Patent

The Indian Bayh Dole Bill: A Critique and Some Suggestions


In my last post, I lamented the pitiable state of affairs that informed and continues to inform the passage of India’s notorious “Bayh Dole” bill. In particular, I referred to a TOI piece, which documents the “secrecy” with which a Parliamentary select committee is now hearing this matter.

I also referred to a draft article of mine (along with Shouvik Guha) which highlights some of the major flaws in this badly conceptualised and drafted Bill. For those interested, you may download the paper here (if the page opens in an inconvenient to read format, do right click on your mouse and hit the button titled “save linked file as” and then download the document).

Today’s edition of the Mint carries an editorial of mine reflecting on the above theme and providing a brief critique of the Bill. I reproduce it below:

“The 2008 Protection and Utilization of Public Funded Intellectual Property Bill—popularly called the Indian “Bayh-Dole” Bill since it draws inspiration from the US Bayh-Dole Act of 1980—is currently undergoing scrutiny by a parliamentary select committee. It will be placed before Parliament next month.

Despite this Bill’s ability to affect many of India’s leading public research and development (R&D) institutions, its journey to become law has been accompanied by a worrying lack of transparency and, worse, the lack of input from important quarters. The Indian Institute of Science, India’s leading research institute, was not even asked for its views by the committee. Little wonder, then, that the Bill suffers from a number of critical drawbacks.

To begin with, the Bill’s very raison d’être is flawed; it ignores an important historical fact. For a long time in the US, it was thought that publicly funded research couldn’t be go from academia to business because these researchers often lacked the right to patent their own inventions. To remedy this and increase the prospects of commercializing research, the US enacted the Bayh-Dole Act.

India does not have a similar problem. It is rare that any of our universities or institutes receiving public funds is denied the right to patent. Even assuming that our institutions have somehow been lax in exercising their freedom to patent, the solution is not to force them to patent any and all inventions, without regard to the actual worth of the invention or the cost of patenting. Yet this is exactly what the Bill does, under threat of severe sanction for those institutions that dare disobey the law.

In this regard, the Bill ignores the wisdom of many scholars who point to the fact that patenting is not always the best way to capture and commercialize publicly funded research. Indeed, the Council of Scientific and Industrial Research (CSIR), India’s biggest patentee and largest recipient of public R&D funds, is now attempting to get at a potential tuberculosis drug through an open source approach. Under the Bill, CSIR scientists would now have to discard this approach.

While hoping to make our institutions financially self-sufficient, the Bill fails to appreciate that even in the US, not many institutions make money from their patents. Closer home, the figures are even more startling: While CSIR generated Rs4 crore in 2005 in licensing revenue, it spent Rs10 crore on patent-related costs.

Given the above problems, what might the solutions be?

First, prior to arriving at any policy framework to regulate something as serious as publicly funded research, the government must undertake a comprehensive study. This should aim at rigorously and empirically examining the contours of such research.

The justice Rajagopala Ayyangar committee report, submitted in 1959, is an excellent example in this regard. This council undertook a careful study of the Indian patent system for two years before making a slew of recommendations that went on to form the basis for the 1970 Patents Act. It contributed in no small measure to the success of the Indian pharmaceutical industry.

Second, it might be more optimal if India regulates the patenting of publicly funded research through a “policy” and not a “law” that would create binding rights and obligations. When compared with a flexible policy, an enacted statute will be far more difficult to change as science and technology progress.

Third, given that publicly funded inventions are generated using taxpayer money, the Bill ought to provide for greater “public interest” safeguards, such as the “affordable” pricing of any goods that come out of publicly funded research.”

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.

6 comments.

  1. AvatarVenky

    Shamnad, this is an excellent post. To your recommendations, I would add that the researchers should also have the option of licensing their work under an open source or an open content license. The fact that this bill is a blast from the past is obvious from the fact that it considers only restrictive licenses and does not take into consideration the innovation that the open source and the open content worlds have witnessed because of the use of liberal licenses.

    Finally, I really liked your point about proper research being done before formulating policy and the example you cited.

    Reply
  2. AvatarShamnad Basheer

    Thanks Venky,

    You’re absolutely right–the bill needs to vest more discretion in the hands of individual scientists to determine the most optimal way to effectuate knowledge and technology transfer. To this extent, the norm should be non exclusive and open licensing–and exclusivity should be the exception–and resorted to only when no one else is likely to pick up a license on open terms. I’ve documented the NIH procedure in this regard in the full length draft paper to which I linked. Would love your comments on that.

    Reply
  3. AvatarShamnad Basheer

    Dear Venky,

    The Parliament website now indicates that the select committee has announced a new meeting for the 3rd of Feb, where it will take views of “experts”. Perhaps the Times of India piece did make an impact and IISC will finally be heard now.

    Reply
  4. AvatarAziz

    Thanks Shamnad for highlighting this important issue. Your reference to open source drug discovery initiative is quite pertinent. If India would adopt a Bayh Dole model, it would only strengthen the arguments of IP maximalists that ever country moves to the same direction on the developmental curve and thus there is no problem with global IP architect. It is indeed very much opposite of what India is trying to achieve at multilateral forums such as WHO and WIPO. India should set an example by adopting an open, collaborative and equitable innovation policy.

    Reply
  5. AvatarAnonymous

    I can not participate now in discussion – it is very occupied. I will be released – I will necessarily express the opinion.

    Reply
  6. AvatarAnonymous

    I’m not able to download the draft paper in a readable format. Any chance of an alternate downloading link?
    Thanks!

    Reply

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