Technology Transfer and Business Development Office TTBDO Office
Technology Transfer and Business Development Office (TTBDO) Office of the Vice President for Academic Affairs (OVPAA) University of the Philippines Technology Transfer Clinic September XX, 2016 UP-XXXX Cedrik Ben A. Gayares Inventions Patents and Tech Management Officer
Fairness Opinion Report • statement expressing the opinion of the body as to the fairness to the GFA of the proposed transaction, particularly its financial terms. • The report shall include, but not be limited to, a review and analysis of the proposed transaction, financial statements, industry information, economic conditions and assumptions used therein and a comparison of similar transactions (Rule 11. Sec. 1, IRR of Technology Transfer Act (Republic Act 10055))
FOR Process Flow Pre-Licensing Preparations (TTO) Licensing Negotiations (TTO) Drafting of Fairness Opinion Report Request (TTO) Review (RDI Legal) and Signing of Licensing Agreement Evaluation for the Fairness Opinion Report Request (FOB) Appointment of Fairness Opinion Board Members (DOST) Implementation of Licensing Agreement
Pre-Licensing Preparations c/o UP Inventors and CU-TTBDO IP Registration Reduction to Practice of Invention Conduct Field Trials & Market Validation Fulfil gov’t regulatory requirements for products/services (ex. FDA approval) • Shortlist and contact potential Licensees • •
Outline of Fairness Opinion Report Request SECTION I: PROPOSED TRANSACTION • Overview of the Commercial Model/Transaction • IPs and IPRs covered by the Transaction • Overview and Objectives of the Project that developed the IP and IPR's • Overview of the Product/Service • Market Validation and Comparative Pricing for the Product/Service
Outline of Fairness Opinion Report Request SECTION II: VALUATION REPORT I. Offer by Licensee vs. Suggested Royalty Rates II. Recommendations by Licensee on Suggested Royalty Rates and other additional benefits such as Profit share and Capability building • • • 25% rule Published standard rates NOTE: For DOST-funded tech, DOST-TAPI can be tapped for valuation assistance
Outline of Fairness Opinion Report Request SECTION III: DUE DILIGENCE REPORT Does the Licensee and Licensor have financial capability and the Tech Transfer experience to push through with the commercialization? A. THE LICENSOR: • Tech Transfer experience B. THE LICENSEE: • Assets enough to cover the comm’l of the technology – NOTE: For DOST-funded tech, DOST-TAPI can be tapped for Freedom to Operate assistance
Outline of Fairness Opinion Report Request SECTION IV: BACKGROUND DOCUMENTS FOR THE LICENSE AGREEMENT • Business Plan • Independent Analysis • Market Valuation/ Validation • Food and Drug Administration (FDA) (or any regulatory body) certification • Permissions to Engage in Limited Practice of Profession – For researchers that aim to be entrepreneurs, consultants, board etc. • Licensing Agreement (agreed upon by both parties prior to FOR request) • Note: a fulfilled DOST Term Sheet can be substituted for the Licensing Agreement during the FOR Evaluation period. – The file “termsheet_DOSTTech. Trans. Day 2016” can be requested from the TTBDO executive committee
Outline of Fairness Opinion Report Request SECTION V: LIST OF CANDIDATES FOR THE FAIRNESS OPINION BOARD (FOB) • ~ 3 candidates • Must be independent of the requesting party. Ex. A UPLB prof. for a UPM tech • Must be knowledgeable in the tech’s field and/or the tech transfer process/law • Nominated by Licensor but will have to be approved by DOST secretary.
