Indian "Bayh Dole" Bill Clears Cabinet: But Still Remains a Secret


A couple of days back, the Hindu Business Line reported that the “Union Cabinet at a meeting chaired by Prime Minister Dr Mannmohan Singh …approved the Protection and Utilisation of Public Funded Intellectual Property Bill 2008”.

The Mint responded to this news in a very punchy edit, reiterating concerns of “secrecy” and lack of sufficient “public interest” safeguards:

Not in Public Interest

“It is quite curious. Just a week ago, science and technology minister Kapil Sibal acknowledged media and experts’ concerns and promised to review the flaws in a proposed new law. Yet, a cryptic official press release on Friday said the Union cabinet gave its approval to enact that very legislation —the public-funded R&D Bill, popularly known as the Indian Bayh Dole Act after its equally controversial US counterpart.

So, the Bill is set to be tabled in Parliament without the official draft having been released and publicly debated. The sad significance of this stems from two factors. First, it is all about patenting output of research financed by public money. Second, it is strictly geared to exclusive licensing for commercial use of what could be crucial innovations for public health. The scientist will have no say here. So, CSIR would not have the power to repeat past decisions such as not patenting an antimalarial compound that could make a low-priced drug available. As we’ve argued before, this Bill needs to encourage open source and non-exclusive licensing, too. Yes, minister?”

A group of reputed US IP professors have come up with a very thoughtful piece highlighting why Bayh Dole style legislations may be bad for developing countries. Interestingly, Professor Arti Rai, one of the key IP advisors to President elect Barrack Obama is a co-author.

They note in particular that developing countries ought not to buy into the romanticised version of Bayh Dole doing the rounds. Rather, they ought to look closely at the numbers to understand that the impact of Bayh Dole was fairly limited:

“Although universities can and do patent much more in the post-BD era than they did previously, neither overall trends in post-BD patenting and licensing nor individual case studies of commercialized technologies show that BD facilitated technology transfer and commercialization. Empirical research suggests that among the few academic patents and licenses that resulted in commercial products, a significant share (including some of the most prominent revenue generators) could have been effectively transferred by being placed in the public domain or licensed nonexclusively”.

The paper however does concede that:

“Since the passage of the Act in 1980, US academic patenting, licensing, and associated revenues have steadily increased. BD [Bayh Dole] accelerated this growth by clarifying ownership rules, by making these activities bureaucratically easier to administer, and by changing norms toward patenting and licensing at universities.”

The paper cautions that if developing countries such as India wish to have Bayh Dole type legislations, they must incorporate a number of safeguards. We’ve already dealt wtih some of these safeguards (such as non exclusive licensing) in our previous posts. However, one safeguard that caught my eye and which is very relevant, given the propensity of our government to keep this bill a “secret” even at this stage is the following:

“The legislation should ensure transparency in the patenting and licensing of publicly funded research. Public accountability should follow public funding. Institutions that engage in patenting and licensing should be required to report or make public all information that is necessary to determine whether they are reasonably serving the public interest. Such information may include the number of patents and licenses obtained, the funds expended on patenting and licensing activities, licensing revenues, and the key terms (e.g., exclusive or nonexclusive, humanitarian access, research exemption, definition of market segmentation or field of use, performance milestones, and march-in rights) of licenses. The lack of a transparency mandate is a key flaw of the BD Act that should not be replicated.”

Is the Indian Government listening?

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

One comment.

  1. AvatarMrinalini Kochupillai

    Hi Shamnad

    The article by Arti Rai et. al is certainly very interesting. Thanks for posting the link!

    However, I do not entirely agree with one statement made by the Mint, namely: “CSIR would not have the power to repeat past decisions such as not patenting an antimalarial compound that could make a low-priced drug available.”

    I say this on the basis of the analysis in my last post (http://spicyipindia.blogspot.com/2008/09/good-bye-with-some-more-thoughts-on.html) of the term “Recipient” under the Bill (atleast the version of the Bill that SpicyIP procured a copy of). From my understanding of the term “Recipient,” the R&D done by CSIR using the funds given by the planning commission would not be covered by the Bill as these funds are not given under a “funding agreement.” As far as my discussions with SKB reveal, most of CSIR’s funds result from the annual budget prepared planning commission and not from other govt funding agencies. Any thoughts on this?

    Best wishes

    Mrinalini

    Reply

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