Post on 22-May-2020
Access and Benefit Sharing (ABS) and
Intellectual Property Rights (IPR)
Laura Mitreski Technology transfer managerlaura.mitreski@ird.fr
28/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
328/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
Definition of IPR
The aim of IPR for public research
428/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
528/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
628/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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 €
728/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
828/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
Patents (2) Exclusions :
Discoveries, scientific theories
Inventions contrary to public order or national cultural morality
9ABS and IPR – Implementation of the Nagoya protocol – Vientiane 28/11/2018
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
10ABS and IPR – Implementation of the Nagoya protocol – Vientiane 28/11/2018
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
11ABS and IPR – Implementation of the Nagoya protocol – Vientiane 28/11/2018
ABS & IPR
1228/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
1328/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
14
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
28/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
1528/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
How can the IPR system support the implementation of ABS obligations?
ABS & IPR: evolution of IPR management
16
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
28/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
1728/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
1828/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
ABS through collaboration
1928/11/2018 ABS and IPR – Implementation of the Nagoya protocol – Vientiane
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
29/11/2017 Les APA et la valorisation de la recherche - Formation Nagoya interne 20
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