Transfer Act of 2009", Became Effective On May 8, 2010
Transfer Act of 2009", Became Effective On May 8, 2010
Transfer Act of 2009", Became Effective On May 8, 2010
02-2010
OF
WHEREAS, Republic Act No. 10055, otherwise known as the "Philippine Technology
Transfer Act of 2009”, became effective on May 8, 2010;
WHEREAS, the Department of Science and Technology and the Intellectual Property
Office are mandated to issue and promulgate the rules and regulations to implement the
provisions of Republic Act No. 10055;
NOW THEREFORE, the following Joint Administrative Order covering the Rules and
Regulations implementing Republic Act No. 10055 are hereby promulgated, adopted
and prescribed for the information and guidance of all concerned.
CHAPTER I
RULE 1. Declaration of Policies and Principles. – The State fully recognizes that
science, technology and innovation are essential for national development and progress.
It shall, therefore, give priority to research and development, invention, innovation and
their utilization. It shall also encourage the widest and most systematic participation of all
stakeholders in policy-making related to science and technology, and in the generation,
transfer and utilization of intellectual property, especially for the benefit of the general
public.
The State shall facilitate the transfer and promote the utilization of intellectual property
for the national benefit and shall call upon all research and development institutes and/or
institutions (RDls) that perform government- funded research and development (R&D) to
take on technology transfer as their strategic mission and to effectively translate results
of government-funded R&D into useful products and services that will redound to the
benefit of Filipinos, notwithstanding the income generated from intellectual property
rights (IPRs) and technology transfer activities.
The State acknowledges that the successful transfer of government-funded R&D results
depend on the proper management of intellectual property, development of capacity by
RDIs to become self-sustaining and competitive, and on enhancing interaction and
cooperation with the private sector, particularly small and medium enterprises through
collaborative and contract research based on equitable, fair access, and mutual benefit
for all involved partners.
The State shall establish the means to ensure greater public access to technologies and
knowledge generated from government-funded R&D while enabling, where appropriate,
the management and protection of related intellectual property.
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The State recognizes that an effective intellectual and industrial property system is vital
to the development of domestic and creative activity, facilitates transfer of technology,
attracts foreign investments, and ensures market access for our products.
RULE 2. Objective. – These Rules and Regulations are promulgated to implement the
State policies and objectives under the Act which aims to promote and facilitate the
transfer, dissemination, and effective use, management, and commercialization of
intellectual property, technology and knowledge resulting from research and
development funded by the government for the benefit of national economy and
taxpayers.
(b) “Author” refers to the natural person who has created the work.
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(i) “Intellectual Property (IP)" is the term used to describe intangible assets
resulting from the creative work of an individual or organization. IP also
refers to creations of the mind, such as inventions, literary and artistic
works, and symbols, names, images, and designs used in commerce.
IP can also refer to future tangible and/or intangible assets that may be
recognized as intellectual property.
(j) "Intellectual Property Rights (IPRs)" refer to those rights recognized and
protected in Republic Act No. 8293, otherwise known as the “Intellectual
Property Code of the Philippines”, as amended. IPRs shall also include
Plant Variety Protection as the term is defined under Title II, Sec 3(j) of
Republic Act No. 9168.
(l) “IP Code" refers to Republic Act No. 8293, otherwise known as the
“Intellectual Property Code of the Philippines”, as amended.
(m) “Official Development Assistance Fund” refers to: a) a loan; or, b) loan
and grant; or, c) grant which follow all the criteria under the R.A. No.
8182, otherwise known as the “Official Development Assistance Act of
1996”, and other existing laws.
(p) "Protection of IPs" refers to the statutory grant of rights upon which the
basis of enforcing the right rests, such as issuance of patents;
registration of utility models, industrial designs, and trademarks or
availment of protection of undisclosed information and other rights as
may be provided by law. "Protected IPs", therefore may refer to issued
or pending patents; registered utility models, industrial designs, and
trademarks. In the case of pending patent applications that have
already been published under Sec 44 of RA 8293 such pending patent
application will still be considered as potential IPRs. In the same
manner, pending applications for Plant variety protection that have also
been published under Sec 42 of R.A. No. 9168 will still be considered
as potential IPRs.
