COP 29 signals arrival of nuclear fusion on earth

© R Saha The recent recommendation in the COP29 of providing funds up to $ 300 billion from 2035 to developing countries to mitigate the negative effects of climate change, has caused tremendous disappointment among them including India. Dependence on developed countries does not seem to be working which is not surprising. There are no free lunches. Developing nations who would access the finances would have to pay for technologies necessary for fighting climate change. The cost involved in acquiring technologies may be high and its implementation may further add to the cost. We do not even know if those technologies which are in realm of hypothesis, would lead to benefits, we expect to accrue from the use of such technologies. We need to think out of the box to utilize our knowledge to its limit. Replicating natural processes occurring in the outer space on the earth seems to open new sources of energy. Come to think of it, these processes have managed to ensure a sustainable and long-lasting solar system. Sun is at the centre stage supplying energy to all its constituents. None of the life forms is possible in the absence of sun. The most understood process is the nuclear fusion occurring on sun responsible for almost infinite source of energy. Production of nuclear fusion is almost like creating a star on the earth. Startups across many countries, predominantly in USA, are actively engaged in producing nuclear fusion on earth and few success stories have been coming for the last two and half years. Lot of private funding is pouring into the activities of these startups. An estimate by the Fusion Industry Association, funds to the tune of $ 7 billion have been pumped in so far. The startups have strong portfolio of patents and other intellectual property rights which may become very expensive to access for anyone needing to use such patents. The risk of having to pay high cost towards acquiring technology can be reduced by timely action today through collaboration, cooperation and sharing of costs. How many of the startups will merge with bigger industries or grow to a large size is a matter of speculation at this stage. A close look at these start-ups may reap fruits in future. The pace at which things are happening demands quick action by us. Geopolitics around nuclear fusion is growing fast and becoming interesting. Several countries which do not have their own nuclear programme like India, are entering this arena to be on the frontline to utilize the technology. Given the expertise of India in harnessing and utilizing nuclear energy (through fission route), she can become a leader in propelling geopolitics. Is it possible that $300 billion may be adequate for setting up nuclear fusion plants, experimental or full scale, which the developed world is aiming at? Supply of raw material like isotopes of hydrogen, high temperature metals and alloys will become critical as it would be controlled by few countries. We can see a similar scenario in case of EV technology. India should seriously raise its efforts from the present level and upscale its expertise to produce nuclear fusion as a source of common source of energy in the next few decades. It requires heavy investment, a few notches higher than what we have made in nuclear fusion programme so far. While the government may supply the initial funding to lay the foundation, it is the private sector which will have to take the baton to reach the level of commercial exploitation of nuclear fusion. The government has to set up a positive policy framework for attracting private players to invest; these players may be from India and elsewhere. If necessary, a new legal framework may also be established as has been done in some countries. The immediate step is to have a fund of funds to invest in research and development to achieve nuclear fusion on earth. A different and specialized workforce of engineers are required to manage the challenges for producing nuclear fusion. The available skill set may not be adequate. In the present scenario, India should explore joining several bilateral and multilateral arrangements other than ITER across continents. India is already a member of ITER, which is among the best multilateral cooperations. Commercial production of energy from nuclear fusion on the earth may become a reality by 2047 when we hope to become a leader in the world economy. A long-term action plan needs to be prepared covering all possible dimensions of producing nuclear fusion and supply energy to house holds and industries.

Protecting IPR in Outer Space - A Legal and Technological challenge

The initial spirit of exploring outer space starting with the first space flight by Sputnik in October 1957 got metamorphosed into more extensive exploration of outer space and terrestrial bodies, research activities and sensing of commercial interests over years. The insatiable and unending human spirit to know the unknown and the advancement in science and technology have been the main drivers. Telecommunication and navigation have established an undisputed position in outer space for commercial and strategic interests and now space tourism, the utilizing materials of terrestrial bodies and collaborative research in space stations have added new dimensions.

