- Philippine Technology Transfer Act of 2009
- Republic Act No. 10055
March 23, 2010
REPUBLIC ACT NO. 10055
AN ACT PROVIDING THE FRAMEWORK AND SUPPORT SYSTEM FOR THE OWNERSHIP, MANAGEMENT, USE, AND COMMERCIALIZATION OF INTELLECTUAL PROPERTY GENERATED FROM RESEARCH AND DEVELOPMENT FUNDED BY GOVERNMENT AND FOR OTHER PURPOSES
Title, Declaration of Policy and Objective, Scope and Other General Provisions
SECTION 1. Short Title. This Act shall be known as the "Philippine Technology Transfer Act of 2009". EADCHS
SECTION 2. 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 (RDIs) 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.
SECTION 3. Objective. This Act aims to promote and facilitate the transfer, dissemination, and effective use, management, and commercialization of intellectual property, technology and knowledge resulting from R&D funded by the government for the benefit of national economy and taxpayers.
SECTION 4. Definition of Terms. For purposes of this Act:
(a) "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.
(b) "Intellectual Property Rights (IPRs)" refer to those rights recognized and protected in SEAHcT
(c) "Potential IPRs" refer to intellectual property, or the products of creation and research that form the subject matter of IPRs, but which are not yet protected by the statutory grant of IP rights.
(d) "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.
(f) "Intellectual Property Rights Management" refers to the principles, mechanisms and processes involved in the identification, assessment, protection, utilization and enjoyment of intellectual property rights.
(g) "Government Funding Agency (GFA)" refers to any government agency or instrumentality, or government-owned and/or -controlled corporation that provides research grants and other technical and material support, from government appropriations and resources and those sourced from government-managed Official Development Assistance (ODA) funds.
(h) "Parent Agency" refers to the Department or agency, which exercises the power of control or supervision over the GFAs, RDIs or RDI acting as the GFA itself. In general, where multiple GFAs are involved, the department or agency, which has the largest financial contribution, shall be deemed as the parent agency, except as may otherwise be specifically provided by this Act.
(i) "Research and Development Institute or Institution (RDI)" refers to a public or private organization, association, partnership, joint venture, higher education institution or corporation that performs R&D activities and is duly registered and/or licensed to do business in the Philippines, or otherwise with legal personality in the Philippines. In the case of private RDIs, they shall be owned solely by the citizens of the Philippines or corporations or associations at least sixty per centum (60%) of the capital of which is owned by such citizens. This does not include RDIs covered by international bilateral or multilateral agreements. ScaEIT
(j) "Research Funding Agreement" refers to a contract entered into by and among the GFA and other funding agencies and the RDI. It governs ownership of IP, duties and responsibilities of GFAs and RDIs, technology disclosure, exclusivity of the license, use for commercialization, establishment of spin-off firms, technologies for research use, and sharing of income and benefits from technology commercialization.
(k) "Research Agreement" refers to a contract entered into by RDIs and researchers, including the agreements between the RDI and collaborating RDIs.
(l) "Researcher" refers to a natural person who is engaged by the RDI by employment or other contract, to conduct research with or for the RDI.
(m) "Spin-off firm or company" refers to a juridical entity that is an independent business technology taker with a separate legal personality from the GFA, RDI and researcher created through the initiative of the researcher-employee who generated the technology.
(n) "Technology" refers to knowledge and know-how, skills, products, processes, and/or practices.
(o) "Technology transfer" refers to the process by which one party systematically transfers to another party the knowledge for the manufacture of a product, the application of a process, or rendering of a service, which may involve the transfer, assignment or licensing of IPRs.
(p) "Commercialization" refers to the process of deriving income or profit from a technology, such as the creation of a spin-off company, or through licensing, or the sale of the technology and/or IPRs.
(q) "Revenue" refers to all monetary and non-monetary benefits derived as a result of the development, production, transfer, use and/or commercialization of IPRs, including income from assignments and royalties from licenses.
(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.
SECTION 5. Coverage. (a) All R&D activities carried out on behalf and for the interest of the Philippine government by RDIs receiving grants directly from the GFAs: SaIHDA
(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
(d) All institutions that implement government funded R&D.
Intellectual Property Ownership
SECTION 6. Ownership of Intellectual Property and Intellectual Property Rights. The ownership of IPs and IPRs shall be governed by the following:
(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 IPs and IPRs derived and generated from research funded by the GFA, whether such funding is in whole or in part, shall, in general, be vested 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, That 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;
(2) In case of failure of the RDI to disclose potential IPRs to the GFA, whereupon the GFA shall assume the rights to the potential IPR;
(3) In case of failure of the RDI to initiate the protection of potential IPRs within a reasonable time from confidential disclosure to the GFA, which shall in no case exceed three (3) months from public disclosure, whereupon the GFA shall assume the rights to the potential IPR; and
(4) In case the RDI ceases to become a Filipino corporation as defined in Article I, Section 4 (i) of this Act. aIcDCA
(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 this Act.
