Monthly Archives: November 2010

“Agricultural Research Needs Better Intellectual Property Rules”

See news item recently published on the University of Guelph blog.  “Agricultural Research Needs Better Intellectual Property Rules.  Consumers and low-income farmers benefit from agricultural innovations

The article talks about the Review that took place of CAS-IP this year, chaired by Prof Helen Hambly from Guelph’s School of Environmental Design and Rural Development (SEDRD).

“We need a clear set of rules to guide public-private partnerships, to ensure the integrity of public research, and to enable innovation and communication of research results to benefit low-income countries,” says Hambly, chair of the review team for the CGIAR Central Advisory Service for Intellectual Property.

Updating intellectual property (IP) rules in global agricultural research will help various groups, she says. Poor farmers and consumers, for instance, look to the benefits of science and innovation to deal with the effects of climate change, growing poverty and rising food prices. “There’s a big risk that the world’s poor will be left behind…

..Better co-ordination of private research and publicly funded science is critical…”

You can view the report on the CAS-IP website “CAS-IP Review” – and it’s not too late to comment either.  We have an open consultation until the end of the year on issues the review raises for IP in ag dev.  Either follow the links to the comment board, or email k.chapman@cgiar.org directly.

Seize or not to seize? This is the problem

In a recent hearing between the European Court of Justice and Nokia (Case C-495/09), Nokia argued that the interpretation of British Courts of EU custom rules could turn the EU into a safe harbour for counterfeits. The dispute started when UK officials declared that goods in transit from a non-EU country to a non-EU country and not (at least apparently) destined for the EU, could not be seized, even if declared to be fakes (by Nokia in this case).

The question posed to the ECJ was:

are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and which are in transit from a non-Member State to another non-Member State capable of constituting ‘counterfeit goods’ within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence to suggest that those goods will be put on the mark in the EU, either in conformity with a customs procedure or by means of an illicit diversion?’

The UK, Czech Republic and the EU Commission answered “no”. France, Finland, and Poland answered “yes”. The Advocate General will answer on 3 February 2011 – so we have to wait a bit longer…

However, the question poses interesting points. Our readers may remember the heated debate when Dutch authorities seized generic medicines from India to Brazil and stopped in transit in Holland (17 June 2009). Are medicines different from mobile phones? And can we even compare generic medicines to counterfeits?

If the Advocate General answers “no” to the above question, and likewise all the other courts Nokia will appeal to, will this make the EU more flexible towards certain other goods until now widely debated? I don’t know you, but I look forward to 3 February (which is also a very boring period of the year, no Christmas, no holiday on the horizon) to keep me excited.

Thanks to our favourite Kat (IPKat) for drawing our attention to this interesting case.  “Nokia/Philips rulings on fakes in transit: write-up of submissions

 post written by Francesca Re Manning,  solicitor and consultant to CAS-IP

Stanford v Roche; Ownership rights in federally funded inventions

The case of Stanford v Roche is a patent dispute over universities’ ownership of federally funded inventions — see extract in the text box below.  Victoria Henson-Apollonio who sent over the link said: 

“This is the sort of thing that we do need to worry about…. And, the CG doesn’t even have anything like Bayh-Dole that could be used as a basis to argue against the transfer of ownership!”

She went on to refer to certain agreements within the CGIAR system that have primarily have confidentiality provisions as their legal basis.

“Centers need to know about this case and to understand the risk that they may be taking on, by entering into such agreements without proper review.”

Practical steps suggested were to:

“(1) Review of all employment contracts for Centers that are involved in CRPs, especially the lead Centers, (2) Require that no confidentiality agreements be signed by any “CRP”-staff, again –especially the lead Center’s staff, without review and (3) Put together a practice note on confidentiality agreements, “Rights, risks, and responsibilities” 

Supreme Court Agrees to Decide Whether Universities’ Ownership Rights in Federally Funded Inventions Can Be Terminated Unilaterally By Individual Inventors

