PHILIPPINES Law and Practice Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and Ritz Angelica R. Alejandro, Cruz Marcelo & Tenefrancia
10.4 Procedure for Licensing an Intellectual Property Right
• those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement; • those that establish a full or partial purchase option in favour of the licensor; • those that obligate the licensee to trans- fer for free to the licensor the inventions or improvements that may be obtained using the licenced technology; and • other clauses with equivalent effects. Section 88 of the IP Code provides mandatory clauses in voluntary licence contracts. • 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 princi- pal office. • Continued access to improvements in tech- niques and processes related to the technol- ogy shall be made available during the period of the TTA. • In the event the TTA shall provide for arbitra- tion, the Procedure of Arbitration of the Arbi- tration Law of the Philippines or the Arbitra- tion Rules of the United Nations Commission on International Trade Law or the Rules of Conciliation and Arbitration of the Internation- al Chamber of Commerce shall apply and the venue of arbitration shall be the Philippines or any neutral country. • The Philippine taxes on all payments relating to the TTA shall be borne by the licensor.
TTAs that conform with the provisions of Sec- tions 87 and 88 need not be registered with the Documentation, Information and Technology Transfer Bureau (DITTB) of the IPOPHL. How- ever, if the agreement with the TTA is not fully compliant with Sections 87 and 88, the agree- ment must be registered with the DITTB. The TTA will be unenforceable unless it com- plies with Sections 87 and 88 or is approved and registered with the DITTB under Section 91 for exceptional cases, such as where substan- tial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional industry dispersal and/or substitution with or use of local raw materials, or in the case of the Board of Investments, registered compa- nies with pioneer status.
399 CHAMBERS.COM
Powered by FlippingBook