If you’re planning to run any kind of business in the Philippines, it should be registered in any government agency where you can secure all the necessary licenses essential for your business to operate legally.
This is also true with intellectual property rights in which the licensing agreements, assignment and transfer must be recorded with the IPO or Philippine Intellectual Property Office.
When making the licensing agreements, it should include the mandatory provisions:
- The Philippine has been implementing laws that govern the interpretation of the agreement Litigation shall be held in the proper court where the main office of the licensee is located;
- Any plan to innovate the processes and techniques related to technology should be done within the period of technology transfer arrangement.
- If there’s a need for technology transfer arrangement arbitration, it shall be held in the Philippines or any neutral country. The procedure and rules or arbitration set by the United Nations Commission on International Trade Law or the International Chamber of Commerce shall be applied;
- The licensor is required to pay all the taxes implemented in the Philippines related to technology transfer arrangement.
The technology transfer agreements in the Philippines are regulated by the Intellectual Property Code. The agreements or contracts involve the transfer of systematic knowledge to manufacture a product, management contracts, application of processes as well as the transfer, licensing and assignment of intellectual property rights in any forms.
The Intellectual Property Office is authorized to determine if the technology transfer agreements follow include the mandatory and prohibited clauses. Submitting a draft of TTA to the IPO is recommended so that the latter can review the content of the agreement.
The IPO will release the findings within 7 to 10 business days. Undergoing to pre-clearance process gives the contracting parties the chance to know if the agreement abides the TTA regulations.
Trademark licenses should be recorded with the IPO against a pending application or an existing registration. When applying for trademark license, the agreement should include the following:
- It should comply with the IP code provisions that entails the mandatory and prohibited provisions
- The licensee should allow the licensor to control the quality of goods and services in which the mark is used
- The license should be duly signed by both parties and if it is executed in other countries, it should be notarized
After reviewing the trademark license contract, the IPO’s Bureau of Trademarks will submit the contract to the Documentation, Information and Technology Transfer Bureau of the IPO for the clearance. Once the DITTB has issued a certificate confirming that the license contract complies with the IP Code provisions, only then that the trademark license will be recorded in the Bureau of Trademarks.
Franchising license agreements
Franchise licensing agreements is similar to TTAs. The clauses included in the franchise agreements should be in accordance with the technology transfer regulations. On the other hand, if the franchising agreement follows the IPO provisions, then there’s no need for it to be registered with the IPO.