Intellectual property issues for the international agricultural research centers

/766 /I Apull /9'K 4 Consulifthve Group on- International Agricultural Research - s.> f n...or .-the .International.4N -ciualReaihj C 41 p John i H. Bt Proessor of Law Stanford Law School and .Wolfgang E. Siebeck -. Consultant ::Washington, D.C. ISSUES IN --AGRICULTURE .. I4 9- I lqv- 4v zIEW1  Intellectual Property Issues for the International Agricultural Research Centers uert;?g cuture"- SIs an -i,,.,evolving . Wue^8=ctsltOunre'.ig an vohine g What Are the Options? i~l~ifbokltsonitopics connected tli,agrcult6ural'research and devel- tlXTh&-se ies is published by the. ctaiiait,ofjthe Consultatlve Group John H. Barton oigtIoi,na1Agricultural Research Professor of Law as Wcontribution to'informed Stanford Law School dIscuisslon' onissues that affect agrl- hiteSIThe oplinons expressed in this and se3i~ehthose of the'authors and do ,iecer',ari~eflect a consensus of Wolfgang E. Slebeck Ifft isCGIAR-system., Consultant l10 Washington, D.C. 111 nHX ISSUES IN AGRICULTURE, NO. 4 ~~~~~2O433 ~~~~~~~~Consultative Group on Intemnatlonal Agricultural Research Iii ~~~~~~~~~~~~~~~~~~~~~~ ~~~~~~~~~ ~~~~~~~~~?32895d Fax'(lL2O2P~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~...  About the CGIA :: R . R g R ' R R. '.. ...............~~~~~~~~~~~~~~ aa ......a x:aa<....a... Tlhe Consultative' Group on International Agricultural Research (CGIAR) Is an informnal association of 40 public and private sector donors that supports a network of 16 CONTENTS (soon to be 17) international agricultural research centers. The Group was established In 1971.' The World Bank. the Food and Agrlcultire Organlza-' EXECUrIVE SUMMARY ...................1 tion of the United Nations (FAO). and the United Nations Development Programme (UNDP) are cosponsors of the 1. INTRODUCON ...............,.5 CGJAR. Tne Chairman of the Group is a senior ofm-ciai of . T D. the World Bank which provides the CGLAR system with a 11. PAST EXPOSURE OF THE SYSTEM TO Secretariat In Washington DC. The CGOAR Is assisted by a INTELLECTUAL PROPERTY ISSUES.6 Technical Advisory Conunittee, with a Secretariat at FAOi.. Rome. III. CHALLENGES TO CURRENT CENTER POLICY ..9 The United States, Japan, and Canada are the leading donor countries, followed closely by several European A.The Rise of Biotechnology .9 countries. Developing country members of the COIAR are 1. Facts and Promises .9 China, Brazil, India, Mexico, Nigeria, the Phillpplnes, 2. The Importance of Biotechnology for and the Republic of Korea. The annual CGIAR budget Is Center Research .......................... 11 some $US300 million. International centers supported by the COIAR are part B.The Prgvatization' of Research ........................t 1a1 of a global agricultural research system. The CGIAR fiune- 1. The Surge of Prlvate Agricultural tions as a guarantor to developing countries, ensuring that Research ..... 11 Intemational sclentlflc capacity is brought to bear on the 2. The 'Privatization" of Public Research .......... 13 problems of the world's disadvantaged peoples. 3. Agricultural Research In Developing Food productivity in developing cointries has increased Countries.14 through the combined efforts of CGiAR centers and their C.The Changing Lgal and Politcal partners In developing countries. The same efforts have Envirorhnent Legal and........al brought about a range of other ' benefits, such as Environment.15 reduced prices of food, better food dlstributlon systems, 1. Changes In National Laws In Industrial better nutrition, more rational policies, and stronger 1nsti- Countries. ......................... 15 tutlons. CGIAR centers have trained over 45.000 agricul- a. Plant Variety Protection ........................ 16 tural scientists from developing countrles over the past 20 b. Patent Protection for Plants ...................... 17 years. Many of them form the nucleus of and provide lead- c. Patenting of Varieties ........................ 18 ership to national agrlcultural research systems In their d. Patenting of Processes and Genes .. 18 own countries. ' '' e. Constraints on Breeding Activity ............... 19 Programs carried out by internatilonal centers In the f. The Role of Trade Secrecy ........................ 20 CGJAR system fall Into six broad categories: Productivity 2. The Uruguay Rounid and Trade Sanctions ... 20 Research, Management of Natural Resources, Improving the 3. Developing Country Positions ....................... 