1. Technology Transfer Clinic September XX, 2016 UP-XXXX
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
DIVIDER: Title

2. 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))

3. FOR Process Flow Pre-Licensing Preparations (TTO)
Licensing Negotiations (TTO)
Drafting of Fairness Opinion Report Request (TTO)
Appointment of Fairness Opinion Board Members (DOST)
Evaluation for the Fairness Opinion Report Request (FOB)
Review (RDI Legal) and Signing of Licensing Agreement
Implementation of Licensing Agreement

4. 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

5. 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

6. Outline of Fairness Opinion Report Request
SECTION II: VALUATION REPORT
Offer by Licensee vs. Suggested Royalty Rates
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

7. 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?
THE LICENSOR:
Tech Transfer experience
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

8. 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_DOSTTechTransDay2016” can be requested from the TTBDO executive committee

9. 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.

10. 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 PhP 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

11. 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)

12. MTek Inc. – UP Licensing Agreement
LICENSEE (MTek)
LICENSOR (UP)
Primary
3% of gross sales for royalties (4 years)
Secondary
5% profit share
Max. PhP 240, per year PGC scholarship grant
Max. PhP 500, per year PGC capacity building

13. IP & Inventors Involved
Utility Models
2/2012/ “DETECTION OF PATHOGENS"
2/2015/ “DETECTION OF PATHOGENS (KIT)”
2/2015/ “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

14. Mini-Timeline
7 December UPS-TTBDO requests DOST for FOR Approval
5 February 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.

15. Fairness Opinion Report Timeline & Man-Days
DIVIDER: Title

16. FOR Process Flow Pre-Licensing Preparations (TTO)
Licensing Negotiations (TTO)
Drafting of Fairness Opinion Report Request (TTO)
Appointment of Fairness Opinion Board Members (DOST)
Evaluation for the Fairness Opinion Report Request (FOB)
Review (RDI Legal) and Signing of Licensing Agreement
Implementation of Licensing Agreement

17. 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
Licensee’s certificates (SEC registration etc.) ~1
Regulatory Agency Clearance
TTO ~2
Market Studies/ Independent Review
TTO; Inventors; Licensee
TOTAL 19

18. 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
TOTAL 7

19. 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 ~5
Submission and Feedback
DOST-TAPI
Response to any DOST- TAPI requested documents (if any)
TOTAL 10

20. 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
DOST Secretary ~1
TOTAL 4

21. 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

22. 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
Endorsement to BOR
(BOR approval)
BOR; OP 1
Signing of LA
OP; Licensee
TOTAL 6

23. Implementation of Licensing Agreement
Activity
Point-person
Man-days
BOR approval
BOR; OP 1
Notification of BOR approval to Licensee
TTO
Issuance of Billing
TTO; Licensee
TOTAL 3

24. TOTAL Man-days Drafting of Fairness Opinion Report Request (TTO)
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
Implementation of Licensing Agreement 3
TOTAL
55 days