by Danilo B. Largo, Ph.D.
Director, Office of Research / Manager, USC ITSO

What used to be a domain of copyright as the most important intangible asset in most, if not all, universities in the Philippines, owing to a common mindset in the academe of 'publish-or-perish', the capacity-building initiatives of the Intellectual Property of the Philippines in the framework of the Innovation and Technology Support Office (ITSO), is starting to pay off with the gradual shift in the faculty members' mindset to 'patent-publish-and-profit', where the heart of IP has shifted from mostly written works of literature and artistic works, to inventions that can solve society's problems. Indeed what was unthinkable in the University of San Carlos just a few years ago, before the ITSO was born, where techn ology transfer was but a foreign concept, where the university's only revenue source is tuition fees, is now starting to take shape in the form of commercialized products with patent protection. The University of San Carlos is in an exciting time of its IP commercialization. It started first in the R&D unit of the Chemical Engineering Department – the BioProcess Engineering Research Center (BioPERC) - which houses some of the more advanced, state-of-the-art laboratory in the university, designed to perform chemical analysis of natural and fermentation products. Its research focus on waste and energy has led to the development of a number of inventions on process engineering, geared towards addressing one of the most pressing issues of Cebu's solid waste management. BioPERC's R&D sees the need to prioritize the treatment of sanitary wastes and mango wastes which is a major component of Metro Cebu‟s daily industrial wastes. Taking out this fraction from the bulk wastes and converting them into useful products will mean a significant savings not only for the local government units in terms man-hours in handling and collecting solid wastes but also for companies that need to pay taxes to the LGU. As well, the new products created from these wastes create livelihood opportunities for many people.

The GEMS, Inc. Story
Wastes from the mango processing industry constitute less than 10% of Cebu's solid wastes. Out of more than a thousand tons of wastes that Cebu generates daily, over 100 tons come from the mango processors. The treatment method developed by BioPERC of converting mango by-products (avoiding the term 'waste' that only connotes unsanitary raw materials) is, in itself, innovative, that warrants patent protection. The process technology that results to a range of high value products, has found a great opportunity for licensing the technology to a second party. Thus, created a start-up, joint venture, company called GEMS or Green Enviro Management Systems, Inc. that has an exclusive license to use the process and produce products for various applications – in food, pharmaceutical, personal care, and energy industry. Aside from patents, the IP portfolio will hopefully expand to trademark, copyright, trade secret and know-how, which, when fully realized, could mean a significant revenue stream for the university, the inventor and the inventor's department, as provided for in the university's IP Policy's royalty sharing scheme. Never before imagined to occur in a local university, IP commercialization is now becoming a reality patent and is probably the best thing that has ever happened to an academic institution that rely mainly to income from tuition fees. So far, taking great interest in the products that come from a non- conventional source are some of Philippines' big names in the food, pharmaceutical and personal care business. Closing a deal with these companies would be a dream-come-true to realize the benefits of IP in terms of revenue generation.  

Patents as the core of business

Although still pending, the patent that aims to protect the new technology for 20 years under jurisdiction will put the university into a better position of commercializing its technology. GEMS, Inc. uses the patent as its leverage of keeping others from using the invention without license from the patent owner. As a joint venture, the patent is USC's equity to the company, the partner investing for the capital expenditures needed for the manufacturing facility. The company could sell the products under a non-exclusive sub- licensing agreement. Given these arrangements of licensing and sub-licensing agreements, the university and its partner hope to expand the operation to jurisdictions where there is a potential for the business to treat mango wastes. In the case of sanitary wastes, licensing agreement for the use of the process technology, whose patent is pending at IPOPHL, is also another opportunity for USC to embark portfolio into another licensing agreement. A 'green' company whose core business is providing services in solid waste management for local government units has entered into a memorandum of agreement with BioPERC to bring another patent-pending technology to useful application – one that addresses local problems. 

It takes these two examples of how patents can be used as a tool in business before the USC community has taken notice of the potential of IP in the university's revenue generation. These are models that USC can claim success and use to change the mindset especially in science and technology fields that, indeed, there is economic value in doing research in the university with the challenge of having more of this kind of success stories emerging from the university's other departments with RD units. 

Making a difference through the ITSO
USC takes pride in being the first ITSO to file the first two patents under the Patent Protection Incentive Package (PPIP) or the Juan's Thousand Patents of the Intellectual Property Office of the Philippines during the ITSO launching on March 22, 2012. USC was also the first to file a Patent Cooperation Treaty (PCT) application over the technology that BioPERC has developed. This is a historic first among the ITSOs and much of this is owed to the assistance rendered by the ITSO unit to the researchers/inventors of the technology that is now the core of GEMS' business. Following the franchise agreement of IPOPHL, USC committed not just a dedicated office and computers with internet connections, but also personnel dedicated to perform the task of patent searching, patent drafting and assisting in patent application which are skills developed over three years of training conducted by IPOPHL and its partners. The ITSO office of University of San Carlos operates as a service unit of the university catering to internal clients who come mainly from the Engineering and Science departments. While the focus is on patents, the ITSO office is the institutional IP Office of the University that engages in IP education, giving lectures and seminars to increase awareness on IP among the university's stakeholders (faculty, students and admin staff). From the three years of experience operating as a patent library, a fully operational ITSO is crucial to the university that positions itself as an "autonomous university" under the CHED's typology by 2018.

WIPO, IPOPHL, ITSO and the Philippines’ Technology Transfer Act
The capacity to exercise protection of intellectual property assets in the university needs to be cultivated. With skills developed through the intervention of the Intellectual Property Office of the Philippines, this exercise will be the most important legacy of IPOPHL to the academe in technology commercialization.

 
Supported in large part by the World Intellectual Property Organization (WIPO) and the IP offices in the US (USPTO) and Europe (EPO) who has been tapped by IPOPHL for the experts in patenting, technology transfer, and technology commercialization, the continuous capability training and the distance learning courses made available by WIPO, has started to develop a critical mass of patent searchers and patent drafters based in the academe - a number of whom have passed the Patent Agents Qualifying Examination (PAQE) given by the EPO. With more and more universities joining the ITSO bandwagon (presently there are around 70), the winds of change is taking place in the academic institutions in Luzon, Visayas, and Mindanao. If the support of the government is sustained, in due time, the patent libraries will definitely help change the patent landscape of the Philippines which has been lagging behind that of its ASEAN neighbours. The Technology Transfer Act of 2009 (R.A. 10055) is facilitating this change to happen for it empowers the universities to own their IPs that have the potential for commercialization. More support from the government by making more research funds available to universities (private and SUCs) will make R&D units of these universities busy with generating more technologies. Indeed, USC has taken advantage of these fund facilities made available by the government (DOST, CHED) which helped generate the technology mentioned above and spun it into a start-up company.