PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights To be acceptable, an assignment of a patent or an application for a patent must: • be in writing and accompanied by an English translation, if in a language other than English or Filipino; • be acknowledged before a notary public or other officer authorised to administer oath or perform notarial acts, and be certified under the hand and official seal of the notary or such other officer; • be legalised or apostilled; • be accompanied by an appointment of a resi- dent agent, if the assignee is not a resident of the Philippines; • identify the letters patent involved by number, date, name of the patentee, and title of the invention indicated in the patent; in the case of an application for patent, the application number, the filing date of the application, name of the applicant, and title of the inven- tion in the application, shall be stated; and • be accompanied by the required recordal and publication fees. The assignment is valid between the parties, but it shall be void against any subsequent pur- chaser or mortgager for a valuable considera- tion and without notice, unless the assignment is recorded in the IPOPHL within three months from the date of the instrument, or prior to the subsequent sale or mortgage. 10.2 Procedure for Assigning an Intellectual Property Right For recordal with the IPOPHL, the instrument evidencing the assignment must be notarised
and legalised/apostilled. Its original, together with a signed duplicate, shall be submitted. If the original is not available, an authenticated copy in duplicate may be submitted instead. The power of attorney signed by an authorised representa- tive of the assignee must likewise be submitted to the IPOPHL. The recordal and publication fee shall then be paid. If presented in due form for registration, the IPOPHL shall record the assignment in its books and records. The date of its receipt by the IPO- PHIL in proper form, accompanied by full pay- ment of the required fees, shall be the date of its recording. 10.3 Requirements or Restrictions to License an Intellectual Property Right To encourage transfer and dissemination of technology, prevent or control practices and conditions that may constitute an abuse of IP rights causing anti-competitive effects, all licences involving technology transfer arrange- ments (TTA) shall comply with the provisions of the IP Code. Section 87 of the IP Code provides a list of pro- hibited clauses for licence agreements, includ- ing, among others: • 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 per- manently employing personnel indicated by the licensor; • 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 licence; • those that contain restrictions regarding the volume and structure of production;
398 CHAMBERS.COM
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