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(r) "Research and Development (R&D)" refers to creative work undertaken
on a systematic basis in order to increase the stock of knowledge,
including knowledge of man, culture and society, and to use this stock
of knowledge to devise new applications. The aforementioned creative
work not only refers to work subject of copyright protection but also to
all potential IPRs.
(x) “Rules” refers to these Implementing Rules and Regulations for RA No.
10055.
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(aa) “Technology Licensing Officer / Office and/or Technology Business
Development Office” refers to a person or persons or an office that is
mandated by the RDI to manage technology transfer and/or intellectual
property commercialization activities.
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sharing of monetary and non-monetary benefits,
technology disclosure and management of conflict of
interest.
(a) All R&D activities carried out on behalf and for the interest of the
Philippine Government by RDIs receiving grants directly from GFAs;
(b) All intellectual property rights derived from R&D activities funded by
government;
(c) All government agencies that fund R&D activities as well as provide
financial, technical or material support to such R&D activities; and
CHAPTER II
(a) In recognition of the fact that RDIs are in a better position to identify the
potential for economic utilization of IPs and IPRs subject to their
possession of the right skills and management capability, the ownership
of IP and IPRs derived and generated from research funded by GFA,
whether such funding is in whole or in part, shall, in general, be vested
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in the RDI that actually performed the research, except in any of the
following circumstances:
(1) When the RDI has entered into a public, written agreement
sharing, limiting, waiving or assigning its ownership of the IPs or
IPRs generated from its research in favor of the GFA; Provided,
the same may only be voluntarily executed by the RDI to protect
public interest, and in particular involves national security,
nutrition, health, or the development of other vital sectors;
(5) In case the funding is sourced from ODA loan or loan and grant
or grant, the terms and conditions thereof should be respected.
(b) In case of collaborative research where two (2) or more RDIs conducted
the research funded by the GFA, the RDIs shall own the IPRs jointly or
as otherwise stipulated in the Research Agreement between them;
Provided, That any Research Agreement between RDIs and other
funding entities shall be made with the full knowledge of the GFA;
Provided, further, That the agreement shall strictly be in accordance
with the provisions of the Act. There is full knowledge of the GFA when
the RDI submits a complete and executed copy of the written
agreement between the RDIs and other funding agencies
Section 1. RDI Ownership of Copyright Produced Through Public Funds - The ownership
of copyright over any work derived and generated from publicly funded research,
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whether the funding is in whole or in part, shall be vested in the RDI whose
researcher(s) actually authored the work pursuant to the RFA. It shall therefore be the
duty of the RDI to include a provision in the Research Agreement requiring the author/s
of a work produced through public funds to assign copyright over said work to the RDI,
and to adopt such other appropriate policies and procedures in order to comply with its
obligations under the RFA. Since the government is not precluded from receiving and
holding copyrights transferred to it by assignment, bequest or otherwise, public RDIs
must require such assignment to be made in its favor in order to achieve the objectives
of these Rules. This rule shall not apply in the following instances:
(b) A GFA may receive and hold copyrights by way of assignment under
any of the following circumstances:
ii. When the RDI fails to disclose the work to the GFA within a
reasonable period of time as provided in the RFA or in the
absence of such provision as provided in these Rules, in which
case the GFA shall assume the copyright over the work through a
written assignment to be executed by the RDI or by the latter’s
researcher/s who authored the work in case no appropriate
assignment has been made to the RDI under Section 1 above. It
shall be the duty of the RDI to include a specific provision in the
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Research Agreement requiring the researcher(s) to assign
copyright over their work to the GFA under this circumstance.
Section 3. Copyright Over Works Not Derived and Generated from Publicly Funded
Research.
(a) Works that are not derived and generated from publicly funded research
shall be excluded from the coverage of these Rules, except by the
following:
RULE 7. Existing Laws. Nothing in this Chapter shall modify, amend, derogate or
prejudice IPs that will be owned by employees of the RDIs under the IP Code and other
existing laws.
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RULE 8. Recovery of Ownership. In cases where the RDI wants to recover the
ownership of the IPs and/or potential IPRs, the procedure stated in Rule 12 shall apply,
mutatis mutandis.
