Drafting and Negotiating Successful Access and Benefit ... · •Drafting Successful Access and Benefit-sharing Contracts, Tomme Rosanne Young and M. W. Tvedt, Brill 2017 •Tvedt,

Drafting and Negotiating Successful

Access and Benefit-sharing Contracts

Based on the Contract Book and the Template Tool

Morten Walløe Tvedt,

20th to the 23th November 2019, Dushande, Tajikistan

Most recent ABS Publications• Drafting Successful Access and Benefit-sharing Contracts, Tomme Rosanne Young and M. W.

Tvedt, Brill 2017

• Tvedt, Morten Walløe. “Legal and Ethnoecological Components of Bioprospecting” in

Bioprospecting: Success, Potential and Constraints. Edited by Russell Paterson and Nelson

Lima. Cham, Springer International Publishing, 2017. pp. 15-28.

•“The Missing Link in ABS - The Relationship between Resource and Product” in

Environmental Policy and Law 46 (2016) 3-4. pp. 228-237, Tvedt et al.

•The Interface between the Nagoya Protocol on ABS and the ITPGRFA at the International

Level - Potential Issues for Consideration in Supporting Mutually Supportive Implementation at

the National Level. Medaglia, Tvedt, et al., Lysaker, Fridtjof Nansens Institutt, 2013. (FNI

Report, no. 1/2013)

•Implementing the Nagoya Protocol on ABS: A Hypothetical Case Study on Enforcing Benefit

Sharing in Norway (with Ole Kristian Fauchald 2011)

Drafting functional ABS contracts – with

a particular view to benefit sharing

clauses

Tomme Rosanne Young and Morten Walløe Tvedt, the Fridtjof Nansen Institute

28. October 2016, Nairobi

Book launch: Drafting success

Drafting functional ABS contracts – with

a particular view to benefit sharing

clauses

Tomme Rosanne Young and Morten Walløe Tvedt, the Fridtjof Nansen Institute

28. October 2016, Nairobi

Book launch: Drafting success

My co-author: Tomme Rosanne Young

The hands-on ABS Contract Tool:

The practical ABS Contract tool for

substantive obligations for access

to biological material without

immediate declared commercial

purpose

The template tool

The hands-on ABS Contract Tool:

The practical ABS Contract tool for

substantive obligations for access

to biological material without

immediate declared commercial

purpose

Key element of contracts (the book):1. ABS and contracts

2. How can contracts achieve ABS objectives?

3. Planning and negotiating a contract

4. Make sure you contract with the right parties

5. Be specific and concrete – defining the res, triggers, obligations and payment

6. The third-party transfer challenge

7. Be aware of possibilities and limitations to contract law

8. Expect the best – plan for the worse

9. Protect your expectations

10. Avoid the private international law errors

11. Risks and benefits of short-cuts

Key element of the content of contracts:1. ABS and contracts: How can contracts achieve ABS objectives?


3. Project-specific information







10. Risks and benefits of short-cuts/ standards













… but before embarking on the more

specifics on contracts:

▪ What is your experience with ABS?

▪ What is your role in ABS in your country?

▪ What is the question for which you want

to get an answer to during this week?

1. ABS and contracts

The rational for drafting ABS Contracts

How does ABS Contracts fit into the general picture of ABS

Morten Walløe Tvedt20th November 2019, Dushande, Tajikistan

Training on Mutually Agreed Terms: Contracts for making ABS functional

The situation in Genetic Resources Policy and Law

Norway

Law of the provider

country

Movement of biological

material and TK

Laws of user country

(also the EU Regulation)

Tajikistan

International law

▪ The principle of sovereignty

▪ Sovereign rights over GR (permanent sovereignty)

Regional level

▪ E. g. Guidelines of the African Region

Private law regulating contracts

How to make functional ABS Contracts?


Norway

Law of the provider

country


material and TK



Tajikistan

International law



Regional level

▪ Guidelines of the African Region



Legally impossible:

Cross-border

enforcement for

• Provider law,

• Policy,

• Judgments

• Adm. decisions

• Permits (of any

kind)

CBD establishes tools:

▪ Prior informed consent (PIC) at the point of time of access

▪ Mutually agreed terms (MAT) at the point of time of access

▪ Mutually agreed terms (MAT) at the point of time when benefit

sharing is becoming actualised – CBD 15.7

▪ (standard) material transfer agreement (MTA) non-CBD,

ITPGRFA

▪ Different kinds of research permits etc. (not ABS in focus).

International law – implementation into binding obligations

ABS Contract is not a conventional contract

The situation in GR Policy and Law

Norway

Requirements to the

contract

What is required in

the contract?


material and TK

How will this contract

be treated under the

jurisdiction or legal

situation?

Suriname

International law

•The principle of sovereignty

•Sovereign rights over GR (permanent sovereignty to nat.

resources)

Regional level

Hinder for

cross-border

enforcement of:

•law,

•policy,

•judgments and

•adm. decisions

Different legal tools

- Memorandum of understanding

- Prior informed consent

- Permits for research or export

- Two-step mutually agreed terms

- Contract


Norway

Requirements to the

contract

What is required in

the contract?


material and TK

How will this contract

be treated under the

jurisdiction or legal

situation?

Suriname

International law

•The principle of sovereignty

•Sovereign rights over GR (permanent sovereignty to nat.

resources)

Regional level

Hinder for

cross-border

enforcement of:

•law,

•policy,

•judgments and

•adm. decisions

Different legal tools

- Memorandum of understanding

- Prior informed consent

- Permits for research or export

- Two-step mutually agreed terms

- Contracts that are enforceable in the user

country – must meet contract law

requirements


Norway

Law of the provider

country


material and TK



Fiji

International law



Regional level

▪ Guidelines



Rules for entering into a

contract

how to regulate the subject matter

transferred and allowed acts in

regard to that res?

Enforcement of contracts

how to ensure that the user meets

the rights and obligations according

to the contract?

▪ Concrete

▪ Binding and valid

▪ Enforceable

ABS Contract is not a conventional type

of contracts:Interconnected objectives that will be integrated in the ABS Contract:

▪ commercial objectives

▪ environmental objectives

▪ social-welfare objectives

▪ science and innovation objectives

▪ development objectives


Norway

Law of the provider

country


material and TK



Tajikistan

International law



Regional level

▪ Guidelines of the African Union – standard for countries



Legally impossible

with cross-border

enforcement for

• Provider law/ acts,

• Policy ABS,

• Judgments

• Adm. decisions

• Permits (of any

kind)

Challenges for ABS Contracts:

▪ How to create incentives for the user to share and

thus contribute to conservation

▪ The time-gap challenge: from access, through

utilisation and to benefit sharing (access failure)

▪ Some degree of uncertainty – how to make good rules

in light of these dynamic elements? (bio-technical)

▪ The cross-boarder challenge: sovereignty,

jurisdiction, Parties and private parties (legal)

▪ No background law for GR and a-TK contracts (legal)

Solutions for ABS Contracts:What is the idea of an ABS Contract?

▪ From research and development into product

development:

– To regulate a dynamic subject matter/ res/ object in the

contract; because it is biological

– The raw material is unexplored and the likely products are

uncertain; because science is dynamic and evolving

▪ Construct mutual trust and collaboration

▪ Reduce uncertainty and remove doubt – keep flexibility

▪ Concrete and specific, but not narrow

What is a contract?

▪ An agreement between two or more parties that creates an obligation on all parties to perform (or not perform) a particular action or set of related actions.

▪ Contract law determines what makes a particular contract enforceable, and provides remedies when a contract is breached.

▪ Contract law is highly diverse between countries

▪ If you don’t follow contract law (in a careful and legal manner), a contract will/may not be enforceable when you want it to be, and may be enforceable when you don’t want it to be.


Norway Movement of biological

material and TK

Regional level

Different world-views are meeting:

▪ Indigenous

▪ Human right law

▪ International environmental lawyers

▪ Biotechnologists/ scientists/ biologists

▪ Corporate lawyers/ companies – contract

law logic (must follow this logic)

ABS Governmental Process and ABS Contracts

▪ Two legal elements of any ABS relationship:

– The governmental processes: getting the approval from the national competent authority

– The contractual process: getting to agreeing between the parties to the contract

▪ Both are necessary in most countries.

– Often parallel, but …

– The governmental process can be a sort of ‘strategic veto’ to the negotiation if the act requires that a negotiated contract shall be sanctioned by the authorities

Why We Need to Learn About Contracts:

Why should we care about contract law/ contract drafting?

▪ Creating an obligation (without a contract):

– Existing trust

– Same culture

– Social enforcement/ pressure

▪ None of them are present in ABS.

▪ Why/how are ABS contracts different from contracts in other areas?

▪ A company MUST be bound to be able to make a payment

Basic lesson

▪ A contract must fulfil the requirements of contract law

▪ An ABS Contract can meet all ABS requirements in the provider country and still be void and unenforceable in the user country

▪ When you negotiate, you should focus on making a legally binding and enforcaeble contract.

Plan the steps in your ABS Contract

Know the paths for getting:

▪ from access

▪ to utilisation – specific language describing every steps

▪ to creation of benefits

▪ to the date of payment

▪ how the payment shall happen

▪ what will happen if anything goes wrong

If you fail on one – the whole contract goes wrong.












2. Defining the Parties

Make sure you contract with the right parties

Morten Walløe Tvedt, 20th November 2019, Dushande, Tajikistan


Let’s have a brainstorming

Types of actors in ABS/GR:

▪

▪

▪

▪

Let’s have a brainstorming

Types of actors in ABS/GR:

▪

▪

▪

▪

Who are typical users of Genetic

Resources?

How to build in different forms of

Business models on the user side:

An academic user – and a highly commercial laboratory

and/or collection

▪ The contract between them becomes a core part of ABS

▪ The relationship between a collection and third users

A trade of biological material

▪ What is actually traded?

▪ Distinctions based on the type of user?

▪ What can be expected and how to include obligations that reach-

through?

The various actors involved in ABS

agreements:▪ Academics

▪ Master/ PHD students

▪ Small scale company

▪ Large commercial entities

▪ Multinational companies

▪ Traders

▪ Collections

Their normal metas/objectives and

approaches to ABS in practice:▪ Academics

▪ Master/ and PhD student




▪ Traders

▪ Collections

➢ Taxonomic, scientific, applied

➢A master/ PhD-thesis

➢ Single product development

➢Commercial large scale products

➢ Products for global markets

➢ Provide others with GR / TK

➢Conserve, classify, make available

The demand for genetic resources (GR):

▪ Academics

▪ Master student and PhD


▪ Large commercial enteties


▪ Traders

▪ Collections




➢Commercial large scale prod.



