Prevention of bio-piracy in India; the Traditional Knowledge Digital Library (TKDL)

Back in February last year we blogged an item about Indian TK being made available to the EPO to help prevent bio-piracy. “Sharing database on Indian traditional knowledge extends greater protection from misappropriation“

It is now great to be able to blog news items that show this initiative has had some success!  The Item from Yahoo News, India “EPO rejects 15 patent applications for bio-piracy” says:

European Patent Office (EPO) has rejected 15 patent applications of various international companies during the past one year after it found they had used India’s traditional medicinal knowledge to prepare certain products. The action was taken after the government entered into an access agreement with EPO in February last year to share India’s traditional medicinal knowledge and prevent the practice of foreign companies taking patent on Indian systems of medicine.

Another specific example of the utility of the database can be seen on Asian Times Online “India scores bio-piracy victory” regarding the “pudina patent” from 2007 in connection with treatment of avian flu.  See also item on the Times of India, “India foils Chinese bid to patent pudina“

(thanks to B. Hanumanth Rao for sending me the Yahoo! News, India link)

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For further information see:

Free download of paper “Defensive Publishing: A Strategy for Maintaining Intellectual Property as Public Goods – Briefing Paper“

Prior art project in the CGIAR.  Facilitated by CAS-IP, lead centre ICRISAT

TKDL introduction & milestones

Decision on BILSKI!

To say this decision has been long-awaited is an understatement.  The blogosphere is literally buzzing with announcements.  More detailed analysis and comment will soon follow (thankfully, because this is a complicated one!)

I will also post again at a later date with more comments and views on what it all means.  In the meanwhile, here is a link to the ruling http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

See the following blogs for their announcements:

Patently-O

IP Kat (post includes many links for background reading, including the decision link I used above, thanks IP Kat!)

271patent blog

Update on Green Patents

In mid-December https://casipblog.wordpress.com/2009/12/14/uspto-speeds-review-of-green-patents/ we reported on a USPTO fast-track program for green patents.

The July issue of Scientific American reports http://www.scientificamerican.com/article.cfm?id=patent-still-pending that:

…the agency (USPTO) has approved only about one third of the requests it has received, disappointing inventors and even the Patent Office itself. The program’s acceptance rate is “less than I would have expected,” says Robert L. Stoll, the agency’s commissioner for patents.

USPTO is considering changes to the rules that would enable more applications to get on the fast-track, but there are other factors.  Perhaps most significant is summarized by Mark Bünger, a research director at Lux Research, a New York–based technology consulting firm, who claims that “there will never be something like a killer app in clean technology”.  

History indicates that innovation is often driven by inventions in unrelated technologies which, when combined, enable breakthroughs to emerge.

Post written by Peter Bloch    , consultant to CAS-IP

U.S. refocusing on IP enforcement — including “enforcement across borders”

I first read on IP-Watch news about recent release of a national intellectual property strategy from the US government.

IP-Watch highlight that:

“The strategy  encompasses 33 enforcement strategy action items that fall within six categories of focus for the United States: (1) leading by example; (2) increasing transparency; (3) ensuring efficiency and coordination; (4) enforcing our rights internationally; (5) securing our supply chain; and (6) building a data-driven government.”

A complete copy of the strategic plan can be viewed here.
The “Enforcing Our Rights Internationally” is particularly interesting as the strategy seeks to influence enforcement outside of US government jurisdiction.

“..Federal agencies, in coordination with the IPEC, will expeditiously assess current efforts to combat such sites and will develop a coordinated and comprehensive plan to address them that includes: (1) U.S. law enforcement agencies vigorously enforcing intellectual property laws; (2) U.S. diplomatic and economic agencies working with foreign governments and international organizations; and (3) the U.S. Government working with the private sector.”

This includes (from IP-Watch site):

“Cracking down on foreign-based and foreign-controlled websites that infringe on American intellectual property rights and having federal law enforcement agencies encourage cooperation with their foreign counterparts on enforcement investigations, particularly in China.”

