WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/PHL/C/2
IP/N/1/PHL/I/2
15 June 2001
(01-2984)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
PHILIPPINES
The present document reproduces the text1 of the Rules and Regulations on Voluntary
Licensing, as notified by the Philippines under Article 63.2 of the Agreement (see document
IP/N/1/PHL/2).
Conseil des aspects des droits de propriétéintellectuelle qui touchent au commerce
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
PHILIPPINES
Le présent document contient le texte
1 des Règles et réglementations concernant les licences
volontaires, notifiées par les Philippines au titre de l'article 63:2 de l'Accord (voir le document
IP/N/1/PHL/2).
Consejo de los Aspectos de los Derechos de PropiedadIntelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
FILIPINAS
En el presente documento se reproduce el texto
1 de las Normas y Reglamentos sobre
Licencias Voluntarias, notificado por Filipinas en virtud del párrafo 2 del artículo 63 del Acuerdo
(véase el documento IP/N/1/PHL/2).
                                                     
1 In English only./En anglais seulement./En inglés solamente.IP/N/1/PHL/C/2
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October 2, 1998               October 20, 1998
IPO RULES AND REGULATIONS ON VOLUNTARY LICENSING
Whereas , the State recognizes that an effective intellectual and
industrial property system is vital to the development of domestic creativity,
facilitates transfer of technology, attracts foreign investments and ensures
market access for our products;
Whereas,  the State recognizes that the use of intellectual property bears
a social function and to this end, the State shall promote the diffusion of
knowledge and information for the promotion of national development and
progress and the common good;
Whereas,  it is the policy of the State to liberalize the registration of the
transfer of technology and enhance the enforcement of intellectual property
rights in the Philippines;
Whereas,  there is a need to encourage the transfer of technology,
prevent or control practices and conditions that may in particular cases
constitute an abuse of intellectual property rights having an adverse effect on
competition and trade;
Now, therefore,  pursuant to the provisions of Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines, the
following rules and regulations on voluntary licensing are hereby promulgated:
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;IP/N/1/PHL/C/2
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(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 publishedunder the IP Code shall be published;IP/N/1/PHL/C/2
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(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 asprovided 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 readilyIP/N/1/PHL/C/2
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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 shallbe 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;IP/N/1/PHL/C/2
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(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 withnew 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 technologytransfer arrangement and/or liability arising from third
party suits brought about by the use of the licensed
product or the licensed technology.
(15) Other clauses with equivalent effects.
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;IP/N/1/PHL/C/2
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(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.
PART 2
Registration of Exempt Technology Transfer Arrangements
RULE 4. Application for Exemption . — A sworn application for
exemption from any of the Prohibited Clauses and/or Mandatory Provisionsof the IP Code may be filed with the Director stating the exemption/s being
requested, the justification for the exemption/s, and that the agreement is not
subject of any judicial, administrative or other proceeding.
The application must be accompanied by a copy of the agreement,
payment of the appropriate fees, and other documents that may be required
by the Bureau to support and establish the merits of the request.
The applicant may submit either a draft or a duly executed and
notarized agreement.
RULE 5. Who may File . — Any party to a technology transfer
arrangement or his duly authorized representative may file an application for
exemption with the Director.
RULE 6. When to File . — The application shall be filed in
accordance with the following schedule:
(a) New Agreements — within thirty (30) days from the date of
execution or effectivity, whichever is earlier;
(b) Renewal Agreements — anytime prior to the expiration of
the term of the existing technology transfer agreement;
and
(c) Amendatory Agreements — within thirty (30) days from
the date of effectivity of such amendment or modification.IP/N/1/PHL/C/2
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RULE 7. Filing Date . — The date on which the applicant
complies with the requirements of the Bureau is the Filing Date which shall
be duly recorded in the Filing Date Entry Book. The Bureau shall issue to the
applicant a Notice of Filing Date which is also the date when evaluation of
the request shall commence.
RULE 8. Notice of Additional Requirements . — Should the
Bureau find that the documents submitted are incomplete or insufficient, the
Bureau shall issue a notice to the applicant, within six (6) days from theFiling Date, requiring the applicant to submit the additional documents.
Failure of the applicant to comply with any of the requirements within a
period of fifteen (15) days from the date of receipt of the notice shall be
construed as an abandonment of the application without prejudice to refiling
as a new application. Should the applicant require additional time to comply
with the requirements, a final extension of fifteen (15) days will be granted
upon payment of the required fee.
RULE 9. Scope of Evaluation . — Requests for exemption shall be
evaluated based on the adverse effects of the terms and conditions of the
technology transfer arrangement on competition and trade. Exemption from
the Prohibited Clauses and Mandatory Provisions of the IP Code will be
granted in exceptional or meritorious cases where substantial benefits will
accrue to the economy, such as:
(a) high technology content;(b) increase in foreign exchange earnings;
(c) employment generation;
(d) regional dispersal of industries;
(e) substitution with or use of local raw materials;
(f) pioneer status registration with the Board of Investments.
