility Models: Innovation tool for developing economies?

Domestic invention patent filings in the Philippines, while increasing, have been low as compared to PCT and direct filings by foreigners, and remained at an average of 10 percent of total filings from 2015 to 2019.The unofficial 2020 figures showed a reduction of about 3.5 percent over 2019, which could be attributed to the Covid-19 pandemic. For utility model filings, 96 percent of which come from local or domestic entities, there has been a remarkable surge for the period 2015-2019 of nearly 900 percent as shown in the table below published by the Intellectual Property of the Philippines (IPOPHL):

 

The unofficial 2020 figures obtained from the IPOPHL showed a marked decline of about 40 percent, which is most likely due to the quarantine protocols implemented by the government to contain Covid-19 infection, by closing or limiting the services of educational and non-essential business entities nationwide. Data from the IPOPHL presented comparatively below revealed that top filers of UM are from state universities and research institutions:

 

Table 2. Comparative Top UM Filers

2019
 No.
%
2020
No.
%
Cebu Technological University
171
7%
Cebu Technological University
82
6%
Capiz State University
150
6%
Don Mariano Marcos Memorial
38
3%
Cebu Normal University
114
4%
Food Processing Innovation Center (FPIC) Davao
30
2%
Samar State University
71
3%
University of Antique
30
2%

 

As to the field of technology, the same data shows that food chemistry accounts for over 40 percent of utility model applications:

 

Table 3. Comparative UM Top Filings by Field of Technology

2019
 No.
%
 2020
No.
%
Food chemistry
547
47%
Food chemistry
344
39%
Basic materials chemistry
79
7%
Furniture, games
43
5%
Handling
66
6%
Pharmaceuticals
42
5%
Furniture, games
53
5%
Electrical machinery, apparatus, energy
39
4%
Pharmaceuticals
46
4%
Other special machines
36
4%

 

Historically, it was difficult to wean-off faculty researchers, and this is still an ongoing process, from the publish-or-perish mind set. The Department of Science and Technology (DOST), however, by 2017 stepped up on its IP awareness, training and commercialization programmes, as well as monetary incentives, to encourage state universities and research institutions to convert their research into patentable inventions.

 

Why utility models?

Utility models have been in the patent system of the Philippines since 1947 when Republic Act 165, patterned after U.S. patent laws, created an independent patent system, and the Philippine Patent Office (now the IPOPHL). U.S. patent laws do not provide for utility models, but applicable patent laws then were made to apply to utility models, which were considered as “any new model of implements which does not possess the quality of invention, but which is of practical utility” and which may be protected. Republic Act 8293 (IP Code), promulgated in 1998 repealed Republic Act 165 and instituted the registration system for utility models as described below:

 

Table 4. Utility Model Regime in the Philippines

Subject Matter
A product such as a machine, a device, an article of manufacture, a composition of matter, a microorganism; a process such as a method of use, a method of manufacturing, a non-biological process, a microbiological process; computer related inventions; and improvements thereof (Rule 200)
Criteria for Protection
Novelty and industrial applicability. Inventive step not required. Provisions on novelty, non-patentable inventions and industrial applicability for invention patents are applicable to utility models.
Term of Protection
7 years without possibility of renewal.
Examination
No substantive examination; only formality examination.
Conversion to Invention
Once, at any time before the grant or refusal of a utility model.

 

Faster issuance of grants, less expense, ease of enforcement against infringers, protection of incremental or minor improvements, or inventions that are perceived to be more susceptible to obsolescence, are the advantages of a utility model. It takes about six to 12 months from filing for the utility model for the certificate of registration to be issued. Official fees are lower, although professional fees of patent agents may not be significantly lower because the utility model to be filed must be strong enough to withstand challenges of lack of novelty, or if the inventor/applicant has plans of filing the utility model as an invention in other countries thru the PCT where inventive step is required, then the application must fulfill said criteria.

 

Successful UM

The lagundi plant (vitex negundo L.) has been an active composition of 19registered utility models in the Philippines since 2003, e.g., cough andcold medication, herbal tea, liniment oil, dietary supplement, foodsupplement, herbal candy, water colour formulation, etc. Itsdevelopment and commercialization as a natural source of herbalmedicine was supported by the DOST that secured protection for the herbal pharmaceutical composition by way of a utility model obtained in 2001, paving the way for licensing said technology, and fulfilling its mandate to offer more affordable drugs thru locally developed herbal medicine. The Philippine Food and Drug Administration (FDA) approved in August 2020 the clinical trials for lagundi as a mode of adjuvant therapy. The DOST has stated that the pharmacologic properties of lagundi makes it a good candidate in providing symptomatic relief for mild Covid-19 without co-morbidities.

