INTELLECTUAL PROPERTY RIGHTS
AND THE
TRANSFER OF TECHNOLOGY
FROM RESEARCH ORGANIZATIONS
TO INDUSTRY
Maripaz L. Perez
Department of Science and Technology
WINDS OF CHANGE
1. Approval of the National Science and Technology Plan
(NSTP) CY 2004-2010
2. Paradigm shift towards development of critical mass of
commercially oriented R&D expertise
3. Expanded programs of assistance for SMEs on
technology upgrading / technical assistance for
increased productivity and thus competitiveness both in
local and foreign markets
Department of Science and Technology
NSTP STRATEGIC PROGRAMS
1. Small Enterprises Technology Upgrading Program
(SET-UP)
2. Technology Incubation
Program (TECHNICOM)
for
Commercialization
3. e-LGU
Department of Science and Technology
SET-UP provides packages of assistance
to
facilitate
technology
assessment,
acquisition and application by SMEs
Presupposes that commercially profitable
technologies (both local and foreign) are
available and accessible
Paradigm shift towards commercially
oriented R&D expertise
Department of Science and Technology
TECHNICOM is a comprehensive
and unified strategy to enhance
technology
development
FOR
commercialization
Focus on priority sectors with high
comparative advantage and chance
to establish niche for SMEs
IPR concerns on inventorship
• Licensing / Tech Trans Agreements
• Performance Contracts
Department of Science and Technology
PRODUCTIVITY CONSULTANCY SERVICES
•
send experts to work directly with SMEs in the
production floor
•
facilitated direct contract research efforts with industry
•
very favorable feedback from SMEs
Department of Science and Technology
CASE STUDY 1
Transfer of Technology on Herbal Medicine to Local
Pharmaceutical Companies
•
Products:
•
Lagundi tablet as cough remedy and control for
asthma
•
Sambong tablet as diuretic and for urolithiasis
•
Yerba Buena tablet as an analgesic
•
Tsaang gubat tablet for treatment of gastro-intestinal /
biliary colic
Department of Science and Technology
CASE STUDY 1
Transfer of Technology on Herbal Medicine to Local
Pharmaceutical Companies
•
Researchers:
•
National Integrated Research Program on Medicinal
Plants (NIRPROMP)
•
consortium of leading scientists and researchers
from UP Manila, UP Diliman and UP Los Baños
•
Chair:
•
started 1977
Dr. Nelia Cortes-Maramba
Department of Pharmacology
College of Medicine
UP Manila
Department of Science and Technology
CASE STUDY 1
Transfer of Technology on Herbal Medicine to Local
Pharmaceutical Companies
•
Funding Institution:
•
•
DOST - PCHRD
Historical Experience:
•
In 1979, PCHRD passed on for free the technologies
to the Department of Health – Traditional Medicine
Unit’s four (4) herbal processing plants
•
In 1995, three (3) pharmaceutical companies
•
To date only one (1) aggressively penetrated the
market
Department of Science and Technology
CASE STUDY 1
Transfer of Technology on Herbal Medicine to Local
Pharmaceutical Companies
•
Terms:
•
Five (5) years
•
Technology Transfer Fee
PhP 70,000 for domestic market
PhP 100,000 for export market
Royalty
Two percent (2%) of Gross Domestic Sales
Three percent (3%) of Export Domestic Sales
Pascual Lab. shall be responsible for the selection,
registration and maintenance of all trademarks and
trade names
•
•
•
Updates:
Licensing Agreement renewed for another
five (5) years starting 28 December 2000
Department of Science and Technology
CASE STUDY 2
Transfer of Canned Laing to Local Food Processor
•
Technology: Development of Instant Mixes for Philippine
Ethnic Foods
•
Researchers:
•
FNRI / DOST
•
Funding Institutions:
•
•
• PCIERD
• FNRI
• TAPI
IP Protection: None
Licensee: Moonbake
Department of Science and Technology
CASE STUDY 2
Transfer of Canned Laing to Local Food Processor
•
•
Historical Experience:
•
Launched in 1999 during the First Asian Ethnic Food
Festival
•
Currently exported to the Middle East, Canada,
Taiwan, Australia, Japan and the United States
•
Developed new variants already
Terms:
•
Three (3) years
•
Technology transfer fee (PhP 40,000)
•
Royalty
•
3% of gross sales
Department of Science and Technology
CASE STUDY 3
Transfer of CNSL-based Chemical Products to Local Trader
•
•
Products:
•
CNSL-based phenolic adhesive for wood products
•
CNSL-based resin varnish
Researchers:
•
FPRDI / DOST
•
Funding Institutions:
•
•
• PCIERD
• FPRDI
• DOST
IP Protection: Patent Pending
Licensee: Chiko Lim
Department of Science and Technology
CASE STUDY 4
Transfer of Hydrogel to ACTA Internatural Laboratories
•
Technology: Semi-commercial Production of PVP-Carageenan
Hydrogels
•
Researcher:
•
•
PNRI
Funding Institutions:
•
•
•
PCASTRD
PNRI
DOST
•
IP Protection: Patent Pending
•
Licensee: ACTA Internatural Laboratories
Department of Science and Technology
CASE STUDY 4
Transfer of Hydrogel to ACTA Internatural Laboratories
•
Terms:
•
ACTA Internatural Laboratories funded animal testing and
BFAD registration
•
License fee currently being negotiated
Department of Science and Technology
IP RELATED ISSUES
1. Low awareness / appreciation of IPR by both the
researchers and the private sector
•
Question on IP protection for government funded
researches
•
Breakdown on negotiations
•
Ownership of inventions
Department of Science and Technology
IP RELATED ISSUES
2. Minimal utilization of IP assets as a tool for
technology development and to establish a
competitive edge in the global market
•
DOST IP assets 29, 8 of which obtained only
between 2000-2002
•
During the same period, patent applications totaled
30 out of 98 filed since 1988
Department of Science and Technology
IP RELATED ISSUES
3. Absence / lack of appropriate mechanisms to
enhance the utilization and commercialization of
publicly funded researches
4. Weak / inadequate policies for IP protection and
utilization of benefits preventing a more vigorous
transfer of technologies from government research
organizations
Department of Science and Technology
ENABLING POLICIES
1. R.A. 8439 – Magna Carta for Scientists
•
•
•
passed 1997
royalty payments
consultancy assignment
2. R.A. 7459 – Inventors and Inventiveness Act of
the Philippines
•
•
•
passed 1993
financial packages (low interest rate)
prototyping assistance
3. IPR Protection Assistance Program
Department of Science and Technology
ENABLING POLICIES
4. Scientific Career System
•
patents as part of performance
5. National Science and Technology Plan
•
•
approved 2003
financial incentives for technology acquisition /
development
6. Intellectual Property and Technology Transfer
Mechanism (IPTM)
•
•
adopted 2002
limited in-house capability
Department of Science and Technology
Thank You
Department of Science and Technology