Dr. Benjamin Chan checks the Universal Testing Machine in the Materials Physics Laboratory
by Quirino Sugon Jr.
Dr. Benjamin O. Chan, Associate Professor of the Department of Physics of Ateneo de Manila University, passed the patent agent qualifying examinations last June 2012. His name is now included in the Register of Patent Agents of the Intellectual Patent Office of the Philippines. Dr. Benjamin Chan and Dr. Nestor Valera of the Department of Chemistry are the university’s patent officers. They hold office at the Innovation and Technology Support Office (ITSO) at Faura Hall Room 222. Below is an interview with Dr. Benjamin Chan by the Ateneo Physics News:
1. When did you star t working in the ITSO?
February 2011. With me is Dr. Nestor Valera. Now, there is a graduate assistant. I am not sure if Dr. Muga is with us.
2. When did the Innovation and Technology Support Office (ITSO) start?
It was officially launched sometime March 2012, but I have not attended the launching. It should be fully operational at this point.
3. Where is the ITSO office?
It is at Faura 222. The research assistant is there working halftime. It is not open all the time. Personally, I have difficulty spending a lot of time there. Most of the time I and Dr. Valera are working in our respective laboratories or offices. There should be a better way of running the office.
4. Did you undergo training?
A lot. There is a Basic Patent Information course sponsored by World Intellectual Property Organization (WIPO). They have online courses such as Patent Information (301), Patent Search (318) and Patent Drafting (320).
Dr. Benjamin Chan’s Patent Agent Qualification Examination certificate of completion
5. Are these sufficient for you to become a licensed patent officer?
No. These are just courses. The patent agent qualification exam has a different set of training, but it includes the basic training on the patents. There were two weeks of intensive training. Then you have to pass an exam, which is patterned after the European Qualifying Examinations given by the European Patent Office. That exam was administered last November 2011. Last June 2012, I passed the exam. My name was entered in the Register of Patent Agents for the Intellectual Patent Office of the Philippines. My name is recognized as a patent drafter for IPO Philippines, following European patent rules.
6. Is there a difference between European and American patent rules?
The European patent rules require you just have a single independent claim. The rest are dependent on that single claim. The American system, on the other hand, is looser: you can have several independent claims in the document, as an embodiment of your invention. It is a different way of writing the patent.
7. Have you written some patents?
I am currently drafting two patents. One is for external clients. Another one is internal for the School of Science and Engineering. Anyone can do the patent search, but the drafting takes some skill. That is what I can do. I can help people draft the whole patent document, down to the claims and descriptions–and even the drawings if needed.
8. Do the patent documents get uploaded online?
There is no online submission of patents. You submit the document in correct format to the intellectual property office of the Philippines. Then around six months after submission, they will actually publish the patent application in the gazette which will be available online. All the patents are available in full form and most of them are now electronically available for US and European patents. The harder ones to figure out are patents written in Chinese, Korean, and other foreign languages. Some of the titles have been translated, but the whole document including the claims can be tougher to translate.
9. Do you have ideas on how to improve the service provided by ITSO?
We are only given 3 units per semester of load. When a client approaches us, they want the result as quickly as possible. But your classes get in the way. You cannot devote full-time to patent writing. It is a race against time. Currently, the inventor is defined as he who is the first to file the patent application for the invention.
Patent writing is not easy. You have to search for relevant relevant documents. You must show novelty of the invention by showing that somebody has not done it before. Then you have to show an inventive step: it does something new. The problem is that there are millions of patent documents to look up. You also have to look at journals as well. Normally, we search for patents in the patent database system; the journals are little bit more restricted, depending on whether you have a subscription o or not.
10. Does Ateneo de Manila University share royalties with the inventor?
If Ateneo decides to fund your application for the patent, there is a filing fee. There will be other fees related to the patenting process. There is also a maintenance fee in the fifth year. These fees can add up to a substantial amount. This is not a problem if the patent is commercially viable. If Ateneo funds these fees, then naturally, it would claim ownership of the patent. The inventor may be the worker or researcher involved in the original research, but the university will be the assigned owner of the patent. And then there will be some agreement how to split royalties between the university and the inventor, especially during the commercialization of the patents. Currently, the system favors the inventor in the sharing of royalties more than the university.
11. Can outsiders also ask for the service of ITSO?
Outsiders can ask for assistance, but then they have to pay standard rates. For Ateneo personnel, consultation is free. But when it comes to patent filing and submission, there are fees that have to be paid. That is the time we talk about money. But consult the office is free.
This is one reason I got into the patent office. I had questions for myself before regarding patents. I did not get a lot of answers. Now I know what are the answers to my questions. Researchers in the same situation now have a person to ask in the university regarding patentability issues.
12. Do you have any parting words?
I hope students and researchers consult with the Innovation and Technology Support Office (ITSO) more about the possibilities they have with respect to their creative work, whether if patenting is necessary or if they should actually seek protection for their patents to protect their intellectual property for their work. The number one enemy of patents is public disclosure whether intentional or unintentional. Once you disclose your invention in a public setting, you give it up to the public, rendering your work unpatentable or allowing somebody else to file the patent ahead of you. Hopefully the inventors can create some business out of their inventions and contribute to the economic growth of the country.