➢Conserve, classify, make

available

➢ Identify

something new

➢Discover new species or

sub-species

➢Newest finds to become

a no. 1 in science

➢ Funded by a commercial

firm

➢ Start-up company


▪ Academics





▪ Traders

▪ Collections








available

➢ Rapid access

➢ Short time (graduate)

➢ Exciting project

➢ Indentify something to

live of

➢ Professor interest

➢Commercial pressure

from the host university

(strict policies)


▪ Academics





▪ Traders

▪ Collections








available

➢ Specific needs

➢Knowlegde of what they

search for

➢ Targeted samples often

by TK leads

➢ Special traits

➢Wants an exclusive right


▪ Academics





▪ Traders

▪ Collections








available

➢Higher number of

accessions

➢Random colleting

➢ Larger and faster turn

over (may be)

➢ Legal certainty


▪ Academics





▪ Traders

▪ Collections








available

➢General collection

➢ Low success rate

➢Huge potentials

➢High risks

➢Challenging to

grasp

➢ Legal certainty ++


▪ Academics





▪ Traders

▪ Collections








available

➢ Middle man

➢No standalone own

interest

➢Representing others

➢ Longer time lag

➢More complex

structures


▪ Academics





▪ Traders

▪ Collections








available

➢ Conservation

➢ Making availabel

➢Broker – honest?

➢ Potential time lag

➢ Spur innovation

➢Blurry links back

(historic, present and

future)

➢ Tracing challenge

Core questions:

▪ Where is research results or money surplus going to

be created (earned) [factual consideration and a

strategic one]

▪ Legal personality [matter of contract law & corporate

law in the country of the party]

▪ Legal capacity [matter of contract law]

▪ Respresentation of the ententy [matter of contract law

and constituting documents]

Identify the flow-chart

Norway Private law Agreement

(MAT or PIC)

Tajikistan

Identify the entity which will be owning the results

Describing the user in a way that will grasp future

situations

Multitude of users – transfers

Where will the money be

created/earned

€? $? €? $? €? $?

Strategic considerations

Is it the ‘right’ parties to the contract?

▪ Identify the contracting party which will earn money or

benefits.

▪ Is it this the company, which will sell the products in the

market?

▪ If so, which market?

▪ If not, which company will create the benefits that should

be shared with you?


Identify the ‘value chain’

Norway Private law Agreement

MAT (PIC)

Tajikistan

▪ A research consortium consisting of several research units and/or

companies is not one legal entity and have no legal personality

(often a collaboration agreement regulates property rights);

▪ If all units are known (by principal) every should be a party to the

contract (two or more on the other side)

▪ How do we make sure that the contract binds “the right parties”?

Field working researchers University/inst Company


Corporate entities – thing to look for:

▪ Start-ups: credibility? Financial muscles?

▪ Mother-daughter: Which company will be earning money?

▪ Sisters? Shared responsibility?

▪ The relationship between the limited company and the

persons owning it or even the holding companies


Useful sites:

Collection of registeres for companies:

▪ https://en.m.wikipedia.org/wiki/List_of_company_registers

Example from Norway:

▪ https://www.brreg.no/home/


https://en.m.wikipedia.org/wiki/List_of_company_registers

https://en.m.wikipedia.org/wiki/List_of_company_registers

https://www.brreg.no/home/

Consent to be bound:

A “PARTY” (COMPANY, ENTITY, AGENCY, OR

COMMUNITY IS BOUND BY A CONTRACT ONLY IF

IT SPECIFICALLY AGREES TO BE BOUND

A contract requires the free consent of both parties.

➢ Describe a value chain and agree to a legal frame

➢ Agree to expectations

➢ Agree to be bound to the obligations and rights

But: Contract law requirements competence to bind

Legal personality:Criteria to be bound

Governed by national laws in the country where the contract

shall be enforced

▪ Legal capacity: to be a subject of the law; whether an entity or

community is legally empowered to may take certain actions in its

own name

– Company, organisation, inst., community, agency, country

▪ Capacity to be bound: can the entity undertake legal

responsibility?

▪ Does the user country recognise the provider country as

having legal personality to enter into an agreement?

Representation: Who can bind an entity?

Legal Authority to Act on Behalf of a Party

How do you find out who is authorized to act on behalf of a party?

Capacity to bind the entity they represent:

Is the one sitting at the table the legitimate representative of

the entity?

Corporate law in the user country

Depends on the incorporation documents of the enterprise

For academic insitutions?

Solution:

Pre-signing or pre-negotiating search

(not sufficient to ask the user or rely on the information the

user is providing)

Invest time in:

▪ Knowing if the provider ‘entity’ is recognised by the user-law

▪ Know the company structure on the user side

▪ Legally verifiable statement on the personality from its home

country

Which of these users have legal personality?

Who can they bind?

Who should sign on its behalf?

▪ Academics



▪ Public breeding companies



▪ Traders

▪ Collections

Parties – things to keep in mind

Which question does this text arise?

2.3 Nestlé South Africa (Pty) Ltd a company

incorporated under the laws of South Africa and

operating in South Africa bearing registration

number 1438/002002/08

Parties – things to keep in mind

2.3 Nestlé South Africa (Pty) Ltd a company incorporated

under the laws of South Africa and operating in South Africa

bearing registration number 1438/002002/08

• Which company:

• Mother or daughter company?

• Will be the one earning money?

• Will Nestle SA do any sales outside SA? Global potential?

• Will be the one which can be brought before a court?

• Has any assets at all?

Exercise: Gather knowledge about your

counterpart:

▪ If you know of any company seeking access to ‘GR’ and

‘associated TK’ in your country, please search the internet

to gather all the relevant information about the company or

academic institution.

▪ If there is no such company, please identify a company with

which you would like to enter into an ABS agreement and

undertake a similar internet search.

▪ Prepare a short briefing on information about the company

and present it to your colleagues.

Good example: Parties:

THIS Agreement, hereinafter referred to as “the Agreement”, is made on the [date]th day of the Month of [month] [year] by and between

Department of [right authority according to ABS acts] in the Ministry of [NAME] of the Government of [COUNTRY],hereinafter referred to as ‘‘the Provider’’ having its principal place of business [ADDRESS],

and

[CONTRACT Research Institute],

Parties:

[CONTRACT Research Institute], having his principal place of business at [ADDRESS]; [TYPE OF LEGAL ENTITY, CONSTITUTIONAL DOCUMENT, REGISTRATION NUMBER] hereinafter referred to as “the User”; represented by [NAME, DOCUMENT] producing authorisation to act on behalf on the User, based on the document [REFERENCES TO THE DOCUMENTATION OF INCORPORATION DOCUMENTS AND AUTHORISATION];

Parties:

and [INSTITUTE], having its principal place of business at []; [TYPE OF LEGAL ENTITY, CONSTITUENT DOCUMENT, REGISTRATION NUMBER], hereinafter referred to as “the User”; represented by [NAME, DOCUMENT] producing authorisation to act on behalf on the User, based on the document [REFERENCES TO THE DOCUMENTATION OF INCORPORATION DOCUMENTS AND AUTHORISATION.]

▪ If there are two parties on the user side, all clauses need to be

reviewed and revisited so the obligations are adapted to the

two-user situation.

▪ Individual contracts? Depends on their relationship

How to build in different forms of

Business models on the user side:

An academic user – and a highly commercial laboratory

and/or collection

▪ The contract between them becomes a core part of ABS

▪ The relationship between a collection and third users

A trade of biological material

▪ What is actually traded?

▪ Distinctions based on the type of user?

▪ What can be expected and how to include obligations that reach-

through?

Persons authorised to do research:

The User shall authorise the individuals who are carrying out the activities under the Contract on their behalf. Their names, passport number and social security number shall be listed in an annex to this contract.

Additional names shall be authorised under the contract by notifying the Provider, at the e-mail address: XXX.

▪ How can a notification procedure to ad-on to the list be made?

▪ How should the sanctions be for giving un-authorised access?

3. What are we aiming at regulating by

the ABS Contract:

Project specific information














Information about the project built into

the contract:

Who is funding the project?

▪ In-kind funding at an academic institution (seldom)

▪ Research council (public research funds)

▪ Development aid (frequent)

▪ A private company funding of research at a university (very

frequent)

Parts of the funding contract could be made into

obligations

Deliverables to Provider Country:▪ The deliverables from this Contract to the [Provider Country]

society, are as follows:

▪ [INCLUDE ANY NECESSARY INFORMATION REGARDING THE GOALS THE CONTRACT SHALL ACHIEVE.]

▪ [XXX Changes anticipated in the relevant part of biotechnology sector as a consequence of this contract.]

▪ [Could be the quantifiable deliverables] XXX

This is a clause that is utmost individual, must be adapted to the specific information

▪ Borrow wording or use information from the project description

Objectives of the contract:…

Two aspects must be assessed (objectives):

▪ First the objectives must cover all substantive obligations.

▪ Second, the objectives, in the manner they are formulated must add on something to the clarity or functionality of the contract.

If not present, the text of ‘objectives’ does not contribute to functionality












4. Be specific and concrete defining:

the res of the contract: obligations & rights

Understanding the subject matter



The two “Golden Rules” of Contract

Drafting:

▪ Avoid Ambiguity!

▪ Clear, specific and dynamic, but not narrow

“Golden Rule no 2” Avoid Ambiguity!

▪ Ambiguity kills contracts

▪ What is “ambiguity”?

▪ Why is it bad for contracts?

▪ How do we avoid ambiguity?

Avoid Ambiguity:A first step to a functional benefit-sharing obligation is to

reduce the ambiguity to an absolute minimum and

formulate the contract with externally verifiable criteria

▪ Fundamental difference public law and contract law;

▪ Terms like “access,” “benefit-sharing,” “genetic resources,”

“traditional knowledge,” “derivative,” “utilization,” “provider,” “user” still

have multiple meanings and are useless in a contract;

▪ Contracts are a legal tool that must create and impose concrete

obligations;

▪ Contract law is built on specificity and concreteness, and cannot

function without it.

“Golden Rule no 1”

Clear, specific and dynamic,

but not narrow

▪ Specific words MUST BE corresponding with meaning in biology/ biotechology/ other areas

▪ Clear: reduce the level of interpretation as much as possibility

▪ Dynamic in grasping new developments in technology and biology

▪ Not narrow means … let’s see in practical examples

5. RIGHTS AND OBLIGATIONS OF THE USER

The User is entitled to administrative support and guidance to facilitate the acquisition of the necessary permits required by the National Competent Authority

5.1 The User shall use the Genetic Resource or derivatives generated in the research for non-commercial purposes. In the event that there is commercialization, the user should enter into a new MAT with the Provider.

Definitions:

▪Genetic Material means any material of plant, animal, microbial or other origin containing functional units of heredity

▪Genetic Resources means genetic material of actual or potential value, in this case fish and finclips

Substantive obligation :

5. RIGHTS AND OBLIGATIONS OF THE USER

5.1 The User shall use the Genetic Resource or derivatives generated in the research for non-commercial purposes. In the event that there is commercialization, the user should enter into a new MAT with the Provider.

My questions:

▪ What is meant by non-commercial purposes?

▪ What is the relationship between ‘non-commercial purposes’ and ‘commercialisation’

▪ Commercialisation of what?

▪ What happens if the user does not come back for a new negotiation?

▪ What happen if you don’t agree on a new MAT?

Substantive obligation :

AqGR:5. RIGHTS AND OBLIGATIONS OF THE USER

5.2 The User shall take all reasonable precautions to prevent the Genetic Resource coming into the possession of any unauthorized person.

