We were very concerned with the secretive way in which this bill was sought to be introduced–hopefully with more journalists picking up on this theme, the government will come under some pressure to be a little more open and transparent here. And this might engender more public discussion on such a critical piece of legislation.
Jyothi Datta of the Hindu Businessline has this excellent report:
“Scientists may not be the best negotiators, when it comes to converting their inventions into commercial products. But the Centre is set to change this through a research and intellectual property-related (IP) Bill that seeks to empower Government-funded institutions to commercialise their research, besides ensuring some of that revenue flows back to the scientist.
A draft Bill to protect and commercialise public-funded research has been circulated among different ministries and is with the Cabinet for comments and approval, Dr K.K. Tripathi, Adviser to the Department of Biotechnology, told Business Line. The Cabinet will decide whether to take the Bill to Parliament or seek further public debate, he said.
But, with the draft Bill being cloaked in secrecy, IP experts are concerned whether the proposed legislation will succeed in side-stepping the draw-backs of a similar Act in the US that had sought to IP-empower US universities in 1980.
On similar lines as the US’ Bayh-Dole Act, the draft Indian Bill encourages public-funded institutes to patent inventions and explores avenues for commercialisation. It also proposes that the inventor gets 30 per cent of the revenue from commercialising the patent, while 10 per cent is ear-marked for the institute’s IP Management Cell, Dr Tripathi explained. Rights to the product remain with the institute, while assignment rights are jointly held between the scientist, institute and the Government. Commercialisation plans require consent from all the three, he added.
There has been a substantial increase in the product filings by the Government-funded institutes, post the product-patent regime in 2005, he said, without giving details.
But can a US legislation that addressed specific issues with some success be ‘imported’ into the Indian context, questions Mr Shamnad Basheer, Research Associate with the IP Research Centre that is part of the Oxford University. Unhappy with the ‘non-transparent’ manner in which the Bill is being introduced, he seeks clarity on issues such as whether an inventor would have the discretion to decide to leave his/her invention in public domain. In some critical areas of science, it may make sense to encourage more ‘open science’ as opposed to a proprietary model, he observes.
Mr Mark Pohl, with US-based Pharmaceutical Patent Attorneys, agrees that the US legislation concerned did support some significant success stories such as blood-thinner Warfarin, for example, that came from a University patent.
However, universities have not benefited in revenue-terms, he says, citing an economic analysis by the US government that found that every dollar invested by universities in patents and licensing created approximately $0.30 in revenue. The missing link, he said, is universities’ lack a sense of what is commercially valuable. They tend to patent work that is scientifically creative or unusual, without knowing much about whether or not that innovation will make a profitable product.
Patent expert, Dr Gopakumar Nair, adds that over-negotiation by scientists, evaluation of the benefits of technology-sharing etc. will unravel as the proposed norms get implemented. The Bill should be flexible and there should be a head-room for change, if it has to succeed, he observed.”
“India would not be the first country to try to imitate the success fo Bayh-Dole. At the end of 2007, for instance, the Chinese passed a law that allows scientists, institutions and universities to own the patents that are created by publicly-funded research which they carry out. However, experience also shows that legislation is not enough if the scientists and institutions at which it is aimed are not willing or able to exploit it.
Many academics, for example, are just not suited to building businesses, or regard the idea of doing so anathema; while setting up a technology transfer operation requires significant upfront investment from the institution that is doing it, with no guarantees that anything created will be of interest to anyone.
In India there are also other worries. For example, the Indian Patent Office is chronically understaffed, so there have to be real questions as to whether it could cope with a surge in applications from a new source. In any case, the level of patenting among Indians remains very low – around 80% of patents granted in the country go to foreign concerns. Away from IP, the wide investment hinterland that has allowed start-ups and spin-outs to thrive in places such as the US and the UK just does not exist in India at the moment – something that raises real doubts about how many patents granted can be successfully commercialised. For any Bayh-Dole style legislation to have an impact, therefore, the Indian government will surely have to deal with a whole host of other issues as well.”
As SpicyIP has already pointed out, the bill’s intent is laudable and one has to create viable mechanisms to promote university– industry technology transfer and encourage more university research to be converted into useful technologies. However, the bill has several shortcomings, pointed out in our earlier post here.
Since this legislation raises critical issues pertaining to the nature of university research and innovation, the government needs to engender more public discussion around this and elicit the views of stakeholders. What is most worrying is the implicit assumption that whatever worked for the US (even assuming it worked–and there are plenty of skeptics who have enough data to cast some doubt on the one sided wonders of the Bayh Dole legislation) will necessarily work for India.
I’m just not sure that the government has done its homework here–do we have data on university patenting in india, quantum and kind of tech transfer achieved, impediments to tech transfer, level of public funding of research, numbers of papers published and other ways of measuring knowledge spill overs etc etc?
Importantly, the assumption that this bill will convert universities into cash cows susceptible to drowning in all the money that will pour in from tech transfer deals and license fees is not an unchallenged one. As Mark Pohl, a brilliant attorney representing some of the leading generic companies in the US suggested in the Business Line article above:
“However, universities have not benefited in revenue-terms, he says, citing an economic analysis by the US government that found that every dollar invested by universities in patents and licensing created approximately $0.30 in revenue. The missing link, he said, is universities’ lack a sense of what is commercially valuable. They tend to patent work that is scientifically creative or unusual, without knowing much about whether or not that innovation will make a profitable product”.
The above sentiment is expressed by Joff Wild as well in his thoughtful note on the IAM blog.
We’ll have a more incisive analysis of some of these issues in the coming days from a reputed scholar who’s been writing on his theme for several years now. Professor Bhaven Sampat of Columbia University, one of the leading authorities on Bayh Dole and its impact on university research in the US, has promised to guest blog for us in the coming days.
Unless we have more data on some of these issues, we cannot take an informed call on what legislation is best suited for encouraging more university-industry tech transfer. In short, the government needs to seriously start thinking about moving away from a “faith” based IP model to an “empiricism” based one. Only then will IP policy making truly come of age in India!