TECHNOLOGY TRANSFER PROTOCOL

OF THE DOST-RDIs, as amended

DOST Administrative Order No. 17, Series of 2019
Dated September 9, 2019
 OVERVIEW
• Rationale
• Declaration of Policies and Principles
• Scope
• Definition of Terms
• Functions of Technology Licensing Offices (TLO)
• Identification, Disclosure and Protection of Intellectual Properties
• Technologies/IPs/IPRs for Technology Transfer or Commercialization
• Technology Transfer Mechanism
• Monitoring and Evaluation
• Revenue Sharing between RDI and Researcher(s)
• Incentives for the TLO
• General Provisions
 SCOPE
The Protocol shall cover the identification, disclosure
and protection, management, promotion, dissemination,
transfer or commercialization by the RDIs of IPs and/or
IPRs generated from R&D funded by the government.
FUNCTIONS OF TECHNOLOGY LICENSING OFFICES (TLO)
a. Assist in the prior art search or patent search and other patent information
services;
b. Provide assistance in technology / IP / IPR protection;
c. Undertake technology / IP / IPR licensing, transfer or commercialization
negotiations;
d. Provide technology / IP / IPR assessment service, including valuation.;
e. Promote technology / IP / IPR ready for commercialization;
f. Maintain database of technology / IP / IPRs to ensure traceability;
g. Manage technology / IP / IPR, including the revenues or the transferred and
commercialized technology / IP IPR; and,
h. Perform other activities to protect, transfer and commercialize technology/IP/IPR.
IDENTIFICATION, DISCLOSURE AND PROTECTION OF
INTELLECTUAL PROPERTIES
1. RDI executes Research Agreement with Researcher/s
2. Researcher/s submit to RDI prior art search or patent search results
3. Researcher/s identify and disclose IP to Head of RDI
- with Invention Disclosure Form (IDF) and Deed of Assignment
4. RDI makes confidential disclosure to Head of GFA
- within 3 months from confidential disclosure by Researcher/s to
Head of RDI
- submit to TAPI complete disclosure documents
5. RDIs, in coordination with TAPI, prepare documents for IP application
IDENTIFICATION, DISCLOSURE AND PROTECTION OF
INTELLECTUAL PROPERTIES
6. RDI files IP application
- within 30 calendar days from confidential disclosure by RDI to GFA
7. No public disclosure which would constitute prejudicial disclosure or
disclosure of confidential information
- If there is public disclosure, IP application should be filed within 3
months from that date
8. Execution of Confidentiality Agreements
9. RDI notifies GFA of filing of IP applications and submits annual reports
on the progress of IP applications
IDENTIFICATION, DISCLOSURE AND PROTECTION OF
INTELLECTUAL PROPERTIES
10. RDI informs GFA of all IP applications, licenses, and assignments
RDI submits annual reports on the progress of IP/IPR commercialization
efforts, technology transfer agreements, intellectual property management
reports
11. In case of joint funding, RDI submits to all concerned GFAs copies of
agreements
12. RDI informs GFA of IP protected solely as undisclosed information or trade
secret
13.Rules on disclosure for the protection of IPs with respect to biodiversity,
genetic resources or traditional knowledge and indigenous knowledge and
systems
TECHNOLOGY TRANSFER MECHANISM
Identification of Potential Technologies/IPs/IPRs for
Transfer or Commercialization

a. Proof of completion of the R&D project generating the technology/IPs

- documented technical report endorsed and submitted by the concerned researcher (s)
or R&D division; results from clinical trials and other relevant tests; sample prototypes
of the product, process, device or equipment; and documented TRC reports.

b. Acceptance of the technology/IP for patent application, if the technology is patentable,

or the grant of patent

b. Documented assessment from the TLO on selected technology and the recommended
mode/s of transfer.
TECHNOLOGY TRANSFER MECHANISM

Criteria for Selection of Technology Transferee

a. Existence, legal personality and track record;

b. Financial capability of the Technology Transferee and its ability to sustain
the production;
c. Competitive position of the Technology Transferee; and
d. Compliance with legal, statutory, business and transfer/
commercialization requirements.
TECHNOLOGY TRANSFER GUIDING PRINCIPLES
AND MODES

