A mechanism to operationalize intellectual property and technology management...

A mechanism to operationalize intellectual property and technology management...

(continued from December issue)

4.1. IPR protection

The IPTMM shall attend to the following concerns: (a) ownership of IPs, (b) protection of IPR, and (c) disclosure of IP-related information. Specific functions of the IPTMM with respect to the aforementioned concerns are herein attached as Annex A.

4.2. Transfer and Commercialization The IPTMM shall attend to the following concerns: (a) technology valuation; (b) Negotiation for technology transfer andCommercialization: and, (c) assistance to theDOST's Bids and Awards Committee. Specificfunction of the IPTMM with respect to the aforementioned concerns are herein attached as Annex B.

4.3. Policy and Advocacy

The IPTMM shall attend to the following:

4.3a Translate the guidelines set by the Oversight Committee into the agency's appropriate Implementing Rules and Regulations (IRR) on IPTM.

4.3b Advocate for the institutionalization and sustainability of IPTMM through human resource and institutional capability building, provision of adequate financial resources, and concerted awareness campaigns

4.4. Database management

The IPTMM shall:

4.4a Maintain a database on IPR applications, patents/copyrights obtained and technology transfer transactions completed by the agency (MC 001, Part V, Section 2)

4.4b Provide the Oversight Committee through the Technology Application and Promotion Institute (TAPI) information on IPR applications, Whether completed, pending, or newly filed (MC 001 Part V, Section 3; MC 002 Part V Section 8). In the performance of the above mentioned functions the IPTMM shall subscribe to Guiding Principle 2.5 of this MC and as illustrated in the Annex C which is duly made a part hereof.

Section 6. Other functions which do not appear herein, but performance of which may later on be found necessary, shall adhere to the guidelines of the Oversight committee created herein.

Section 6. Other functions do not appear herein, but performance of which may later on be found necessary, shall adhere to the guidelines of the Oversight Committee created herein.

Section 7. Operationalization of the IPTMM

7.1 Any IPTMM to be organized for this purpose shall Have at least a focal person, reporting mechanism, and working budget.

7. 1a. The IPTMM focal person, hereinafter referred to as the Intellectual Property and Technology Management Coordinator, or IPTMC, shall be a senior staff preferably equipped with the necessary technical, and/or legal background to serve on a full time basis, if warranted. He/She shall coordinate IPTM activities and promptly report the same to his/her agency head and the Oversight Committee.

7.1b. There shall be a reporting mechanism for proper monitoring and evaluation of all IPTM concerns of the agency subject to the general guidelines issued by the oversight Committee.

7.1c. The agency funds should provide adequate funds to support its IPTM activities.

7.2. DOST Agencies with existing IPTMM that met or may have more than net the forementioned minimum requirements must strive to strengthen IPTM further by incorporating the mechanism into their relevant organic unit. The details of these mainstreaming initiatives should be reported to the oversight Committee.

Section 8. Creation of a DOST-wide Oversight Committee

8.1. The Committee shall be composed of the following:

8.1a The Assistant Secretary for R&D and Technology Transfer as Chair;
8.1b The Assistant Secretary for Legal Affairs as Vice Chair;
8.1c The Director of TAPI as Ex-officio Member and Secretariat;
8.1d A Director-representative from the RDIs;
8.1e A Director-representative from the S&T Services;
8.1f A Regional Director-representative from the Regional Offices;
8.1g An Executive Director-representative from the S&T Planning Councils;

8.2. The Oversight Committee shall:

8.2a Craft the IPTM policy guidelines and ensure their effective implementation
8.2b Coordinate all IPTM activities of the DOST
8.2c Liaise and link as DOST representative in all interdepartmental and other collaborative activities on IPTM

8.2. TAPI as Oversight Committee Secretariat

In addition to the function of the TAPI as provided in MC 001, particularly in Part X thereof, the Institute is tasked to act as Secretariat for the Oversight Committee and as such shall assist the Committee to effect the Committee to effect the smooth Performance of its functions.

PART V: Benefits and Awards

Section 9. Legal Bases of Benefits and Awards

S&T personnel who produce IPs are entitled to pecuniary awards in Accordance with RA Nos. 2067, 3589, 7457, and 8439, EO Section 10. The S&T personnel shall be entitled to both pecuniary and non-pecuniary awards provided pecuniary awards shall be derived from the proceeds of the commercialization of the IP subject to the provisions of Part IV, Section 4.1 Annex 1 and Part V, Section 12 of this MC.

Section 11. Co-ownership and royalties of non-DOST S&T personnel Since co-ownership between a non-DOST agency and its S&T personnel is an employer-employee concern, the determination of royalties for the concerned S&T personnel shall be left to his/her agency. However, for non DOST S&T personnel working in government, provisions of MC 001 on royalty sharing shall apply.

Section 12. Adoption of and amendments to existing memoranda Provisions on royalties

12.1. The sharing of royalties among the S&T Personnel, the implementing agency, and the funding agency as provided in MC 001, Part Vlll A, Sections 1, 2, and 3 under DOST-directed STAs and the sharing of royalties among the client, cooperator, DOST and S&T personnel under Part Vlll C thereof are accordingly adopted herein.

12.2. Provisions of MC 001 on DOST-assisted STAs

12.2a For DOST-assisted and government implemented STAs, the provisions of MC001 Part Vlll B shall apply.