5.3 The User shall inform the Provider about any unforeseen research results that are of potential commercial interest, prior to any disclosure of this information to the public.

AqGR:5. RIGHTS AND OBLIGATIONS OF THE USER

5.2 The User shall take all reasonable precautions to prevent the Genetic Resource coming into the possession of any unauthorized person.

5.3 The User shall inform the Provider about any unforeseen research results that are of potential commercial interest, prior to any disclosure of this information to the public.

My questions:

▪ What is ‘reasonable precautions’?

▪ What is foreseen as research results if there is an obligation in

case of ‘unforeseen research results’?

▪ Who shall determine whether there is a ‘potential commercial

interest’?

▪ What are the consequences if and if not?

Definition of ‘Utilisation of GR’

Can you tell me what this means?

ARTICLE 2: definitions

(c) “Utilization of genetic resources” means to conduct research and

development on the genetic and/or biochemical composition of genetic

material, including through the application of biotechnology as defined in

Article 2 of the Convention.

(d) “Biotechnology” as defined in Article 2 of the Convention means any

technological application that uses biological systems, living organisms, or

derivatives thereof, to make or modify products or processes for specific use.

(e) “Derivative” means a naturally occurring biochemical compound

resulting from the genetic expression or metabolism of biological or genetic

resources, even if it does not contain functional units of heredity.

Definition of ‘Utilisation of GR’

Observations:

▪ Complex and ambiguious – open to interpretations

▪ And it is narrow in some aspects

▪ Can work in international law - must be specified in national law

▪ Not at all suited (at all) for being the wording in a contract

ARTICLE 2: definitions

(c) “Utilization of genetic resources” means to conduct research and

development on the genetic and/or biochemical composition of genetic

material, including through the application of biotechnology as defined in

Article 2 of the Convention.

(d) “Biotechnology” as defined in Article 2 of the Convention means any

technological application that uses biological systems, living organisms, or

derivatives thereof, to make or modify products or processes for specific use.

(e) “Derivative” means a naturally occurring biochemical compound

resulting from the genetic expression or metabolism of biological or genetic

resources, even if it does not contain functional units of heredity.


Norway

Law of the provider

country


material and TK



Tajikistan

International law

▪ Genetic resources? Utilization of GR?

▪ Derivatives? Prior Informed Consent

Regional level


Clearly defined

obligations:

Actions,

Obligations

Consequences of breach

Clear definition of

the subject matter/

res

How to construct legal language that

can ensure enforcement:Three steps

1. Establish clear obligations with externally verifiable triggers;

2. Establish clear consequences from each trigger;

3. Connect the breach of the each material obligation to a remedy






“For every legal right, there is a

remedy; where there is no remedy, there

is no right.” Blackstone 1770



The subject matter is sector-specific



Access to material:

4 The scope of access

4.1 The Provider agrees that the Company accesses and uses the genetic material of [a plant named by its species name] specified in Annex 1 to this agreement.

Access to material:

4 The scope of access

4.1 The Provider agrees that the Company accesses and uses the genetic material of [a plant named by its species name] specified in Annex 1 to this agreement.

▪ Which resources?

▪ How shall access happen?

▪ What kinds of uses?

Material given to the user:1. Material transferred to the user

The Users are authorized to collect and export accessions of

▪ [INCLDUE DETAILS OF TYPE OF SAMPLES AND OTH

▪ [XXX Describe in quantities and qualities the accessed material]

▪ [Quantities of the] [type of biological sample living or processes?]

▪

Material given to the user:1. Material given to the user

Material intended to be collected

▪ [SPECIES NAME]: The user is not allow collect materiel outside the specific five specific areas in the Annex.

▪ This Contract regulates the collection and use of [NUMBER OF] samples of the [SPECIES NAME]

▪ The user is not allowed to access TK

Plant-material samples include:

1. Material given to the user plant material

A plant samples includes any seeds or other XXX

A plant sample includes the biological plant material, any

bioactive compounds in or from the plant material, any DNA or

other sub-cell parts, it includes to any parasites or pathogens

on or in the plant material.

Challeges plant material:

▪ Very easy to conserve ex situ, thus a long term use is

impossible to impede

Animal-material samples can:1. Material given to the user animal material

Live aminals

Seemen, eggs, embryos

A animal blood sample includes the blood itself, DNA, any

blood component (including but not limited to platelets, red

cells, white cells, plasma or other components),

microorganisms, including but not limited to parasites, viruses

or bacteria or any other element in the sample (being a

pathogen or anti-body or alike).

Challenges Animal samples:

▪ Reproductive capacity (if live animals)

▪ Breeding neucleus

▪ Different types of uses

Micro-organism material samples include:

A sample of micro-organism (virus, bacteria or any other)

includes the micro-organism itself, parts thereof, RNA or any

other kind of expression of characteristics.

Challenges Micro-organism :

▪ Impossible to take them back at the end of a contract

▪ Global exchange mechanisms – how to secure a national

right if becoming a part thereof?

▪ Multiple-uses: Producer of ‘stuf’, e.g. insulin, XXX

Human-material samples include:

A human sample includes the blood itself, human DNA, any

human blood component (including but not limited to platelets,

red cells, white blood cells, plasma and other components),

microorganisms, including but not limited to parasites, viruses

or bacteria or any other element in the sample (being a

pathogen or anti-body).

Challenges human samples:

▪ Is this ABS?

▪ In human material there are many elements that are non-

human

Unintended collected material:

Any biological material that is either unknown, not listed or not described as subject matters of this contract (Art. XXX), but has followed the collected or sampled material, regardless of being part of the material, in water, in soil, in air or in or on the material, is covered by the obligations of this contract.

Such unintended material includes, but is not limited to, micro-organisms (symbionts, pathogens or parasites), moses XXX in or on the samples in soil or water or earth following the samples or otherwise.

The obligations of this contract apply equally to unintended collected material. The User shall notify the provider without any delay when such material is identified. The User shall only be granted a right to use such unintended material after the notification of the Provider [subject to the acceptance of the Provider to include each of these samples].

▪ Could discuss whether notify is enough, or rather consent?

Deposit or duplicate obligation:1. Living specimen

For each live specimen a biological sample like a tissue or other non-vital part of the animal, shall be deposited in the collection [NAME OF THE INSITUTION] in the provider country.

Material given to the user:1. Breach of contract

In the case of any deviation from any of the specifications in this article [or from any permits given to the activities in the Provider country], the Provider is entitled to full compensation for the [ECOLOGICAL, OR ANY OTHER] harm sustained, including the loss the Provider has suffered and any gain of which the Provider was deprived as a direct consequence of the deviation.

[INSERT A SUITABLE REMEDY [Could the remedy be linked to the enrichment of the User?]. Here the remedies can be differentiated for the different deviations.]

Material given to the user:1. Breach of provisions regarding the material

When the deviation is that the User has taken biological material different from the one described in any permit, or different from which permission has been granted; or in larger amounts than agreed the taken a larger amount of the material than agreed, or that material follows the obligations of the contract in addition to the right to compensation for damages either to [provider country] or to any human involved in the collection of samples, the User is liable to pay [provider country] and/or each of the individuals a fixed sum of [US XXX]. [XXX INSERT A SUITABLE REMEDY.]

Material given to the user:1. Breach of provision

This being the case, and the breach has caused damage to the health of an individual, the User is liable to pay for any expenditures required to recover health to the same level as before the action.

Reaction of breach of contract “remedy”:

1.4.9 Penalties

Failure of recipient to comply with this agreement shall attract the following penalties and fines

▪ Minimum of three [ten] years in jail,

▪ Fine not less than United States Dollars Ten thousand (USD 10,000) or [local value] equivalent.

▪ Blacklisting of the recipient/company under global biodiversity campaign.

Reaction of breach of contract “remedy”:

1.4.9 Penalties Failure of recipient to comply with this agreement shall attract the following penalties and fines

▪ Minimum of three [ten] years in jail,

▪ Fine not less than United States Dollars Ten thousand (USD 10,000) or [local value] equivalent.

▪ Blacklisting of the recipient/company under global biodiversity campaign.

Penalties can never work in a contract

▪ Based on another logic

▪ Use contract reaction/ remedies

Alternative manner to list:Scientific and common

names

Part of resource to

be utilised

Physical state of resource Quantity Locality / source

information

(coordinates)

Local name

English name

Latin name

g

Caveat – state of material alt. 1

State of materials

The Materials are provided without warranty or merchantability or fitness for any particular purpose or any other warranty, expressed or implied. Recipient agrees to defend and indemnify the Provider, its trustees, officers, employees and agents from any and all claims and damages in any way arising from the acquisition, use, storage or disposal of the Materials by Recipient, unless such claim is solely due to negligence on the part of the Provider.

Caveat – state of material alt. 2State of materials

The Provider shall not be held responsible for the quality, availability, purity (genetic) or any other aspect of the material being accessed by the User. Neither will the Provider be responsible in cases in which the User wants a larger quantity of the same or similar material.

The Provider assumes no risk or responsibility for the outcome of research and development, nor responsibility if the material lacks the desired properties or characteristics the User aimed at finding.



How to draft the trigger points



How to draft the obligations then:

The USER shall receive/collect 8 males and 20 females of the spieces Aquatis hillarious.

The individual fish shall be captured according to the standard XXX for capture of aquarium fishes.

The collection of speciemen shall be surveilled by the XXX.|

In the case of breach of collecting the fish according to the standards, the USER shall be liable to pay the cost for rebuilding the damages they caused by […]

Structure of substantial article:1. Substantive obligation – actions regulated and allowed under the

agreement (scenarios) Use clear language describing the activities

– The user has the right to use the samples to develop a new variety of XXX

– The use has the right to screen the DNA, sequence the DNA of the samples

2. Consequences of the obligation kicking in

– When the user develops a new variety of XXX, then the annual sales of the

seeds should be shared XXX

3. Reaction of breach of contract

– If the user fails to pay the annual fee, the XXX

If you cannot be clearer, how do you expect a judge in Germany

(who has no idea about fish breeding or even biology) to

become clearer than you?

Contract responsibility for collection:All collecting shall be done/conducted by the User [CONSIDER A MORE SPECIFIC DESCRIPTION] accompanied by the [RELEVANT INSTITUTIONS] officials designated by the [RELEVANT NATIONAL AUTHORITY].

The User shall have access to the collection site for a period of [SPECIFY TIME LIMIT] from the [SET THE DATE].

▪ The rational is to establish a remedy in the contract responding to the breach of permit given in the provider country.

Contract responsibility for collection:In the case of any deviation from any of the rules regarding the collection, sampling or handling of material in the Provider country, the Provider is entitled to full compensation for any ecological, biological or similar harm, including any economic or non-economic loss by local or indigenous groups. The manner to calculate such a loss shall be [METHODOLOGY FOR CALCULATION DEPENDENT ON THE SPECIFIC ACT].

Obligation to maintain samples:Maintaining samples of the material in the provider country

serves the several functions:

1. Conservation (ex situ) rational as the samples will be

available for the future in the provider country.

