Intellectual Property Policy Development:

Suggested Outline of Scope and Contents

Prepared by:

Adrian Sablan
Intellectual Property Office of the Philippines

1. Preface/Policy Statement

This states the corporate philosophy or core values of the institution, including its vision and
mission.

2. Policy Purpose

This states the purposes why this IP Policy is developed and promulgated for all the constituents
of the institution to uphold and abide by, in pursuit of the vision and in consonance with the core values
of the institution.

3. Definition of Terms

This portion contains all important terms used in the body of this IP Policy. Technical terms have
to defined in the context that they are used in the body of the document (example: “due diligence”;
“sponsored research agreement”; “visiting professor”, “researcher”, “foreground IP”, etc.). Moreover,
all other terms whose concept or usage needs to be clearly understood by all those who will have a
stake to this IP Policy have to be included and defined accurately in this portion.

4. Scope and Coverage of the Policy

This portion clearly states to whom this IP Policy, when promulgated, shall be applied (i.e.
institution’s faculty, researchers, students, other personnel, etc.). It may also clearly state who else shall
be covered by the implementation of this IP Policy (i.e. partners, clients, stakeholders, etc.).

Also, this portion may specify all matters or topics that are covered in this IP Policy (i.e. all of the
types of intellectual property, trade secret, confidential information, etc.).

This also may include the rights covered by this IP Policy such as those granted under the IP
Code, Plant Variety Act, etc.

5. Governance and Operation

This portion states how the provisions in this IP Policy may be implemented. It may state the
establishment and operations of an IP Management Office, or Technology Management and Transfer
Office or its equivalent, specifying the personnel who will run this office including their specific
qualifications and functions.

1IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

6. IP Creation

This portion may state how the institution shall pursue innovation and the creation of IP. It may
emphasize, among others:

6.1 Who may engage in the creation of IP;

6.2 The use of prior art search and patent information documents before commencing the
research process; and

6.3. Submission to the IP Management Office of the proposal for review of the search processes
conducted as well as for determination of potential IP to be generated.

7. Research Contracts

This portion may include provisions when the institution should enter into research contracts,
commissioned research, collaborative research, sponsored research whether with government financial
institutions or with private funding bodies (i.e. say, USAID, JICA, ADB, CIDA, etc.) or with private
industries or companies. Provisions may include who from within the institution may enter into research
contracts as well as the protocols to be observed in entering into such contracts or arrangements with
external entities.

A provision may also be included on who among the parties to the research agreement shall
have the right to publications of research outputs.

8. IP Protection

Discussions under this clause may include why IP protection is important for the institution and
the IP creators. Provisions under this clause may include the commitment of the institution to protect
the intellectual creations of its stakeholders (i.e. faculty, researchers, students, partners, etc.). This may
also include who shall have the authority or obligation to initiate protection procedures. Also, a
provision may be included stating that IP creators from within the institution are obliged to disclose
their inventions upon discovery or determination of potential invention, as well as the procedures that
may be observed in disclosing inventions.

As regards research agreement, provisions may also be included on who shall have the right to
initiate protection and who shall have the obligations to shoulder expenses related to protection
procedures.

9. Ownership of IP and Rights of Use

This clause may include several provisions such as among others:

9.1 Who shall own the IP created by faculty or researchers?

9.2. Who shall own the IP generated from research agreements or research projects funded
either by government institutions of private funning bodies?

2IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

 9.3 Who shall own the IP created by the students (i.e. undergraduate students, graduate
students, post-graduate students)?

9.4 Who shall own the IP generated by, say, visiting professors?

This clause may also cite national laws governing ownership of IP such as RA 10055 and its
Amended Implementing Rules and Regulations. Concepts such as “substantial use of resources”, “sole
ownership”, “joint ownership” may be discussed (but should be clearly defined in the “Definition of
Terms”). Provisions should be clear about when the institution can claim sole or absolute ownership of
the IP created.

As regards research agreements, this clause may discuss provisions on ownership of

“foreground IP”, “background IP”, “serendipitous IP”.

Provisions may also be included on when a student may own the IP as well as if the thesis or
dissertation adviser may be a co-author or co-creator of the IP subject to student agreement.