“The proper interpretation of the Bayh-Dole Act is the central question at issue in Stanford v. Roche. In 2005, Stanford University sued Roche Molecular Systems for allegedly infringing Stanford’s patents relating to methods for evaluating the efficacy of anti-HIV therapies, which Stanford had developed using federal funds. Roche claimed that Stanford could not sue to enforce the patents because one of Stanford’s faculty inventors had signed, while using a Roche lab, a visitor confidentiality agreement that purported to grant ownership rights in any invention that might result from work at the lab, supposedly leaving Stanford without full title to the patents. Stanford responded that it fully owned the patents under the terms of the Bayh-Dole Act, since Stanford researchers conceived the invention in the course of research using federal funds, and the Act grants universities and other non-profits the right to assume ownership in federally funded research, subject to certain restrictions and obligations designed to protect the government’s interest. The district court agreed.

 

The U.S. Court of Appeals for the Federal Circuit held, however, that the visitor confidentiality agreement transferred the Stanford researcher’s interest in the invention to Roche. The Federal Circuit held that the Bayh-Dole Act did not prevent the faculty inventor from unilaterally assigning ownership rights to a third party and thereby defeating Stanford’s statutory right to take ownership.” (Emphasis added)

 

For more analysis on the Stanford v Roche case see:

Supreme Court to hear Bayh-Dole Patent Ownership Dispute: Stanford v. Roche” 

Supreme Court to Take Up Stanford v. Roche

 

Nagoya Protocol on Access to Genetic Resources

Various news was posted back in October on the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization.  One was from Bioversity International “Bioversity welcomes Nagoya Protocol“.  A later update included a short interview with Michael Halewood, head of the Policy & Law Unit at Bioversity International

The interviewer asked about the implications of the Protocol on the International Treaty, in particular the Multilateral System (MLS) for access and benefit-sharing.  Michael Halewood explains that the fear was the protocol might ignore the Treaty, but that, in the end, language was used in the final agreement “adequately recognized the International Treaty”. 

I also asked Peter Munyi, Legal Counsel at ICIPE (and former consultant to CAS-IP) what his reactions to the Protocol were.  He had the following to say:

“With a Protocol on access and benefit sharing of genetic resources having been adopted in October in Nagoya, focus now shifts on ratification, acceptance and approval. The protocol opens for signature on 2nd February 2011. The speed at which countries will move to deposit their instruments of ratification and approval of the protocol will the indicative of whether the compromises made in Nagoya have gone down well in the capitals of the negotiators.

It will also be interesting to see how the adopted protocol will in future shape discussions and negotiations on genetic resources, traditional knowledge and access and benefit sharing that are taking place at the FAO, WIPO and WHO. Work has already been cut out for the inter-sessional intergovernmental committee in preparation for the first meeting of the parties to the protocol, which in the earliest will take place in 2012 in India during COP 11.

There still remain a number of unsettled issues, including what the internationally recognized certificate will look like, the global multi-lateral benefit-sharing mechanism. However, before we start thinking about these issues all over again, it would be useful if we could start by congratulating all the negotiators for tireless work that has finally borne fruit, not forgetting the able leadership provided by Fernando Cassas and Tim Hodges to the process.”

You can access the protocol text from the IP-watch.org upload.

For more opinions on the agreement see:

Meeting review: TK at CBD COP 10” from TK bulletin,

Mixed reactions on new access and benefit sharing treaty” from TWN 

BIO’s take on the CBD Nagoya Protocol” from PatentlyBIOTech.

FREE Access to The Journal of Technology Transfer until end of Nov 2010

Access is FREE online to the Journal of Technology Transfer until 30th November 2010.  Visit the following link for more details: http://www.springer.com/business+%26+management/journal/10961

According to the webiste:

The Journal of Technology Transfer, the Official Journal of the Technology Transfer Society, provides an international forum for the exchange of ideas that enhance and build an understanding of the practice of technology transfer. In particular, it emphasizes research on management practices and strategies for technology transfer.

I choose a couple of articles from the most recent listings that I thought might be of interest:

But hurry! The offer will end soon!!