2. Any material will be made available for the research by

other researchers (especially important for declared non-

commercial as non-exclusivity is the norm).

3. To make the provider country more able to enforce the

contract.

Obligation to maintain samples:The Parties recognise the value of samples in future research and development and the value in long-term research on and use of the samples.

The User shall make all efforts to store the samples at a [XXX] institution. In the event that that no institution with the needed facility is found in [XXX], the User shall support financially and technically the establishment of the needed facility as part of the non-monetary benefit sharing arrangement under this contract.

The samples or any related information or knowledge shall not be made available to any person or any legal person, without a new contract.

Obligation to maintain samples:The User shall make all efforts to store the samples at a [provider country] institution. In the event that that no institution with the needed facility is found [XXX], the User shall support financially and technically the establishment of the needed facility as part of the non-monetary benefit sharing arrangement under this contract.

As a last resort, the User shall provide and fund storage facilities in a biobank / establish a biobank to store the samples outside [XXX] and securing the ownership rights.

▪ The alternative in red is the last resort if the user has no conditions to accept any other options.


Ownership or bundle of rights



Ownership or bundles of rights:

In a non-commercial contract –

why should the user want any

property rights?

Ownership, property rights or bundles

of rights:

In a non-commercial contract, there are no reasons for

the user to own the material, nor have a commercial right

to the results

Strong rational for the full property right and a successive

commercial right for the provider.

▪ Sovereign rights are not the same as property rights

▪ Each ‘right in the bundle’ must provide absolute clarity

How to understand property rights:Subject matter

Right holder

▪ Qualifying relationship to the

subject matter

Other legal entities

▪ Aiming at a relationship

to the subject matter


Right holder


subject matter





Right holder


subject matter




Subject matters for the contract:

▪ any samples as listed in Article XXX and annexes, including but not limited to unknown or unlisted material;

▪ any samples of microorganisms in or on or following material;

▪ any parts of DNA or similar material identified from the samples;

▪ any strains or lines or alike prepared form the samples;

▪ any DNA sequences, or digital sequence data;

▪ any genetic or other information;

▪ tissue samples;

▪ biochemical and alike and unlike found in or manufactured in any manner enabled by any of the above.


▪ any samples as listed in Article XXX and annexes, including but not limited to unknown or unlisted material;






▪ tissue samples;



▪ any samples as listed in Article [XXX] and annexes, including but not limited to unknown or unlisted material;






▪ tissue samples;



▪ The samples

▪ Isolated from the samples

▪ Developed enabled by the samples

Right holder


subject matter





This subject matters includes the subject matters technically isolated by the Users.

The Government of [Providing country] retains [is granted]ownership to any other outcome from any activity undertaken by any use of samples or information (including, but not limited to, [feed protocol, nutrition technology, recipes, types of feed, nutritional requirement of species, rearing protocols or any data or information].)

Research results enabled by any use of any of the subject matters mentioned in the previous paragraph are covered by the same property rights for the Provider country.


▪ The samples


▪ Developed enabled by the

samples

Right holder


subject matter




▪ feed protocol

▪ nutrition technology

▪ recipes

▪ types of feed

▪ nutritional requirement of species

▪ rearing protocols

[Look at the objectives of the ‘project’

behind the ABS Contract]


▪ The samples



samples

Right holder


subject matter




▪ feed protocol


▪ recipes

▪ types of feed






▪ The samples



samples

Right holder


subject matter




▪ feed protocol


▪ recipes

▪ types of feed





Where is this example from?

All [NAME] Materials are the exclusive property of [NAME] and [NAME] shall retain all Intellectual Property Rights in the [NAME] Materials, any amendments or improvements to and anything derived from, the [NAME] Materials.

Kew Garden on property rights:

All Kew Materials are the exclusive property of Kew and Kew shall retain all Intellectual Property Rights in the Kew Materials, any amendments or improvements to and anything derived from, the Kew Materials.

The Supplier is granted a revocable, non-exclusive, royalty-free licence to use the Kew Materials (and any content derived from the Kew Materials) for the purposes of fulfilling this Agreement only, such licence to automatically terminate on completion of delivery of the Goods and/or Services (or, if sooner, on the expiry or termination of this Agreement).

If Kew Garden can “retain” ‘exclusive property rights – why can’t you?

Principle of ownership in context of

funding:

[Since the Project is [an Academic Research Project/ Research Project/ ‘Development Aid Project’], the overall principle of ownership is that any results from the Project or enabled by the Project (by activities related to the material from [Provider Country] or any results there from) belong to [Provider Country].

What ‘ownership’ implies:

“Ownership” includes the right to utilize, commercialize, access, re-introduce and includes decision-making regarding securing an intellectual property right.

Ownership also includes that any of these subject matters shall be made available without any charge in a manner that the [Provider Country] can take use of them in any manner.]

Right of use – property right

“Ownership” includes the right to commercialize any biological or technical innovation or information.

Ownership” also includes the right to access and repatriate the dead samples, living samples, progeny or genetic or biological parts thereof or information or knowledge at any location at any time, without any benefit sharing obligations.

“Ownership” also includes participating in decision-making regarding whether or when to publish the research results or patent any innovation based on them.

Any aspects that are not covered?▪ any samples as listed in Article XXX and annexes, including but not limited to unknown or

unlisted material;






▪ tissue samples;

▪ biochemical and alike and unlike found in or manufactured in any manner enabled by any of the above

▪ feed protocol


▪ Recipes

▪ types of feed



Technology specific-scenarios

Come-back clauses:

When something has been found the situation is all

altered

▪ No incentives to come-back

▪ Requires agreement – cannot force a new contract

▪ No legal (judiciary) remedies available

▪ Forcing a new contract could be void, due to lack of

concent to be bound


Specifying the rights of the respective

parties



Unconditional use-right:

[The Provider Country] has an unconditional right without any charge, to experimental, commercial or developmental use of any result, product or process enabled by the samples under this Contract.


This right exists independent of any connected intellectual property right protection and includes an unconditional right to non-exclusive licenses for any outcome from this project.

Any utilization of samples including knowledge or results achieved from any activities described in the Project description [the said project], shall be made available for [the Provider Country] without any charge whether or not these results are subject to IPRs.


The User shall make available any product enabled by the subject matters of this contract to the Provider Country to production cost, this includes but is not limited to an obligation on the users’ own product chains, and any third-party to this contract when making use of a product or process enabled by the subject matter of this contract.

[The User and the Government of [the Provider Country] are joint and several liable and obliged to make these products or processes available to the participants who participated to any collection.]


The right of the government of [the Provider Country] is especially strong for any diagnostics, treatment or [XXX] or any vaccine, medicine or any other treatment. The user shall ensure that any vaccines or medicines or techniques are made available to the population of [the Provider Country].

(Unconditional use-right:)

In the case if the methods and/or products developed as part of this Project or any research or developments or other activities enabled by the Project on [the Provider Country] an material are used outside [the Provider Country] or any other legal entity for non-commercial, commercial, development or any other purpose, [the Provider Country] shall be paid 50% of the gross turnover of the unforeseen value-creation from this Project or enabled by this Project.

In the unforeseen event that the Users commercialize any product or process linked to the subject matters of the Article [XXX] of this Contract without any patent right, the Provider shall be entitled to 50% of the gross turnover of sales or licensing or any other manner to collect revenue.

Taxonomic:

▪ The User shall use the living or non-living material exchanged or progeny thereof for non-commercial, academic research activities. Non-commercial research activities include, but are not limited to, taxonomic characterisation (including but is not limited to phenotypic or genotypic metodes) and conservation in a method suitable for the material (freezer, cryo or other adequate method). The right to store the material does not extend to preparing an assay that could be made available to others than the User.

Taxonomic:

▪ At the final stage of each and any of these activities, the User shall share information, records or knowledge with the Provider. At the latest, such sharing shall happen on a bi-annual basis where all information, records or knowledge is shared with the provider on 10 July and 10 January.

Taxonomic:▪ In the case of depositing samples or any parts thereof in a

collection, the accession shall be done with a clause stating that “The government of [Providing Country] has commercial rights or other further use rights in this accession and consequencelyin products or processes developed based on the research results in this academic publication, and any use requires a contract of use with the Government of [Providing Country].”

▪ If such information, records or knowledge is not shared or offspring are not offered, the provider shall [INSERT A PROPER REMEDY].


The linkage to IPR/ patents



Making the decision between academic

publishing or applying for a patent:

▪ When the User identifies a research result that is worthy of being published in any form, he shall immediately, and before any information has been disclosed, write an analysis exploring its commercial potential. This analysis shall immediately be shared with the [Provider Country]. The provider shall within 14 days require the Technology Transfer Office or alike (TTO) of the university to start the patent application process.



▪ Lack of response from the Provider shall be interpreted as not requiring a patent application process to be initiated. Initiating a patent application shall suspend the right of the user to publish, in any manner that can be considered ‘prior art’ in any patent system until the patent application has got its priority date. This delay of the publication shall not prevent the research to use the findings in activities that will not rendered the results as prior art for purpose of seeking exclusivity through a patent.


publishing or applying for a patent:▪ The [Provider Country] has an exclusive right to

commercialize or make decisions relating to commercialization relating to any of the subject matters or processes.

▪ This includes a right to access and repatriate the samples or biological material, including progeny (regardless of the number of generations or the breeding with other individuals not belonging to the material collected under this contract) or genetic or biological parts thereof or information or knowledge at any location at any time, without any benefit sharing obligations from the Provider to the User.



▪ In the case of publication or oral presentation of the research results or any other product or products covered by this contract, full acknowledgement is to be given to the source of the samples and research collaboration.

Publication or transfer of research

results (information sharing:

▪ One of the core academic outcomes of research projects is a peer review publication. This contract does not limit the Users from publishing research results in relation to the project in peer reviewed academic publications. Any such publication should be shared with the Provider prior to submission. When published, the Provider shall receive a soft copy and two hard-copies of the publications.

Publication or transfer of research

results (information sharing:▪ In case of publications or oral presentations of the research

results or of any other product covered by this Contract, full acknowledgement is to be given to the Provider, the project enabled by the contract, and the following clause shall be printed in the publication:

▪ “The government of [Provider Country] has commercial rights or other further use rights in products or processes developed based on the research results in this academic publication, and any use requires a contract of use with the Government of [Provider Country].”

Material transfer agreement:

4. Utilization of Material

1. The Researcher shall utilize the material for said research program only.

2. The Researcher cannot use the material for commercial purpose nor can it obtain any intellectual property right on the material.

3. The Researcher retains the material for the period of the research in ---------- (destination country) whereupon it shall return any remaining unused material to the Provider.

Problems and solutions:

▪ Is it possible to get a court order saying that I cannot do

something?

▪ Prohibiting taking out a patent is logically impossible since

the patent system defines that itself.

▪ And what are the consequences if these prohibitions are

not met?

▪ The contract must set its clauses for non-compliance

Revisit Derrivatives in NP:

(e) “Derivative” means a naturally occurring

biochemical compound resulting from the genetic

expression or metabolism of biological or genetic

resources, even if it does not contain functional

units of heredity.

▪ Naturally occurring biochemical compound?