CHAPTER III
INSTITUTES OR INSTITUTIONS
(a) Protect government interest in the IP and IPRs generated from the R&D
that it funded through suitable provisions in the RFA. The GFA is
authorized to withhold from public disclosure, for a reasonable time, any
information relating to potential IPR of the RDI, to allow the RDI to
pursue full protection of such IPR. Reasonable time shall be determined
by the parties in the RFA. Where the GFA finds it necessary to make a
public disclosure of information pertaining to a potential IPR because of
a legal or statutory obligation, it shall issue a written notice informing the
RDI of such disclosure. Such written notice must be given by the GFA
to the RDI in a timely manner before the public disclosure in order to
enable the RDI to contest such disclosure or to take such other
appropriate steps in order to protect its rights and/or to comply with its
obligations under the provisions of non-disclosure, confidentiality,
materials transfer or other similar agreements. If the public disclosure
by the GFA is to be made before the RDI has filed, where applicable, a
national or an international application for IP protection, the GFA shall
ensure that the public disclosure contains only so much information or
elements about the subject matter contained in the potential IPR that a
person would not be able to practice it by using the information or
elements contained in the said disclosure;
(b) The GFA shall assume the rights to the potential IPRs in case the RDI
fails to disclose the potential IPRs to the GFA within the period
stipulated in the RFA, or, in the absence of such stipulation, within three
(3) months from the submission of the report of the potential IPRs. The
GFA shall notify in writing the RDI that it is assuming the rights to the
potential IPRs;
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implementation of pertinent forms such as, but not be limited to, non
disclosure agreements. With respect to providing alternative solutions,
such solutions may include, but not be limited to, additional funding
support for filing of IP applications, technical assistance in the
preparation of the applications and other documents, provision of
experts whether in-house or outsourced;
(d) Ensure adequate freedom to use the IP for further research to expand
the knowledge frontier and requirements for publication of information
as appropriate in accordance with government policy or academic
policy, or institutional mandate of the RDI;
RULE 10. Rights and Responsibilities of the RDls. – The following are the rights and
responsibilities of the RDIs that availed of research funds from GFAs:
(a) Identify, protect, and manage the IPs generated from R&D funded by
GFA and pursue commercial exploitation diligently as a required
performance stipulated in the RFA and as allowed by the Act, these
Rules and other applicable laws;
(d) The responsibility of the RDI to protect any potential IPRs shall also
apply in the event that the RDI elects to recover ownership of the
potential IPRs that have been vested in the GFA under these Rules;
(f) Notify the GFA within a reasonable time of all IPR applications, licenses
and assignments made. All applications for IP protection shall disclose
any biodiversity and genetic resource, traditional knowledge, and
indigenous knowledge, systems and practices as these terms are
defined in RA No. 8371 or the Indigenous Peoples Rights Act and RA
No. 9147 or The Wildlife Act and these Rules;
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(h) Keep account of revenues and payments to the GFA if required in the
RFA;
(i) Ensure that they have access to the skills and management capability
to effectively perform their responsibilities of owning, managing, and
exploiting the IP or IPRs. Smaller RDIs that may need external advice
are encouraged to pool and share resources;
(j) Accord their staff with incentives consistent with existing laws to sustain
efforts in identifying valuable IP and in pursuing IP commercialization.
The RDI should clearly identify the composition of the research team
and execute the corresponding Research Agreement with its
researchers and staff;
(m) Inform the GFA of any agreement pertaining to the research funded by
the GFA and entered into by the RDI with any other entity or person.
Failure to comply with the duty to inform shall render the agreement
invalid as against the GFA, but in no case shall it prejudice any right of
the GFA as provided in these Rules; and,
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commercialization of IPs: Provided, further, That it shall obtain a written recommendation
from the Secretary of the Department of Science and Technology (DOST) and secure a
fairness opinion report from an independent third party body composed of experts from
the public and private sectors as may be determined by the DOST.
The fairness opinion report shall contain a statement expressing the opinion of the body
as to the fairness to the GFA of the proposed transaction, particularly its financial terms.
The report shall include, but not be limited to, a review and analysis of the proposed
transaction, financial statements, industry information, economic conditions and
assumptions used therein and a comparison of similar transactions; Provided, however,
That it shall not be precluded from resorting to other modes of commercialization as
allowed by all applicable laws.