All space activities whether exploratory or commercial, undertaken by nations and companies are presently governed by two international treaties namely, the Outer Space Treaty of 1967 and the Moon Treaty of 1979 which have their origin in the Cold War Period. The central theme was to allow and regulate peaceful use of outer space and terrestrial bodies without claiming any ownership of any resources, appropriation of any part of space and undertaking military or military like activities. The Moon Treaty has, in effect, forbidden states to conduct commercial mining on planets and asteroids until there is an international regime for such exploitation. Protection of IPR is not an element of these treaties as commercial activities were not visualized at that time.

Several countries including India, are studying promulgation of a legal framework to allow private entrepreneurs to undertake space activities as also how IPR could be protected in the outer space. The draft Space Activities Bill 2017 proposed by ISRO carries a section on IPR. USA provides for protection of inventions in outer space in 35 USC 105 enacted in 1998. USA has recently shared its vision in the Atlantic Council to overhaul these treaties for facilitating space activities for commercial purposes. It is expected that investments and other efforts towards undertaking commercial activities in outer space would grow in coming days.  If no IPR protection is provided, why would any company invest resources and time in undertaking any outer space  activity? If no company comes forward, space resources such as Helium 3 cannot be utilized for the benefit of human race.

Are patents being issued for inventions useful in exploring outer space and exploiting the same for satellite telecommunication and navigation? The answer is yes; one of the first few patents was issued in USA in 1961. Since then, few thousand patents have been granted (based on my searches). How many of these are enforceable in outer space is a million-dollar question? It is a complex subject involving orbit selection, orbital dynamics, satellite designs and their control in invisible physical space. Apparently, orbits themselves are not patented but systems incorporating technological solutions, special materials, electronics etc. for telecommunication are the subject matter of patents. The Molniya orbit originally designed by Russians is one such orbit used frequently by the aerospace community as this orbit maximizes the time satellites can spend over the northern hemisphere.

IPR concerning outer space would primarily be the outcome of research carried out on Earth and research conducted in outer space and on celestial bodies. The former is easy to handle as it is governed by the existing IPR laws in each country. Territoriality and sovereignty are at the centre of all existing IPR laws. There is no globally accepted definition of the starting point of outer space. However, many aerospace enthusiasts consider the Karman Line, which is 100 km above the sea level, as the beginning of outer space. The present jurisdiction of countries for civil aviation activities is only up to a few kilometres above the Earth. Outer space is thus beyond and outside the territory of any country, and any sort of appropriation is not legally possible and sustainable.  Hence, applicability of IPR laws practised on Earth to outer space is froth with legal and technological challenges.

The question of jurisdiction in outer space is not easy to answer. What could be the legal grounds for ascertaining jurisdiction, which transcends the boundaries of IPR laws?

Let us look at the following situation. Consider a company A which lands on moon, collects soil samples or some other material and then files a patent based on these raw materials in a country on Earth. Can a patent be granted under the existing international space laws / treaties? How would such IPR be enforced both in outer space and on the Earth? The first question would be why not? The second would be no and the third could be yes provided the patent immediately after grant, is placed in the public domain for its use by others without the risk of infringement. The third choice may perhaps, satisfy the broader goals of two treaties mentioned above.

There are plenty of questions and few are being raised here. Can inventions made and patented on Earth be used by others in space freely without the risk of infringement? How do you apply the criterion of inventiveness and non-obviousness in respect of inventions made in space? Non obviousness demands that the invention should not be obvious to a person skilled in the art. It would be difficult to find such a person as the environment of experiment in space may not be created on the Earth. Similarly, the requirement of enablement and adequate disclosure may be difficult to meet as it would require undue and expensive experiments to work an invention backwards.

One can carry out different types of scientific research in space, especially taking advantage of zero gravity or weightlessness as there is no human effort in creating the environment. Do the research results under this circumstance qualify for a patent? Whether the application of IP laws to outer space activities is a breach of the State’s obligations under the treaties? Many more questions other than the above need to be answered for expanding the commercial (and strategic) use of outer space and terrestrial bodies. Collaborative research in International Space Station may provide partial answers to some questions.