▪ resulting from the genetic expression

▪ resulting from metabolism



1. Establish clear obligations and rights with externally verifiable triggers;






Contracts and IPRs: Introduction

▪ Contracts are established under the general framework of national contract law

▪ In some cases, a national law on genetic resources might specifically require that the provider and recipient agree on an ABS contract

▪ In some cases, contracts are likely to be governed by general laws such as the laws of contracts and competition law.

Resources

Resources

▪ WIPO Publication

▪ Practical Guide on IP Aspects of ABS Agreement

Olivier Rukundo & Maria Julia Oliva

How to deal with IPR in ABS Contract

▪ Intellectual property (IP) issues arise as one element of the broader framework on access and equitable benefit-sharing.

▪ IP issues are only one component of the full range of practical and legal questions that may need to be addressed in access and benefit-sharing agreements

▪ IP management in an access and benefit sharing agreement can greatly influence how Parties to a given agreement achieve their goals and serve their mutual interests.

Specific Practical IP Questions

▪ Right to application

▪ Ownership

▪ Licensing arrangements

▪ Enforcement

▪ Sublicensing

▪ Performance standards

▪ Reporting and disclosure

▪ IP and related rights (i.e copyright, patents, trademarks and GI’s, trade secrets etc.)

Application

-invention

The ‘life span’ of a patentInternational law

WIPO, WTO, UPOV

Regional level

•Harmonisation: EU, AU

•Grant of patents: ARIPO, EPO,

Search

-prior

art

Examination

-‘novelty’

-‘inventive’

-use

Enforcement

- Exclude

others from

using

Grant Revocation

National patent system:

Relationship to IPRs:

X

Relationship to IPRs:

X

Patent law

Europe (Norway )

Enter into a contract

how to regulate the object

transferred and allowed acts

regards that object

Private law Agreement

MAT (PIC)

EPO system

… and their own court

system

Tajikistan

Autonomous international legal system

- No linked to ABS

- Lack of or breach of a contract have no

legal significance in the patent system

Application

-invention

The ‘life span’ of a patentInternational law

WIPO, WTO, UPOV

Regional level

•Harmonisation: EU, AU

•Grant of patents: ARIPO, EPO,

Search

-prior

art

Examination

-‘novelty’

-‘inventive’

-use

Enforcement

- Exclude

others from

using

Grant Revocation

National patent system:

Selection of claims in the teff patent

Claims

1. A flour of a grain belonging to the genus Eragrostis, preferably Eragrostis tef, characterized in that the falling number of the grain at the moment of grinding is at least 250, preferably at least 300, more preferably at least 340,most preferably at least 380.

2. A flour according to claim 1, characterized in that the grain has after-ripened.

3. A flour according to claim 2, characterized in that the falling number of the grain at the moment of grinding is at least 1.01 times higher than at the moment of harvesting the grain, preferably at least 1.05, more preferably at least 1.20 and still more preferably at least 1.30 times higher.

Selection of claims in the teff patent

Claims

4. A flour according to any one of the preceding claims, characterized in that the grain is gluten-free.

5. A flour according to any one of the preceding claims, wherein the grains has been ground at least 4, preferably least 6, more preferably at least 8 weeks after harvesting.

6. A flour according to any one of the preceding claims, wherein the falling number of the grain at the moment of grinding is substantially stable for at least 2-3 weeks.

…

16. A dough or batter comprising flour according to any one of claims 1-15.

17. A gluten-free dough or batter comprising flour according to any one of claims 1-14.

18. A food product comprising flour according to any one of claims 1-15.

Exercise:

How would you define the subject matter of

the contract transferred from the provider to

the Company?

How to capture the value in the European

market in contract terms?

Choosing wording for a contractContract Patent

Genetic resources A flour of a grain belonging to the

genus

Derivatives After-ripened grain

Non-traditional Teff based

food and beverage

A flour … gluten-free

Any component of the genetic

resources

A gluten-free dough or batter

A method for baking a product (19)

A food product or luxury food product

prepared …

A plant variety

Rights to invention leading to a patent:

▪ The User shall at any stage of the innovation process involve researchers from the Providing Country in a manner such as they qualify to or are recognized as co–inventors to a patentable invention.


▪ Before embarking on writing a patent application concerning a product or process, method, data or information emanating from the live material or non-living material exchanged, progeny or genetic or biological parts thereof, information or knowledge that was enabled by the subject matter in this project, the User shall notify the [focal point] and write an assessment of whether any researchers from the [Provider Country] has contributed to the invention in a manner qualifying to be recognized as a co-inventor in the invention. This assessment done by the User shall be submitted to the Provider in a short report before the patent application is sent to any patent office.


▪ The ownership of the government of [Provider Country], as follows from Article XXX, includes a right to 50% of the gross licensing fees or any other revenue derived from any patent enabled by the subject matter under this contract.


▪ The [Provider Country] has an unconditional right without any charge, to experimental, commercial or developmental use of any result, product or process enabled by the samples or by this contract, this includes an unconditional right to a non-exclusive license for any use of any invention related to this contract by relevant users in the [Provider Country]. The Users shall issue a use license without any time-limits to any use in [Provider Country]. The Provider/ [Focal Point] has the discretion to determine which users will benefit from a non-exclusive license on a case-by-case basis taking into account the commercial needs of the patent holder. These rights are equally applicable if the product or process is based on and their exploitation presupposes any use of prior existing general knowledge.


▪ The User shall not transfer the patent to any physical or legal persons outside the Parties to this contract. This includes, but is not limited to sales of the patent, transfer of the patent to a start-up company held by the inventors themselves as a whole or in part or any other legal or physical person different from the one mentioned in Article [XXX] of this contract.

▪ In an event of such a transfer of the patent, the Provider shall automatically be the owner of the patent and retain the right to the patent. The Provider has a right to [tre inn i] existing licenses of the patent. In the event of transfer to the other User under this contract, this clause applies equally.


▪ In any patent application on an invention enabled by this contract, the following text shall include on the front page and in paragraph 001 in the description of the invention:

▪ “This invention was created in the performance of a [Name of this contract/ Cooperative Research and Development Contract] with the [National Institutes of [NAME OF THE PARTNER IN THE PROVIDER COUNNTRY]. The Government of [Provider country] has rights in this invention, including but not limited to the unconditional right to non-exclusive licenses to use it for domestic purposes. In the event of transfer of this patent, the patent shall become the full property of [Provider Country]”.

Disclosure and securing rights:

▪ Description

▪ [0001] This application claims the benefit of

U.S. Provisional Application No. [research

grant application], filed on February 1,

2000, which is incorporated by reference

herein in its entirety. This invention was

made with government support. The

government has certain rights in the

invention.

▪ If the US Government can secure their interest in a patent, due to funding, why should not the provider do the similar?

Rights to invention leading to a patent

The User shall keep accurate records (together with supporting documentation) appropriate to determine all amounts due to the Provider. The User shall send a copy of the records at the point of finalizing it. Such records shall be retained for at least three (3) years following the end of the reporting period to which they relate.

[Insert a suitable remedy.]

Explanation:

The logic behind this clause is that since the institutions are doing academic research they should not need to transfer any patents to the material or outcome from the project.

Strategic planning for potential IP

considerations

▪ Possible IP outcomes from collaborations

▪ Ownership?

▪ Ownership of improvements and future developments

▪ Sharing of benefits from successful exploitation of IPRs

▪ Legislative considerations: national, regional, international laws

The link to IPRs - patents:

▪ Apply for a patent together? Common recognition as

inventors

▪ A patent is an object for property – can be transferred

▪ Prohibit patenting?

▪ Encourage patenting?

▪ How to ensure a part a right in this situation?

▪ Relative values?


Benefit-sharing obligations



How to draft benefit-sharing obligations:

• Define the trigger-points (actions or milestone)

• What shall be shared? (subject to negotiation)

• When?

• How to calculate?

• What happens if/ when something goes wrong?

Be Specific and Concrete Regarding All Substantive Obligations and Processes:

Formulate in most concrete manner possible:

(i) the resources accessed and its location (genetic resources and/or

ATK),

(ii) the user’s rights and expectations,

(iii) the provider’s rights and expectations,

(iv) the user’s obligations,

(v) the provider’s obligations and

(vi) the overall contract objective.

The text of the contract must convey exactly what is included

and what the parties have agreed to do, with the highest

possible level of clarity and detail.

Benefit sharing in a scoping agreement

2.4 Benefit sharing under the ABS Agreement during Actualization Phase shall be based on each party’s contribution, fairness and mutual consensus.

Benefit sharing in a scoping agreement

2.4 Benefit sharing under the ABS Agreement during Actualization Phase shall be based on each party’s contribution, fairness and mutual consensus.

Questions:

▪ Based on each contribution – relative contribution.

– Danger: low value to natural resources, high value to research

▪ ‘mutual consensus’ – what happens if they do not agree?

Benefit sharing clause

4.1 Calculation of Benefits and payment

THE COMPANY will make payment to the LOCAL COMMUINTYof an amount of three percent (3%) of the net sales (as per THE COMPANY’s accounting standards) of the Products by THE COMPANY , whether in [one specific country] or abroad. The payments will be calculated bi-annually (every six months) by THE COMPANY and paid to the Trust fund managed by MINISTRY within two months after the end of each six month period.

Benefit sharing clause

4.1 Calculation of Benefits and payment

THE COMPANY will make payment to the LOCAL COMMUINTYof an amount of three percent (3%) of the net sales (as per THE COMPANY’s accounting standards) of the Products by THE COMPANY , whether in [one specific country] or abroad. The payments will be calculated bi-annually (every six months) by THE COMPANY and paid to the Trust fund managed by MINISTRY within two months after the end of each six month period.

Task: identify problems

Example agreement4.1 Calculation of Benefits and payment

THE COMPANY will make payment to the ILC of an amount of three percent (3%) of the net sales (as per THE COMPANY’s accounting standards) of the Products by THE COMPANY , whether in [one specific country] or abroad. The payments will be calculated bi-annually (every six months) by THE COMPANYand paid to the Trust fund managed by MINISTRY within two months after the end of each six month period.

• three percent (3%)

• net sales, after all and every cost the Company might relate

• as per the Company’s accounting standards [themselves?]

• the Products – which products the coffee machine or only this

particular cappucino?

• which branch of the company

• whether in one country or abroad – Will this national branch sell

anything abroad?

8. Benefit sharingThe Company has agreed to share the benefits that arise out of the utilization of the genetic resources of the SAMPLES exchanged.

8.1 The Company agrees to pay to the Provider a lump sum equal the the amount:

1% of the gross income in the years 2007+2008+2009 / 3

This payment shall be made immediately after the publication of the annual account of the company for the year 2009 (i.e. shortly after publication and shareholder approval in June 2010).

8. Benefit sharing

8.2 The Company agrees to pay to the Provider annually a royalty of 30% of the net profit from the sale of basic and certified seeds of the varieties specified in column 3 to the agreement.

Benefit-sharing calculation principles:

• Relative contribution?

• What if the GR was taken out of the scenario?

• The low value of nature as a problem

• How to calculate? Net or gross?