Outline of Fairness Opinion Report Request SECTION V: LIST OF CANDIDATES FOR THE FAIRNESS OPINION BOARD (FOB) • For non-DOST technologies, the RDI must shoulder the cost of the FOB with Ph. P 5, 900. 00/per member/ per secretariat/ per meeting • NOTE: DOST has pre-arranged FOB’s for at least 7 fields where they serve Fast-track FOR
Fast-Tracked FOR • You can fast-track your FOR request if you meet the requirements of DOST’s standardized worksheet for these 7 fields (Memo Circular No. 007 Series of 2016) – Software or a combination of software & hardware (DOST Memo Circular No. 009 Series of 2016) – Electrical Engineering (DOST Memo Circular No. 006 Series of 2016) – Pharmaceuticals and biotech & medical devices (DOST Memo Circular No. 005 Series of 2016) – Agriculture (DOST Memo Circular No. 004 Series of 2016) – Electronics (DOST Memo Circular No. 003 Series of 2016) – Food and Beverage (DOST Memo Circular No. 002 Series of 2016) – Chemical Industry (DOST Memo Circular No. 001 Series of 2016)
MTek Inc. – UP Licensing Agreement • LICENSEE (MTek) • LICENSOR (UP) – Primary – 3% of gross sales for royalties (4 years) – Secondary – 5% profit share – Max. Ph. P 240, 000. 00 per year PGC scholarship grant – Max. Ph. P 500, 000. 00 per year PGC capacity building
IP & Inventors Involved • Utility Models – 2/2012/000718 “DETECTION OF PATHOGENS" – 2/2015/000237 “DETECTION OF PATHOGENS (KIT)” – 2/2015/000236 “DETECTION OF PATHOGENS (MIXTURE and PRIMERS)” • UP Manila • Raul V. DESTURA, Joy Ann G. PETRONIO, Carmencita C. PADILLA, Ricky B. VINARAO, Kristine Marie G. FLORES, Jesus Emmanuel A. D. SAVILLEJA, Sharie Keanne C. GANCHUA
Mini-Timeline • 7 December 2015 - UPS-TTBDO requests DOST for FOR Approval • 5 February 2016 - Fairness Opinion Board discusses FOR with UPS-TTBDO • 11 February 2016 – DOST sees the LA as FAIR • 23 March 2016 – Endorsement of OVPLA to BOR and OP • 31 March 2016 – the Board of Regents approved the Licensing Agreement between the University and Mtek Inc.
Fairness Opinion Report Timeline & Man-Days
FOR Process Flow Pre-Licensing Preparations (TTO) Licensing Negotiations (TTO) Drafting of Fairness Opinion Report Request (TTO) Review (RDI Legal) and Signing of Licensing Agreement Evaluation for the Fairness Opinion Report Request (FOB) Appointment of Fairness Opinion Board Members (DOST) Implementation of Licensing Agreement
Pre-Licensing Preparations (TTO) Activity Point-person Man-days IP Registration/ Secure Registered IP docus TTO; Inventors; IPO Philippines ~5 Summarize the IP docus and nature of research project that developed said IP TTO; Inventors 1 Business Plan Licensee ~5 Licensee’s certificates (SEC registration etc. ) Licensee ~1 Regulatory Agency Clearance TTO ~2 Market Studies/ Independent Review TOTAL TTO; Inventors; Licensee ~5 19
Licensing Negotiations (TTO) Activity Point-person Man-days Fulfil DOST Term Sheets TTO; Licensee ~2 Royalty Rate calculation TTO ~3 Due Diligence re: Licensee and Licensor TTO; Licensee ~2 TOTAL 7
Drafting of Fairness Opinion Report Request (TTO) Activity Point-person Man-days Nominate FOB Candidates TTO ~1 Overview of Product/Service TTO; Inventors ~2 Drafting of Fairness Opinion Report TTO ~5 Submission and Feedback DOST-TAPI ~1 Response to any DOSTTAPI requested documents (if any) TTO ~1 TOTAL 10
Appointment of Fairness Opinion Board Members (DOST) Activity Point-person Man-days Submission of FOB candidates to DOST-TAPI TTO 1 Review of Candidates (and addition of new ones if any) DOST-TAPI ~2 Evaluation by DOST Secretary ~1 TOTAL 4
Evaluation for the Fairness Opinion Report Request (FOB) Activity Point-person Man-hours Review and Endorsement of FOR & Term-Sheet by FOB Fairness Opinion Board (FOB) ~3 Response to FOB findings and request for reference materials TTO ~2 Evaluation of FOR as “Fair”/ “Unfair” DOST Secretary 1 TOTAL 6
Review (RDI Legal) and Signing of Licensing Agreement Activity Point-person Man-days Drafting of LA using FOB approved Term Sheet TTO, Licensee ~2 Review of LA OVPLA ~2 Endorsement to BOR (BOR approval) BOR; OP 1 Signing of LA OP; Licensee 1 TOTAL 6
Implementation of Licensing Agreement Activity Point-person Man-days BOR approval BOR; OP 1 Notification of BOR approval to Licensee TTO 1 Issuance of Billing TTO; Licensee 1 TOTAL 3
TOTAL Man-days Activity Man-days Pre-Licensing Preparations (TTO) 19 Licensing Negotiations (TTO) 7 Drafting of Fairness Opinion Report Request (TTO) 10 Appointment of Fairness Opinion Board Members (DOST) 4 Evaluation for the Fairness Opinion Report Request (FOB) 6 Review (RDI Legal) and Signing of Licensing Agreement 6 Implementation of Licensing Agreement 3 TOTAL 55 days
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