RULE 10. Acceptable Worldwide Industry Standards and
Practices . — As part of the evaluation procedure for requests for exemptions,
the Bureau shall take into account acceptable worldwide industry standards
and practices for licensing technology in the relevant sectors.
RULE 11. Recognition of Valid Intellectual Property Rights . — In
the assessment of requests for exemptions involving clauses which restrict the
use of the technology supplied after the expiration of the technology transferarrangement under Section 87.9 of the IP Code, the Bureau shall take into
consideration the protection of valid patent, copyright, trademark, trade secretIP/N/1/PHL/C/2
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or other intellectual property rights subsisting even after the termination or
expiration of the technology transfer arrangement.
RULE 12. Payment of Taxes . — In the evaluation of requests for
exemption involving provisions which do not require the licensor to pay
Philippine taxes on all payments relating to the technology transfer
arrangement under Section 88.4 of the IP Code (Rule 3 (4) of these
Regulations), the Bureau shall take into consideration current laws, rules and
regulations issued by the Bureau of Internal Revenue regarding the liabilityfor payment of such taxes.
RULE 13. Decision . — The Bureau shall decide whether or not to
grant the application within thirty-five (35) days from the Filing Date.
RULE 14. Issuance of Certificate . — The Bureau shall issue the
Certificate of Registration within two (2) days from approval of the
application.
If a draft agreement was submitted for evaluation, the Certificate of
Registration shall be issued two (2) days after the submission, of the duly
executed agreement provided it shall not contain any amendment or any
modification not authorized by the Bureau.
RULE 15. Certificate Registry Book . — After the issuance of the
Certificate of Registration, the title of the technology transfer arrangement
and parties thereto, its registration number and the date of registration shall
be entered in the Certificate Registry Book.
RULE 16. Cancellation of Registration . — Automatic cancellation
of registration shall be made upon receipt of a duplicate original or certified
copy of the registered technology transfer arrangement containing
amendments or modifications that violate the Prohibited Clauses and
Mandatory Provisions of the IP Code without approval of the Bureau.
The Bureau may also cancel the registration of the technology transfer
arrangement if, after evaluation, the Bureau has established that thejustification for the grant of an exemption submitted by the applicant does not
exist or has ceased to exist. Such action will be made only after the parties in
whose names the Certificate of Registration was issued are given an
opportunity to be heard.
In both cases, the parties shall be required to surrender the Certificate
of Registration provided that the surrender of the Certificate shall not be a
pre-requisite to the cancellation of the registration.IP/N/1/PHL/C/2
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PART 3
Summary Procedures
CHAPTER 1
Trademark License Agreement
RULE 17. Clearance Prior to Recordal with the Office . — Prior to
its recordal, any trademark license agreement covered by Section 150.1 and
Section 150.2 of the IP Code shall be filed with the Bureau for clearance
together with the proof of payment of the filing fee.
RULE 18. Evaluation Period . — Within a period of ten (10) days,
the Bureau shall determine whether such agreement violates any of the
Prohibited Clauses or Mandatory Provisions of the IP Code.
RULE 19. Certificate of Clearance . — If an agreement submitted
for clearance does not violate any of the Prohibited Clauses or Mandatory
Provisions of the IP Code, the Bureau shall issue a certificate of clearance
and the agreement shall be recorded by the appropriate officer in the Office.
RULE 20. Notice to Comply . — Should any provision of the
agreement violate any of the Prohibited Clauses or Mandatory Provisions of
the IP Code, the Bureau shall issue a notice to the parties in the agreement
informing them of the violation and requiring them to comply with pertinent
provision of the IP Code prior to recordal.
CHAPTER 2
Certificate of Compliance and Approval for Legal Purposes
RULE 21. Request for Certification of Compliance . — The parties
to a technology transfer arrangement may jointly file a request for a
certification to the effect that the technology transfer arrangement conforms
with the Prohibited Clauses and Mandatory Provisions of the IP Code. The
request shall be under oath, filed in duplicate, state the purpose of the
certification, and state that the agreement is not subject of any judicial,
administrative or other proceeding. It shall be accompanied by a duplicate
original copy of the duly executed and notarized agreement, payment of therequired fees, and other documents that will be required by the Bureau to
support and establish the merit of the request.
RULE 22. Evaluation Period; Action on the request . — The Bureau
shall conduct a summary evaluation of the technology transfer arrangementIP/N/1/PHL/C/2
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within ten (10) days from filing. If the technology transfer arrangement
conforms with the Prohibited Clauses and Mandatory Provisions of the IP
Code, the Bureau shall issue a Certificate of Compliance. Otherwise, the
Bureau shall give the parties a notice informing them of the violation and
requiring them to comply with the IP Code if they wish to obtain a Certificate
of Compliance.
CHAPTER 3
Preliminary Review and/or Pre-Clearance of Technology Transfer
Arrangements
RULE 23. Request for Preliminary Review . — Any party to a
technology transfer arrangement may file a request for a preliminary review
of a draft technology transfer arrangement to determine conformance with the
Prohibited Clauses and Mandatory Provisions of the IP Code.
RULE 24. Evaluation Period . — The Bureau shall conduct a
summary evaluation of the draft technology transfer arrangement within ten(10) days from filing of the application and upon payment of the required
fees.