From benefit-sharing to payment for a goods

AqGR:6.0 BENEFIT SHARING

The benefits arising from access and use of the Genetic Resource shall be shared fairly and equitably as follows;

6.1 The user shall contribute to training and capacity building by inclusion of 3 Masters of Science students, 4 members of staff at [institution in Provider] and 2 members of staff from Fisheries responsible for conservation of genetic resources during the period when this MAT is in force. The researchers will specialize in Genetics and Fish nutrition. The researchers will be involved in field sample collection in country, and laboratory work at XXX and/or the user’s institution. They will also be involved in data analysis and manuscript preparation.

Non-monetary (and result independent obligations)

The User shall organise, fund, and supervise [FIXED NUMBER] Master’s degree students (a twelve-month program at [institution]) and [FIXED NUMBER] PhD students (36-month program at [INSTITUTION]).

Participants shall be selected on the basis of [describe a procedure or criteria].

The user shall cover all expenditures, travel, stay and [FIXED LUMP SUM FOR LIVING EXPENSES], set at a fixed rate to [XXX US] which shall be paid [PROCEDURES].

[SPECIFY ANY OTHER OBLIGATION ON THE PARTICIPANTS.]

Vision: Building a lab:

▪ Identify the vision for bio-innovation

▪ Identify your needs

▪ Which institutional structure exists?

▪ What can each bio-prospector contribute with?

▪ Development aid contribution?

Griffith University and Eskites as ‘best practices’

Bhutan


6.2 The user shall within the funded budget of the Project support the establishment of the following facilities at XXX

6.2.1 Solar powered hatchery - that will enable fingerling production throughout the year.

6.2.2 Green house that will enhance temperature to allow keeping brooders at optimum temperature for breeding.

6.2.3 Cryopreservation facilities – to enable XXX start its own cryo bank at an optimum scale.

Non-monetary (and result independent obligations)The User shall within the limits of the funded budget of the Project, where [a fixed sum] is allocated to the Provider, support the establishment of the following facilities at [the institution]:

▪ Solar power producing [XXX] Watt and battery with the capacity XXX. The facilities shall be installed and functioning [1 January 2018].

▪ Cryopreservation facilities – to enable [the institution] to start its own cryo bank. The facilities shall be model [DETAILS ON THE MODEL]. The facilities shall be installed and functioning [1 January 2018].

▪ Greenhouse facilities [specified as XXX, XXX m2.] The facilities shall be installed and functioning [1 January 2018].


The User shall within the limits of the funded budget of the Project, where [a fixed sum] is allocated to the Provider, support the establishment of the following facilities at [the institution]:

▪ The User shall provide training of [FIXED NUMBER] for maintenance. Training shall be finalized at the latest 6 months after the respective date the Provider has approved for the installation and functionality.

▪ The User shall cover any maintenance costs for five years, limited to a maximum of [FIXED YEARS].


Training a minimum of 100 aquaculture farmers on [INTEGRATED SYSTEMS] evenly balanced between women and men. The curriculum shall consist of [MONITORING, SURVEILLANCE AND RESULTIN XXX] and be approved by the Provider. If the User plans to use non-internal trainers, the Provider shall be consulted and have a right to veto the suggested trainers.


6.3 In case of publications or oral presentation of the research results, full acknowledgement is to be given to the source of the Genetic Resource;

6.4 If Traditional knowledge associated with the Genetic Resource is involved, the User shall acknowledge the source of the Traditional knowledge and share any arising benefits with the Traditional knowledge holders. The research results published or presented orally will include full acknowledgement of the source of the Genetic Resources and the Traditional knowledge


6.5 The provider shall receive both hard and electronic copies of any research papers published in peer review journals from the research work emanating from the collected genetic resources. Such articles will be distributed to libraries at XXX, National Commission of Science and Technology and 2 Fisheries Research Stations in XXX.


6.7 Duplicate specimens will be deposited with the repository at XXX University of Agriculture and Natural Resources.

6.8 The User shall avail to the Provider genetic information of the fish as analyzed in the investigation, for future reference.

6.9 The User agrees that the Provider has the right to access all data resulting from the research

Be Specific and Concrete Regarding All

Substantive Obligations and Processes:

Content of a benefit-sharing clause:

▪Definition of the material

▪Manners of its utilisation that are legal under the

contract

▪Exact manners to stipulates the sharing-obligations

▪Definition of what acts are not allowed

▪Clear stipulation of consequences of breaches

A second great challenge:

Exact manners to stipulate the

sharing-obligations ▪Concrete

▪Well defined and externally verifiable trigger points

▪Calculable

▪Legal certain for both parties

▪Enforceable

j) Method of payment

Any payment according to this agreement shall be made on a bi-annual basis. The User shall provide an audited financial report confirming any gross turnover that triggers monetary obligations according to articles [art.]. A financial report based on the reports of income VAT shall be provided without reasonable delay after the 31 December and 30 June each year. The payments shall be made to the FUND and will be due to payment one month after the respective bi-annuals.

The User shall keep complete and accurate records (together with supporting documentation) on the basis of which all amounts due to the Provider can be determined. Such records shall be retained for at least three (3) years following the end of the reporting period to which they relate.

Method of payment:

▪ Any payment according to this contract shall be made on a bi-annual basis. The User shall provide an audited financial report confirming any gross turnover that triggers monetary obligations according to articles [art.]. A financial report based on the reports of income VAT shall be provided without reasonable delay after the 31 December and 30 June each year. The payments shall be made to the FUND and will be due to payment one month after the respective bi-annuals.

Method of payment:

▪ The User shall keep complete and accurate records (together with supporting documentation) on the basis of which all amounts due to the Provider can be determined. Such records shall be retained for at least three (3) years following the end of the reporting period to which they relate.

▪ The User [may only exercise a right of retention if its] counterclaim is based on the same contractual relationship.

Commercialisation:

Commercialization without patent protection

In the event that the user commercializes any product or process linked to the subject of the clause [REFERENCE TO THE ARTICLE ON OWNERSHIP] of this contract without any patent right, the provider shall be entitled to a minimum of 50% of the gross turnover of sales or licensing or any other manner to collect a revenue.

Article: digital publication of research results or information about

the samples or parts thereof (sharing of genetic information):

1. In academic research projects there might be an obligation to make sequence data or any other genetic information digitally available online.

2. Making research or similar results available online is only allowed under this contract by notification to [the public inst in the provider]. Such notification shall include the web address(es) where the information is made available to the public.



3. Making research results available online requires restricting access to the information behind an electronic ‘wall’ requiring the accessor to give consent to be bound by a standard clause respecting the economic interests of Malawi, by a ‘click-wrap’, using a standard online accept-condition. Access shall be conditioned the filling in of information about “name, affiliated institution, interest in accessing the digitalised information and the intended use” including an acceptance of the requirement in the [domestic] Regulation of having a contract if embarking on using the information. The click-wrap shall send a cookie notifying [the provider country] about the entity accessing the information.



4. In any digital publication of sequence data or any other digital expression of the samples or results from the samples, full acknowledgement is to be given to the Government of [the provider country] , the project enabled by the contract, and the following clause shall be enclosed in the digital publication:

5. “The government of [the provider country] has commercial rights or other further use rights in products or processes developed based on the research results presented in this publication. Any use requires a contract of use with the Government of [the provider country].”



[The providing country] has an unconditional right without any charge, to experimental, commercial or developmental use of any result, product or process enabled by the samples or by this contract, this includes an unconditional right to a non-exclusive license for any use of any invention related to this contract by relevant domestic users. The Users shall issue a use license without any time-limits to any use in [the providing country]. The Provider/ [Ministry of XXX] has sole discretion to determine which domestic users will benefit from a non-exclusive license on a case-by-case basis taking into account the commercial needs of the patent holder. These rights are equally applicable if the product or process is based on and their exploitation presupposes any use of prior existing general knowledge.

Unforeseen research results:

▪ The Users shall inform the Provider about any unforeseen research results (aside of those intentions provided by the User in this contract) that are of potential commercial or use interest to [Provider country], prior to any disclosure of this information to the public or any third-party.

▪ In the unforeseen situation of a product or process leading to or enabling any value-creation from this Project or enabled by this Project, any users which commercialize any product or process linked to the aspect of the subject matter of this Contract with or without any patent right, the Provider shall be entitled to 50% of the gross turnover of sales or licensing or any other manner to collect revenue.

Unforeseen research results:

▪ Since the property rights to any of aspects of the subject matter mentioned in Article [XXX] are property of the [Provider country], the User shall and will be held responsible for any unauthorised transfer or use.

5. Technical contract issues:



Remedies available:

▪ Main rule in Norway: the economic loss or damages.

▪ ‘Negative contractual interest’

▪ ‘Positive contract interest’ – as if the contract had been

fulfilled. Hypotetical consideration.

▪ Link to the enrichment of the User?

▪ Liquadated damages – a fix sum.

Remedies available: Section 4 Damages

Article 7.4.1 (Right to damages)

Article 7.4.2 (Full compensation)

Article 7.4.3 (Certainty of harm)

Article 7.4.4 (Foreseeability of harm)

Article 7.4.5 (Proof of harm in case of replacement transaction)

Article 7.4.6 (Proof of harm by current price)

Article 7.4.7 (Harm due in part to aggrieved party)

Article 7.4.8 (Mitigation of harm)

Article 7.4.9 (Interest for failure to pay money)

Article 7.4.10 (Interest on damages)

Article 7.4.11 (Manner of monetary redress)

Article 7.4.12 (Currency in which to assess damages)

Article 7.4.13 (Agreed payment for non-performance)

Compensation UNIDROIT:

ARTICLE 7.4.1 (Right to damages)

▪ Any non-performance gives the aggrieved party a right to damages either exclusively or in conjunction with any other remedies except where the non-performance is excused under these Principles.


ARTICLE 7.4.2 (Full compensation)

▪ The aggrieved party is entitled to full compensation for harm sustained as a result of the non-performance. Such harm includes both any loss which it suffered and any gain of which it was deprived, taking into account any gain to the aggrieved party resulting from its avoidance of cost or harm.

▪ Such harm may be non-pecuniary and includes, for instance, physical suffering or emotional distress.


ARTICLE 7.4.3 (Certainty of harm)

▪ Compensation is due only for harm, including future harm, that is established with a reasonable degree of certainty.

▪ Compensation may be due for the loss of a chance in proportion to the probability of its occurrence.

▪ Where the amount of damages cannot be established with a sufficient degree of certainty, the assessment is at the discretion of the court.

The overall virtue

▪ Remove uncertainties

▪ Describe what you foresee happening in the

clearest language (ever) step-by-step until

the expected scenario has been ended

▪ Make it possible for a non-biologist, lawyer

judge to understand all steps and their

consequences

Research failure by the User:

▪ The User shall shall be responsible for applying scientific care and for complying with accepted scientific standards but not for actually achieving the research and development goal.

▪ Should the result of the research and development work generated by [the USER] prove to be defective, or should [the USER] reject supplementary performance or if supplementary performance cannot be achieved or the client cannot reasonably be expected to accept supplementary performance, then the [Provider country] may either terminate the rights of the User and/or the obligations on itself, and/or claim damages [a positive contractual interest].