Infringement, of patents and other IPR granted on Earth, in outer space is a serious matter for companies to guard against. Can an amicable solution be found through novel licensing arrangements which are applicable in outer space?

IPR issues will start multiplying after a few years when commercial activities grow in numbers. One can sense emergence of litigations. Do we need an extension of the existing IPR laws to outer space or design a new legal framework for IPR protection in outer space? Should a common legal system be developed for IPR protection on Earth and outer space simultaneously? The world faces a grand challenge!!!    

 #outerspaceIPR  #spaceorbit #karmanline #molniyaorbit

© R Saha

Previous : Compulsory licensing of patents related to Covid 19 vaccine

Compulsory licensing of patents related to Covid 19 vaccine

Of late, there has been a big clamour about transfer of vaccine technology including compulsory licensing of the Indian vaccines, to other companies in India. One can see intense debates on TV channels, social media and even in courts on this topic. Some commentators, analysts, political parties and intellectuals are spending a lot of time in demanding that provision of compulsory licensing under the Indian Patent Act should invoked for technology transfer. The Supreme Court also raised a similar viewpoint in terms of invoking Section 92 and Section 100 of the Patent Act while discussing availability of vaccines in India. 

As per Section 84 of the Act, a compulsory license can be awarded only in respect of a granted patent and that too, three years after the grant of the patent, on a specific request by a company desirous of taking up the manufacturing of the granted patent. The company requesting for compulsory license will have to establish its strength and capability to manufacture the vaccine. If there is no such request, the Patent Office cannot, suo-motu, take up awarding a license. However, Section 92 which is a kind of extension of Section 84, empowers the government to issue a notification for compulsory license in respect of a patent and interested parties may apply for a compulsory license; other conditions remain the same. There are other conditions as well which will have to be satisfied. The government can invoke Section 100 in respect of a filed application or a granted patent by which it may use the invention for its purpose without going through the compulsory license route. 

Let us do a reality check on granted patents related to Covid-19 in India and examine the applicability of compulsory licensing. There are four major foreign companies, whose inventions have been converted into products in the form of vaccines, are manufacturing in large numbers now. These companies are Moderna, Johnson and Johnson, BioNTech and Oxford Innovation Centre. The BioNTech vaccine is being majorly produced by Pfizer and the Oxford one by Astra Zeneca. Moderna does not have any patents granted in India, in fact it has not filed any patent application so far. 

BioNTech, whose invention has been used by Pfizer, has filed 49 patents applications in India since 2010 and has been awarded only two patents. One patent is “RNA Vaccine” which was granted in 2017. It is not clear if this patent covers the mRNA vaccine or not. This may be a candidate for compulsory license during this year and beyond. However, its capability to combat Corona virus will need to be established by competent people. Similarly, J&J also does not have any granted patent in India. 

Oxford Innovation Centre which owns the invention for the vaccine being produced by Astra Zeneca and the Serum Institute, does not have a patent granted in India. In fact, it filed a patent application in February 2021. The Serum Institute is bound by its agreement with Astra Zeneca and perhaps, Oxford Innovation as well and may not be free to sub-license the technology. Covaxin is based on ICMR’s inventive work for which no patent application has been filed. As the basic technology (lab level) has come out of a government institution, it may not be necessary to invoke compulsory licensing or Section 100. 

For transferring this technology, it would be essential to assess transferee’s capability and manufacturing strength for producing the vaccine and its readiness to obtain regulatory approvals such as GMP. In addition, the transferee will have to have BSL 3 facility and pool of qualified and trained human resources. There is no application for compulsory licensing reported to be pending in this regard with the Indian Patent Office. We must also reckon at the same time, that a granted patent such as the one granted to BioNTech may not be sufficient to manufacture the vaccine as manufacturing will depend on many other essential inputs like patents, know-how, trade secret etc. Therefore, the whole debate about compulsory licensing is without substance and should be kept at bay. 

