The interest in contractual licensing as an investment option in the Philippines continues to increase. However, the Philippines, as all other member countries adhering to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreements), recognizes that some licensing practices or conditions restrain competition. The said practices and conditions have an adverse effect on trade and may even impede the transfer and dissemination of technology.
Pursuant to Article 40 of the TRIPS Agreement, the Philippines adopted measures to prevent or control practices which are abusive and anti-competitive. These measures are found in the Intellectual Property Code (IP Code) of the Philippines provisions on Voluntary Licensing.
The lecture will provide an overview of the legal framework governing contractual licensing or “voluntary licensing” of intellectual property rights in the Philippines, including applicability of anti-trust laws. The term technology transfer arrangement, subject of voluntary licensing, will be defined. The lecture will discuss the Prohibited Clauses which should be removed from the license agreement as they are presumed to have an adverse effect on competition and trade. It will also cite the Mandatory Provisions that must be incorporated in the agreement and complied with. There will be discussions on whether the registration of the license agreement is required and the effect of non-registration. The innovative solutions to ensure the compliance of the license agreement and the requirements to be exempted from the IP Code will also be discussed.
Alex Ferdinand S. Fider is a Senior Partner and Head of the Intellectual Property Department of the Philippine law firm Angara Abello Concepcion Regala & Cruz Law Offices. He obtained his Master of Laws (1990) from Queen Mary and Westfield College (now Queen Mary College), University of London and Bachelor of Laws (1986) from the University of the Philippines. He assists foreign and local clients on matters involving intellectual property (IP) rights in the Philippines. His practice includes Industrial and Intellectual Property Law, Franchising and Licensing, Data Privacy Law, Cybercrime and Enforcement of Intellectual Property Rights. He has advised international organizations including the International Rice Research Institute, the Japan Export Trade Organization and the World Fish Center. His publications include Philippine Chapters of authoritative textbooks published by Kluwer Law International as part of the Max Planck Series on Asian Intellectual Property Law; and, the Applied Research Center for Intellectual Assets and the Law in Asia (ARCIALA), Singapore Management University. He is listed among the top 100 lawyers in the Philippines by the publication Asia Business Law Journal. He teaches Intellectual Property Law in the University of the Philippines College of Law and the De La Salle University College of Law.
Kung-Chung LIU holds an LL.B. and LL.M. from National Taiwan University and a Doctorate from the Ludwig Maximilian Universitaet (University of Munich). He was a Research Fellow at Academia Sinica, Taiwan until 2017. In 2003, he was a Visiting Professor at the Faculty of Law of the National University of Singapore and a Visiting Senior Research Fellow for the IP Academy of Singapore. Professor Liu has served as one of the founding Commissioners of the National Communications Commission in Taiwan between 2006 and 2007. In 2014-15, he was a Visiting Professor at the School of Law, Singapore Management University, and the Founding Director of the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA). In addition, he has been co-appointed Professor at the Renmin University, China (2017), and the Graduate Institute of Technology, Innovation & Intellectual Property Management, National Chengchi University, Taiwan (since 2010).
Last updated on 18 Mar 2019 .