The fairness opinion report shall contain a statement expressing the opinion of the body
as to the fairness to the RDI of the proposed transaction, particularly its financial terms.
The report shall include, but must not be limited to, the provisions in Section 7(d),
Paragraph 2 of the Act; Provided, however, That it shall not be precluded from resorting
to other modes of commercialization as allowed by all applicable laws.
Section 3. When GFA may require Fairness Opinion Report from Private RDI. In case
the GFA has a share in the revenue to be derived from the commercialization of the IPs
and/or IPRs directly negotiated by the private RDI, then the GFA may require said
private RDI to secure a fairness opinion report.
Section 4. Fairness Opinion Report in cases of Spin-offs. In case of a spin-off, the RDI
shall secure a Fairness Opinion Report consistent with the policies and principles of
these Rules. The Fairness Opinion Report required herein should be issued prior to the
creation and/or incorporation of a spin-off company.
Section 5. Fairness Opinion Board. The Fairness Opinion Report shall be issued by a
Fairness Opinion Board that will be constituted in the following manner:
(a) The RDI or the GFA, in the case the latter has assumed ownership over the
IP, is allowed to transfer or commercialize IP through the various modes
allowed by and subject to the limitations provided by law such as public
bidding, direct negotiation, build operate transfer schemes, and such other
similar and/or analogous modes. A favorable recommendation from the
Secretary of the Department and Science and Technology and a fairness
opinion report is required only in cases where the GFA or the public RDI, as
the case may be, decides to directly negotiate IP commercialization
agreements. The GFAs or RDIs that want a fairness opinion report issued
on the proposed IP commercialization transaction shall make a written
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request to the Secretary of the DOST. The written request shall, at the
minimum, include all relevant documents, such as, but not limited, to the
proposed transaction, valuation report, due diligence report on the parties
to the transaction, such other background documents regarding the
prospective transferee and list of potential recommendees for membership
in the Fairness Opinion Board. Without prejudice to existing laws and
regulations, the written request shall be kept confidential.
(b) The Secretary shall constitute the Fairness Opinion Board not later than
thirty (30) days from receipt of the written request. The Secretary may have
the option to appoint the members of the Board from the list enumerated in
the written request. In selecting the members of the Board, the Secretary
shall at all times give due regard to the person’s neutrality, impartiality and
expertise.
(d) The Technology Application and Promotion Institute (“TAPI”) shall serve as
the secretariat to the Board. The Secretariat shall be headed by the
Director of TAPI.
(e) At its discretion, the Board may request for the presence of the
representatives of the GFA and/or RDI as resource persons.
(f) All costs and expenses of the Board shall be shouldered by the GFA and
the RDI in the proportion as determined in the RFA. In the absence of such
a provision, the costs and expenses shall be shouldered by the requesting
party.
(g) At all times, the members of the Board shall disclose and avoid any conflict
of interest with respect to all matters pending before them.
(h) The Board shall review relevant documents such as, but not limited to, the
proposed transaction, valuation report, due diligence report on the parties
to the transaction and other background documents regarding the
prospective transferee. The Board may also obtain and consider other
independent information.
(i) The Board shall determine the dates, venue, frequency and other
administrative requirements and details.
(j) The Board shall complete and submit to the DOST Secretary the fairness
opinion report no more than 60 calendar days upon constitution.
(k) The Secretariat and the Board shall maintain or ensure confidentiality of all
information submitted, without prejudice to the requirements of existing
laws and regulations.
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Section 6. Contents of the Fairness Opinion Report. The Fairness Opinion Report, shall
at the minimum, contain the following information:
(a) A statement expressing the opinion of the body as to the fairness to the
GFA or RDI of the proposed transaction, particularly its financial terms;
RULE 12. Common Provisions. The following provisions shall apply, where applicable,
to Rules 9, 10 and 11.
Section 1. Research Funding Agreement. The GFA and other funding agencies and the
RDI are free to stipulate such terms and conditions in the RFA provided these provisions
are not contrary to law and public policy. Notwithstanding the foregoing, the RFA should
include the following provisions:
(a) That subject to the exceptions provided under the Act and these Rules,
the IP and IPR ownership shall belong to the RDI; further, the RDI shall
also undertake to include a provision in the Research Agreement
requiring the author(s) in general to assign copyright to the RDI except
in the cases mentioned in Rule 6 which provides that copyright shall be
assigned by the author(s) to the GFA.
