Technology Transfer and Licensing
Technology transfer and licensing tests the commercial exploitation of IP rights: voluntary licences, the clauses that are void, compulsory licensing, and the role of the Documentation, Information and Technology Transfer Bureau (DITTB).
Voluntary licences
A patentee may license the invention. The licence should be recorded with the IPO so that it binds third parties, and an exclusive licensee may exclude everyone, including the licensor, unless the contract reserves rights. A licence transfers rights to use, not ownership.
Prohibited clauses
Sec. 87 of the IP Code voids clauses that, for example, oblige the licensee to buy inputs only from the licensor where equivalent quality is available elsewhere, bar the licensee from challenging the validity of the licensed patent, impose exclusive grant-back of improvements, restrict exports, fix resale prices, restrict dealing in competing goods, or require royalty payments after the patent expires. Offending clauses make the agreement unregistrable; they are severed, not the whole contract.
Compulsory licensing
Grounds include national emergency or extreme urgency, public interest in health, nutrition, national security or the economy, anti-competitive practices, and failure to work the invention in the Philippines without satisfactory reason. RA 9502 adds special compulsory licensing for medicines. A compulsory licence is granted with royalties and is not a free taking of the invention.
Worked example
Licensor A requires licensee B to buy all excipients from A at 20 percent above market and forbids B from challenging A's patent. Both clauses are prohibited. The DITTB may refuse registration until they are deleted, and the remainder of the licence survives.
Traps
Treating every term as negotiable; forgetting recordal; confusing a compulsory licence with expropriation; forgetting royalties; assuming a licence passes ownership of the patent.