 

Looking ahead

The Philippines enacted the Innovation Act (RA 11293) on April 17, 2019, and its Implementing Rules and Regulations (IRR) took effect on February 7, 2020. This act aims to improve the position of the micro, small and medium-size enterprises (MSME) in the innovation system. MSME’s comprise about 99.5 percent of the business establishments in the Philippines, contributing about 55 percent of the country’s GDP. Moreover, the act aims to strengthen the public and private partnerships which could lead to more spin-offs, start-up and licensing of the inventions and utility models being generated by state universities and colleges and research institutions.

The IPOPHL has recommended the amendment of the IP Code, and one of the amendments allows the parallel applications of for a utility model and an invention patent, similar to the practice in Germany. Should the utility model application be granted registration, a certificate shall be issued, and the invention application shall proceed independently unless withdrawn. If the invention application is granted, the letters patent will be issued but the utility model registration should be surrendered unless the holder chooses utility model registration. Hopefully, the amendments will be approved by the 18th Congress, which ends in 2022.



About the author

 Brenda P. Rivera

Brenda P. Rivera

Brenda P. Rivera is the vice president and director for patents of Hechanova & Co., Inc. She has a master’s degree in economics from the University of Asia and the Pacific, and is a certified patent valuation analyst.

 Grace Christy G. Carbonell

Grace Christy G. Carbonell

Grace Christy G. Carbonell is the senior patent specialist of Hechanova & Co., Inc. She is a chemical engineer and alumna of the FICPI SEAD patent drafting course. She obtained her law degree from Arellano University.

Editha Hechanova

Atty. Editha R. Hechanova leads the HECHANOVA Group’s intellectual property law practice. The HECHANOVA Group is made up of Hechanova & Co., Inc. an intellectual property consulting firm handling trademark and patent prosecution, copyright and domain name registrations, product registration, management, valuation, searches, and other non-contentious aspect of intellectual property, where she is President/CEO. The contentious IP practice is handled by the other member firm, Hechanova Bugay Vilchez & Andaya-Racadio law offices which specialize in enforcement, litigation, alternative dispute resolution, licensing  corporate, immigration law and taxation.  Editha graduated from the University of the East with a business degree, major in Accounting, magna cum laude. She is a Certified Public Accountant. She obtained her law degree from the Ateneo de Manila University, and a Certificate in Strategic Business Economics from the University of Asia and the Pacific.  

Editha is an accredited mediator of the Court of Appeals and Intellectual Property Office of the Philippines (IPOPHL)/WIPO, and arbitrator.  She is a Certified Patent Valuation Analyst (CPVA) by the Business Development Academy based in New Jersey, USA.   She passed the Patent Agent Qualifying Examination (PAQE) in 2008 conducted by the IPOPHL, and is currently the president of the Association of PAQE Professionals, Inc. consisting of PAQE passers.  She is an alumna of the South East Asia Patent Drafting Course (SEAD) conducted by the Federation des Conseils en Propriete Intellectuelle (FICPI), an international organization of patent and IP practitioners.   She is currently the Vice-President of the IP Collegium, an organization of IP experts mainly in the ASEAN region, India and Brazil, sponsored by the Japan Institute for Promoting Invention and Innovation (JIPII).

She has been cited as Leading Lawyer in the field of Intellectual Property Law in the Philippines by the AsiaLaw Magazine, from 2002 to 2020, and Who’s Who Legal Trademarks 2012, to 2020, and an MIP IP Star. She has been cited by the Asia Business Law Journal as one of the Top 100 Lawyers in the Philippines from 2018-2020.  Hechanova & Co., Inc. has been top patent filer and trademark filer from 2010 to 2020 according to the IPOPHL. The Hechanova Group has been recognized as the  Philippines Patent Firm of the Year for the 2020 Asia IP Awards.  In 2019, it was awarded the Philippines Copyright Firm of the Year, and in 2017, the Philippines Trademark Firm of the Year. 

She has led several enforcement actions against counterfeiters and infringers and is a member of the INTA Anti-Counterfeiting Committee (EAP),  and its Customs Project Team. 

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