(b) The revenue sharing scheme between the parties to the RFA subject to
the provisions of Rule 15. (n) In case the GFA has a share in the
revenue derived from the commercialization of the IPs and/or IPRs
negotiated by the private RDI, then the GFA may require the said
private RDI to secure a fairness opinion report as provided under Rule
11.
(c) That the RDI shall adopt and implement the appropriate Technology
Transfer Protocol as defined under these Rules (n) Provisions for patent
pooling and encouraging the use of patent search and information and
other similar activities may also be provided for.
(d) The period and procedure for the confidential disclosure by the RDI to
the GFA of the potential IP as provided under the rules on disclosure.
The GFA shall take into account the resources and capacity of the RDI
in determining the period within which the RDI shall be required to make
such disclosure.
(e) That the GFA and RDI shall be authorized to withhold from public
disclosure, for a reasonable time as agreed by the parties in the RFA,
any information relating to potential IPR to allow the RDI to pursue full
protection of such IPR and for this purpose to include confidentiality
provisions in the RFA and in other related agreements and to make use
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of non-disclosure, materials transfer and other similar agreements
provided that:
ii. The GFA shall allow the RDI to reserve for itself and for other
persons the right to use the IP for educational, scholarly or
other similar non-commercial research purposes.
(f) That the RDI shall file for IPR application three (3) months after public
disclosure otherwise the GFA will assume ownership over the potential
IP; subject to the provisions of Rule 12, Section 2 on the protection of
undisclosed information.
(g) That the parties are required to resolve disputes pertaining to the
determination of government ownership through the procedure provided
under these Rules.
(b) If the RDI in its judgment believes that any IP should be protected solely as
undisclosed information, it should inform the GFA in writing and the GFA,
after review, may recognize the same and may not obligate the RDI to file
any application for IP protection.
Section 3. Disclosures. Disclosure of potential IPRs and/or all biodiversity and genetic
resource, traditional knowledge, and indigenous knowledge, systems and practices shall
be governed by the following rules:
(a) In order to ensure that any information pertaining to a potential IPR does
not become part of prior art or prejudice the novelty of the national IPR
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application that the RDI may file with the Intellectual Property Office of the
Philippines (IPO), or the Plant Variety Protection Board and/or the
international application for IPR that the RDI may file in a foreign country or
in such other IP authority, all disclosures of potential IPRs shall be covered
by confidentiality agreements requiring the GFAs as well as their
employees, consultants and agents to keep confidential from the public any
document or information relating to the potential IPR until such time that the
RDI has filed the appropriate national or international IPR application or
when it gives notice to the GFA allowing public disclosure. The term “IPR
application” shall mean an application for a patent for an invention, an
application for a utility model, or an application for an industrial design or
application for protection of plant variety, as the case may be.
(b) Within three (3) months from the filing of the appropriate Philippine, foreign
or PCT application, the RDI shall notify the GFA of the filing thereof, and
shall report annually to the GFA on the progress of the said IPR application.
i. The RDI shall provide the GFA with a written disclosure on the
following: (1) any biodiversity, genetic resources or materials,
associated traditional knowledge, and indigenous knowledge,
systems and practices utilized in or which formed as basis in the
development of the subject matter contained in the IPR
application; (2) the primary source of any biodiversity, genetic
resources or materials, associated traditional knowledge, and
indigenous knowledge, systems and practices utilized in or which
formed as basis in the subject matter contained in the IPR
application; or (3) the secondary source, if no information about
the primary source is available.
ii. The disclosure requirement under this section shall apply when
the subject matter contained in a national or international IPR
application is directly based on any biodiversity, genetic resources
or materials, traditional knowledge, and indigenous knowledge,
systems and practices to which the RDI has had access to prior to
the filing of the IPR application. The subject matter contained in
the IPR application must depend on the specific properties of, or
must be consciously derived from, such biodiversity and genetic
resource or materials, traditional knowledge, and indigenous
knowledge, systems and practices.