Research failure by the User:▪ The right to termination may be exercised only in case of a

serious defect. Such right lapses if the [Provider country] does not declare the termination of the contract within 14 days after receiving notification of rejection or failure of supplementary performance or at the latest 14 days after the date at which it is recognised that the client cannot reasonably be expected to accept supplementary performance. [The USER] shall pay damages according to [a positive contractual interest/ a fixed sum of US XX,000].

▪ In any case the ownership as set out in Art. XXX gives the [Provider country] enjoys the full right to take any use of the results as of the dates of lack of performance by the User. This includes, but is not limited to, all the subject matters mention in Art. XXX.

Obligation to provide information, reporting

and liability:▪ The User is the one with best insight in the plans and

possibilities to know and foresee future use of the samples.

▪ The User is obliged to inform the Provider of any collaboration with commercial entities that might have an interest in any use or commercialization of any of the subject matter described in Article XXX above or subject matter or methods enabled by this Contract.

▪ The first user shall, as part of this contract, design a flow chart for its project which includes the next steps for any research or development that is either planned or considered likely with the samples, parts thereof or information or knowledge enabled there from.


and liability:▪ Six (6) months [every sixth month or another period] after the

collecting of samples [set a fixed date] under this Contract, the Users shall provide a report to the Provider containing:

▪ A summary of all biological resources collected under this Contract (including collection locations, summary of taxa collected and isolated), the summary shall include photos

▪ Information of any bio-discovery, included but not limited to, new species, sub-species or special new discoveries or any genetic characterisation;

▪ The discovery of any lead to (included but not limited to) bio-active components, anti-bodies, products for developing vaccines or medicines or any other diagnostic or for treatment;


and liability:▪ Summary of genetic information, DNA sequences, digital

sequence data, or any other results described in the underlayingproject or otherwise enabled by the samples under this Contract;

▪ Publications and conference presentations arising from research

▪ The User has an obligation to seek clarity in any planned future applications or uses of any of aspects of the subject matter discussed in Article XXX above.

▪ All reports provided by the Users under this Contract shall be provided in hard copy and digital copy in English.

▪ Any false information or any actions considered disloyal shall make the User liable to paying Provider country a fixed sum of [US 10,000].

Avoid Ambiguity:

▪ Unspecific terms leaves the interpretation of the meaning

of the contract to national judges

▪ If you cannot be more specific in your drafting, how can

you expect a judge later to understand your contract

better than its drafters?

Definitions in a contract:Using a definition section in your contract increases

specificity, but does not necessarily reduce ambiguity

▪ Everywhere in your contract that term means exactly that –

and nothing else (ever!)

▪ Why do you need to use the term ‘genetic resources’

and ‘utilization of gr’?

▪ This is a particular problem in drafting the substantive

articles since these terms are not free of interpretation.

Solution: read your contract and read in the definition

every time (you’ll be surprised)

Avoid Ambiguity:

▪ Unspecific terms leaves the interpretation of the meaning

of the contract to national judges

▪ If you cannot be more specific in your drafting, how can

you expect a judge later to understand your contract

better than its drafters?

▪ On this point there is a need to shift the paradigm in ABS

to make contracts work otherwise there will be a whole

generation of ABS contracts being concluded that will in

end not be enforceable.

Exclusivity:

▪ For how long time shall the one user have exclusive right

– At species level

– At accession level

– Increase incentive to invest vs engage with other users?

▪ Ask for higher payment

▪ Exclusivity from the user to only deal with the one

provider


Termination clause



Termination UNIDROIT:

ARTICLE 7.3.5 (Effects of termination in general)

▪ Termination of the contract releases both parties from their obligation to effect and to receive future performance.

▪ Termination does not preclude a claim for damages for non-performance.

▪ Termination does not affect any provision in the contract for the settlement of disputes or any other term of the contract which is to operate even after termination.

Termination clauses for a scoping

agreement :8.1 This Agreement, unless terminated as provided herein, shall remain in effect for a period of XXXX years from the date of signing of this Agreement by the Parties. However/Nevertheless the obligations of the USER with respect to the obligations in Art XXX, XXX and YYY under this Agreement will remain in perpetuity.

8.2 The PROVIDER may terminate the rights under this Agreement and revoke the Permit by a written notice if the USER defaults in the performance of any obligations under this Agreement and the default has not been remedied within sixty (60) days after the date of notice in writing of such default by the AA.


agreement :8.3 B agrees to forfeit its deposit in situations where the AA terminates this Agreement and revokes the Scoping Permit under the conditions listed in 8.2.

8.4 B may terminate this Agreement by giving sixty (60) days advance written notice stating valid reasons for the same. However, such termination shall come into effect only on acceptance of the same by the AA given in writing not later than thirty (30) days after the notice period and payment of all outstanding dues and submission of mandatory reports on scoping conducted until then by B.


agreement :8.5 B shall transfer all the data/results/conclusions/ genetic resource of the Scoping Phase to the AA in the instance of the termination of this Agreement. In the event, B fails to do so; it will be dealt as per the article 12.2 of this Agreement.

8.6 B agrees to return the genetic resources remaining and/or associated information to the AA no later than thirty (30) days after the termination of this Agreement. The costs incurred in transferring these resources back to the AA will be borne by B.


agreement :8.7 The AA shall not be liable for any loss or damage whatsoever caused to B due to revocation of approval for access and/ or termination of this Agreement on any ground whatsoever.

8.8 B, on termination of the Agreement, agrees not use any of the data/results/conclusions from the research on the accessed material for any purpose whatsoever without the prior approval of the AA.

The two step approach:

▪ Supposes a trust-situation (which is not present)

▪ or a long-term interest on the user side

– Deposit in the providers account

– A (bank) guarantee with specific incidents that allows you

to use it

▪ Follow-up capacity

▪ Caution: Australia has such a system, but until now

no company has ever come back to re-negotiate.

WHY?


Expect the best –

Plan for the worse



Know contract law:

▪ Valid – not void

▪ Binding

▪ Implementable

▪ Enforceable

Know What a Contract Can and Cannot Do

Good-faith parties are less likely to breach a contract if

that contract is ENFORCEABLE

▪ Enforceable means "valid" AND “binding” AND “implementable.

▪ All countries have rules on these issues. The rules differ but they have

some similar requirements:

– Mutuality

– Intention to enter into a contract

– Concreteness

– Equity and Public Policy

▪ What happens to Unenforceable and “Soft” Contracts?

7. Expect the Best; Plan for the Worst

Morten Walløe Tvedt, the Fridtjof Nansen Institute


Expect the Best; Plan for the Worst –

Breach ▪ Supposes a trust-situation

▪ or a long-term interest on the user side

– Deposit in the providers account

– A (bank) guarantee with specific incidents that allows you

to use it

▪ Follow-up capacity

▪ The contractual challenge in addressing post-access

third-party transfers in ABS contracts is to find ways

to control and oversee transfers that are reasonable

and externally verifiable

Expect the Best; Plan for the Worst

WHAT HAPPENS WHEN A PROBLEM/DISAGREEMENT ARISES?

“EXPECT THE BEST; PLAN FOR THE WORST” means:

The contract should discuss formal legal action. Why?

1. The parties are more likely to comply with a fully enforceable contract

2. Cannot predict the future.

3. Enforcement works in contracts with domestic parties or activities

4. An NGO or other group may offer to take the case forward

5. Include non-legal remedies or solutions

6. Arbitration and Mediation Clauses provide more options

7. To prevent or enable third party rights

Compliance:▪ The user should want to comply

▪ Clear obligations – no room for interpretation

Enforcement

▪ Should create incentives to comply

▪ Must hold in a court

▪ Depends on the user legislation, if not the contract ONLY

and very limited degree on the provider legislation

Closely linked together – compliance is the best

Enforcement is only a tool to support compliance



Enforcement



▪ Depends on the user legislation, if not the

contract ONLY and very limited degree on the

provider legislation

Comprise of three elements:

• the contract

• the law in the user country

• (the law in the provider country)

(helped by international law?)

Existing examples of rules in ABS

Contracts on breach of contract:

Existing examples of rules in ABS

Contracts on breach of contract:

SMTA Plant GR

ARTICLE 7 — APPLICABLE LAW

The applicable law shall be General Principles of Law, including the UNIDROIT Principles of International Commercial Contracts 2004, the objectives and the relevant provisions of the Treaty, and, when necessary for interpretation, the decisions of the Governing Body.





3. Connect the breach of the material obligations to an enforcement-clause





can ensure enforcement:

▪ Clarifying which actions and failures to act constitute breach or default under the contract;

▪ Setting up a reasonable procedure for situations in which one party defaults (breaches or fails to act) under the contract;

▪ Addressing possible areas of exclusion;

▪ Defining the value of the contract and each of its elements, in order to specify “liquidated damages,” for purposes of remedies;

▪ Addressing the enforcement aspects of particular challenges

Enforcement and compliance:▪ Dispute settlement

▪ Choice of law – a two edge sword

▪ Alternative dispute settlement mechanisms

– Conciliation, arbitration

▪ Getting assets of the company under your

legislation

The Company shall pay such sum of US dollar XXX (US dollar XXX) to the AA as

a guarantee deposit returnable on the completion of the scoping phase by the

Company in compliance with the terms of this Agreement.

The interest generated from the deposit will be injected into ABS Fund for

strengthening the sustainable conservation initiatives of biological resources.

Arbitration:

Arbitration

1. If any difference in interpretation or dispute (hereinafter referred to as a ‘Dispute’) between the Parties arises under this Agreement, any Party may give the other Party a written notice clearly identifying and providing details of the Dispute. On receipt of such notice by the other Party, the Parties shall try to settle the Dispute amicably between them by negotiating in good faith within thirty (30) days of the receipt of such notice.

Arbitration:

2. "If the Dispute is not resolved by such negotiations within the period mentioned, the Parties agree to settle the Dispute through arbitration conducted by an Arbitrator mutually appointed by both the Parties. The place of arbitration shall be in [Country]. The language to be used in the arbitration proceedings shall be English.

3. The Parties agree that the award and determination of the arbitrator shall be final and binding on the Parties.

Arbitration:

Among the issues that should always be addressed are the following:

▪ whether the arbitration and/or mediation will be mandatory or not (and if not what the parties must do if they wish to submit to arbitration);

▪ which arbitration rules apply and whether a particular arbitral body will oversee the arbitration;

▪ how many arbitrators shall hear the matter and how they shall be selected; where the arbitration shall be held; what governing law shall apply;

▪ how and where arbitral awards shall be entered with the relevant court or government;

Arbitration:

Among the issues that should always be addressed are the following:

▪ […]

▪ whether there is a time period by which the arbitration must be completed (and what happens if the process is delayed beyond this date); and

▪ if desired, what limits there will be on the number of witnesses, depositions or documents each party may present or subpoena.


