This is the official newsletter of the Intellectual Property Department of Villaraza & Angangco Law Offices. Intellectual Property News aims to provide you with news, updates and practical information on developments in Philippine intellectual property practice which may be of interest to intellectual property practitioners worldwide. If you would prefer not to receive future copies of this newsletter, simply reply to: ip.newsletter@cvclaw.com
| In This Issue : Firm News |
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SUSAN D. VILLANUEVA ELECTED AS PRESIDENT OF INTELLECTUAL PROPERTY PROFESSORS AND RESEARCHERS ORGANIZATION OF THE PHILIPPINES (IP-PRO)
Susan D. Villanueva, a Partner of Villaraza & Angangco has been recently elected as the founding President of the Intellectual Property Professors and Researchers Organization of The Philippines (IP-PRO). IP-PRO is an organization of intellectual property professors, lawyers and scientists. The organization aims to promote and maintain strict standards of professional competence in the field of intellectual property including the teaching and research thereof.
Its prestigious roster of officers include:
Chairman: Emma C. Francisco
(former Director General of the IPO)
President: Susan D. Villanueva
(Professorial Lecturer of UP Law on IP)
External Vice-President: Ferdinand M. Negre
(Professorial Lecturer of Ateneo on IP)
Internal Vice-President: C. Risel Castillo-Taleon
(San Beda Professorial Lecturer on IP)
Treasurer: Josephine R. Santiago
(former IPO Deputy Director-General)
Assistant Treasurer: Andrew Ong
(Philippine Judicial Academy)
Secretary: Rhodora Regina Reyes-Rara
Its members come from relevant government agencies and prestigious universities in the Philippines.
PATRICIA A. O. BUNYE INDUCTED AS PRESIDENT OF LES PHILIPPINES FOR 2006-2008
The Licensing Executives Society (LES) Philippines inducted its officers and directors for 2006-2008 on 09 June 2006 at the Tower Club, Makati City, with Patricia A. O. Bunye, a partner of Villaraza & Angangco Law Offices, leading the roster of LES Philippines officers as President.
LES Philippines is the local Society of LES International, a worldwide federation of professionals involved in the transfer of technology, industrial and intellectual property rights. It has won the bid host the 2009 Annual Conference of LES International in Makati City. This is expected to bring in licensing professionals from all over the world and will be an opportunity to showcase the Philippines as an attractive tourism and investment destination.
Bunye is the first woman President of LES Philippines in its 23-year history. She obtained her Juris Doctor degree from the Ateneo de Manila University School of Law in 1993. She is currently the Vice-Chairman of the Communications Committee of LES International. She served as President of the Integrated Bar of the Philippines, Pasay, Parañaque Las Piñas & Muntinlupa Chapter from 2001-2003 and was Secretary of the Integrated Bar of the Philippines, Southern Luzon Region from 2002-2004. Bunye is also an active member of the Legal Committee of the Chamber of Mines of the Philippines.
Also elected for the current term were: Rogelio C. Nicandro (President-Elect), Editha R. Hechanova (VP-Administration/Treasurer), Ferdinand M. Negre (VP-International), Carlo A. Carag (VP-National), C. Risel G. Castillo-Taleon (VP-Public Affairs), Leslie Anne T. Cruz (Secretary), Alonzo Q. Ancheta (Director), Renato G. Calma (Director), Pericles R. Casuela (Director), Celso L. Cruz (Director), Cesar C. Cruz (Director), Ramon S. Esguerra (Director), Alex Ferdinand S. Fider (Director), Lorna Patajo-Kapunan (Director), Llewellyn L. Llanillo (Director), Augusto S. San Pedro (Director) and Antonio R. Velicaria (Director).