PCmag.com picked up on that part in their items:
“DOJ, FBI to Monitor Foreign Web Sites for IP Piracy” and “Biden: U.S. to Target Pirate Web Sites“.
In the former PCmag include one of the voices who were not applauding the stance, the Computer & Communications Industry Association (CCIA) who:

“…warned against imposing too broad an enforcement strategy. “We are surprised that no one appears to be recognizing the broader economic debate on this issue. A proper enforcement strategy would ensure that legitimate innovation is not being squashed by an overly broad, overly zealous crackdown,” CCIA president and CEO Ed Black said in a statement. “Balanced intellectual property will promote innovation, investment, and civic discourse, while ensuring that intellectual property rights holders are fairly treated.”

The CCIA website publishes some questions they raised around the issues of the new strategy.  They quote their own report “Fair Use in the U.S. Economy“:

“…companies benefiting from limitations on copyright-holders’ exclusive rights, such as “fair use” – generated revenue of $4.7 trillion in 2007 – a 36 percent increase over 2002 revenue of $3.4 trillion. The most significant growth over this period was in Internet publishing and broadcasting, web search portals, electronic shopping, electronic auctions and other financial investment activity.”

In the preface Ed Black, President & CEO of the CCIA says:

“we are only beginning to fully understand in the 21st century that what copyright leaves unregulated—the ‘fair use economy’—is as economically significant as what it regulates.”

Interesting….

WIPO Gold & USPTO on Google; IPR data available to all

A great new resource from WIPO launched earlier this month.  http://www.wipo.int/wipogold/en/ .  Read the WIPO press release here.  At the same time it was noted on IP-Watch that the USPTO have also launched access to a bulk of data in a collaboration with Google.  View the USPTO press release here.

June 2010 was a good month for access to information concerning IP rights!

(thanks to Helen & Maria who both sent me the WIPO link)

Licencing for development, FTO & questions for the future; Day #5 of the NPI meeting

Friday morning and it was another lovely day in DC (lovely to a person who is used to living in a very cloudy city).  Today is our last day (of course we can have meetings on own tomorrow) so let us say it is the last official day of our Annual NPI meeting.

We don’t know yet where destiny might take us from know but we are very confident the strong bonds built during the last three years will allow us to continue seeing each other and working together for many years.

So, we started today discussing a very interesting case (Mama Cares et al v. NutriSet) presented by Robert Chiavello and Kirby Drake from Fulbright (the legal firm working pro bono on the case).  Discussion surrounded patenting and licensing conditions/terms for therapeutic foods such as plumpy’nut (which is a peanut-based food for use in famine relief at the centre of the debate, see recent CAS-IP blog post). The dispute is mainly related to NutriSet’s philosophy of licensing (licensing the production to African partners for development) and patent infringement (it is not clear if Mama Cares et al will be free of any suits if producing a similar product in the US).  We’ll have to wait and see how the case develops since we could say from a legal perspective, it has just started… (Note from Kay:we will write a separate post dealing with this issue shortly)

Then we had a great lecture given by Michael Gollin on Freedom to Operate. Key steps for accessing innovation strategically were given. You can always buy it, go around it or fight it… At the end of the day, IP does not have to always be an obstacle! Michael provided a very sophisticated diagram on accessing an outsider’s innovation when access is not readily available.  Lots of creative ways there for achieving our goals.  Afterwards, very interesting input was provided by Marc since he shared CIP’s experience on FTO on weevil resistant sweetpotato.  Thanks Marc!

Next, a panel integrated by Silvia, Carolina, Marc, Michael and Victoria shared more experiences on FTO and funding terms and conditions. It was pointed out by Silvia that it is essential to know (and read!!) all agreements related to technology transfer.  We can not assume that IP issues are well understood by all actors involved in a project.  Therefore, a good practice is to raise all IP issues from the very beginning.  Then, Carolina raised the issue that national organizations are susceptible to be refused to get material from companies even though IPRs are not granted in the country.  At this point, although there may be FTO, it might just as well not be applicable in reality.  Subsequently, Victoria mentioned that there are some specific circumstances or elements (such as immunities) that need to be taken into account to understand the whole context of every project.   Michael then mentioned that most of the time it is by making a cost/analysis assessment that the best way of proceeding can be determined. Questions and comments were posed later on regarding “fair use”, use of traditional knowledge and genetic resources for research, disclosure requirement in patenting processes and patent landscapes.

