Title
Rules on Disputes in Tech Transfer Payments
Law
Ipo
Decision Date
Oct 2, 1998
The rules and regulations establish a framework for resolving disputes related to technology transfer payments and licensing terms, ensuring the protection of authors' rights and promoting effective enforcement of intellectual property in the country.
technology transfer
dispute settlement
licensing agreement
A

Issuance details and effectivity

  • The rules are adopted on 02 October 1998.
  • The signatory is EMMA C. FRANCISCO, Director General.
  • The rules take effect fifteen (15) days after publication in a newspaper of general circulation.
  • The Director General must publish in a newspaper of general circulation the corresponding notice as soon as the Office is in a position to accept and process complaints governed by these regulations.

Legal basis and scope of covered disputes

  • The rules are promulgated pursuant to Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code).
  • The rules establish procedures to settle disputes involving:
    • Technology transfer payments, including issues on royalty amounts or rates; and
    • Licensing terms involving an author’s right to public performance or other communication of his work.
  • The rules treat a license of copyright as a technology transfer arrangement only if it involves the transfer of systematic knowledge.

Key definitions the rules create

  • “Author” means the natural person who has created the work.
  • “Bureau” means the Documentation, Information and Technology Transfer Bureau of the IPO.
  • “Chief Mediator” means the Officer within the Bureau who exercises immediate supervision over the Mediation Officer; the title or designation may differ.
  • “Communication to the public” / “communicate to the public” means making a work available to the public by wire or wireless means so that members of the public may access the works from a place and at a time individually chosen by them.
  • “Computer software developed for mass market” means software that:
    • is produced, made and marketed for a broad range of purposes and users;
    • is sold over the counter or via standard delivery mechanisms;
    • involves payments that are not based on royalty;
    • generally provides for an indefinite term for use; and
    • does not need any customization by the supplier or distributor.
  • “Director General” means the head of the IPO.
  • “Director” means the Director of the Documentation, Information and Technology Transfer Bureau.
  • “Intellectual Property Rights” includes:
    1. Copyright and Related Rights;
    2. Trademarks and Service Marks;
    3. Geographic Indications;
    4. Industrial Designs;
    5. Patent;
    6. Layout-Designs (Topographies) of Integrated Circuits; and
    7. Protection of Undisclosed Information.
  • “IP Code” means Republic Act No. 8293.
  • “Mediation Officer” means the Officer within the Bureau authorized to exercise the functions under these regulations; the title or designation may differ.
  • “Office” means the Intellectual Property Office.
  • “IPO Gazette” means the IPO’s publication where all matters required to be published under the IP Code shall be published.
  • “Public performance” means:
    1. For a work other than an audiovisual work: recitation, playing, dancing, acting, or otherwise performing the work, directly or by any device or process;
    2. For an audiovisual work: showing of images in sequence and making of accompanying sounds audible; and
    3. For a sound recording: making recorded sounds audible at places where persons outside the normal circle of a family and that family’s closest social acquaintances are or can be present, whether at the same or different places and/or different times, and where the performance can be perceived without need for communication with the meaning of “communication to the public.”
  • “Technology Transfer Arrangements” means contracts or agreements (including renewals) involving transfer of systematic knowledge for manufacture, application of a process, or rendering of a service (including management contracts), and transfer/assignment/licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market; licensing of copyright is included as a technology transfer arrangement only if it involves the transfer of systematic knowledge.
  • “Undisclosed Information” means information that is secret (not generally known or readily accessible), has commercial value because it is secret, and has been subject to reasonable steps to keep it secret by the person lawfully in control.

Filing and complaint requirements

  • The aggrieved party or a duly authorized representative may file a verified complaint with the Director upon payment of the required filing fee.
  • The verified complaint must state that, to the best of the filer’s knowledge, the party commencing the action has not filed any other administrative action or proceeding involving the same issue(s) before any tribunal or agency, and that no such action is pending in other quasi-judicial bodies.
  • If another action is pending, the verified complaint must state its status.
  • If knowledge of a pending action is acquired after filing the complaint, the filer must undertake to notify the Office within five (5) days from acquiring such knowledge.
  • The complaint must be typewritten and must reflect the names of all parties in the title.
  • The complaint must state:
    • the complainant’s name and address and the respondent’s name and address;
    • the nature of the complaint and a concise statement of the ultimate facts constituting the complaint; and
    • the relief or reliefs prayed for.
  • A party may avail of Civil Code consignation with respect to the royalty or any sum of money involved in the dispute by submitting to the Bureau a certified copy of the Contract of Escrow.