© R Saha

Next: Protecting IPR in Outer Space - A Legal and Technological challenge

Previous : IPR Waiver and Covid 19 vaccine

IPR Waiver and Covid 19 vaccine

It all started with India and South Africa submitting a proposal to WTO in October 2020 on IPR waiver in respect of Covid 19 vaccines. Interestingly, the proposal included waiver on patents, copyrights, designs and trade secrets associated with Covid vaccines. Initially, the proposal was not supported by the developed countries including EU, Japan, USA and UK which disagreed to even discuss the proposal. Some European parliamentarians did recommend to EU to support this proposal after a few months. 

Many other countries are now standing in support of this proposal. Most recently, USA decided to discuss this proposal in WTO. The US posture may be to gain a humanitarian image as it is not clear whether it will support the proposal or discuss it. It may be noted that many US companies are up-in arm against the current US stand and hence, the final US stand in WTO is debatable at this stage. The other countries EU, Japan and UK do not support the proposal even now. 

There is a weakness in the proposal that it is not practical to implement. Each country making use of the proposed waiver, especially developing countries, will find it difficult to manufacture vaccines without the active support of companies owning patents, trade secrets and know how. Patents in respect of all the vaccines in market are not yet granted anywhere and so was the case in October 2020. 

What waiver are we talking about? Perhaps, the thought may have been that the patents, whenever granted, should be waived so that any WTO member could use such patents for manufacturing the concerned vaccines without any risk of infringement. By the time WTO takes up this proposal for discussion, it is going to be few months from now. People familiar with WTO processes realize that any decision on a proposal may take some time, may be few months if all the members agree, as the decision making is through consensus and not through majority voting. We are already in May 2021, 7 months have elapsed since October 2020 and meaningful discussions on the proposal have not really taken place. The original proposal is likely to be modified before serious discussions start. Some indications are already visible. Each government has to further ratify the decision of the WTO to be inline with the local laws. This means more time for starting manufacturing vaccines. 

Technology experts know that a single or even few patents cannot lead to successful manufacturing unless other associated elements are in place. These elements are know-how, trade secrets, raw materials, manufacturing infrastructure, human resources, robust supply chain for raw materials and components like vials etc. Here is a big catch which WTO may not be able to address because most of these essentialities are not within the purview of WTO. 

The codified IPR like patents are in public domain and can be accessed by anyone for information. Such IPRs may be easier to handle through an amendment in TRIPS but it will be difficult, may be impossible, to regulate know-how and trade secrets because these are not in public domain and not accessible to public. Unless the companies holding know how, trade secrets and patents agree to license know how and trade secrets, there is no way for anyone to manufacture vaccines in a short time of few months or years just by obtaining the right to use such patents. Further, there are only a few vaccine manufacturing units in the world, especially in developing countries, hence rightly qualified human resources would be in short supply which are essential for ensuring quality of vaccine. 

In addition to approvals by the drug regulator, certificates for Good Clinical Practice (GCP) and Good Manufacturing Practice (GMP) would be required. Therefore, process of obtaining such approvals would be time consuming. The most practical approach on the global front would be to encourage licensing of IPR and total technology from the owners of IPR on terms and conditions which may be applied uniformly across countries. This may be easier said than done because details of licensing agreements would depend on local laws concerning licensing and negotiations between parties. 

Private companies will need to be compensated by somebody. The licensing agreements should include transfer of know-how, licensing of patents copyrights and trade secrets, convenient place for jurisdiction, supply chain etc. One can think in terms of uniform royalty rates and down payments which may be kept as low as possible low. Consideration, cooperation and collaboration (3C) would be essential for a way forward.

  

© R Saha

Next : Compulsory licensing of patents related to Covid 19 vaccine

Previous : The Indian patent law nurtures and promotes innovation

The Indian patent law nurtures and promotes innovation

The evolution of patent system in India is not a natural choice of independent India unlike the drive towards investing in research and development, import substitution, indigenous development of know-how and adaptation of technology. India has had its patent law since 1856 and continues to have it after independence with due amendments from time to time. Inventions are not necessarily dependent on existence of a patent law, although the patent law is certainly a big contributing factor in promoting inventions which can lead to innovations.