(c) Nothing in this Article shall modify, amend, derogate or prejudice IPs that will be owned by employees of the RDIs under the
Rights and Responsibilities of the Government Funding Agencies and Research and Development Institutes or Institutions
SECTION 7. Rights and Responsibilities of a Government Funding Agency. Under this
(a) Protect government interest in the IPs and IPRs generated from the R&D that it funded through suitable provisions in the research funding agreement. 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;
(b) Monitor efforts and effectiveness of the RDI in securing IP protection and pursuing IP commercialization, as well as provide alternative solutions and assistance in case of shortfall in the RDI's performance in protecting, utilizing and commercializing the IP;
(c) 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; and cSATDC
(d) Allow sharing of revenues from IP commercialization in a way that is not onerous to commercialization: Provided, That when the GFA assumes commercialization of the IPs, it shall, subject to existing laws requiring transparency and accountability, the Commission on Audit (COA) Rules and Regulations and as required under Article IX, Section 20 of this Act, be allowed to directly negotiate agreements for the 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.
SECTION 8. Rights and Responsibilities of the RDIs. 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 the GFA and pursue commercial exploitation diligently as a required performance stipulated in the research funding agreement and as allowed by this Act and other applicable laws.
In case of commercialization by public RDIs, it shall, subject to existing laws requiring transparency and accountability, the COA Rules and Regulations and as required under Article IX, Section 20 of this Act, be allowed to directly negotiate agreements for the commercialization of IPs: Provided, That it shall obtain a written recommendation from the Secretary of the 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. AScTaD
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: Provided, however, That it shall not be precluded from resorting to other modes of commercialization as allowed by all applicable laws.
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 Section 7 of this Act;
(b) Provide a means for addressing any shortfall of its performance in utilizing and commercializing the IP;
(c) 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
(d) Report annually to the GFA on the progress of IP and/or IPR commercialization efforts and of all agreements entered and licenses granted;
(e) Keep account of revenues and payments to the GFA if required in the research funding agreement;
(f) 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;
(g) Accord their staff with incentives consistent with existing laws to sustain efforts in identifying valuable IP and in pursuing IP commercialization;
(h) Be authorized, within a reasonable time, to keep confidential from the public any document or information relating to potential IPRs that are not yet fully protected by law;
(i) Make a confidential disclosure to the GFA, within a reasonable time, of any potential IPRs with possibilities for commercialization and/or technology transfer. In case of failure to disclose any such potential IPRs, Section 6 of this Act shall apply; aSTECI
(j) 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 this Act; and
(k) When necessary, create and establish spin-off companies to pursue commercialization subject to their respective mandates as allowed by law.
Management of IPs from R&D Performed by Government RDIs Through Their Own Budget
SECTION 9. 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 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.
SECTION 10. Responsibilities of the Concerned National Government Agencies. Concerned government and/or parent agencies shall monitor efforts and effectiveness of their RDIs in securing IP protection and pursuing IP commercialization, based on the annual IP management reports submitted by the RDIs.
SECTION 11. Revenue Sharing. All revenues from the commercialization of IPs and IPRs from R&D funded by GFAs shall accrue to the RDI, unless there is a revenue sharing provision in the research funding agreement: Provided, That in no case will the total share of the GFAs 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. THcEaS
Sharing of revenues between RDI and researcher shall be governed by an employer-employee contract or other related agreements, without prejudice to the rights of researchers granted under
Commercialization by the Researcher and Establishment of Spin-Off Firms
SECTION 12. Commercialization by Researchers. In meritorious cases and to help ensure successful commercialization, an RDI shall allow its researcher-employee to commercialize or pursue commercialization of theProvided, That the concerned researcher-employee takes a leave of absence, whenever applicable, for a period of one (1) year and renewable for another year, for a total period not exceeding two (2) years, from the time the researcher signifies in writing that he/she desires to create or participate in a spin-off company: Provided, however, That the researcher-employee may still be allowed access to the RDIs' laboratory facilities, subject to reasonable fees and regulations which the RDIs may impose.
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 13. 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
SECTION 14. Management of Conflict of Interest. The RDIs shall properly manage any possible conflict of interest by adopting appropriate guidelines for its researcher-employee. The guidelines for handling of such conflicts shall include, but are not limited to, the following:
(a) RDIs 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; aTEHIC
(b) Heads of RDIs 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;
(c) Where researchers of RDI are nominated as non-executive directors to the Board of a spin-off company or existing company in which the same RDI holds an equity stake, they should have a clear duty to ensure that the RDI's interests are not compromised by their role; and
(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.
