South Africa’s Bayh Dole Regulations

While India is awaiting parliamentary consideration for its own Bayh Dole Bill, another developing country, South Africa has just come out with Draft Rules (available here) for its own version of this IP legislation. The new Rules as well as the new Act itself, which was initially circulated in some secrecy, is sparking a debate between two sides. One side is claiming that it is unconstitutional, that it may stifle innovation and that it breaches WHO commitments. While the other side is saying that it promotes research by providing incentive and providing funds. Sounds familiar? (for simplicity’s sake, the US, SA and Indian versions of the Bayh Dole legislation will be referred to as USBD, SABD and IBD respectively)

SpicyIP has already carried a series of posts on the IBD and the similar debate that it had sparked. The main problem being (aside from the secrecy in which it was initiated), in short, to re-iterate from a previous post,

“The Indian bill, much like its US equivalent is premised on the assumption that intellectual property rights are the best way to drive innovation. The more IP, the better for innovation. There is plenty of literature that casts strong doubt on this lopsided view.”

For those joining us late, the USBD was introduced in 1980 to promote the patenting of publicly funded research by Universities and licensing to private firms. The assumption was that this commercialisation would add more incentive in the form of economic growth, for research in sciences. Indeed, as Mr Harry Thangaraj has pointed out (in this article) , it has facilitated and incentivised the translation of research into essential goods and services. At the same time however, without the appropriate safeguards, there is the danger of it not protecting public interest as it should.

Looking at the SABD, critics are worried about several factors.
Firstly, that the patent-centric commericialization nature of the Bill underestimates and is hostile towards Open Source and Open Processes. They point out that several crucial decision making posts are in the hands of bureaucrats. These include boards which are required to impose reviews at the national and international level before approving of open approaches. Worries are voiced about the tendency of such a board to shift focus from public interest, to a more business like profit-oriented approach.

IPWatch points out that the SABD is also in opposition to many of the recently adopted WHO provisions on global strategy and plan of action on public health, innovation and intellectual property. The global standard is set on becoming more focused on open access of resources on public health. This goes hand in hand with regional, national and international collaborations and knowledge transfer, including methods such as patent pools, open licensing, open access to research publications and data, etc. These efforts would face severe road blocks with the SABD and the National IP Management Office (NIPMO) formed under it which is responsible for assessing decisions about IP protection on inventions and innovations made by Universities. Eve Gray, on IP-Watch has stated that the Act “casts its wide net to include potential IP and patent protection in any legislation in the world,”. Databases, research methods, business processes, software and collaborative research ventures will be subject to scrutiny by NIPMO to ensure that publicly funded research is kept in South Africa, she said. The WHO plan of action doesn’t exclude the parallel traditional patenting, though it does include safeguard measures to ensure that public health goals are not lost in the process. Eve Gray, in her blog, puts forward the suggestion that it would perhaps be appropriate for “for public health departments in our universities and their researchers to submit a request to the DST for the withdrawal of the Regulations for further consideration of the issues at stake by all the government departments that might be involved in this potentially embarrassing clash.

In a well written piece jointly written by several prominent US based academics (So AD, Sampat BN, Rai AK, Cook-Deegan R, Reichman JH, et al) the authors have examined the effect that mimicking a Bayh-Dole legislation would have on developing countries. They note that there seems to be a wide-spread belief that the USBD was a factor in spurt in research and development that came with the growth in the economy over the last 20-30 years. The paper challenges this belief stating that the role of the USBD was very overstated, and in fact, that a significant share of the academic patents and licenses which resulted in commercial products, could have been effectively transferred by being placed in the public domain or licensed non-exclusively. They also shoot down the belief that it acts as a revenue generating mechanism for laboratories as studies show that most labs barely manage to even break-even. According to the article, the head of the technology licensing office at MIT (and former President of the Association of University Technology Managers) notes that “the direct economic impact of technology licensing on the universities themselves has been relatively small (a surprise to many who believed that royalties could compensate for declining federal support of research)… [M]ost university licensing offices barely break even”

They also delve into the necessary safeguards, such as ensuring exclusive licensing is limited only to cases where it is necessary for commercialisation, transparency, govt access, etc. Read their paper here for more details.

Meanwhile, on the other side, there are those who support the legislation. As reported in IPWatch, Yasmin Forbes, Microsoft’s South Africa national technology officer, stated that it represents ‘sound public policy’. There were also those who stated that the concerns pointed out by the SABD’s critics are overstated and that the SABD, rather, will drive innovation and economic growth. However, regardless of which side one is on, there is the fact that much of these issues, which are now arising with the Rules, are substantive issues which should have been discussed before the SABD was enacted. Hopefully a statement that will not have to bear re-iteration with the IBD.


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