Act 150 aims to promote technology transfer from universities to industry in Puerto Rico. It allows university professors and researchers to license and commercialize intellectual property developed from their work. Previously this was prohibited. The act is meant to boost research and development of technology in Puerto Rico and help create new jobs and products. It establishes guidelines for contracts and negotiations between universities and private companies involving intellectual property. Puerto Rico's legal framework around advancing research and technology development through technology transfer is being updated to look toward the future as a result of Act 150.

1. Intellectual Property - Puerto Rico
Technology transfer: the way forward Authors
Contributed by Ferraiuoli Torres Marchand & Rovira Eugenio J Torres-Oyola
December 20 2010
On October 15 2010 the Legislative Assembly of Puerto Rico approved Act 150 to
sponsor and promote the participation of academics, professors and researchers from
the University of Puerto Rico in the development of intellectual property and the transfer
of technology into industry. The assembly hopes to increase research into and the
development of technology in Puerto Rico's academic arena, thereby creating new
opportunities for companies and for the creation of jobs, and enabling new products to
be placed on the market, through the adoption of federal public policy as expressed in Laura Belendez
statutes such as the Small Business Patent Procedures Act, the Bayh-Dole Act and the
Cooperative Research and Technology Enhancement (CREATE) Act of 2004. The policy Maristella Collazo-Soto
has also been adopted by several US states, including Florida, Massachusetts, New
Mexico and Oklahoma. With this long overdue step, Puerto Rico has moved in the right
direction with regard to intellectual property and technology.
Technology transfer is the process through which new technology is passed from the
academic realm into the public sphere for the public's benefit and enjoyment. One of
the essential elements of this process is the ability of professors to license works
created within the universities in order to further their development. Equally important is
the professors' ability to consult with and work alongside companies in the
development process and in the creation of intellectual property. Previously, University
of Puerto Rico professors, researchers or academics were not allowed to license such
works or work alongside commercial entities. Under the previous regime, professors
and alumni of the university carried out research activities that would often generate
patents and intellectual property with commercial potential, but which, because of the
legal prohibitions, could not be used for the benefit of society. As a direct result, the
university's progress has been hampered.
Advances made in universities in fields such as medicine have the potential to yield
tremendous benefits for the population in general. Empowering academics to interact
in the IP development process within industry, obtain licences and play a central role in
disseminating new products into the public domain is a necessary next step in the
evolution of this process. The transfer and growth of technology in Puerto Rico will be
indispensable in the future economy of the island. Indeed, such considerations have
been a driving force behind Puerto Rican public policy. Act 150 states that:
"the public policy of promoting the academic participation in the development and
transfer of technology is to prevail and take preference over any other statute,
regulation, rule, letter or other applicable body of law that may interfere, delay, limit or
prohibit the transfer or commercialisation of technology that is a product of university
work and/or research."
Act 150 amends the Government Ethics Act of 1985. The Ethics Act was created, among
others, in order to protect the integrity of the government and its officials' work. It
expressly prohibited contracts being made between government entities and the private
sector, and established penalties for public officials that failed to comply with its
impositions.
With the amendments contained within Act 150, the prohibitions on contracts and
interactions with the private sector will not apply to:
l contracts established by an agency of the executive branch of the government for the
acquisition of property rights of any literary or artistic works of art, as well as the
patents or inventions of its employees; and
l contracts, agreements and/or licences that are granted in order to facilitate the
research, transfer of technology and commercialisation of the intellectual property
developed by members of the university, provided that they are approved by the
university president.

2. However, to ensure that proper supervision of the activities comprising public
employees is still enforced, the president will have 90 days after the end of each fiscal
year to submit a report to the Office of Governmental Ethics of all transactions approved
pursuant to Act 150 during the year.
Act 150 also requires that the university establish a regulation describing the public
policy behind this initiative. The regulation must also include the guidelines that must
be complied with in order for the contracts and negotiations allowed under Act 150 to be
valid and enforceable. Finally, the regulation must be prepared with and approved by
the executive director of the Trust for the Sciences, Technology and Research of Puerto
Rico.
Puerto Rico's legal structure and public policy relating to the advancement of research
and the development of technology is finally looking to the future.
For further information on this topic please contact Eugenio J Torres-Oyola,
Laura Belendez or Maristella Collazo at Ferraiuoli Torres Marchand & Rovira by
telephone (+78 7766 7000), fax (+78 7766 7001) or email (etorres@ftmrlaw.com,
lbelendez@ftmrlaw.com, or mcollazo@ftmrlaw.com).
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