PART
1 DEFINITIONS
Rule 1. Definition
of terms. Unless otherwise specified, the following terms
shall
have the meaning provided in this Rule:
(a) “Amendatory
Agreement” means an agreement that amends any of the terms
and
conditions of the agreement;
(b) “Bureau” means
the Documentation, Information and Technology Transfer Bureau of the
Intellectual
Property Office;
(c) “Computer
software developed for mass market” means computer software
that:
(i) is
produced,
made and marketed for a broad range of purposes and users including
end-users
and commercial users;
(ii) is
sold over
the counter or via standard delivery mechanisms;
(iii)
involves payments
that are not based on royalty;
(iv)
generally provides
for an indefinite term for the use of the software; and
(v) does
not need
any customization by the supplier or distributor.
(d) “Director”
means the Director of the Documentation, Information and Technology
Transfer
Bureau;
(e) “Director
General” means the head of the Intellectual Property Office;
(f) “Intellectual
Property Rights” means:
1. Copyright
and
Related Rights;
2.
Trademarks and
Service Marks;
3.
Geographic Indications;
4.
Industrial Designs;
5.
Patents;
6.
Layout-Designs
(Topographies) of Integrated Circuits; and
7.
Protection of
Undisclosed Information
(g) “IP Code”
means Republic Act No. 8293 otherwise known as the Intellectual
Property
Code of the Philippines;
(h) “IPO
Gazette” means the Intellectual Property Office’s own
publication
where all matters required to be published under the IP Code shall be
published;
(i) “Mandatory
Provisions” means provisions that shall be included in voluntary
license
contracts as provided in Section 88 of the IP Code and reproduced in
rule
3 of these Regulations;
(j) “Office”
means the Intellectual Property Office;
(k) “Prohibited
Clauses” means provisions in Technology Transfer Arrangements that
are deemed prima facie to have an adverse effect on competition and
trade
as provided in Section 87 of the IP Code and reproduced in Rule 2 of
these
Regulations;
(l) “Regulations”
means this set of rules and regulations and such rules and regulations
as may be formulated by the Director of the Documentation, Information
and Technology Transfer Bureau and approved by the Director
General;
(m) “Renewal Agreement”
means any agreement that extends the term of an agreement
registered
with the Office or with the former Technology Transfer Registry of the
former Bureau of Patents, Trademarks and Technology Transfer, without
any
amendment or other modification of any other provision of the
previously
registered agreement;
(n) “Technology
Transfer Arrangements” shall mean contracts or agreements involving
the transfer of systematic knowledge for the manufacture of a product,
the application of a process, or rendering of a service including
management
contracts; and the transfer, assignment or licensing of all forms of
intellectual
property rights, including licensing of computer software except
computer
software developed for mass market
The licensing of
copyright is considered a technology transfer arrangement only if it
involves
the transfer of systematic knowledge.
(o) “Undisclosed
Information” shall mean information which:
(i)
is
secret in the sense that it
is
not, as a body or in the
precise
configuration and assembly of its
components,
generally known among or readily
accessible
to persons within the circles that
normally deal with the kind of
information
in question;
(ii)
has
commercial value because it is
secret;
and
(iii)
has been
subject to reasonable steps under
the
circumstances to keep it secret, by the person
lawfully
in control of the information.
Rule 2. Prohibited
clauses. Pursuant to Section 87 of the IP Code, the
following
provisions and other clauses with equivalent effect shall
be
deemed prima facie to have an
adverse
effect on competition and trade:
(1)
Those which impose upon the
licensee
the obligation to acquire from a
specific
source capital goods, intermediate
products,
raw materials, and other technologies,
or
of permanently employing personnel
indicated
by the licensor;
(2)
Those pursuant
to which the licensor reserves the
right to fix the sale or
resale
prices of the products manufactured
on
the basis of the license;
(3)
Those that
contain restrictions regarding the volume
and structure of production;
(4)
Those that
prohibit the use of competitive
technologies
in a non-exclusive technology
transfer
arrangement;
(5)
Those that
establish a full or partial
purchase
option in favor of the licensor;
(6)
Those that
obligate the licensee to transfer
for
free to the licensor the inventions
or improvements that may be
obtained
through the use of the licensed
technology;
(7)
Those that
require payment of royalties to the
owners of patents for patents which
are not used;
(8)
Those that
prohibit the licensee to export the
licensed product unless justified for
the
protection of the legitimate interest
of
the licensor such as exports to
countries
where exclusive licenses to manufacture
and/or
distribute the licensed product(s) have
already
been granted;
(9)
Those which
restrict the use of the technology
supplied after the expiration of
technology
transfer arrangement, except in cases
of
early termination of the technology
transfer
arrangement due to reason(s) attributable
to the licensee;
(10)
Those
which require payments for patents
and
other industrial property rights after
their
expiration or termination of the technology transfer
arrangement;
(11)
Those
which require that the technology
recipient
shall not contest the validity of
any
patents of the technology supplier;
(12)
Those
which restrict the research and
development
activities of the licensee designed
to
absorb and adapt the transferred
technology
to local conditions or to initiate
research and development programs in
connection
with new products, processes or
equipment;
(13)
Those
which prevent the licensee from
adapting
the imported technology to local
conditions,
or introducing innovation to it, as
long as it does not impair
the
quality standards prescribed by the
licensor;
(14)
Those
which exempt the licensor from
liability
for non-fulfillment of his
responsibilities
under the technology transfer arrangement
and/or liability arising from third
party
suits brought about by the use
of
the licensed product or the
licensed
technology.
Rule 3.
Mandatory provisions. Pursuant to Section 88 of the IP
Code, the following provisions shall be
included
in voluntary license contracts:
(1)
That the
laws of the Philippines shall
govern
the interpretation of the
same
and in the event of litigation, the
venue shall be the proper court
in
the place where the licensee has
its
principal office;
(2)
Continued
access to improvements in techniques
and
processes related to technology shall be
made
available during the period of the
technology transfer arrangement;
(3)
In the
event the technology transfer arrangement
shall provide for arbitration, the
Procedure of Arbitration of the
Arbitration
Law of the Philippines or the
Arbitration
Rules of the United Nations
Commission
on International Trade Law (UNCITRAL)
or
Rules of Conciliation and Arbitration
of
the International Chamber of Commerce
(ICC)
shall apply and the venue of
arbitration
shall be the Philippines or any
neutral
country; and
(4)
The Philippine
taxes on all payments relating to
the
technology transfer arrangement shall be
borne by the licensor.
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