iii. Where the RDI, for reasons beyond its control, does not have the
necessary information to fulfill the disclosure requirement
pertaining to any biodiversity, genetic resources or materials,
traditional knowledge, and indigenous knowledge, systems and
practices, such as, for instance, where a plant stored in a gene
bank was collected decades ago and no information about its
source exists, the RDI shall submit an affidavit from its
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researcher/s that the latter do not have the necessary information
or that the source is unknown, and state the reasons thereof. The
GFA shall review the affidavit to determine if this will constitute
compliance with the disclosure requirement under this rule.
iv. The GFA that provided the research funds shall be responsible for
ensuring that the RDI provides accurate disclosure and complies
with the requirements of this Section.
(d) Disclosure shall be made by the Researcher to the head of the RDI. The
head of the RDI, consistent with the RDIs obligations, shall make the
disclosure to the head of the GFA.
CHAPTER IV
RULE 13. Responsibilities of RDIs Performing R&D with their Own Budget. – All
government RDIs performing R&D through an annual budget provided by the
government shall submit intellectual property management reports annually to the
national government agencies where they are attached. The report shall contain plans
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for securing protection on IPs with commercial promise, the technology transfer
approaches to be pursued, and the progress of ongoing commercialization of
technologies derived from R&D funded from their own budget.
CHAPTER V
REVENUE SHARING
RULE 15. Revenue Sharing. – All revenues from the commercialization of IPs and IPRs
from R&D funded by GFA(s) shall accrue to the RDI, unless there is a revenue sharing
provision in the RFA; Provided, That in no case will the total share of the GFA(s) be
greater than the share of the RDI; Provided, further, That in case of joint funding, where
research is funded by a GFA in part, and by other entity or entities in part, the RDI may
enter into contractual agreements with the other entity or entities providing funding.
Section 1. In case of joint funding, where research is funded by a GFA in part, and by
other entity or entities in part, the RDI may enter into contractual agreements, including
revenue sharing provisions, with the other entity or entities providing funding. The RDI
shall submit a complete and executed copy of the written agreement between it and the
other funding entity or entities.
Section 2. The term revenue shall be defined by the RDI in the employer-employee
contract or other related agreements between the RDI and the researcher subject to the
provisions of R.A. No. 8439.
Section 3. With respect to royalties, the same shall also be governed by an employer-
employee contract or other related agreements without prejudice to the provisions of RA
No. 8439.
Section 4. Monetary revenues shall include but not limited to royalty payments, proceeds
from sale of IP or technology, upfront technology transfer fees and dividends or sale
from shares of stocks.
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Section 6. In determining whether non-monetary grants shall form part of revenue, the
provisions of the Technology Transfer Protocol of the RDI shall prevail.
CHAPTER VI
The leave of absence shall be included in computing the length of service for retirement
but not for the commutation of leave credits earned in the public RDI. The researcher
shall not earn leave credits in the public RDI during such period of leave of absence.
Such leave of absence shall not likewise affect the researcher-employee's security of
tenure or result in the loss of one's seniority rights.
Section 1. The Technology Transfer Protocol shall establish the grounds in determining
the meritorious cases where an RDI shall allow its researcher-employee to
commercialize or pursue commercialization or create, own, control, or manage a
company or spin-off firm. The parties may also explore other options available for
commercialization as allowed under these Rules.
Section 2. In case of a spin-off, the provisions of Rule 11 of these Rules shall also apply.
Section 3. Spin-offs established under the Act and these Rules shall be considered
separate and distinct entities from the RDIs.
RULE 17. Detail or Secondment to the Private Sector. – In case where the researcher of
a public RDI would be employed by an existing company, which will pursue the
commercialization, the applicable provisions of RA No. 8439 shall prevail.