22 Policy Environment, Institution Building, Germplasm Con- servation, and Building linkages.  IV. MAJOR POLICY ISSUES FOR THE CENTERS ...... 23 V1. CONCLUSIONS AND RECOMMENDATIONS ......... 39 A. Issue One: Under What Circumnstances Can ANNEX A: IN-HOUSE POLICIES AND PROCEDURES the Current Open-Door Policy be Retained? .... 24 FOR INrELLEC`1rUAL PROPErry MANACEIMENT . 43 1. Points Opposing the Open-Door Policy ......... 26 2. Points Favoring the Open-Door Policy .......... 26 A. Intellectual Property Management .43 1. Newlork Arrangements .43 B. Issue Two: Income Generation from Patenting 2. Tracking Procedures .43 and Licenslng ......... 27 3. Patent Application and UJtigation Processes .... 44 1. Points Opposing Use of Patents for Income, 4. Cost of Intellectual Property Management ....44 Generation ....... 27 2. Points Favoring Use of Patents for Income B. Staff Policies .45 Generation ....................................... 29 1. Employee Agreements .................... 45 2. Information Procedures ................... . 45 C. Issue Three: Disseminating Innovation - The Centers' Relations witlh the National C. Collaboration Within the CGIAR System . 45 Programs ..... 30 1. Points Opposing Use of Proprietary Protection ANNEX B: OVERVIEW OF PATENT for Dissemination and Marketing ................. 32 PROTECTION (1988) ................ 46 2. Points Favoring Use of Proprietary Protection for Dissemination and Marketing ................. 33 REFERENCES ..........., 50 D.Issue Four: Gaining Access to Patented Biotechnologies - How Should the Centers Structure Their Relations with Industry and Advanced Research Institutions in Industrialized Countries? ................................. 33 1. Points Opposing Network Arrangements with I Private Firms .............. 34 2. Points Favoring Network Arrangements with Prlvate Firms .............. 35 V. SPECIAL ISSUES FOR INDIVIDUAL CENTERS.....36 A. The Commnodity Centers ................................... 36 B.The Regional Centers ....................................... 37 C.TThe Livestock Centers . 37 D.Intemnational Board for Plant Genetic Resources (IBPGR) .... 38 II in  Intellectual Property Issues for the International Agricultural Research Centers What Are the Options? John H. Barton Professor of Law Stanford Law School and Wolfgang E. Slebeck Consultant Washington, D.C. EXECUTIVE SUMMARY Many of the International Agricultural Research Centers are Increasingly concerned about whether they ought to protect their Innovatlons as Intellectual property, a protection they have rarely sought in the past. Three developments feed this concern: (1) The rise of bio- technology and its growing importance fof the centers' research, (2) the 'privatization' of agricultural research, meaning the increasing importance of private industry in agricultural research as well as the growing practice of public research institutions of protecting their Innova- tions against use by unauthorized third parties: and (3) the tlightening of national and intemational legislation and conventions that protect Intellectual property. This study has been commissioned by the CGLAR Secretariat, In consultaUon with the Chairman of the Center Directors Committee. Its purpose is to review whether the above concerns suggest a need to modify the current 'open-door policy" of the centers with respect to  gerMplasm dlstlbution and the release of Innovations exchange. This will be particularly true for centers developed at the centers and more broadly. to evaluate working In countries that have not extended Intellectual dheveopedons ata to the centers . and,morebroady.toevaluateproperty protection to plants and biotechnology and for centers whose mandate crops have little commercial The study reviews the trends in biotechnology re- interest for Industrial country markets. search and in intellectual property law described above. It then considers the factors affecting four policy issues 3. Unsder current policy, centers should not restrict for then considers blhe f s afen and in the context osf the flow and release of unimproved germplasm including for the centers, both in general germpiasm which has been screened and characterized. They may wish to consider changing to a policy of * To what extent can the current open-door policy be safegsuarding their bargaining position by requesting a * To whatnextent can the current open-door policy be material transfer agreement to be routinely signed by institutions that will not reciprocate a center's free ex- * What Is the feasiblity of incorme generatlon from change policy. In contrast, centers may consider licensing p Whatenstheg feand nsibilty of ncometheir improved gernplasm to breeders and producers whIo patenting and licensing'? rintend to market it In industrial countries with little or * Would proprietary protection hinder or help in no additional breeding. bringing research results to tlie farmer? 