Mediation process and conference mechanics

  • Within one (1) day from receipt of the complaint, the Bureau must docket it, and the Chief Mediator must assign and transmit it to a Mediation Officer with instructions to mediate under these rules.
  • Within five (5) days from receipt of the assignment, the Mediation Officer must call the parties to a Mediation Conference by sending each party a Notice of Settlement under the Mediation Officer’s or the Chief Mediator’s signature.
  • The Mediation Officer must send the Notice of Settlement to the respondent with a copy of the complaint and its attachments.
  • The Mediation Conference and sessions must be held within the premises of the Office.
  • The Director may authorize holding the Mediation Conference or any session outside the Office premises upon written request and payment of the required fee if:
    • it is necessary and will enhance proceedings; and
    • the other party agrees when the request is made by only one party; and
    • parties shall not unreasonably withhold consent.
  • The total cost of holding the Mediation Conference or any session outside the Office premises (including air transportation, accommodation, and per diem) is borne by:
    • the party requesting when the request is made by one party; or
    • all parties shared equally or in another proportion stated in their request when the request is made by all parties.
  • During the Mediation Period, both complainant and respondent must be given opportunity to present positions and submit necessary documents.
  • The Mediation Period is thirty (30) days, counted from the first day of the Mediation Conference.

Settlement agreement and decision timelines

  • If the parties agree to settle during the Mediation Period, the Compromise/Mediation Agreement must be reduced into writing.
  • If the parties request in writing, the Mediation Officer must draft the Compromise/Mediation Agreement within ten (10) days from receipt of the request and payment of the required fee.
  • The Chief Mediator must review the draft within ten (10) days from submission by the Mediation Officer.
  • The parties have ten (10) days from receipt of the draft from the Chief Mediator to review, finalize, and execute the Compromise/Mediation Agreement.
  • The parties must submit the executed Compromise/Mediation Agreement to the Director through the Chief Mediator by means of a Motion for Judgment Based on Compromise/Mediation Agreement.
  • The Director must decide the motion within thirty (30) days from receipt.
  • If the case is not settled within the Mediation Period, the Mediation Conference is declared a failure unless the parties request in writing to extend it.
  • In disputes involving technology transfer payments where mediation fails:
    • the Mediation Officer must submit within ten (10) days after termination of the Mediation Conference a report and draft decision to the Chief Mediator, considering the evidence and documents presented;
    • the Chief Mediator must review the draft and submit final recommendation and draft to the Director within twenty (20) days from termination; and
    • the Director must decide the case within thirty-five (35) days after termination.
  • In disputes involving an author’s right to public performance or other communication of his work (license terms), the procedure follows the same mediation flow, but the Director does not issue the final decision; instead, the Director submits findings, conclusions, recommendations, and a draft decision to the Director General, who renders the final decision.

Appeals and finality rules

  • A decision or final order of the Director becomes final and executory fifteen (15) days after receipt of a copy by the appellant unless:
    • a motion for reconsideration is filed with the Director within the same fifteen (15) days, or
    • an appeal to the Director General is perfected by filing a notice of appeal and paying the required fee within the same period.
  • Only one (1) motion for reconsideration of the Director’s decision or order is allowed.
  • When appealing to the Director General, the appellant must file a brief within one (1) month from the date of filing the notice of appeal.
  • If the appellant fails to file the brief within the allowed time, the appeal stands dismissed.
  • The Director must submit comments on the appellant’s brief within one (1) month from receipt of the order of the Director General requiring comment.
  • The decision of the Director General becomes final and executory fifteen (15) days after receipt of a copy by the appellant unless an appeal to the Secretary of the Department of Trade and Industry is perfected by filing a notice of appeal and paying the required fee.
  • No motion for reconsideration is allowed for the Director General’s decision or order.

Separability and publication-effectivity framework

  • The rules include a separability clause: if any provision is held invalid or its application is held invalid, the remainder of the rules continues in effect.
  • The rules provide an effectivity rule: the rules take effect fifteen (15) days after publication in a newspaper of general circulation.

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