Introduction

The Protection and Utilisation of Public Funded Intellectual Property Bill 2008, was introduced in the Rajya Sabha by the Minister of Science & Technology December last. Introduced as a mechanism to encourage the commercialization of publicly funded research, critics feel, the Bill also has the potential to reduce access to the outputs of publicly funded research, while harming future innovation.

The bill has been developed on the lines of the Bayh-Dole Act of the USA. The Bayh-Dole Act of the United States can be briefly put as under:

(i) The Patent and Trademark Act Amendments of 1980 (more popularly known as the Bayh-Dole Act) was enacted on December 12, 1980.

(ii) It created a uniform patent policy among the many federal agencies that fund research, enabling universities and businesses, operating with federal contracts, to patent materials and products they invent under federal funding.

(iii) It encouraged universities to set up Technological Transfer Offices (TTO) to manage and promote their patents.

(iv) The contracting universities and businesses are permitted to exclusively license the inventions to other parties.

(v) The federal government, however, retains “March-in” rights to license the invention to a third party, without the consent of the patent holder or original licensee, where it determines the invention is not being made available to the public on a reasonable basis.

The Indian Bill, developed on similar lines, seeks as follows:
(i) It gives government-funded universities and research institutions the right to patent innovations arising out of public funded research and development.

(ii) The Bill seeks to provide the necessary boost to the commercialization of inventions made through government-funded research by passing on the IP rights on the same to the institution responsible for that invention.

(iii) In addition to seeking to bar public disclosure, publication and exhibition of the public funded intellectual property, the Bill lists duties of the recipient who retains the titles. Observing that in order to compete in a global environment, it was necessary for India to innovate and promote creativity, the statement of objects and reasons says that the country also needed to protect and utilize the intellectual property created out of public funded research and development.

(iv) Further, it states that the institutions will have to report to the government within a stipulated period of time (90 days) about its intention to retain the title of the publicly funded intellectual property. To manage the inventions created and formulate mechanisms for commercial utilization of the inventions, the institution will set up an IP Management Committee (like the Technological Transfer Offices under the Bayh-Dole Act). The Bill determines how the royalty received by the institution will be shared by the inventor, IP cell and the institution.

Some Concerns

There have been some differences of opinion on the Bill by experts from the time of its introduction. There have been different perspectives on some of its contents in comparison with US Bayh-Dole Act.

Introduced as a mechanism to encourage the commercialization of publicly funded research, critics feel that the Bill also has the potential to reduce access to the outputs of publicly funded research, while harming future innovation. The Bayh-Dole, on which it has been modeled, has been under fire for doing very little in increasing public access to the innovation.

The Universities Allied for Essential Medicines point out that the Indian Bayh-Dole Bill replicates and magnifies the mistakes of the US Bayh-Dole Act.

It is apprehended that this Bill, in its present from, will only lead to monopoly over access to technology. This, in turn, can hamper academic knowledge generation. It is felt by many experts in the field that universities must be allowed to maintain their mission of diffusing knowledge, independent of state and market and without subordinating them to corporate interests. The Universities Allied for Essential Medicines point out that much of the research done at universities is upstream research, often related to research tools that are critical for developing further innovations. Patenting is not only unnecessary for these basic tools; it can inhibit further downstream research and development by placing a costly “tax” on tools for innovation.

Along with increases in patenting, it is feared that the same is likely to reduce free access to the knowledge created out of research, funded by the tax-payer, who will end up paying double: both for the research as well as for the products of the research. One serious concern expressed in certain circles is that rights conferred under the legislation allowing institutions and their licensees to charge monopoly prices, may for instance, place life-saving medicines out of the reach of the poor. Thus, public funded research will be seriously hampered in serving the public good.

Another flaw, as seen by experts, is that Indian legislation contains very few provisions to safeguard public access. The US Bayh-Dole Act, recongnising the need to ensure public access to publicly-funded inventions, states that it is necessary to “ensure the government obtains sufficient rights in federally supported inventions to meet the need of the government and protect the public against non-use or unreasonable use of inventions.” Critics point out that though these rights have never been successfully used, nevertheless, the fact that such provisions have been incorporated testifies to the importance of access in setting public policy.

The Indian legislation, however, does not confer such rights. The only concession to public access is the provision that gives the Indian government the right to refuse title to a research institution receiving the grant within ninety days of learning of the research institution’s intention to retain a patent. Thus, in a marked contrast to the licensing and march-in rights of the Bayh-Dole, which are perpetual and automatic, this provision is available only for a brief, 90-day window occurring immediately after the research institution announces its intent to retain title to a patent.

Also it is argued that the Bill has been drafted with the assumption that IPR is the best way to promote innovation, which is not always true. There is an increasing realization world-wide that collaboration, networking and sharing of knowledge can be a better business strategy than operating in isolation and appropriating or patenting information.

Concluding Remarks

In view of above and also fear that the bill, though introduced as a mechanism to encourage the commerialisaiton of publicly funded research, critics feel that the Bill also has the potential to reduce access to the outputs of publicly funded research, while harming innovation.

Many experts and institutes around the globe have suggested that alternative models like open source model will be more effective than Bayh-Dole like models in stimulating innovation.

Other channels to incentivise innovation include publications, conferences, sponsored research, university-industry patents to promote creativity and innovation. Incentives could include open source, prizes, tax exemption, and network research.