4. Only rarely will intellectual property protection * What are the beneflts and risks of cooperatlng with and conrnercializatton in Industrial countries be a lu- devhatarethelopd neflts andusris ofl access to with crative option for the centers. However, centers scoring developed-nation industry to obtain research advances in areas of high commercial Interest should consider acquisition of patents In Industrial countries, not so much as defense against seeing thelr Our review leads to the following concelusions:. iinovations appropriated by third partiles (that Is better I. Thie trend wtllhn the internatlonal research done through publication) but as bargaining chips to communityhe tre iellectual propery has advanced aintai access to proprletary technologies. There might too far to be pgnored by any CtIAR center. hhe centers be cases In which a center should patent an exceptionally tool facreatone fignod byhattechnology Rcnther Theenrs s-important Invention as a source of Income' but these will increasingly find that technology they need is sub- would be rare. ject to intellectual property protection and that an effective way to disseminate their innovations will bt it will be imperative for the centers to con- private sector collaborators, often under exclusive rights. tinually gain access to new proprietary technologies of Moreover, as many developing countries are lkely to adopt potential use to developing countries, they will require or strengthen intellectual property protection over the ulnderstanding of patents and licensing: acceptance of next several years, breeders will seek protecllon also In conmercial materials subject to restricted use will also developing countries for advanced material of Importance entac l acceptance of restrictions on the free intersysten to their markets in both industrial and developing engel o materis. countries. exchange of materials. 2. Much of the activity of the centers can continue 6. Finally. each center should careftully review the without Intellectual property protection and without Institutional linkages by which Its Innovations reach the 2 breaking with the centers traditions of open scientific farner and should protect its innovations when such 3 2 raigwt h cnes rdto  K : . ........................... . ......... ........... ......... . ....... .......... .. I..... . . ...................... WS. S .iSX. protection Is likely to help in marketing the Innovations Intellectual property trends affecting their to developing country farmers. mandate crops. In order to help the centers in deflning and executing 3. At least in an Initial phase, and until centers such policies, we recommend that: have buflt up sufilcient capacity to manage their Intellectual property, they should con- 1. The CGIAR should establish a set of intellec- sider the creation of a central facility to pro- tual property policies and guidelines, witllin vide basic advice and to refer centers to legal which Indiv;dual centers wvou;ld defne their owvn counC appropriate to their specfuic concerns. rules and procedures. Such a Policy State- Such a facility should also allow centers and ment should lay down the ground rules to their staffs in charge of intellectual property which the centers will adhere when structur- management to exchange information and Ing their "upstream" relations with technology experlences on patent and plant variety mat- providers and research collaborators. It might ters. During the start-up of this new activity, also sketch out the new partnerships centers centers should arrange, perhaps with the help are looking for In their -downstream' relations of other International agencies and Intellectual with breeders and the seed Industries In de- property groups, workshops to help their sci- veloping countries. The Policy Statement entists. their staffs working on intellectual should consistently reflect the position the property issues, and their colleagues fromnl Group an its ceners takeon relatd issuesnational programs to understand the basic Group an its ceners takeon relatd issuesconcepts as well as the costs and benefits (e.g., on genetic conservation and blodiversity) associated with intellectual