10. Invention Disclosure

This may discuss the importance of invention disclosure as well as the procedures in disclosing
inventions. This may also discuss how the institution may evaluate the patentability of the IP duly
disclosed and when the IP is found to be patentable, how the institution may engage the inventor in
proceeding to IP protection.

11. Publication, Non-disclosure, Trade Secrets

This clause may include provisions on what may be published and when. This may also discuss
concepts like “premature publication”, “premature disclosure”, “enabling disclosure”, and “confidential
information”.

12. Commercialization/Utilization of IP

This clause discusses what commercialization shall entail, its benefits and risks. Provisions may
include who shall initiate commercialization procedures and when. Concepts pertaining to assessment
of the commercial value of the IP may be mentioned, including the modes of commercialization such as
licensing, establishment of startup, or spinoff. If to pursue licensing, types of licensing to be pursued
that are beneficial to the institution may be discussed i.e. exclusive licensing, non-exclusive licensing,
sole licensing, etc.

In case of a research agreement, provisions may include on who may be authorized or have the
obligation to initiate commercialization proceedings.

A provision on IP assignment may be included should the inventor or IP creator decide to

transfer ownership, or when a student who invented the IP graduates from the institution.

3IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

13. Incentives and Sharing of Revenues

This clause discusses how revenues generated from commercialization may be enjoyed by the IP
creators as well as the institution. Laws that allow sharing of revenue streams may be cited (i.e. RA
10055 and RA 8439). Also, an actual sharing scheme may be included showing the percentage of the
revenue pie that should go to, say, the IP creator/s (primary or lead creator, etc.) or the institution. This
may also include the manner of payment of revenues to those who are entitled to the revenue shares.
Provisions may also include how a student who leaves the institution may be entitled to a share of
revenues after having assigned ownership of the IP to the institution.

14. IP Portfolio Maintenance

This clause may include provisions on how the IP portfolios may be maintained. In case of a
research agreement, provisions should be clear on who shall shoulder the costs of IP maintenance.

15. Traditional Knowledge and Genetic Resources

If traditional knowledge or genetic resources are generated, provisions should be clear on how
these assets may be protected and how these may be appropriated in favor of the originators, owners,
creators, and all other stakeholders.

16. Awards and Incentives

This clause may include provisions that may encourage IP creators or incentivize their work.
Provisions may include how the inventors may be recognized or rewarded in monetary terms in case
their inventions obtain patents. The amount and where it will be sourced from may be specified.

17. General Obligations, Conflicts of Interest and Conflicts of Commitment

These are general statements or provisions that will bind all parties should conflicts arise from,
or as a result of, the implementation of this IP Policy.

18. Dispute Resolution

This is a statement on how potential disputes may be resolved or settled.

19. Amendment

This is a statement that this IP Policy is open to amendments after a period specified therein.

4IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

 Points to Consider in Writing the IP Policy

1. Determining IP Ownership

• Consider national laws.

• Consider established best practices.
• Consider circumstances when institution should own the IP.

2. Ownership Models

 Institution Ownership Model

 Inventor Ownership Model

3. Circumstances when institution should own the IP

• Publicly funded research

• IP generated through substantial use of institution’s resources
• IP generated in the context of collaborative or joint research projects
• Scholarly works within the scope of work of employee

4. Why institution should own IP

 Ownership and management of IPRs by institution facilitates professionalization of knowledge

transfer activities
 It creates incentives for institution to promote and support knowledge transfer
 Costs of patenting too high for individual researcher to fund
 Fragmentation of ownership will be avoided, thus technology transfer will be cohesive

5. On substantial use

Use is substantial if:

 Use of institution resources is important for the creation of the IP.

 Resources used would cost an employee X pesos if paid out of pocket.
 Using committed time of institution

6. On when use is NOT substantial

• Incidental or occasional use of institution’s facilities or resources

• Extensive use of a facility commonly available to employees, students, visitors i.e. library
facilities

5IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

 • Employee pays institution for fair market value of facilities as commonly charged to clients
• If not using institution’s committed time

7. On student/learner ownership

• Where students/learners do not use substantial resources of institution, they are to own the
copyright to their theses, dissertations or scholarly publications.
• Adviser may be co-author provided he or she has substantial input into the scholarly work and
that the student agrees to such an arrangement.
• When student/learner graduates, he has to assign ownership of IP to institution, subject to
certain terms.