RULE 25. Notice of Findings . — The Bureau shall issue a notice of
its findings on the draft technology transfer arrangement as submitted.
RULE 26. Submission of the Agreement Under Part 2 . — After the
completion of the foregoing summary procedure, the technology transfer
arrangement may be submitted for registration under Part 2 of theseRegulations.
PART 4
Reconsideration and Appeal
RULE 27. Request for Reconsideration . — Requests for
reconsideration of all actions or decisions rendered by the Director shall be
filed in writing stating clearly and concisely the reasons therefor and shall,
whenever relevant, be accompanied by supporting documents. The requestshall be filed with the Director within fifteen (15) days from receipt of the
decision and shall be accompanied with proof of payment of the required fee.
The Director shall render final decision within thirty-five (35) days from the
date of filing of the request in accordance with this Section.
RULE 28. Appeal to the Director General . — Appeal from a
decision of the Director shall be filed with the Office of the Director General
in writing stating clearly and concisely the reasons therefor and shall,IP/N/1/PHL/C/2
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whenever relevant, be accompanied by supporting documents. The appeal to
the Office of the Director General shall be made within fifteen (15) days from
appellant's receipt of the decision of the Director and shall be accompanied
with proof of payment of the required fee.
RULE 29. Appeal to the Secretary of Trade and Industry . — A
decision or final order of the Director General shall be final and executory
unless an appeal is filed with the Secretary of Trade and Industry within
fifteen (15) days from appellant's receipt of the decision.
PART 5
Miscellaneous Provisions
RULE 30. Rights of Licensor . — In the absence of any provision to
the contrary in the technology transfer arrangement, the grant of a license
shall not prevent the licensor from granting further licenses to third persons
nor from exploiting the subject matter of the technology transfer arrangement
himself.
RULE 31. Rights of Licensee . — The licensee shall be entitled to
exploit the subject matter of the technology transfer arrangement during the
whole term of the technology transfer arrangement.
RULE 32. Technology Transfer Agreements Subject of Judicial
Proceedings . — The Bureau shall not take cognizance of any request for
exemption, clearance for legal purposes, and/or recordal of trademark license
agreement where the validity, enforceability, or any issue involving suchtechnology transfer arrangement has become the subject of a judicial
proceeding.
RULE 33. Publications . — The Bureau shall cause to be published
in the IPO Gazette all registered technology transfer agreements. The
publication shall contain the names of the parties, title and subject of the
agreement, and specific exemption/s granted, if any.
RULE 34. Office Forms . — For the convenience of applicants, the
Office shall draw up and make available a standard application form, and
such other forms as may be necessary or useful, which may be, reproduced at
will by applicants and other persons at their own cost.
RULE 35. Coverage . — These rules and regulations shall apply to:
(a) all applications, requests, exemption, and clearance prior
to recordal of a trademark license agreement covering
new, renewal or amendatory technology transferIP/N/1/PHL/C/2
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arrangements filed on or after January 1, 1998 regardless
of the date of execution or date of effectivity;
(b) all agreements extending the life of technology transfer
agreements with subsisting registration under the Rules of
the Technology Transfer Registry of the Bureau of
Patents, Trademarks and Technology Transfer. Minor
changes, such as change in licensor/licensee,
addition/deletion of products, among others, affectingtechnology transfer agreements with subsisting registration
under the Rules of Practice of the Technology Transfer
Registry of the Bureau of Patents, Trademarks and
Technology Transfer may be submitted to the Bureau for
notation purposes.
Final Provisions
SECTION 1. Implementation. — In the interest of the service, until
the organization of the Bureau is completed, the functions necessary to
implement these Regulations shall be performed by the personnel of the
former Bureau of Patents, Trademarks and Technology Transfer as may be
designated by the Director General upon the recommendation of the Chief of
the Technology Transfer Registry of the Bureau of Patents, Trademarks and
Technology Transfer heretofore designated as Officer-in-Charge or Caretaker
of the Documentation, Information and Technology Transfer Bureau.
SECTION 2. Fees and Charges to be prepaid; Fees and charges
payable in advance. — Express charges, freight, postage, telephone,
telefacsimile including cost of paper and other related expenses, and all other
charges on any matter sent to the Office must be prepaid in full. Otherwise,
the Office shall not receive nor perform any action on such matters. The
filing fees and all other fees and charges payable to the Office shall be
collected in advance of any service to be rendered.
SECTION 3. Repeal. — All rules and regulations, memoranda,
circulars and memorandum circulars and parts thereof inconsistent with these
Regulations particularly the Rules of Practice of the Technology Transfer
Registry of the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) as amended are hereby repealed.
SECTION 4. Separability. — If any provision in these Regulations or
application of such provision to any circumstance is held invalid, the
remainder of these Regulations shall not be affected thereby.IP/N/1/PHL/C/2
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SECTION 5. Effectivity. — These rules and regulations shall take
effect fifteen (15) days after publication in a newspaper of general
circulation.
Done this 2nd day of October 1998.
(Sgd.) EMMA C. FRANCISCO
Director General
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