After healthy and not so healthy meals, we talked a bit about the NPI Future.  As the NPI has evolved into a strong community of practitioners, we are searching for a new host/coordinator.  Our own participation as members is required for funding raising and we are determined to do so (you can be sure of this Peter).

Our day ended with a reception where we were able to talk to some of pro bono lawyers.   Well guys, let me quote Karine and say “Our work is not over, keep up with your workplans and see you all in six months!!”

Hasta la vista!!!

Post written by Pamela Ferro, National Partner in Peru (ESTUDIO GRAU)

USPTO, prior art & IP protection for plants in the US; Day #4 of the NPI meeting

The NPI week continued with a visit to the USPTO.  The building in itself started the day on an impressive note, as did the security system! The USPTO offices were built in 2005 and include five (5) buildings named in honour of important actors of patent history. 

The learning experience started at the Global Intellectual Property Academy with a general overview of the USPTOs history and function. We learned numerous interesting facts on the American history in general and on the subject of patents, i.e. that intellectual property goes back to the American Constitution written by the founding fathers.

We then spent some time with Mary Hale, supervisor in the electronic information centre, who took us through the prior art search systems. This presentation triggered many questions on the issue of the USPTO employees’ access to information and databases. Suggestions were then made by the participants concerning national databases that should be incorporated in the internet tools available to employees. It was obvious that it was crucial to them to avoid having the information on national resources overlooked in the research of prior art.

After lunch Anne Marie Grünberg, Supervisory Patent Examiner, presented “IP protection for plants in the US.” She took us through the three (3) types of protection available in the United Sates for plants: 1) the Plant Patent; 2) the Plant Variety Protection, and; 3) the Utility Patent. She then explained how and why these different protections are used. Anne Marie’s presentation and dynamism also sparked many questions from the NPI group. Questions were centered on the details of; whether it is common to apply for both a patent and PVP? (answer: in her experience, it was more common to apply for a plant utility patent and PVP) what does PVP offer that a utility patent does not? (answer: there are different advantages to these protections, for example, the scope of a utility patent can be broader, while it is less expensive in the long run to have PVP).  There was also discussion around the limitations to all these modes of protection, i.e. the farmers’ and breeders ‘exemption which does not exist under the Patent Act, while it is important in the PVPA. Personally, I was surprised to discover that research exemptions are absent from the US Patent Act, which makes the patent scope even larger in the United States. 

post written by Gabrielle Gagne, National Partner, Canada

Just to add, Hanumanth Rao had the opportunity to raise with the USPTO about the work that ICRISAT & CAS-IP have been working on with the EPO to have CGIAR materials included in their prior art searches.  See the information on the following link for more details of this: http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art.  Minna Moezie, the Attorney-Advisor who led the day’s proceedings invited Hanumanth to contact her directly so they can consider the possibilities. — Kay Chapman

 

USDA & plant variety protection proceedures; Day #3 of the NPI meeting

Although the day started with a whimper it ended with a bang as NPI participants left fully charged with new ideas.

 The plan for the day was to visit USDA to learn about its plant variety protection procedures through a series of presentations by USDA staff. However, our visit got delayed by a couple of hours because of the lack of transport to reach the USDA campus from the metro station. Luckily after an hour or so, some of us got the bright idea of hiring taxis and it worked.   

At USDA we got a terrific welcome “à l’Americaine” with plenty of good cheer, warmth and food.  Overall the visit was a great learning experience for all NPI participants as the presentations provided a window into the world of USDA plant variety protection program, germplasm system, international partnership, and technology transfer, licensing and patenting.

The first presentation was on U.S. Plant Variety Protection Office by Janice M. Strachan, Senior Examinor, Plant Variety Protection Office. She walked us through the entire process of how a plant variety protection certificate is obtained based on the rigorous criteria of: new, uniform, stable and distinct. It was interesting to learn that the number of applications for certificates has gone up from about a 100 to 500 per year, and the main demand relates to corn varieties for biofuel. 