8. On research contracts or agreements

In drafting research contract, the following may be considered:

 Background IP
 Foreground IP
 Serendipitous IP
 The need to be able to use the background IP in commercializing the product
 Institution desire to use foreground IP for academic purposes
 Desire of parties to publish research results
 Desire of parties to patent foreground IP

9. On invention disclosures

IP creators are to disclose their creations after which involves three fundamental aspects:

 Administrative – Disclosure is analyzed for IPRs that may be owned by other by virtue of
sponsorship or inventorship
 Invention – Disclosure is evaluated for the quality of the invention, potential value, economic
feasibility
 IP – Disclosure is analyzed for possibility of IP protection

10. On patent protection

If to file for patent protection, consider:

 Whether the invention is patentable

 Technical functions
 Commercial potential
 Whether further research and development is needed

6IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

  Whether invention may have little commercial value but has great social impact

11. On commercialization of IP

If IP has been evaluated to be commerciable, institution may consider the following modes:

 Licensing (exclusive, non-exclusive, sole, cross)

 Assignment
 Spin-off
 Joint venture

12. On sharing of revenues

Incentives are crucial in enhancing the effectiveness of knowledge transfer. Incentives are to be shared
with the following entities:

 Creators – Researchers who are primarily involved in creating the IP

 Enablers – May not be directly responsible for the creation of the IP but contributed support
role, carrying out instructions and performing standard procedures
 Others – Other stakeholders who one way or another may have contributed in the process of
creating the IP

13. On legal basis of revenue sharing

• Pursuant to Section 7b of Republic Act 8439, or the “Magna Carta for Scientists, Engineers,
Researchers and other Science and Technology Personnel”, institution and its researchers may
be allowed to share among themselves the revenues accruing from the commercialization of an
IP.
• Sixty percent of the accrued revenues shall be for the benefit of the national government, while
40 percent shall be for the benefit of institution and its employees, or the personnel involved in
the creation of the IP.

14. On sample of revenue sharing arrangement

Net Cumulative Return (NCR)* Creator’s Reward (% of NCR) Department Share (% of NCR) Institution Share (%
of NCR)
PHP 100K or less 60% 20% 20%

Over PHP 100K 40% 40% 20%

*Net Cumulative Return is the money received by institution in relation to exploitation of the relevant IP minus
payment of fees, royalties, tax, travel, production, development costs, legal fees, expenses of registration or other protection.

7IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

 IP Policy Checklist
(Adopted from the Word Intellectual Property Organization)

IDENTIFYING ESSENTIAL POLICY ISSUES

Before you start writing any Policy, be sure to gather all the information you need to develop an
accurate document. This includes:

 The Institution’s procedure for drafting policies

 The Institution’s mission
 Financial resources
 Characteristics of the Institution’s research and IP
 Rules on ownership
 Infrastructure
 Rules on IP management and commercialization
 Incentives

Compatibility with the Institution’s Mission and Values

 What is your Institution’s mission and overall modus operandi? Is it driven by purely
academic concerns or can it accommodate IP commercialization goals? What if the
commercialization goals are tied to the widest possible dissemination of the Institution’s
knowledge and technology? What are your Institution’s priorities: teaching, knowledge
creation, research, humanitarian and philanthropic achievements, social and economic
development of the region?
 Is the Institution’s mission compatible with commercialization of IP?
 Is senior management in agreement with the goal of IP commercialization?
 Does the Institution’s IP strategy balance commercial return and public benefit? If so,
how?

Institution’s Research and IP

 Is the Institution’s research oriented towards the needs of society/local industry?

 What IP does the Institution own? What types of IP does it create? What IP does the
Institution use? Does the Institution develop/use software or databases? Does the
Institution receive, possess, and transfer biological material?
 What copyright materials are created and/or used in the Institution? How are these
materials used? How is fair use applied?
 Do you have any licenses for the ongoing use of digital publications or digital
databases? If so, how are they managed?
 Do you have access to relevant physical or digital information via networking or
partnership?
 What IP will be most commercialized?

8IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

Ownership

 Does your Institution have the right to retain title to (own) IP generated in the
performance of government grants and contracts?
 What is your Institution’s position on ownership of IP created:
o by faculty/trainers, staff, employees
o by students/learners
o by visitors
o in the case of external sponsorship and research collaboration
 What is your Institution’s position on ownership of
o copyright works
o industrial property (e.g. inventions)
o know-how?
 What rights does the government have on IP generated at universities and R&D
institutions? Is there an obligation for the Institution to report to the Government?
 What is your Institution’s position on open access, open innovation, publication, and
collaboration?

Infrastructure

 Who is/will be responsible for IP management and knowledge transfer?

 Does your Institution have a unit (IP Management Office) that is responsible for
evaluating inventions’ economic prospects and deciding whether to protect and
commercialize IP?
 If so, does the staff of such unit possess the necessary skills in order to carry out their
tasks effectively? Do they have business skills?
 If not, do the scope and volume of exploitable research results justify the establishment
of an IP Management Office? In this regard, should you consider pooling resources with
other institutions?
 Can you set up such a unit and do you have sufficient funds for making it operational?
Have you considered mechanisms to fund the unit sustainably?

IP Management and Commercialization

 What IP management procedures are followed by the Institution?

 What are the possible modes of commercialization? Does the Institution allow exclusive
licensing? Assignment of IP? Spin-offs? Joint Ventures?
 How are revenues from research commercialization shared among faculty, university,
government and other stakeholders?
 Do you have model contracts (e.g. IP transfer, material transfer, option, licensing), model
IP clauses (e.g. in employment contracts, collaboration contracts, research contracts)?
 Do you use standard confidentiality clauses in employment contracts (crucial for non-
disclosing invention/know-how)?
 Will the Institution be able to count on an effort on the part of the researcher/inventor to
assist in IP protection and further development?
 Are your researchers obliged to keep records or laboratory books of their research,
(crucial for authorship, co-ownership issues)?
 Does the Institution have some partnerships with industry? What is the scale of
involvement of the private sector?

9IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

  How is the Institution’s interaction with industry initiated and structured? Does the
Institution actively pursue links with industry? Or do most contacts between the
Institution and companies happen through the faculty, inventors/researchers?

Incentives

 How do you intend to support the quality of scientific output?

 How do you intend to support IP-based technology development?
 What incentives do you intend to put in place for academics and researchers 1 to remain
involved in the commercialization of their research outcomes? For example:
o awarding property rights to the inventor or IP creator;
o benefit sharing - royalties and other financial benefits resulting from the
commercialization of IP;
o access to equity in spin-off companies;
o academic promotion criteria taking into account activities such as patenting,
licensing, research contract, mobility and collaboration with industry;
o support mechanisms, such as staff and resources, to assist inventors in the early
stages of the new opportunity’s development;
o leave of absence and consulting privileges that allow the academic to pursue
his/her commercial opportunities, while keeping his position as a faculty member
intact.

DRAFTING THE POLICY

5.1 THE TRUE NATURE AND PURPOSE OF A POLICY

Although the elements included in an IP Policy will vary depending on the needs of an
Institution, it is important to understand the true nature of a Policy.

“Good Practice” in the Policy Area

 Uncomplicated - A policy focuses on general statements, not details. No policy will cover
every contingency, nor should it.
 Legally binding - Good policy conforms to all relevant laws and regulations. Consult legal
counsel to get advice on the laws that govern IP in your country.
 Clear - A policy is for researchers and students, not for lawyers. However it includes
legal rules and definitions. It should be drafted as clearly as possible in a “user-friendly”
manner.
 Core values - Good policy acknowledges institutional culture and values. The IP Policy
should accommodate, and refer to, the Institution’s mission and philosophy.

 Comprehensive - An IP Policy will usually work together with other Institution policies
and procedures to achieve the overall goals of the Institution. These should be linked or
referenced when relevant.
 Tailor-made - When developing IP Policies, Institutions frequently turn to other
universities or research institutions as models. Reviewing other policies is good practice,

10IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020

 (see below: the WIPO Database of IP Policies) but it is unwise to partially or wholly
adopt them for one's own use. In the end, an Institution’s IP Policy must be rooted in its
specific mission, history, culture and values, research capability, regional environment,
and resources available.
 Responsible commercialization - The intention is to underline the role of the Institution to
make a return on investment to society by making sure that important discoveries get
commercialized.

11IP Policy Content Guide and Checklist/By Adrian Sablan/IPOPHL/25Nov2020