access and benefit sharing (abs) and intellectual property...

Access and Benefit Sharing (ABS) and

Intellectual Property Rights (IPR)

Laura Mitreski Technology transfer [email protected]

28/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane

mailto:[email protected]

Types of IPR

Patents -> products and processes

Plant Variety Protection -> new varieties

Copyright -> literary or artistic works, computer programs

Trademarks -> distinguishing sign

2ABS and IPR – Implementation of the Nagoya protocol – Vientiane 28/11/2018

Protection of an innovation, original production

Exclusive rights to prevent others from their commercial use (in both making and selling)

Third parties must have a commercial licence otherwise they are counterfeiters

Disclosure of the innovation

Payment of annuities and taxes to maintain the title deed

Territorial monopoly

Temporary monopoly


Definition of IPR

The aim of IPR for public research


Public research produces knowledge

for the scientific community

Companiesproduce goods and services

for the society

Innovation through partnershipsbetween public research and companies

The aim of IPR for public research


IPR may be used as a tool to set up collaboration:

Companies get access to the findings arising from public researchand in return this:

Enables public research to benefit from an increased access toprivate funds

Helps researchers to legislate the use of their findings: increasesthe use of research findings for the benefit of the public interest

IPR is an acknowledged indicator of innovation for researchinstitutes, universities, countries, etc.,

Is more attractive for partners and investors If an innovation is successful: funding for research through

royalties

... But....

Constraints of IPR use


Procedures are long and complicated

Require time from researchers, administrative and legal staff Patents may be granted after 5 years of procedure on average Not systematically granted

IPR is expensive

Application Procedures untilgranting

Granting Annuity for 7 years

Europe 7,000 € 7,000 € – 10,500 € 2,000€- 12,000 € 5,000 €

US 7,000 € 10,500 € – 13,500 € 2,000 € 10,000 €


IPR speculates on future developments

Most patents do not lead to commercialisation Several years between application and commercialisation

IPR can be controversial

Risk of biopiracy attacks due to the mismatch between IP system and access to biodiversity

Patents are associated with monopolies and profits

IPR has to be used sparingly

Constraints of IPR use

Patents (1) “Technical solution to a technical problem”• Product or processes

Three criteria: •Novelty • Inventiveness step/ non-obviousness• Industrial application / utility


Patents (2) Exclusions :

Discoveries, scientific theories

Inventions contrary to public order or national cultural morality


Patents (3) Can we patent Genetic Resources (GR)?

• Not as a whole but some of its parts

• Depending on the countries

Europe• Natural plants and animals can not be patented

• Micro-organisms can be patented

• DNA sequences, protein sequences, and natural substances can be patented as long as they are isolated, described and linked to a function that leads to the implementation of the innovation


Patents (4) Can we patent Genetic Resources ?

United States• natural substances are not patentable

(micro-organisms, DNA, molecules..)

Thailand• natural micro-organisms, animals, plants,

and their components are not patentable


ABS & IPR


Before the Convention on Biological Diversity (CBD) and up until now:

IPR acknowledges only the owner of an ”invention” (research institutes, companies)

GR and Traditional Knowledge Associated with GR are considered only through novelty and inventiveness criteria

Risk: IPR system may generate inequalities between territories

ABS & IPR


Countries have sovereignty regarding their biodiversityFair and equitable benefit sharing

1. Disclosure requirements (World Intellectual Property Organisation WIPO)

Make it compulsory for patent application • Disclose the sources or origins of GR

• Supply the prior consent agreement

• Supply the ABS agreement

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How can the IPR system support the implementation of ABS obligations?

Simple recommandationGerman IP Office

Requirement of ABS but which evaluation ?France IP Office

Granting conditionIndian IP OfficeBrazilian IP Office


2. Strengthen the place of Traditional Knowledge Associated with GR as part of patent exams (WIPO)

Facilitate the access of patent assessor to related data and information on GR and Traditional Knowledge in order to avoid mistakenly granting a patent

Example: Indian Traditional Knowledge Digital Library (TKDL)

« A Guide to Intellectual Property Issues in Access and Benefits-sharing Agreement » (WIPO-The ABS Capacity Development Initiative)

http://www.wipo.int/edocs/pubdocs/en/wipo_pub_1052.pdf


How can the IPR system support the implementation of ABS obligations?

http://www.wipo.int/edocs/pubdocs/en/wipo_pub_1052.pdf

ABS & IPR: evolution of IPR management

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Co-ownership

Provider of the Genetic Resource can be co-owner of a patent

• Required to have legal status

• Needs to be legitimate (case of Traditional Knowledge Associated with GR shared

between several communities )

Advantages

• Visibility (country that innovates with its resources)

• Co-management of IPR and licensing

Constraints

• High cost

• Heavy legal and administrative management



ABS & IPR: evolution of IPR management

The licencising policy Licensing (can be related to a benefit sharing agreement)

Encourage technology development locally Grant licenses to partners which are in the provider country Increasing capabilities (ex: through training) to ensure that the countries providing the

GR are able to use and adapt the technology as needed Royalty free

Facilitate commercialisation in the providing country Grant licenses to industrial partners which are involved for the accessibility of innovation,

goods and services for the providing country No exclusive licence in order to maximise the diffusion of the innovation Non-assertion of patent rights in developing countries

Example of Licence SRL (Socially Responsible Licence) http://www.lesi.org/docs/default-document-library/Socially_Responsible_Licensing_Of_Health_Technologies_Policy_And_Practice_In_South_Africa.pdf


Towards “open-source” genetic resources?

Inspired by open source on copyright

Material transfer agreement for seeds and vegetative parts of plants

Used for production, breeding, multiplication, commercialisation,

enhancement, distribution

Privatisation is forbidden

Distribution observing the same rules

More of an ethical issue, hard to legally enforce

Example of Open Source Seed Licence https://www.opensourceseeds.org/sites/default/files/downloads/Licence_text_EN.pdfExample of Open Source Seed projecthttps://www.opensourceseeds.org/en/about-us

https://www.opensourceseeds.org/sites/default/files/downloads/Licence_text_EN.pdf

https://www.opensourceseeds.org/en/about-us

ABS through collaboration


Promotion of agroecology in Western Africa

Implementation of solutions (training, technical solution..)

Stakeholders (farmer, civil society, breeders,

fisherman..)

Brainstorming between

researchers and stakeholders

Partnership to find solutions to the

barriers identified regarding the use of agroecological tools

Identification

of barriers to the use of

agroecological tools

Conclusion

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1. Thanks to Nagoya Protocol, ABS and IP systems seem to converge to create a more sustainable system (international IP level, national IP office level, ABS agreement level)

2. Providing country can require for IPR co-ownership although this implies constrains and may be not the best solution

3. Providing country should be part of licensing management

4. Collaboration project should integrate local stakeholders’ and providers’ issues from the onset

Thank you for your attention

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