Use by Government, Compulsory Licensing and Assumption of Potential IPRs
SECTION 15. Use by Government or Third Person Authorized by Government and/or Compulsory Licensing. This Act shall adopt the grounds, terms and conditions for the use by government or third person authorized by government, and/or compulsory licensing as stated in the
SECTION 16. 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 this 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. ESTCDA
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:
(a) The determination must be accompanied by an analysis and justification of such reason(s);
(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 17. Except where otherwise provided by the
Use of Income and Establishment and Maintenance of Revolving Fund for R&D and Technology Transfer
SECTION 18. 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 R&D, 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. ADTCaI
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.
SECTION 19. 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 R&D; (b) coordinate and rationalize the R&D agenda; and (c) harmonize all R&D agenda and priorities.
SECTION 20. Development of Internal IP Policies and Establishment of Technology Licensing Offices (TLOs) and/or Technology Business Development Offices. All RDIs are encouraged to establish their own TLOs in whatever form and to adopt their own policies on IPR management and technology transfer, in accordance with this Act and other existing laws and in support of the policies of the Intellectual Property Office Philippines and the national policy and the mandate of their parent agency.
SECTION 21. Capacity-Building and Guidelines on IP Commercialization. The Department of Science and Technology (DOST),the Department of Trade and Industry (DTI) and the Intellectual Property Office (IPO),in consultation with the GFAs such as the Commission on Higher Education (CHED),the Department of Agriculture (DA),the Department of Health (DOH),the Department of Energy (DOE),the Department of Environment and Natural Resources (DENR),and the Department of National Defense (DND),shall undertake activities geared towards building the capacity of the GFAs and RDIs in commercializing IPs. The DOST as chair and convenor, together with the DTI and the IPO shall jointly issue the necessary guidelines on IP valuation, commercialization, and information sharing, which may include, but not be limited to, the following considerations: public benefit and national interest, market size, cost and income. These guidelines shall be issued within one hundred twenty (120) days from the date of effectivity of this Act. CDAcIT
SECTION 22. The administrative procedure for resolving any disputes on the determination for government ownership shall be provided by the Implementing Rules and Regulations (IRR) of this Act.
Miscellaneous, Transitory and Final Provisions
SECTION 23. Administrative, Criminal or Civil Liability. The failure of the GFA or RDI to fulfill its responsibilities under this
SECTION 24. Congressional Oversight Committee. For the effective implementation of this Act, there shall be a Congressional Oversight Committee, hereinafter referred to as the Technology Transfer Oversight Committee, to be composed of five (5) members from the Senate, which shall include the Chairpersons of the Senate Committees on Science and Technology, and Trade and Commerce, and five (5) members from the House of Representatives, which shall include the Chairpersons of the House Committees on Science and Technology and Trade and Industry. The Technology Transfer Oversight Committee shall be jointly chaired by the Chairpersons of the Senate and House of Representatives Committees on Science and Technology. The Vicechair of the Oversight Committee shall be jointly held by the Chairpersons of the Senate Committee on Trade and Commerce and the House of Representatives Committee on Trade and Industry.
SECTION 25. Funding. The activities and operational expenses related to the implementation of this Act shall be funded from the budget appropriations and other incomes of GFAs and public RDIs. The Heads of the GFAs and public RDIs shall include in the agency's program the implementation of this Act.
The COA shall exercise its auditing authority over the funds of the GFAs and public RDIs in order to ensure transparency and accountability.
SECTION 26. Implementing Rules and Regulations. Except where otherwise indicated, the DOST and the IPO, with the participation of GFAs, RDIs, and other stakeholders, shall formulate the IRR for the effective implementation of this Act. The DOST Secretary shall chair the drafting committee. The IRR shall be issued within one hundred twenty (120) days after the effectivity of this Act. Copies of the IRR shall be submitted to the Committees on Science and Technology of both Houses of Congress within thirty (30) days after its promulgation, as well as to other appropriate agencies as may be required by law.
Nothing in the IRR shall derogate ownership of any copyright as conferred by the Provided, That such IRR are consistent with the objectives of this Act. The IPO shall also issue the IRR to implement the disclosure requirements stated in Section 8. aDSIHc
SECTION 27. Applicability to Intellectual Property Created Under Existing Laws. The provisions of this Act shall likewise apply to intellectual property created under existing laws, including, among others,
SECTION 28. Repealing Clause. All laws, presidential decrees, executive orders, presidential proclamations, rules and regulations or parts thereof which may be contrary to or inconsistent with this Act are hereby repealed or modified accordingly.
SECTION 29. Separability Clause. If any provision of this Act is declared unconstitutional, the same shall not affect the validity and effectivity of the other provisions hereof.
SECTION 30. Effectivity. This Act shall take effect fifteen (15) days after its complete publication in two (2) newspapers of general circulation.
Approved: March 23, 2010