12.2b For DOST-assisted and non-government implemented STAs, the provisions of MC OO1 Part Vlll B are hereby STAs,, the Provisions of MC 001 Part Vlll B are Hereby amended and accordingly made to Read as follows: "The DOST and the proponent shall share royalties equitably as governed by existing laws and policies. Such sharing shall be indicated with certainly in the individual contract to be entered into by them."

PART Vl. Transitory Provisions

Section 13. All existing contracts entered into by DOST or its agencies and councils as governed by Memorandum Circular 001 shall remain valid and shall not in any be prejudiced by this issuance.

PART Vll. Effectivity

Section 14. Provisions of prior issuance inconsistent with this circular are hereby deemed modified. This circular shall take effect immediately.

ESTRELLA F. ALABASTRO Sgd. Secretary

Annex A
Various Functions of the IPTMM with respect to IPR Protection

1. Ownership of IPs

a. Ensure that the S&T personnel undertaking STAs as well as well their heirs, successors and assignees bind themselves to the effect that any/or all of the Proper Parties as herein, defined shall own the following intellectual properties:

a.1 Those which pertain to any work the S&T personnel has conceived, made, or may conceive or make with respect to the STA;

a.2   Those which result from any work the S&T personnel has conceived, made, or may have been conceived or made with respect to the STA;

a.3   Those improvements from any work which were conceived, made, or may have been conceived or made with respect to the STA; and

a.4    Those which have been or may be the subject of experimentation or investigation during the period of his/her employment at DOST or contract with any of the Proper Parties (MC 001, Part V. Section 1.1)

2. Protection of IPs

a. Ensure that the concerned S&T personnel refrains from directly engaging in another STA based on substantially the same work as the DOST-direct, -assisted and/or contract STAs, during his/her employment in such STAs (MC 001, Part V, Section 1.5)

b. Assist the proper party in obtaining and enforcing IPR protection for the benefit of the Proper Party covering the IP and other scientific works in the Philippines and selected foreign countries (MC 001, Part V, Section 1.6)

c. Ensure that the concerned S&T personnel undertaking STA assigns to the Proper Party all his/her rights, titles and interests in any or all of such IPs and to the end he/she signs any or all instruments of undertaking, assignment, waiver or transfer which the Proper Party may cause to be done from time to time in order that the interest hereof may be duly carried into effect (MC 001, Part V, Section 1.2)

d. Ensure that the proponent shall cause its S&T personnel to execute all necessary papers to facilitate IPR protection applications in the Philippines and/or foreign IPR protection applications in the Philippines and/or foreign countries whenever necessary (MC 001, Part IX, Section 8)

3. Disclosure of IP-related information

a. Ensure that the concerned S&T personnel submits statement to the DOST, prior to assumption of his/her duties. a list of patents or patent rights, discoveries, inventions, innovations, industrial designs and other intellectual properties belonging to him/her, as well as his/her involvement in other STAs (MC 001, Part V, Section 1.4)

b. Ensure that unless prior written authorization from Proper Parties is obtained, the concerned S&T personnel refrains from the filling of IPR protection and/or disclosing publicly in any form any information and data in his/her possession by virtue of his/her involvement in the STA (MC 001. Part V Section 1.3), if such disclosure will prejudice the application for IPR protection.

c. Ensure that the concerned S&T personnel executes and delivers to the Proper Party any or all instruments and documents which may be requested from him, and that he/she continues this obligation as well as any service needed in any suit relative to the application for entitlement to IPR, and any interference and/or litigation involving the same even beyond the termination of his/her employment with any of the proper parties (MC 001, Part V, Section 1.6)

Annex B
Various Functions of the IPTMM with respect toTechnology Transfer and Commercialization

1. Technology Valuation

a. Oversee the valuation of technologies eligible for IPR Protection (MC 002, Part lV, Section 7.3). However, setting specific guidelines and measurable indicators for technology valuation shall be the main responsibility ofThe Oversight Committee.

2. Negotiation for technology transfer and commercialization through the following:

a. Determine whether the subject technology can be transferred either through bidding or negotiated contract with its corresponding justification;

b. Ensure that for technologies subject to bidding, information on the Investors' Forum where the technology will be presented and bidding schedule and venue re announced in three (3) papers of mass circulation;

c. Ensure that the pre-qualification requirements on legal personality and track record (number of years in the same or similar venture) of the interested bidder of the technology and other pre-qualification supporting documents and preset deadline for submission of letters of intent to commercialize have been complied with;

d. Inform the winning firm-bidder to initiate formal arrangements and preparation of documents for technology transfer;

e. Coordinate with TAPI with regard to the identification of clients/possible adopters, promotion and other matters pertaining to technology transfer and commercialization (MC 001, Part V, Section 6)

3. Technical assistance to the agency's Bids and Awards Committee (BAC)

a. The IPMM shall extend technical assistance to the BAC on the following:

a.1 Recommendation on pre-qualification standards required per technology prior to publication or announcement

a.2 Recommendation of firms qualified to bid for the commercialization of the technology

a.3 Evaluation of the technical soundness of the bids as well as the bidders' legal personality, track record, financial capability, and extent of Filipino ownership as provided by law, and preparation and submission of the list of firm-bidders (ranked accordingly)

b. Since the aforementioned forms of assistance are essentially the same functions of the Technology Transfer Evaluation and Awards Committee (TTEAC), as provided for in MC 002, Part IV, Section 5 and as detailed in its Annex A Nos. 3d, 3e, 4 and 5, any reference to the TTEAC and its function are hereby subsumed under this specific function of the IPTMM.

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