Innovations are inventions plus, and generally understood to be in terms of products or processes which are successful in the market or have the potential to be successful. An invention needs to be followed by many more steps such as scale up, prototyping, testing, characterization, and safety studies to meet regulatory requirements and standards etc. These steps have to be followed by effective manufacturing and marketing to remain competitive.

The Indian patent law is compatible with TRIPS and takes care of essential features of an invention namely novelty, inventiveness and utility. In its philosophy and character, it is no different from patent laws of other countries. The growth in patent filing by Indian residents in the post WTO period is testimony to the fact that inventive activities have grown primarily due to larger awareness and better understanding of ever increasing competition. A study by the author reveals that 16% of MSME drug companies have been filing patent applications in the last ten years.

The Indian law is very sensitive to the inventiveness aspect and therefore has stipulated that some inventions are not patentable in India. The laws of many countries do not spell out such exclusions but do attach importance to inventiveness or non-obviousness. For example, rearrangement of known devices or components not leading to a new effect is not patentable in India. The same concept was followed by the US Supreme Court in deciding the KSR v Teleflex case.

It must be remembered that the patent law has a strong element of public policy as it gives exclusive and monopolistic rights to an individual or a company for exploiting inventions while denying / limiting the remaining population the right to use and practise the invention.

The Section 3(d), perhaps more commonly applied to drugs as it talks of efficacy, is an example of ensuring inventiveness in inventions dealing with drugs and chemicals, and balancing with public policy is achieved in most cases. The law has however, not provided any direction towards interpretation of efficacy and left it to competent authorities like the Patent Office, Intellectual Property Appellate Board and courts. This needs to be looked into as efficacy is linked with scientific and technical aspects and a common rule may not applicable to all cases.

The provisions of compulsory licensing and working of patents are meant to avoid misuse of patents by the patent holder in specific situations. These provisions are, prima facie, not anti- inventions or anti-innovation. A company aspiring to get a patent in India should take into consideration these aspects, because they may affect its business prospects in very specific cases. However, a high degree of judiciousness based on reliable data and analysis of social and market aspects  is called for while arriving at the decision of awarding compulsory license. 

           

The process of patent granting in India takes a little longer and that has been a cause of concern for inventors and companies, especially MSME. Whether the law should stipulate stricter timelines is a matter for consideration by the competent authority. This is an operational aspect and does not in any way affect the intrinsic character of the law. Like any other patent law, the Indian patent law promotes and nurtures inventions; there is no evidence to conclude otherwise. If the level of inventive activities which the patent system protects, has not grown in the manner expected by us, the answers may lie elsewhere.

(This article appeared in Express Pharma, November 1-15, 2012 under the title "Law has a strong element of public policy")

© R Saha

Next : IPR Waiver and Covid 19 vaccine

Previous : Challenges faced by the Indian IPR System

Challenges faced by the Indian IPR System

The modern IPR system in India, in the real sense, is a post-WTO phenomenon which has many new dimensions such as protection of IC layout design, geographical indications, and new plant varieties which were not part of the earlier Indian system. Earlier there were only four forms of IPR prevalent in India namely, patents, copyrights, trademarks, and registered design. It would be safe to state that most contested disputes in the country fell in the categories of copyrights and trademarks. The Indian patent laws were comparable to those of many countries except that product patents in the area of drugs, chemicals, and food items were excluded from patentability. Now, however, the laws are fully TRIPS-compatible and also allow product patents in all areas of technology. However, there are some provisions in the law, mandated by the social and political thought process, which do not allow certain types of invention to be patentable. Patents were not used as a competitive tool in the pre-WTO days because we had a centralized economy with very little competition. Globalization and opening up of the economy have increased competition and it will continue to rise at a rate not witnessed in the past. Obviously, each cubic centimeter of space in the world of trade will be strongly contested by many players. IPR will play a very important role in the competitive world and it would be in the interest of every one that there is a legal framework which is sensitive to the social, cultural, and political needs of the country but still provides enough incentives for innovators and the process of innovation.

