IP From Publicly Funded Research Should Benefit The Public, Experts Say

By Catherine Saez
Publicly funded research institutions are major players in the area of life sciences and policies on the management of intellectual property emanating from this research have to be defined, according to speakers at a recent symposium in Geneva.

The symposium on public sector IP management in the life sciences, held at the World Intellectual Property Organization (WIPO) aimed at harvesting practical experiences to help policymakers develop a structured perspective on the policy question raised by public interest IP management, said Antony Taubman of WIPO.

In many countries there is a debate on how to manage publicly funded intellectual property, as a balance between private interests and the broader public interest must be reached.

Life sciences is not like managing other technologies, Taubman said at the 15 December event, as there is a basic public interest that brings a strong ethical aspect since this technology meets fundamental human needs that bring public expectations and a distinct ethical framework.

The classical perspective of IP gives two different approaches: the public sector approach which does not make use of the market and simply publishes research to the public domain, and the private sector model in which market interest and technology is licensed in an exclusive way. However, according to Taubman, this was never a complete picture, and the emerging practice shows that between those opposite poles there is a range of different options like licensing strategies, public-private partnerships and patent pooling structures.

Legislative Changes an Answer?

Some countries have changed their legislation to address the issue. In South Africa, a new law on the managing of publicly funded IP just came into effect in January.

According to Sibanda McLean, a South African patent attorney, a research and development strategy initiated in 2002 by the South African government concluded that there was little appreciation of IP as an instrument of wealth. Parliamentarians identified the need for a proper legislative framework to manage IP emanating from publicly funded research.

“Some of the IP that was developed was being assigned to overseas institutions without proper procedures,” said McLean. “Locally, professors owned the IP and could do whatever they wanted to.” There was no mechanism for the government to steer the use of this IP in a particular direction, he added.

A policy framework was subsequently developed and adopted by the Parliament. The framework created, among other things, an obligation for recipients of public funding research to disclose all IP coming out of that research. It also stated that the government should secure the IP if the institution did not. In certain cases, some patents can be secured to protect public interest and may not be licensed on commercial terms.

The main objectives of the bill are to identify and protect IP developed in the context of research and development funded by the government, McLean said. If the intellectual property can be protected, it should be utilised or commercialised for the benefit of the people of South Africa, he said.

Activists however think that this new legislation might have a negative impact on South African research. Andrew Rens, intellectual property fellow for the Shuttleworth Foundation wrote in a post this week that donor organisations, for example, might be reluctant to fund research in South Africa as they often prefer research results to be open. Also, universities now have commercial interest in the granting of patent, which could create a conflict of interest when South Africa moves to an examination system for patents and needs experts to evaluate research, he said.

In Germany, a “professor’s privilege” was introduced into the legislation, said Wolf-Michael Catenhusen, former state secretary of the German federal ministry of education and research. Until 2002, a German professor was automatically owner of all IP rights on his research results, he said.

In 2002, however, there was a revision of the “employee invention law” which adopted the principles of the US Bayh-Dole act of 1980 [pdf], which puts an obligation on universities to disclose invention to the federal funding agency . “From that date, German universities got the right to patent inventions of members of the university,” said Catenhusen.

The purpose of this new law is to promote the management of intellectual property. A special paragraph has been added into the national university law which makes IP management one of the duties of German universities. According to Catenhusen, as universities had no structure to manage this process, a federally funded programme implemented a network of IP rights management units and within 5 years every university opened its own IP management unit or became member of a transfer agency.

One of the questions brought by the new law was whether the end of the professors’ patent ownership would impede the freedom of research. According to Catenhusen, a great majority of experts agree that freedom of research is protected if the patent law protects the interest of basic research. Patented knowledge should be accessible by the research community to work on, and used in a broader context for innovation, he said.

The strengthening of innovation and IP management within a university strengthens the influence of the research field when decisions are made on priority setting in research funding, Catenhusen said. In the discussion about priorities of research funding, “fields which have the chance to get patents and to commercialise them are on the top agenda of research funding priorities, not only in Germany but in many industrialised countries,” he said.

Some researchers have voiced concerns about such priorities in research funding impending freedom of research, but Catenhusen argued that a mixed system of research funding consisting of quality oriented basic research and innovation oriented programme research funding is a good instrument to guarantee the freedom of research.

Organisation for Innovation in Developing Countries

Developed in the early 1980s, the International Centre for Genetic Engineering and Biotechnology (ICGEB) aims at advancing knowledge of the developing world in fields such as biomedicine, crop improvement and biopharmaceuticals through research and training, according to Decio Ripandelli of the ICGEB.

The ICGEB is an international institution owned by member countries. With 59 full member states, all developing countries, ICGEB, harbours scientists from over 50 countries in its laboratories. The centre has published 1,700 international peer reviewed publications and filed 55 patents.

The institution patents innovations discovered by its researchers within the context of a “social contract,” under which patents act as an incentive and an encouragement for further innovation, while society and taxpayers get public disclosure of the invention, said Ripandelli. Most developing countries do not have the culture or capability for proper management of IP, he said.

Staff rules and regulations of the ICGEB make it mandatory for staff members to vest all rights including title, copyright and patent rights in any work performed by them as part of their official duties to the centre. For researchers collaborating with the ICGEB, the management of IP rights is negotiated on a case-by-case basis in collaboration agreements, Ripandelli later told Intellectual Property Watch.

However, the ICGEB’s policy guidelines on patents and other IP rights make it clear that the technology should remain available. The results emanating from the institution’s laboratories, Ripandelli said, should “be granted to all developing countries even if they are not members of our centre.”

Catherine Saez may be reached at csaez@ip-watch.ch.