(thanks to Victoria Henson-Apollonio for sending me the link)

Creative Commons Resources

This popped up on my RSS feed today.  It’s a slideshow from Esther Wojcicki, Creative Commons, Vice Chair.  The presentation is entitled “How to Spread Your Ideas Globally Using Creative Commons Licences“.  Anyone can view the presentation, you can also download it by logging into SlideShare.net.

Whilst I was posting this I thought it might be useful to add another couple of resources on this topic.  The Creative Commons site has some great explanatory videos.   See the video below entitled “A Shared Culture“.  The presenters said that CC was about “..the right to exercise your copyright in more ways, more simply…”

The video below is about Science Commons called “Science Commons“.  In the video the presenter describes scientists as “the ultimate remixers” and they talk about wishing to make “…the web work for science the way it does for culture…”

Thanks for sharing CC!

For more details visit http://creativecommons.org/about/licenses or http://sciencecommons.org/

The Other Side of Innovation

Solving the Execution Challenge by Vijay Govindarajan and Chris Trimble (Harvard Business Review Books) likens innovation to climbing a mountain where reaching the summit is THE goal. Companies often approach innovation in this way, focusing only on completing an innovation cycle. But execution – commercializing and launching products or services that are driven by the innovation – is critical to success. Xerox PARC is a good example; the mouse and the GUI were both developed at PARC, but Xerox failed to develop or execute a commercialization strategy, leaving Apple to reap the rewards. Govindarajan and Trimble point to Kodak, which blew a potential lead in digital photography. They look at how to avoid this kind of lost opportunity.

You can find a review of the book and of Still Surprised: A Memoir of a Life in Leadership by Warren Bennis at http://www.economist.com/node/16888745

Post written by Peter Bloch, consultant to CAS-IP

Open Access Africa event in Kenya

This week BioMed Central are hosting an event called “Open Access Africa” in Nairobi.  From their website:

Aim of conference

Open access to the results of scientific and medical research has potential to play an important role in international development, and this conference will discuss the benefits of open access publishing in an African context, from the perspective of both readers seeking access to information, and researchers seeking to globally communicate the results of their work.

The conference will bring together researchers, librarians, university administrators and funders to discuss the issues surrounding access to scientific and medical research, and the role that open access journals can play.”

I will be following the event on Twitter to see if anything interesting is posted.

Technology transfer in sub-Saharan Africa, IPRs, development and the WIPO Agenda

I should have referenced this item some months ago, but it slipped my attention when it was published back in August on IP Watch.  (I think I was probably off on holiday!)  “The Relationship Between IP, Technology Transfer, and Development“.  Today I spotted the item cross posted on other blogs (thanks CTA and Zunia!)

The author, Cheikh Kane writes:

“In order to better understand the link between intellectual property rights, technology transfer and development, an analysis was recently conducted of the expectations of developing countries, particularly in sub-Saharan Africa, of technology transfer.”

Interestingly he notes:

“The analysis shows that in order to foster development through technology, it is necessary to put into place an efficient and flexible intellectual property rights system and to promote local innovation.”

I wasn’t able to find the text of the analysis he spoke about, possibly it was in French originally?  If anyone has the link I would be grateful if they could add it to the comments section.

For more info on the WIPO Development agenda visit “Development Agenda for WIPO“.  Including details of the 45 adopted recommendations.

The author sums up by saying:

“The adoption of a Development Agenda by WIPO has to integrate the notion that intellectual property should serve first and foremost the promotion and protection of local innovation. The international intellectual property system as it is devised is not doing enough to support local inventiveness.”

News on USPTO/EPO joint patent classification system

Last week Patently O blogged the news that the USPTO and the EPO are to start working on a common patent classification system – which is hoped to make the work of patent searchers more efficient.  They wrote:

“…the USPTO and EPO [issued] a joint announcement on a directive that they are going to start working together on a joint classification system which both companies will develop and support. The new system will be based on the European ECLA system which is itself an off-shoot of the International Patent Classification system from WIPO and will be co-developed by the two offices going forward.”

You can read the announcements “USPTO and EPO work toward joint classification system” on either the USPTO site, or the EPO site.

(Thanks to Guat Hong Teh for sending me this link)