What we see today in terms of increasing IP issues was anticipated by many when it was decided to modify our IPR laws. It may be difficult to go back to the old system. Property always causes conflicts and disputes. This has now started happening in India in the IPR area as well and can be considered normal. When brothers can fight with each other on property matters, fight between two companies on IPR matters should not be a cause of disturbance and alarm. What perhaps would be required in disposing such disputes is judicial maturity, understanding of technological issues, and a balanced interpretation of patentable inventions to meet social goals. One will have to depend on the case laws within our country for developing a robust system for resolving IPR disputes. Indian courts had, for example, earlier disallowed the use of word ‘scotch’ for Indian whiskies. Yet, in another case, the Supreme Court has recently allowed the use of the word in respect of Peter Scotch.

The IP system of a country is now heavily influenced and governed by the IP systems of other countries, especially the developed ones. Patent practices in respect of biotechnological inventions were revolutionized in 1980 in USA; many similar events have been occurring since then. We must learn to develop a foresight to anticipate what is likely to happen. For example, inventiveness or nonobviousness of inventions will occupy the attention of many law- making authorities, international agencies, and judiciary. Indian inventors and their employers (if applicable) will have to pay serious attention to this aspect if they wish to have a right which can be defended in a court of law. The success will depend on critical scientific enquiry of each invention. Similarly, novelty determination is very crucial in light of expensive litigation and risk of losing market position. Therefore, awareness and training continue to be important elements for tilting the IPR system to our advantage.

New challenges are likely to emerge with the introduction of a system for protecting the new plant variety. One of the most important ones would be to register farmers’ varieties because no nationwide system is in place to undertake this massive task. It may be reckoned that one will have to take farmers in confidence and educate them about the new laws which are farmer-friendly. There should be systems to identify such varieties, generate adequate scientific data to establish their reproducibility, stability, and the unique traits before going in for registration. This may become handy to address food security problems in the rainy days. Geographical indications are becoming popular. As the social and political ramifications could be serious in some cases where more than one state could be the interested parties, it would be a good idea to have government intervention right at the beginning.

One of the important principles to be adopted for ensuring that wrongs are not done is to examine whether unfair trade practices are being encouraged by the use of IPR. There are many dimensions to this aspect including transaction of IP. The Competition Commission of India has brought out some guidelines to avoid unfair trade practices which are quite similar to what are being followed elsewhere in the world. It may be reckoned that TRIPS also endorses that unfair trade practices in IP-related contracts should be avoided.

Open source system for collating and utilizing innovations is in the nascent stage and is yet to generate enough evidence for its candidature as an effective tool for generation and sharing of IPR. It may perhaps make an impact if suitable models for benefit sharing is evolved which could provide enough remuneration to inventors. In the present form, it seems to lack equitable sharing of IPR. Perhaps patent pooling in the specific areas regulated by standards may be a better candidate to be pursued provided a proper legal framework is worked out.

There are many issues which need to be studied and researched in the Indian context to work towards a balanced practical state for our IPR system. In the absence of data, it is not possible to establish the advantage or disadvantage of the existing system. The research should be interdisciplinary in nature involving laws, science, engineering, business, economics, commerce, and social sciences.

(This article written by R Saha when he was Scientist/Advisor, Department of Science & Technology, Government of India, appeared in VIKALPA • VOLUME 33 • NO 2 • APRIL – JUNE 2008  EMERGING IPR CONSCIOUSNESS IN INDIA)  (Note: The views expressed above are that of the author.) .
Read the orignal article at

http://www.sristi.org/anilg/papers/Emerging_IPR_Consciousness_vikalpa.pdf

© R Saha

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Previous : IP Management in publicly funded research in India

IP Management in publicly funded research in India

The growing trend of international and ‘unconventional’ research collaborations means that the IP world has to navigate new territories constantly. Here Raghvendralal Saha outlines the Indian experience and response to IP-related issues in recent years.