Norway

Law of the provider

country


material and TK



Tajikistan

International private law

▪ No general international private law on contracts

▪ No general law making the user responsible

Regional level


Private law in each country regulating contracts


Don’t Assume

▪ There are few simple solutions right now (increasing)

▪ If someone offers you one – be doubtful

▪ Examples:

– Governing Law

– "Private International Law«

▪ UNIDROIT – not a contract per se – but clauses that can

be used as a point of departure for tailor-making

▪ Private international law – not resolving this issue (despite).



Enforcement






Support from the Nagoya Protocol

(helped by international law?)

NP ARTICLE 15

COMPLIANCE WITH DOMESTIC LEGISLATION OR REGULATORY

REQUIREMENTS ON ACCESS AND BENEFIT-SHARING

Observations:

▪ Oblige users under their jurisdiction; to what?

▪ ’Have been accessed’ – time problem

▪ ’required by the domestic access and b.sh legislation’

▪ The legislation of providing country essential

1. Each Party shall take appropriate, effective and proportionate

legislative, administrative or policy measures to provide that genetic resources

utilized within its jurisdiction have been accessed in accordance with prior

informed consent and that mutually agreed terms have been established, as

required by the domestic access and benefit-sharing legislation or

regulatory requirements of the other Party.

NP ARTICLE 15

COMPLIANCE WITH DOMESTIC LEGISLATION OR REGULATORY

REQUIREMENTS ON ACCESS AND BENEFIT-SHARING

Observations:

▪ ’address’ is weak – no binding stuff here

▪ but to address is bether than not address

▪ go after the ’cases of alleged violation’

▪ No single court-case yet – CBD in force sice 1993!

2. Parties shall take appropriate, effective and proportionate measures

to address situations of non-compliance with measures adopted in

accordance with paragraph 1.

3. Parties shall, as far as possible and as appropriate, cooperate in

cases of alleged violation of domestic access and benefit-sharing legislation

or regulatory requirements referred to in paragraph 1.

ARTICLE 18

COMPLIANCE WITH MUTUALLY AGREED TERMS

Observations:

▪ Access to the courts etc of the user country

1. In the implementation of Article 6, paragraph 2 (f) (i) and Article 7,

each Party shall encourage providers and users of genetic resources and/or

traditional knowledge associated with genetic resources to include provisions

in mutually agreed terms to cover, where appropriate, dispute resolution

including:

(a) The jurisdiction to which they will subject any dispute resolution

processes;

(b) The applicable law; and/or

(c) Options for alternative dispute resolution, such as mediation or

arbitration.

2. Each Party shall ensure that an opportunity to seek recourse is

available under their legal systems, consistent with applicable jurisdictional

requirements, in cases of disputes arising from mutually agreed terms.

Limitations of the Nagoya Protocol

▪ Difficulty of access to the courts of the user countries

(different rules of procedures, cost, familiarity with foreign

country laws, need to be allowed to practice as a lawyer in the

said jurisdiction etc..)

▪ Nagoya Protocol in its compliance provisions uses terms of

private international law; but recourses possible under private

international law are limited (i.e. private international law does

not have a coherent, harmonized system for dispute

settlement.)

▪ Conclusion: Clearly drafted contracts on ABS

are the only way to regulate and enforce

relationships between providers and users.



Enforcement






The core legal tool is the contract



Enforcement






The core legal tool is the contract,

so the contract must say everything.

Choice of law and courts

12. This agreement shall be governed by the laws

of THE PROVIDER STATE and the Courts of THE

PROVIDER STATE shall have sole jurisdiction in

determining issues, differences and disputes which

may arise touching or concerning this agreement if

not referred to or settled by arbitration as is

considered appropriated under the laws of THE

PROVIDER STATE.

Choice of law and courts12. This agreement shall be governed by the laws of THE PROVIDER STATE and the Courts of THE PROVIDER STATE shall have sole jurisdiction in determining issues, differences and disputes which may arise touching or concerning this agreement if not referred to or settled by arbitration as is considered appropriated under the laws of THE PROVIDER STATE.

Laws – of THE PROVIDER COUNTRY – how will a Norwegian judge approach this?

Courts of Norway cannot hear a case (according to the contract)

Learning from Experience

Contract drafting is learned by experience. How to get experience?

▪ Draft the first 25-50 with close supervision

▪ Draft the next 100 with access to an advisor

▪ Work with parties to 50-100 contracts are facing challenges

DOES ANYONE HERE WANT TO DO THAT?

Common Shortcuts:

▪ An example (another ABS contract) that you can copy and use

▪ A standard model

BUT….

There is a need to shift the ABS paradigm to make

ABS contracts count

otherwise the next generation of ABS contracts, too,

will prove (too late) to be unenforceable.

First steps:

▪ National law enabling enforcement of ABS contracts

▪ Drafting better contracts, that are legally binding

▪ Less secrecy about contract terms

This will lead to the development of standards and “best

practices”

Follow-up:

Summing up this training:

▪ Developing ABS Contracts is a continuous process;

▪ This means that the whole team, including but not limited to Morten remain available for advices in this field;

▪ One tool could be to have a similar training at the national level – this is especially a good and practical approach when you have a draft of a contract that we can use and discuss throughout the training instead of the examples.

Thank you for your attention

Morten Walløe Tvedt,

Associate professor

[email protected]

8. How to plan and

negotiate a contract



Why plan the map of the contract?

Know the paths for getting:

▪ from access

▪ to utilisation

▪ to creation of benefits

▪ to the date of payment

▪ how the payment shall happen

▪ what will happen if anything goes wrong

Tools for planning the road map for

realising the contract:Elemen

t

Who is

responsi

ble?

Other

necessa

ry

parties

Exact

definiti

on of

its

content

Timing

/

Confir

mation

Expecte

d/Requi

red/

Possibl

e

results

Effect

of

failure/

Breach

Access

#X]

[definiti

on of

the

resource

s to be

accesse

d (res)

#1]

Optimal-contract Map:

▪ Planning tool

▪ Setting your priorities

▪ Identifying “red lines”

▪ Give guidance in the negotiating process

▪ Constantly up date it during negotiations and its

fulfilment

▪ Until the map is close to identical with what is written

into the a final contract.

Exercise: Make your map:

1. If you are in a contract negotiation: Make a draft of

how your contract shall look like

– Especially pay attention to how the different elements can

be linked

2. If you have negotiated a contract

– Make a map that would have been useful for the

negotiations you have gone through

3. If none of the above

– Make a desired map for negotiation about one of your

valuable resources

8. Typical Situations of Third-party

Transfer – Manage and Address Major

Risks



Manage Major Risks – third partiesImplementation of ABS transactions nearly always includes one or more “third-party transfers.”

Numerous situation of transfers of material:

• The user transfers samples, next generation, information, knowledge, digital sequence data or synthetic expression

• Participates in a merger, acquisition, division, restructure

• Goes into bankruptcy

One step for managing and addressing major risks is to properly understand the business model of the user.

The essence of commercial activity:

▪ The freedom to sell and trade with your values.

▪ In the genetic resources area there is a strong

tradition of sharing samples.

▪ Many actors (collections, gene banks, botanical

gardens and often universities) have as their MAIN

objective of making resources available for others.

▪ Virtually impossible to prohibit in a contract and even

worse in a court.

▪ Major issue to address in your contract.

Changes on the user side – who are

likely recipients?▪ Academics






▪ Traders

▪ Collections

Likely transfers to thirdparties:

▪ Academics






▪ Traders

▪ Collections

➢A commercialised company

➢ The univ./ commercial comp

➢Bought up/ bankrupt

➢ Privatisation/ bought up

➢Merger/ bought up/ bankrupt

➢ Transfer inside the corp struct

➢Any selling on to others

➢Any selling of/ access

Limitation to a contract it binds only the

parties to the contract:How can a contract adhere to these changes:

▪ End the rights – continue the obligations (no ending/

termination clauses)

▪ Obligation to come back for new negotiations

▪ Specific regulations of scenarios

– Collections and academic institutions

▪ Better to foresee different scenarios than attempt to

prevent certain things from happening

Three legally recognized justifications

underlying a contractual party’s ability to

limit transfer:

(i) that the transferee (also known as the “successor” to the transferring party) is at least equally capable of performingthe transferred duties as the transferring party would be;

(ii) that the transferee is equally worthy of receiving the rights granted; and/or

(iii) that the non-transferring party is not in a worse position after the transfer, including with regard to guarantees and remedies.

Methods for transfer:1. The User negotiates a new contract in the spirit of

the previous contract. Your counterpart becomes

your lawyer;

2. The provider country negotiates itself – on behalf

of the two of them since the first user will have

added value;

3. A threepart contract where the provider, first user

and the second user sit together at the table

Overall question: Will the first user be free of the

contract?

From academic to commercial:What can be foreseen should be regulated:

▪ Can be regulated – what is the potential scenario?

▪ Secure a % of the earnings

▪ Better to allow this to happen and regulate it

▪ First user non-commercial – easily foreseen that the

next user is a commercial one

▪ Remember: a for-profit/ commercial entity owned by

the university is (may be) another legal person which

is un-bound by the original contract

From academic to commercial:

▪ Can be regulated – what is the potential scenario?

▪ Secure a % of the earnings

▪ Better to allow this to happen

In a contract with a non-commercial user or academic

institution, the provider should go far in reserving

benefits to himself.

If the research is non-commercial, secure your

commercial rights anyway.


The object of this contract and related research is academic.

The Government of the republic of XXX retains ownership to

any samples of live fish and fin clips, or of any outcome of any

activity undertaken (including, but not limited to, genetic

information, DNA sequences, digital sequence data, feed

protocol, nutrition technology, recipes, types of feed,

nutritional requirement of species, rearing protocols or all data

or information).


In the event that the user has been granted a patent to an innovation that is related to any of the subject matters mentioned Clause 5 of this Agreement the provider shall entitled to the following:

• A minimum of 50 % of the gross licensing fees or any other revenue derived from use of the patent.

• The Provider has a right to a non-exclusive license for any use of any invention related to this agreement by relevant Malawian users. The Provider should decided which Malawian users that will benefit from a non-exclusive license on a cases by cases basis taking into account the commercial needs of the patent holder.


▪ The User shall not transfer the patent to any physical or legal persons outside the parties to this agreement. In the event of such a transfer of the patent, the Provider shall automatically be the owner of the patent and retain the right to the patent. In the event of transfer to the other User under this agreement, this clause applies equally.


▪ In the event that the user commercializes any product or process linked to subject of the clause 5 of this agreement without any patent right, the provider shall be entitled to a minimum of 50% of the gross turnover of sales or licensing.

The logic behind this clause is that since the institutions is doing academic (and according to them non-commercial) research they should not need to transfer any patents to the material or outcome from the project.

From collection to commercial users:

▪ Develop an Standard Material Transfer Agreement

jointly for access to the material as part of the ABS

Contract

▪ Clarify the discretion: Shall the country be involved in

deciding on transfer or shall the collection act on

behalf of the country

▪ Secure a % of the earnings which happens in the

collection

▪ Regulate how this will proceed

Documents

Drafting and Negotiating Successful Access and Benefit ... · •Drafting Successful Access and Benefit-sharing Contracts, Tomme Rosanne Young and M. W. Tvedt, Brill 2017 •Tvedt,