Washington D.C., USA, 22-27 July 2012 Why do we need patent landscapes and what tools can be made available? Presenting the UNDP Patent

Washington D.C., USA, 22-27 July 2012www.aids2012.org

Why do we need patent landscapes and what tools can be made available?

Presenting the UNDP Patent Methodology

Mandeep Dhaliwal, UNDP BDP, HIV/AIDS Practice

Methodology co-authored by

Barbara Milani and Cecilia Oh


The need for patent transparency

• Lack of transparency can hinder innovation or affordable access to health technologies

• Consequences include:

(i) inappropriate claims of patent infringement;

(ii) money wasted on unnecessary work-arounds;

(iii) Undeserved licensing revenues;

(iv) Blocked generic entry

(v) Increased spending on procuring more expensive medicines, when cheaper options are available

• Transparency requirements should be key components of patent laws and systems

• In practice this is not the case


Patent Landscapes

• What is patent landscaping?

• How can it be used to improve procurement and supply?

• What tools can be used?


UNDP focuses on

• A Methodology that empowers relevant local officials to conduct patent searches

• Training local officials and procurement agencies to assess the validity of IP claims

• Preventing the granting of patents to undeserving applications by encouraging the refinement of patentability criteria


Public sources of information

The Methodology relies on the US FDA Orange Book, the Health Canada Patent Register, and INAPDOC

Why the Orange Book

All patents submitted/listed by innovator companies, which are likely to seek the highest and longest patent protection in the US market

Why the Health Canada Patent Register

“Relevant” patents are listed after the revision carried by Health Canada, on the list of patents submitted by the innovator companies

Why INPADOCInternational patent collection, contains patent families


Advantages and limitations

• Relies on open sources available free of charge, transparent

• Transfers research skills to and empowers local actors• Has a multiplying effect…………………………………………………………………….

• Does not cover medicines not in the Orange book and Health Canada (e.g. vaccines and biomedicines)

• For such medicines, a patent search would be necessary• Is more complex than database use, requires training


The four steps


Process and desired outcomes• UNDP intends to use of the patent search tool in low and

middle income countries • Bring together stakeholders

– Pilot training workshops on the methodology and tool for health,

– Procurement agencies and principal recipients– Patent landscaping exercises using the Methodology

• Desired outcomes:– Contribution to procurement cost-effectiveness– Legal certainty for current and future procurement– Cost savings from reduced IP assistance needs– Consistence with the TRIPS Agreement and its public

health flexibilities


Thank you.

[email protected]

Documents

Washington D.C., USA, 22-27 July 2012 Why do we need patent landscapes and what tools can be made available? Presenting the UNDP Patent