property, and to and should therefore also serve to contain the ensure that the techrllcal aspects of the law risk that expanding intellectual property pro- not hinder their mission tection will eventually slow the flow of gernplasm. The study also Includes Annexes outlining In-house policies and procedures for Implementing a patent pro- 2. Individual centers should draw up their own gram and a tabulated overview of Intellectual property rules and procedures to provide for: protectlon In developed and developing countries. i. germplasm distribution;- 11. standard networking arrangements likely to I. INTRODUCTION be needed to bring in outside technologies and - to the extent reasonably predictable Through their research, the International Agrlcul- - the kinds of proprietary restrictions that tural Research Centers are continuously generating in- may be accepted, and of center innovations novatlons. This was true before the advent of blotech- they would consider patenting: and nology, It Is true today for biotechnological advances. TIhe breeding of high-yielding varieties of wheat and rice iii. in-house procedures for controlling propri- that marked the 'Green Revolution" generated lnnovations etary Information, employee agreements, just as do today's much broader activities of a larger relationships with patent counsel. periodic number of centers ained at sustained yields in envi- reviews of intellectual property changes in ronmentally sustainable conditions. Biotechnology has 4 host and other countries, and reviews of since added a new dimension: It permits procedures that 5  cannot be achieved through conventional breeding, like inserting a single new gene without otherwise modifying proposilon, and therefore reflecting only onl the useful- thec original geniotype or variety; and It can greatly shiorten ness of Plant breeders' rights' concluded that because of the tnic I take to chiev breeing esult ttirtigbthe breeders' exemption anchbored in the International tcne tme it takes to achieve breeding results through Union for the Protection of New Varleties of Plants (UPOVI Convention there was no reason for the centers to be Today, the centers are tncreasingly concerned about concerned about possible constraints to be lrnposed on protecting their innovations as intellectual property, a Ihe centers' access to germnplasm. And as centers moved protection they have irare:iy sought in lle pas'. Te t1reelncreaslnglv Into strale research, d there.p developments feed this concern: (1) the rise of biotech- duced less finilshed varieties, the problem would lose Its nology and its growing Importance for the centers' re- relevance. On subsequent occasions the debate was search; (2) the 'prlvatLzation' of agricultural research, deferred pending resolution of uncertainties arising from meaning the increasing Importance of private lndustry in the various endeavors to modify the UPOV Convention agricultural research as well as the growing practice of and negotiations in the General Agreement on Tarifrs public research institutions protecting their Innovations and Trade (GAIT). against use by unauthorized third parties; and (3) the tightening of national and international legislation and In 1988, the CGlAR Issued a Policy Statement on conventions that protect intellectual property. Plant Genetic Resources which espouses an open-door policy with respect to the safe maintenance of germplasm Thts study has been commissioned by the CCIAR and Its availability to crop Improvement programs. Under Secretariat, In consultation with the Chairnan of the this policy, centers distribute germplasm from their active Center Directors Coommittee. Its purpose Is to ascertain collections to any researcher who demonstrates a le- whether the above concerns suggest a need to modify the gltknate Interest; the centers make no attempt to exer- current 'open-door policy" of the centers with respect to cJse control over subsequent commercial use of such germplasm distrtbution and the release of Innovations germplast. developed at the centers, and, more broadly, to evaluate the options available to the centers. The 1989 Biotechnology Study cosponsored by the World Bank, the International Service for National Ag- The authors gratefully acknowledge the helpful ricultural Research (ISNAR), the Australian Centre for comments they received on an earlier version of this International Agricultural Research (ACIAR). and the paper from Mike Arnold, Mike Collinson, John Dodds, Australian International Development Assi