 Publicly-funded research in most countries is conducted through governments’ own departments or ministries or through autonomous R&D institutions and universities. In India, almost 80% of expenditure on R&D is incurred by the Government which, therefore, has an immediate interest in publicly-funded research and its outcomes. Government departments, such as the Indian Space Research Organization, in most cases own all the rights in respect of intellectual property (IP) generated by their scientists and the scientists (inventors) do not get any share of revenue accrued from the licensing of IP. However, such departments also fund universities and other R&D institutions to carry out research and the rights of IP in these cases will largely belong to the Government. There are other government departments, such as the Department of Science and Technology, which provide funds for extramural research to universities and other publicly funded R&D institutions.

A large number of research laboratories and centres supported by the Government have a great deal of functional and financial autonomy. Examples of such autonomous bodies are the laboratories of the Council of Scientific and Industrial Research, the Indian Council of Agricultural Research and the Indian Council of Medical Research. These laboratories are engaged in intramural, extramural and contract research. As commonly practiced elsewhere, IP rights in contract research belong to the contracting agency unless there is an agreement for the sharing of rights. Extramural funding largely comes from government departments such as the Department of Science and Technology. These agencies have elaborate IP policies and their own IP offices or cells which take up protection and management of IP generated in their laboratories. In some cases the technology transfer function lies with another group within the organisation. These agencies do not automatically claim ownership of IP rights in extramurally-funded projects as it depends on the terms and conditions stipulated by the funding agency. Sometimes these agencies also fund projects in universities and R&D laboratories and in such cases they tend to retain the ownership rights.

First policy breakthrough

The Ministry of Science and Technology issued guidelines, Instructions for Technology Transfer and Intellectual Property Rights, in March 2000 to help enhance innovations by scientists, research institutions and universities. The salient features of the guidelines, which are applicable to projects funded by the Ministry of Science and Technology, are:

1.       Institutions may retain the ownership of any IP generated.

2.       Institutions shall take necessary steps to commercially exploit patents on exclusive or non-exclusive bases.

3.       The owner institution is permitted to retain the benefits and earnings generated out of the IPR. The inventor(s)’s share shall be limited to one third of the actual earnings.

4.       IPR generated through joint research by institution(s) and industrial concern(s) can be owned jointly by them or as may be mutually agreed by them through a written agreement. The institution and industrial concern may transfer the technology to a third party for commercialisation on exclusive/non-exclusive bases. The third party, exclusively licensed to market the innovation in India, must manufacture the product in India.

5.       Institutions shall set apart not less than 25% of the revenue generated from IPR to create a Patent Facilitating Fund for the management of IPR.

6.       The Government shall have a royalty-free license for the use of the IP for the purposes of the Government of India.

Science and Technology Policy 2003

The Science and Technology Policy of India released in 2003 is upbeat on intellectual property rights and related issues. It focuses a great deal on the transformation of new ideas into commercial successes. It states that the development of skills and competence to manage IPR and to leverage its influence will be given a major thrust. This area calls for significant technological insights and legal expertise and will be handled with high priority. Efforts will be made to create synergy between industry and scientific research by creating Autonomous Tech nology Transfer Organizations as associate organisations of universities and national laboratories to facilitate the transfer of the knowhow generated to industry.

Support to universities for IP protection

All educational institutions, including universities, colleges and schools, can approach the Patent Facilitating Centre (PFC – set up by the Department of Science and Technology) for full technical, legal and financial support in protecting and managing their IPR. Often, the requests from universities are routed through one of the 20 Patent Information Centres created by the PFC in different states. Universities retain all the rights to such patents as the PFC’s support is available only if universities own the rights. The PFC does not have any claim in such patents. It has so far filed more than 350 patent applications in India and other countries from around 60 universities/academic institutions, and many of them have been granted. It may be noted that, without such financial, legal and tech nical support, many universities and academic institutions would not come forward to protect their inventive work. This model is quite different from that practiced in other countries, where universities have to find their own funds, mostly generated through licensing. Indian universities will take some time to reach that level. The PFC has been working consistently in the last 12 years to create awareness and build capacity through different methods. It has organised nearly 325 IPR awareness workshops all over the country, both independently and also in association with many government ministries and departments, and industry associations.

