accessing other people’s technology for nonprofit research

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Accessing other people’s technology for nonprofit

research

BhavithaPulparthi15PIM2247

Dept. of pharmacoinformatics

NIPERS.A.S.Nagar

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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

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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

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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

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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

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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

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• 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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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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

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