Peter Bretting, National Program Leader, USDA, Agricultural Research Service (ARS) Office of National Programs spoke on the USDA National Plant Germplasm System, which is one of the largest in the world holding about 534,000 samples of 13,400 plant species. Its Germplasm Resources Information Network (GRIN) has now become a world reference.

Eileen Herrera, Deputy Director, USDA, ARS Office of International Research Programs made a presentation on Office of International Research Programs. She emphasized the similarities between CGIAR and the USDA ARS and highlighted the recent ARS-CGIAR Meeting to explore collaboration on how both the organizations can strategically address food security in the changing global agricultural research environment.

The ARS Office of Technology Transfer was introduced by Diana Tucker. The main functions of this department are marketing, patenting, and licensing as well as agreements such as MTA and confidentiality. The activities are conducted on the assumptions that IP protection is a necessary incentive for private investment in financially risky innovations and that the private sector delivery of products and services is often the most effective and efficient means of technology transfer.

Overall the presentations were clear and well-structured. The lively exchange of questions and answers following the presentations stimulated the discussions. As Lucas put it:

 “What USDA is doing in IP is very impressive and we have a lot to learn from them.”

Post written by Savitri Mohapatra, (NPI participant from AfricaRice)

Successes in African Agriculture; a new book

IFPRI’s recent publication is aptly subtitled Lessons for the Future.  The comprehensive analysis examines seven success stories including cassava (Nigeria), cotton (Mali), horticulture (Kenya) and dairying (E. Africa).  The team of consultants has reviewed the historical, cultural and environmental influences that enabled these encouraging developments.

You can order this at http://www.amazon.com/Successes-African-Agriculture-International-Institute/dp/0801895030

 There is a short and informative video at http://www.ifpri.org/publication/successes-african-agriculture-1 and an editorial review from which I quote:

Successes in African Agriculture investigates how to reverse this decline. Instead of cataloging failures, as many past studies have done, this book identifies episodes of successful agricultural growth in Africa and identifies processes, practices, and policies for accelerated growth in the future. The individual studies follow developments in, among other areas, the farming of maize in East and Southern Africa, cassava across the middle belt of Africa, cotton in West Africa, horticulture in Kenya, and dairying in East Africa.

Drawing on these case studies and on consultations with agricultural specialists and politicians from across sub—Saharan Africa — undertaken in collaboration with the African Union’s New Partnership for Africa’s Development — the contributors identify two key determinants of positive agricultural performance: agricultural research to provide more productive and sustainable technologies to farmers and a policy framework that fosters market incentives for increasing production. The contributors discuss how the public and private sectors can best coordinate the convergence of both factors.

The book is well researched, well written and extremely informative.

Post written by Peter Bloch, consultant to CAS-IP

Data Sharing to Market Development; Day #2 of the NPI meeting

Tuesday 15th June saw the second day of the 2010 Annual Meeting of the National Partners Initiative.  The day was dedicated to round table discussions.     

In the morning Victoria Henson-Apollonio and Francesca Re Manning of CAS-IP along with David Schindell from the Smithstonian Institution led a discussion on “Data Distribution and Use”.  This covered some of the issues relating to access, data release, attribution, data sharing, access and benefits, the CBD and the ITPGRFA.  The afternoon the session was on branding and market development with participation from; Karl Manders, President of Continental Enterprises, William Mansfield, Director of Intellectual Property for ABRO, and Jonathan Rosenthal from Just Works.  Peter Bloch who moderated the session said:

…all three panelists are leaders in their respective fields, and I felt that the input and feedback they provided was of real value.  And, if nothing else, Bill Mansfield provided some much-needed comic relief!  The takeaway for me personally was corroboration that community enforcement of informally held IP that I have been working on in Malawi is indeed a direction worth pursuing.  The panelists also planted an important idea – that the IP practices of the North are not necessarily all relevant to the South, and I hope that the NPI participants will carry this message home with them

 There was a bitter sweet ending to the day.  This summer Victoria Henson-Apollonio will be retiring.  In her honour, the NPI group made presentations traditional to their country of origin.  Victoria was draped with fabrics and given gifts from the four corners of the globe!  Victoria, we are all going to miss your energy and input into CAS-IP and the NPI when you leave!