The experience of Indian universities

Until 1995, the culture of universities and academic institutions protecting their inventive work through patents was almost nonexistent. However, efforts made by multiple agencies in the country have made a difference. The total number of Indian filings by Indian academic institutions was only 35 in 1995, but this number grew to 169 in 2004. The growth is substantial, although the absolute number is still low.

The need for technology transfer offices

The gap between invention and commercialisation has been addressed in many universities by setting up technology transfer offices (TTOs) which undertake activities such as managing the IP of universities, licensing IP, and managing research contracts. Managing TTOs is a new challenge as it requires a good mix of legal and technical skills which are often difficult to locate. In a country like India, where the culture of protecting innovations through legal instruments is relatively new, the task of starting TTOs can be problematic. University faculties are generally not keen to manage such offices as they do not see any academic growth. Also, one is not always able to find the right people from outside as such people are in short supply. However, in the past decade or so, some leading academic institutions in India have set up off ices similar to TTOs which are slowly coming of age and looking after the management of IP and technology transfer. Traditionally, such institutions have been maintaining offices which look after all R&D projects funded by the Government and other agencies. Some people may feel that both functions should be performed under one roof. However, it is not essential to have a ‘one roof’ concept but, if these functions can be coordinated, the end result will be good. The other problem often faced by such offices is the shortage of financial res ources to protect inventions in India and else where. Each institution has to maintain a balance between resources and the demand of its faculty to protect its inventive work. People are not always able to differentiate between a paper being published in a journal and a patentable invention, and therefore the demand for protection may be proportional to the number of papers published or accepted for publication. For example, the Indian Institutes of Technology (IIT) at Bombay, Delhi, Kharagpur and Roorkee and the Indian Institute of Science have brought out their own IP policies, which they practice. The main feature of the policies is that these institutions will have the right to own inventions and other IP generated in their institutions through their research activities. A new culture is slowly taking root in terms of encouraging academicians to participate in form ing start-up companies and setting up technology incubation centres.

International R&D

Publicly-funded research and academic institutions are experiencing a new situation where sharing and managing IP with similar institutions and industries in other countries is a crucial element. Such agreements are usually decided at country-level and have to take several public issues into consideration. IP licensing and technology transfer are complex tasks and the complexities increase several-fold when the stakeholders (in terms of IP generation, licensing and maintenance) belong to different sovereign countries and legal jurisdictions.

Bilateral agreements have to address many complex issues, from the definition of IP and associated rights to satisfying the public need that exists in each sovereign country. Therefore, there is an urgent need to address international collaborative research and development while discussing IP licensing and technology transfer from publicly-funded institutions. The issues demanding attention are many, and include:

● absence of parity between the IPR laws and other laws related to technology transfer and taxation of stakeholders

● difficulty in the definition of foreground and background inventions or IP especially by the scientific community

● sharing of IP in different countries

● sharing of revenue and ownership of IPR in the case of joint research by publicly-funded institutions and industries

● maintenance of confidentiality of research activities and findings

● selection of jurisdiction for resolving disputes

Perhaps there is a requirement to evolve a robust system internationally which is driven more by the wish to enhance collaborative research opportunities rather than by pure commercial considerations. Ownership issues in university-industry collaborations may take a complex shape as industries generally do not want to share IP rights with government; however, the universities they work with will receive much of their funding from their respective governments in the foreseeable future. R

(Views expressed in this article are purely those of the author and do not represent the views of the organisation with which he was affiliated.)

Raghvendralal Saha was Director of the Patent Facilitating Centre, Technology Information Forecasting and Assessment Council at the Department of Science and Technology, India.

(This article appeared in Research Global, the Magazine of the Global Research Management Network) October 2007, Issue 17). The orignal article can be read at http://www.globalrmn.org/documents/researchglobal17october2007.pdf.
© R Saha

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