Brief Observations

on new Intellectual Property

Policy for

India (2016)

Ravi Dhar, Ph.D.

(rdhar_in@yahoo.com) 18.05.2016

(Mobile: 987-162-0439)

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Past Affiliation: BIRAC-DBT, GoI, India National Institute of Immunology, (NII), India Johns Hopkins University, U.S.A. LSU, U.S.A. OTT, Boston University, U.S.A. OTT, NIH, U.S.A. University of Delhi, India

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Acknowledgements PFIPB Policy, Bill no. LXVI of GoI-2008 (www.prsindia.org) Ravi Dhar & K.S. Kardam (5.6.2013) Patent News & Views – Birac (www.birac.nic.in>Patenting_in_India) Importance of Article 3-d of Indian Patent Law. ndtv.com: Arun Jaitley announces Intellectual Property Rights Policy: Highlights. May 13, 2016 www.thehindu.com> article8594387 (Cabinet approves National Intellectual Property Rights Policy. May 14, 2016. The Hindu: An IP Policy with no innovation. May 17, 2016 The Indian Express: Intellectual Property Rights: Ne Policy may power R&D, national growth. May 17, 2016 www. Ip-watch.org. May 15, 2016 NIH PubMed Scientific Community across world DBT/ NII/ BIRAC STEM, Hyderabad & Skyquestt, Ahmadabad Journal Intellectual Property Rights, Vo. 15, pp.19-34, 2010 DELCON Library Services Dr. M.K. Bhan Various Websites OTT, Boston University (Dr. Jerry Keusch & Dr. Ashley Stevens) OTT, NIH

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India needs to be “pleasantly rigid within interpretation of WIPO/WTO

laws” in it’s IPR policy, as it is directly related to

Human Welfare, Public Health, Food-, Environmental- & Energy-Security,

apart from Defense Security

(RD-2016)

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Ownership or assignment: Should Patents should be assigned to the Academic or R&D institution where the invention or technology was worked?

No assignment of inventions should be allowed for any foreign organization or individual

inventor/s. However, foreign inventors should be on the list of inventors, if their contributions

are serious. (Disclaimer: The ownership issue needs further debate following

introduction of PFIP Bill of 2008, & approval of National Intellectual Rights Policy, 2016)

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Background

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The Protection &

Utilization of Public Funded Intellectual

Property-2008

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Utilization of Public Funded Intellectual

Property Bill-2008 (PFIPB-India), was formulated to hopefully provide for the protection and utilization of intellectual property originating from public-funded

research. In-spite of the recently approved National

Intellectual Policy Rights Bill by Indian Government Cabinet in May 2016, there is

scope for further modification of some of the existing IP rules, and of the technology

management practices, to protect Indian interest

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Is PFIP the way forward to achieve pubic interest goals??

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The text of original version of PFIP bill may be accessed at (www PFIPB Policy, Bill no. LXVI of GoI-2008 (www.prsindia.org). The objectives, that the government has in mind are: (i) to make the institutions self sufficient by incentivizing commercialization of IP.; (ii) The Bill seems to penalize the scientists who publicly disclose IP without a 30 day notice, and institutions that fail to protect IP, if there is a commercial potential. “It is not clear whether these provisions create an enabling environment for commercialization or stifle innovation”. This could also lead the institutions to focus more on commercial research and ignore basic research which is future of innovations after next 30-50 years; (iii) The Bill requires the scientist and the institution to inform the government about an IP and list the countries in which it wants to retain the title. Given that an IP is created only after a patent is granted, it is not possible to intimate the government of the intention to retain the title to the PFIP prior to that time;

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(iv) Two (2) of the Bill’s objectives are to encourage innovation in small and medium enterprises and to promote collaboration between government, private enterprises and non-government organizations. However, provisions to achieve these objectives are not clearly defined in the original bill. Besides these, the government needs to remove mistrust between industry and academia for which legal enabling mechanisms must be designed. Such an effort has been initiated by various government organizations like DBT, BIRAC,DST, CSIR, ICMR and DRDO; and (v) The Bill aims to incentivize innovation by sharing at least 30% of the royalty with the scientist. This mechanism is already followed by numerous institutions for the last 20 years or so, but the level of commercialization is very low. Many of the autonomous institutes share a much higher percentage of royalty than 30% mentioned in the bill. Government needs to get a study done to understand the reasons for low productivity, lacunae in the implementation and fair distribution of the royalty by stake holders including the ones dealing with technology management.

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Important note: Some of the articles of PFIPB Policy 2008 were too harsh on Scientific community, because of which the 2008 Bill did not

get universal approval

Scientific pursuits also needs some flexibility to the investigator

It is also not always feasible to wait for publication of important research interest till you patent &

lose race in publication of quality science to other people from one’s own, or from a foreign country

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•Excessive patenting lead to gridlocks and retards innovation (see BRCA1 diagnostic kit controversy & it’s reversal as in U.S.A.) •This bill makes it mandatory as to what is optional at the moment is already being followed by many autonomous organizations (DBT institutes follow this) •“Copyright, trademark, etc., seem to be covered under the definition of “public funded IP”. •It will result in a form of double taxation for research, and will increase the consumer cost of all products based on publicly-funded research (How???) •This might result in discouraging fundamental research as well as discouraging industrial research (already hue and cry by scientists). •Non-disclosure requirements in the Bill restricts the dissemination of research within the academic community, and curtails freedom of openly discuss their research findings. Exclusive licensing enables restriction on the dissemination of academic research in the marketplace, and increase in cost of products based on public-funded research.”

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What the GOI Guidelines suggest for Private Industry as on 19.4.2011: (PG)

“IPR generated through joint research by institution(s) and industrial concern(s) through joint efforts can be owned jointly by them as may be mutually agreed to by them, through a written agreement. The institution and industrial concern may transfer the technology to a third party for commercialization on exclusive/non-exclusive basis. The third party, exclusively licensed to market the innovation in India, must manufacture the product in India. If that is not possible, options outside country must be exploited. The joint owners may share the benefits and earnings arising out of commercial exploitation of the IPR. The institution may determine the share of the inventor(s) and other persons from such actual earnings. Such share(s) shall not exceed 1/3rd of the actual earnings.”

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We need to give time for implementation & absorption of the recently

approved bill of May 13, 2016 on

“National Intellectual Property Rights Policy” to see how it improves

Innovation & productivity in India

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Thanks

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