The Author Feroz Ali Khader is an advocate and the author of
the book 'The Touchstone Effect: The Impact of Pre-grant Opposition on
Patents.' In this piece in The Hindu he looks into the new IP bill in
Does patenting research change the culture of science?
The Bayh-Dole Act does not encourage sharing of results
The 'experimental use' of patented invention is solely for amusement
"Dr. Georges Kohler, Nobel laureate and co-inventor of the
hybridoma technique, did not care much about patents. As a result, the
hybridoma technique -- a technique for developing monoclonal antibodies of
exceptional purity and specificity that are able to recognise and bind a
specific antigen -- remained in the public domain. This paved the road for using
it in numerous diagnostic tools to test for cancer and AIDS.
Unlike the hybridoma technique, the native and recombinant
forms of Taq DNA polymerase (Taq), an important tool used commonly in DNA
sequencing, is protected by patents held by Hoffman-La Roche. In 1995, the Taq
patents became the cause for a legal action against more than 40
Biomedical research in the
Before the Act was passed, much of biomedical research
followed a shared approach. Researchers were free to use research results as
they were all in the public domain. Federal funded research discoveries
remained unpatented and formed the foundation for many applied (downstream)
research. Drug companies used them for developing cures. The Act, however,
changed it. Results were kept secretive.
The Bayh-Dole Act encouraged private participation in basic
research, allowed the patenting of basic research, and permitted licensing of
the research to private hands for exclusive commercialisation. Even after
nearly three decades of its existence, the effect of the Bayh-Dole Act remains
controversial.
The Indian Government is presently deliberating on a new IP
bill in the lines of the US Bayh-Dole Act. The Bill titled 'The Protection and
Utilisation of Public Funded Intellectual Property Bill, 2008' has already seen
its share of brickbats for blindly emulating the Bayh-Dole Act when the
conditions of basic research in India do not warrant such imitation and that
too without some of the measures for protecting public interest contained in
the US Act.
The Bill would certainly qualify for an untimely piece of
legislation though proposed with the laudable objective of allowing
universities to patent and commercialise public funded research. One
significant impact of the Bill is strangely not be seen or noticed within the
provisions of the Bill. If the Bill is enacted it would severely undermine the
'experimental use' exception which grants immunity to universities and research
institutions which are involved in research from patent infringement actions.
Section 47(3) of the Patents Act, 1970 provides exemption
from infringement liability when the use of a patented invention is for
research or experimental use which includes imparting instructions to pupils.
The
Since the Bayh-Dole Act came into force the number of US
universities involved in patent infringement suits rose drastically. Many
universities, such as
In Madey v
It narrowed the research defence to exclude any unauthorised
use of intellectual property in the course of university research, particularly
when university research and development efforts were targeted at the
commercialisation of new biomedical research tools.
The Court held that experimental use defence will apply only
if the use of the patented invention is solely for amusement, to satisfy idle
curiosity, or for strictly philosophical inquiry. The Court refused to
entertain the defence if the use was in furtherance of the alleged infringer's
legitimate business.
Deterring discovery
Many legal experts are of the view that narrowing down the
experimental use exception to mean research for 'amusement' and 'philosophical
inquiry' will deter scientific discovery.
Scientists and researchers who use patented research tools
without authorisation will now do so at the risk of being made parties to
future litigation.
And clearing the way will involve licensing patented
research tools which will further add to the transaction cost of conducting
research.
Commercial exploitation and 'experimental use' immunity do
not go together. Universities and research institutes will have to choose
between the two. By allowing universities to patent and commercialise their
research, the proposed Bill will expose the universities to the rigmarole of
patent litigation, either to enforce their patents or to defend themselves
against charges of infringement.
Universities will pay a heavy price the day they are
prevented from pursuing a line of research for the fear of infringing patents.
Developing economies cannot afford to give up or even dilute the 'experimental
use' exception enjoyed by its universities.
Ideally, the move to commercialise university research must
have come after removing all the barriers that hinder research and restrict its
produce. Till such time, the temptation of putting the horse before the cart
must be resisted."