RULE 18. Management of Conflict of Interest. – The RDIs shall properly manage any
possible conflict of interest by adopting appropriate guidelines for its researcher-
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employee. The guidelines for handling of such conflicts shall include, but are not limited,
to the following:
(a) RDls shall ensure that its researchers are made fully accountable for their
research and that commercial objectives do not divert them from carrying
out the RDI's core research program;
(b) Heads of RDI should ensure that where researchers have any direct or
indirect financial interest in a spin-off company; they shall not act on behalf
of the RDI in transactions with that company;
(d) RDIs should take steps to ensure that collaborative undertaking with a spin-
off or existing company is governed by a formal written public agreement;
and,
CHAPTER VII
RULE 20. Assumption of Ownership of Potential IPRs. –The GFA and/or the Parent
Agency may assume ownership of any potential IPRs in cases of national emergency or
other circumstances of extreme urgency, or where the public interest requires, and in
particular concerns for national security, nutrition, health, or the development of other
vital sectors of the national economy, as determined by the head of the Parent Agency.
Such determination shall be made within thirty (30) days after the receipt of the
recommendation of the head of the GFA. Such recommendation shall be made within
thirty (30) days upon the discovery of the potential IPR by the GFA or the disclosure of
the same by the RDI pursuant to Section 8 (c) of the Act, or upon written notice or
petition by other government agencies, or other interested persons. In cases where the
Parent Agency itself is acting as the GFA, the head of the Parent Agency may make
such determination motu proprio, or upon written notice or petition by other government
agencies or other interested parties. The right to the potential IPR shall be assumed by
the GFA upon written order, declaration or determination by the Department Secretary or
Head of the Parent Agency. The department or the agency that has functional
jurisdiction over the technology or IPRs shall be deemed as the Parent Agency.
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The determination by the Secretary or the head of the Parent Agency of cases falling
under the first paragraph .of the right to the potential IPR to be vested to the GFA and/or
Parent Agency shall be subject to the following conditions:
(b) The RDI may file with the Secretary or Head of the Parent Agency an
opposition to such determination within fifteen (15) calendar days from
notice or publication of the written determination;
(c) The assumption of the rights to the potential IPR by the GFA shall carry
with it the obligation to equitably share with the RDI or other funding
agencies any profits generated from the IPR; and
(d) The rights to the potential IPR shall revert to the RDI upon the cessation of
the existence of the cases under this Section as determined by the
Secretary or Head of the Parent Agency motu proprio or by petition of the
RDI.
Section 1. All recommendation for the assumption of ownership of potential IPRs made
to the GFA shall be in writing and originally signed by the head of the GFA. The
recommendation should be submitted to the head of the Parent Agency or to any other
person authorized to receive on behalf of the said head of the Parent Agency.
Section 2. The written notice or petition for the assumption of ownership of potential
IPRs by other government agencies or other interested parties should be originally
signed and verified by the petitioner. The written notice or petition should contain the
following: a) name and address of the petitioner; b) the description of the potential IPRs
which is the subject of the written notice or petition; c) clear and detailed explanation for
the use or utilization of the potential IPRs; d) supporting affidavits and other documents;
and e) all other relevant documents.
Section 4. During the period (hereinafter referred to as the “Assumption Period”) where
the Parent Agency or GFA actually assumed and exercised management and control
over the potential IPRs, the Research Agreement between the RDI and its researchers
for the assumed potential IPRs and the corresponding RFA shall continue to be valid
and in force.
Section 5. In cases where there is a pending application for IP protection of the potential
IPRs during the Assumption Period, the Parent Agency or GFA shall notify in writing the
IPO of such assumption in accordance with the rules and regulations of the IPO.
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RULE 21. Except where otherwise provided by the IP Code, in all cases arising from the
implementation of this Article, no court, except the Supreme Court of the Philippines,
shall issue any temporary restraining order or preliminary injunction or such other
provisional remedies that will prevent its immediate execution.
CHAPTER VIII
RULE 22. Use of Income and Revolving Fund. – Public RDIs undertaking technology
transfer shall be vested with the authority to use its share of the revenues derived from
commercialization of IP generated from R&D funded by GFAs. All income generated
from commercialization of IPs and/or IPRs from R&D funded by public funds shall be
constituted as a revolving fund for use of the RDI undertaking technology transfer,
deposited in an authorized government depository bank subject to accounting and
auditing rules and regulations; Provided, That said income shall be used to defray
intellectual property management costs and expenses and to fund research and
development, science and technology capability building, and technology transfer
activities, including operation of technology licensing offices; Provided, further, That no
amount of said income shall be used for payment of salaries and other allowances.
