accessing other people’s technology for nonprofit research
TRANSCRIPT
1
Accessing other people’s technology for nonprofit
research
BhavithaPulparthi15PIM2247
Dept. of pharmacoinformatics
NIPERS.A.S.Nagar
2
Why do we need others technology?For basic research purposes
To provide incentives for innovationTo innovators to build upon one another's work
To facilitate further innovation by public disclosure of the patented technology
3
What is patent?A grant by the government to new and useful machines,
processes/methods, articles of manufacture, compositions of matter, or improvements which exclude others fromMakingUsingSelling (or offering to sell)Importing
4
No exception from infringementThere is a need to use a patented invention for research is a
concern in both nonprofit and commercial There is no general research exemption in either Australia or
the USA for using other people's patented technologiesInfringement suits will be filed against universities and
research institutes regardless of their geographical location
5
contd…So there is a need for exemption in non-profit research
institutions from the risk of infringement actionsThe exceptions are usually limited to
research only for improvements of the invention and not to use of the invention in research
Should be a clear distinction between non-commercial research and research with a commercial interest
6
Contd…..Non-profit entities and universities have traditionally been
considered as 'pure' academic pursuitsThese are increasingly active in claims for patents, copyrights and
other forms of intellectual propertiesBayh-Dole Act of 1980, which mandated that USA government
cede ownership of intellectual property originated from government-sponsored research to the recipient institution
7
• USA patents were awarded to inventors who assigned their rights to entities containing theword 'University' in its name
Year Rate1981-1985 0.59%1986-1990 0.96%1991-1995 1.47%1996-2000 2.15%
1981-
1985
1986-
1990
1991-
1995
1996-
2000
00.5
11.5
22.5 Se-
ries3
8
Commercially orientated researchCommercial services performed by a non-profit organization
may well attract unwanted attention from a patent holder◦ Eg : Florida Prepaid, the alleged infringer the holder of PCR patent
rights contracted to a non-profit cancer research instituteIndeed, an increasing amount of research is performed as
part of a private-public sector allianceIn the year 2000, at the University of California at Berkeley,
externally funded research projects for research, education, and public service were in the form of grants of contracts from private industry
9
Determining freedom to operate
• to cover full body of patent• requires skill in reading claims,
specification, and prosecution claim
interpretation
• Requires a multitude of technologies and reagents
• 70 patented technologies were used during research and development
Nature of bio-technologies
• CAMBIA database- explanation about patents
• WIPO- patent applications
Tools for searching patents
10
Cross licensing
Research only licenses
Market segmentation
strategiesMergers or joint
ventures
Patent pooling
research support from the private
sector
Cost-free licensing of
technologies
Clearinghouse mechanisms
independent developers of research tools
Options for accessing other people's technology
11
1. Cross licensingA non-exclusive license for commercialization shall
be granted to the research centre at a reasonable royalty
A cross-licensing agreement is a contract between two or more parties where each party grants rights to their intellectual properties
12
2. Research only licensesA research license generate externalities to the licensee in the
form of learning-by-doingResearches that reduce future dependence on proprietary
technologyInnovations based on proprietary technology to users in certain
markets offers commercial benefitA free research license that does not permit commercialization,
a research tool 'cuckoo's egg' of technology transfer
13
3. Market segmentation strategiesA promising initiative to provide intellectual property
information services for developing-world research organizations is being pursued by the nonprofit corporation CAMBIA in Australia
Markets for intellectual property can also be divided on grounds other than geography
Where no patents are held, there can be no infringement
14
An appropriate mechanism of avoiding a patent fight - the merger is the ultimate cross-license
mergers are a prime private-sector solution, which minimize the private cost of transactions in intellectual property used in research
Undertaken jointly by two or more parties
In 1992 CSIRO in Australia undertook a joint research venture with Monsanto to incorporate the company's Bio technology into locally adapted cotton varieties
4. Mergers or joint ventures
15
5. Cost-free licensing of technologiesIt is possible that the publicity surrounding recent technology
'donations‘ could lead to an assessment of corporate generosity with respect to their intellectual property rights
To encourage private sector participation, it might be very important that ways be found toprotect the commercial provider
from blame, loss of reputation,misuse of their technology, hazards that might seem especially
in countries lacking effective regulatory oversight
16
6. Research support from the private sector
Involvement of a foundation funded by the multinational life science corporation, Novartis, in the support of plant biology research at the College of Natural Resources at the University of California, Berkeley
Donations could be motivated by the prospect of tax deductions in exchange for unused and useless technology
Non-profits should search for means of making this kind of transfer easy for the private sector
17
7. Patent poolingA patent pool is an aggregation of intellectual property rights
that are cross licensed and licensed to third partiesway to achieve this is to obtain a joint grant of freedom to
operate in certain markets from all holderspatents in the pool must be essential to practice the technologyBlocking patents still have not been issued because they are
subject to ongoing interference proceedings in the USA Patent and Trademark Office
18
8. Clearinghouse mechanismsAn alternate means of lowering the costs of transactions of
technologyTo identify relevant intellectual property in specified
technology environmentsIt would be possible to create customized licenses that
increase the use of inventors' technologies and make multi-patent technology systems readily available and affordable to researchers
19
9. Independent developers of research tools
A quite different approach is to sponsor creation of substitutes to existing proprietary research paths
Example: CAMBIAThe licensing revenues are used to fund further research and to
support transfer of the technologies to developing countries
20
Pressing for sharing of technologyAccess to research tools is a burning issue at the heart of non-
profit research on biotechnology in the USA, the world leader in this area
Making a common cause with more powerful allies in applying pressure on holders of intellectual property might help ensure that in future agreements, any concessions by holders of proprietary rights are extended to international non-commercial markets
21
CONCLUSIONWorldwide, institutions need to better understand their rights and
responsibilities regarding intellectual propertyDesigning policies and operating procedures to ensure sufficient
freedom to operate for public science is becoming increasingly important
Freedom to operate will be crucial for public and non-profit agencies in the developed and developing world
Implementation of TRIPs as currently formulated will likely affect the freedom to operate in the next generation of biotechnologies
22