During her term as President, Bunye intends to focus on broadening the membership base of LES Philippines to include company executives, entrepreneurs, university licensors, technology licensing managers, venture capitalists, inventors, technology brokers and consultants, among others. LES Philippines will also focus on partnering with and assisting local universities and research institutions in licensing in areas of advanced science and technology such as biotechnology, electronics, ICT and materials science. Toward this end, LES Philippines will hold licensing fairs to promote the available technologies for licensing. It will also hold regular LES Kapihans to discuss issues in licensing.
The Honorable Antonio T. Carpio, Associate Justice of the Supreme Court of the Philippines, himself one of the founders and Past President of LES Philippines, was guest of honor and inducting officer. In his address, Justice Carpio elucidated on the reforms in the Judiciary, notably the use of technology to facilitate the administration of justice, including the computerization and networking of courts throughout the Philippines, national court clearances, development of the Supreme Court e-library, and proposed changes to the qualifications for MTC judges and the salary amelioration in the judiciary.
Deputy Director General Ireneo M. Galicia of the Philippine Intellectual Property Office also delivered a message on behalf of Director General Adrian S. Cristobal, Jr.
EDMUND JASON G. BARANDA ACCEPTED AS MEMBER OF FÉDÉRATION INTERNATIONAL DES CONSEILS EN PROPRIÉTÉ INDUSTRIELLE (FICPI)
Edmund Jason G. Baranda, Senior Associate of Villaraza & Angangco, was recently admitted as one of the members of Fédération International Des Conseils en Propriété Industrielle (FICPI).
FICPI is a world-wide organization of intellectual property attorneys in private practice (www.ficpi.org). It has a membership now totaling 4574 representing 82 countries. To ensure each member’s confidence in the caliber of attorneys admitted into the organization, every applicant is subjected to a rigorous “peer adjudication” process.
Before being admitted to the organization, Mr. Baranda attended the 2003/2004 South East Asian Drafting (SEAD) Training Course in Singapore conducted by FICPI and successfully hurdled the examination in drafting patent specifications conducted by the Institute of Patent and Trademark Attorneys of Australia (IPTA) in collaboration with FICPI.
| Frequently Asked Questions (FAQs) on Technology Transfer Arrangements and Voluntary Licensing under the Intellectual Property Code (First of A Series) |
What is a Technology Transfer Arrangement (“TTA”)?
A technology transfer arrangement is a contract or agreement, including renewals thereof, involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except those developed for mass market. (Section 4, Philippine Intellectual Property Code).
Note that the definition actually covers two separate methods of transferring technology. The first portion refers to the transfer of technical “know-how.” While the second portion of the definition refers to the licensing of industrial property rights. This part of the definition effectively encompasses all forms of licensing or assignment of intellectual property rights, whether or not there is a transfer of “systematic knowledge” between the parties involved (i.e. merchandising agreements).
Does the Philippines Require the Registration of TTAs?
As a general rule, TTAs are not required to be registered. (Section 92 of the Intellectual Property Code)
Why then does the Philippine Intellectual Property Office Register TTAs?
By express mandate of the Section 92 of the Intellectual Property Code, TTAs which contain any of the prohibited clauses found in Section 87 of the Intellectual Property Code, or those which do not contain the Mandatory Provisions found in Section 88, have to be registered.
Other agreements that are required to be registered are:
a) Trademark Licenses – which must be submitted to the Intellectual Property Office for recordal under Section 150.2 of the Philippine Intellectual Property Code;
b) TTAs which seek Requests for Exemption from Sections 87 & 88 of the Intellectual Property Code; and
c) TTAs that seek Certificate of Compliance for legal purposes.
What is the effect of non-registration of a TTA?
Under Section 92 of the Intellectual Property Code, the failure to register a TTA in cases where registration is required, renders it “unenforceable.”
Under Philippine Law, contracts deemed “unenforceable” are considered valid and binding as between the parties who entered into it. However, in case there is a breach of the contract, neither party can go to court to enforce the contract’s terms. Thus, an unregistered TTA, being unenforceable, leaves the parties thereto with no remedy to settle any conflict between them.
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