In case the income after payment of all costs and expenses for IPR management,
including the payment of royalties to other parties, shall exceed ten percent (10%) of the
annual budget of the RDI, a minimum of seventy percent (70%) of the excess income
shall be remitted to the Bureau of Treasury; Provided, That this shall apply only if the
GFA has solely funded the research; Provided, finally, That this paragraph shall not
apply to State Universities and Colleges and Government Owned and Controlled
Corporations, which enjoy fiscal autonomy under their respective charters or other
applicable laws. Professional fees shall be included in the computation of the IP
management cost and expenses. For the avoidance of doubt, professional fees and/or
services shall refer to payment for expert services as the term is defined by relevant
government circulars. For the purposes of reckoning income and budget in this Chapter,
current year shall be used.
CHAPTER IX
INSTITUTIONAL MECHANISM
RULE 23. Establishment of Technology Information Access Facility and Public Access
Policy. – The DOST shall establish a system for the cost-effective sharing of and access
to technologies and knowledge generated from government-funded R&D by developing
appropriate policies and procedures on public access which shall be made known to the
public. These policies and procedures shall be aimed at promoting the advancement of
R&D, boosting its quality and enabling cross-disciplinary collaboration, and thereby,
increasing the returns from public investment in R&D and contribute to the betterment of
society. The DOST shall call for a regular national conference of all GFAs and RDIs in
order to: (a) promote multi-disciplinary, joint, and cross collaboration in research and
development; (b) coordinate and rationalize the research and development agenda; and
(c) harmonize all research and development agenda and priorities. The DOST shall call
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for a regular national conference which should coincide and synchronize with the
national budget cycle. In line with the foregoing provision, the DOST, in consultation with
the stakeholders, shall establish a harmonized accessible format for technology and
information access.
CHAPTER X
DISPUTE RESOLUTION
RULE 26. – As a general rule, any dispute between the parties on the determination of
government ownership should be resolved amicably.
If the matter cannot be resolved amicably by the parties, then the administrative
procedure for resolving any disputes on the determination for government ownership
shall be subject to the mediation and arbitration rules of the IPO.
CHAPTER XI
RULE 27. Administrative, Criminal or Civil Liability. – The failure of the GFA or RDI to
fulfill its responsibilities under the Act and these Rules, or the violation of any provision
by any person, natural or juridical, shall subject the person involved to appropriate
administrative, criminal, or civil liability, under applicable laws.
RULE 28. Technology Transfer Act Coordinating Committee. – To aid in the effective
implementation of the provisions of the Act and these Rules and for the purpose of
making the necessary reports and representations with the Congressional Oversight
Committee on the Technology Transfer Act (“COCTTA”), a Technology Transfer Act
Coordinating Committee (“TTACC”) is hereby constituted. The TTACC shall be chaired
by the Secretary of the DOST or his representative and co-chaired by the DG of IPO or
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his representative. The members of the committee and the secretariat shall be named by
the Chairman and co-chairman.
RULE 29. Amendments to the Rules. The DOST and IPO, either jointly or individually,
may initiate amendments to these Rules. Prior to the conduct of any public hearing for
the proposed amendment, the initiating party shall first inform the other party of the
same at least 30 days prior to the date of the first public consu ltation .
RULE 30. Review of the Rules. The DOST and IPO shall jointly review these Rules two
(2) years after its effectivity and every three years thereafter.
RULE 31. Repealing Clause. - AJI existing rules and regulations, or part thereof which
may be contrary to or inconsistent with these rules and regu lations are hereby repealed
or modified accordingly.
RULE 32. Separability Clause. - If any provision of these Ru les are declared
unconstitutional, the same shall not affect the validity and effectivity of the other
provisions hereof.
RULE 33. Effectivity. - These Ru les sha ll take effect fifteen (15) days after its publication
in at least two (2) national papers of general circu lation and upon filing at the UP Law
Center in accordance with Law.
NOW THEREFORE, the parties have herein below affixed their signatures to the Joint
DOST-IPO Adm inistrative Order No. 02-2010 this 18'" day of August 2010.
tJZ #---
HaN. RICARDO R. BLANCAFLOR
cretary Director Genera!
Department of Science and Technology Intellectual Properly Office of the
Philippines
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