Exemption from FOR process

In instances when the GFA or RDI resorts to other modes of
commercialization, subject to the limitations as provided by law, such
as public bidding, direct negotiation (R.A. No. 9184), build operate
and transfer scheme (R.A. No. 7718), and such other similar and/or
analogous modes, the FOR shall not be required.
TECHNOLOGY TRANSFER GUIDING PRINCIPLES
AND MODES

Activities not considered as commercialization

a.government extension programs;
b.training services;
c.public good, which shall be defined and determined by the RDI;
d.manufacturing for pre-commercialization activities, in which
case, a limited manufacturing license is issued; and
e. other analogous cases as may be determined by the RDI.
TECHNOLOGY TRANSFER GUIDING PRINCIPLES
AND MODES

Technology Transfer Agreement

a. Letter of Intent
b. Consultative Meetings/Negotiations
c. Ocular Inspection or Conduct of Technology Needs
Assessment (TNA)
d. Preparation of the Draft Agreement
e. Secure FOR and Written Recommendation
f. Signing or Execution of Agreement
TECHNOLOGY TRANSFER GUIDING PRINCIPLES
AND MODES

Establishment of Spin-off Firm by the Researcher-Employee

The RDI's researcher-employee may establish or participate in a
spin-off firm to commercialize or pursue commercialization of the
IPs and/or IPRs generated from the R&D funded by the government.

Submit Letter of Intent and Business Plan

Section 12
Researcher – Employee:
Creating, owning, controlling, or managing Spin-off Firm

Accepting employment as an officer, employee, or

Consultant in the Spin-off Firm
Section 12
Leave of absence, whenever applicable
One (1) year
Renewable for another year
Total period not exceeding two (2) years, signifies in writing
Included in computing the length of service for retirement
Not included for commutation of leave credits
Not earn leave credits
Not affect security of tenure or seniority rights
Access to RDIs’ laboratory facilities
• Subject to fees and regulations
Section 13
Detail or Secondment

Subject to "Magna Carta for Scientists, Engineers,

Researchers and other S&T Personnel in the Government"
Section 14
Management of Conflict of Interest
(a)RDIs shall ensure that its researchers are made fully accountable for their
research and that commercial objectives do not divert them from carrying out the
RDI's core research program;
(b)Heads of RDIs should ensure that where researchers have any direct or indirect
financial interest in a spin-off company; they shall not act on behalf of the RDI in
transactions with that company;
(c)Where researchers of RDI are nominated as non-executive directors to the
Board of a spin-off company or existing company in which the same RDI holds an
equity stake, they should have a clear duty to ensure that the RDI's interests are
not compromised by their role; and
(d)RDIs should take steps to ensure that collaborative undertaking with a spin-off or
existing company is governed by a formal written public agreement.
REVENUE SHARING BETWEEN RDI AND RESEARCHER(S)

Distribution of Share among Researchers

a. For technologies/IPS/IPRs with only one researcher, one hundred percent
(100%) shall be vested on the sole researcher;
b. For technologies/IPS/IPRs with two researchers, sixty percent (60%)
shall be given to the main author/researcher and forty percent (40%) to
the co-researcher; and
c. For technologies with three or more researchers, forty percent (40%) shall
go to the main author/researcher and sixty percent (60%) shall be
distributed among the other researchers.
REVENUE SHARING BETWEEN RDI AND RESEARCHER(S)

Duration of Payment
a. Researchers of technologies/IPs/IPRs with or without protection shall
continue to receive their share within their lifetime for as long as there are
technology fees, royalties and revenues derived from the transfer or
commercialization of the technology/IP/IPR;
b. Researchers, whether regular or contractual, who have retired or have
severed their employment ties with DOST shall continue to receive their share
within their lifetime for as long as there are royalties and revenues derived
from the commercialization of the technology/IP/IPR;
c. In no case shall the researcher assign, convey, or transfer his/her right,
title, or interest in and to the share in royalties.
INCENTIVES FOR THE TLO
a. The RDI may accord their staff with incentives consistent with existing
laws to sustain efforts in identifying valuable IP and/or in pursuing IP
commercialization;
b. The RDI should clearly identify the composition of the research team and
execute the corresponding research agreement with its research staff. The
technology transfer protocol shall include provisions on the form and
manner of granting incentives, which incentives should not be taken from
the researchers’ share in the royalties;
c. The RDIs shall determine the form and manner of granting incentives; and
d. The staff may not only include researchers, but also technology licensing
officers and others involved in the identification of valuable IP and/or
pursuing IP commercialization.
THANK YOU!