Patent Plant Variety Protection

Indian "Bayh Dole" Amendments: A Historic Moment in Indian IP Policy Making


Ch Unni of the Mint reports on a rather historic moment for IP policy making in this country.

Pursuant to the public outcry against the Indian Bayh Dole bill, a Parliamentary standing committee headed by Mr Subbarami Reddy requested the government to undertake wider consultations on the bill, take into account the various objections of stakeholders and come back with a revised version of the bill.

After consultations with a variety of stakeholders including civil society activists, R&D Institutions and academics, the government made 52 amendments to the original version that had been peddled in utmost secrecy. Resulting in a much more evolved version, incorporating as it does several public interest safeguards. More importantly, the structure of the bill has moved from a penal one to a facilitative one and the problematic inclusion of other forms of IP such as copyrights, trademarks and GI’s have been dropped from the scope of the Bill.

Unni points out the key changes in the latest version of the bill in his article (extracted below).

1. The public funded institution (PFI) does not have to mandatorily disclose and patent every invention. It has to only disclose such invention to the government that it wishes to so patent.

2. Penal provisions wherein the PFI that fails to comply loses out on future public funding and has to also pay back 50% of its grant back to the government has been removed.

3. The government has the right to “use” any invention patented by a public funded institution. It also has the right to issue non-exclusive licenses to any third party for the use of the public funded patent in the public interest.

4. The bill now covers only patents and plant varieties. Designs, copyright., trademarks and GI’s have been removed.

5. The public funded institution has to disclose all its patents, and licensing and commercialization details on its website.

6. Public funded patents cannot be assigned without the permission of the government.

7. Exclusive licenses can be granted only when the licensee manufactures the patented product substantially in India.

This new version of the Bill will now be finalised by the Standing Committee of the Parliament. The government then has the option of re-introducing the bill to Parliament on these recommended lines or ignore the findings of the Standing Committee altogether!

Given that the 52 odd amendments were proposed by the government itself, the most likely route is that it will accept the findings of the Standing Committee and reintroduce the bill on these lines. Given the injection of more public interest provisions and the vesting of considerably more flexibility and discretion in favour of scientists and public funded institutions, I personally don’t see any problems for a smooth sailing of the Bill through Parliament.

Although I believe that the case for such a law (at least at this juncture) is rather weak, the government needs to be commended for undertaking consultations towards the end and coming up with a more evolved version of what it initially proposed. Further, one must appreciate that the key advantage of this bill is that it will help us “regulate” public funded patenting activities for the first time. But for this bill, such activities would have been on par with private patenting activities and under the regulatory radar, so to speak. This is our key thesis in an article (co-authored with Shouvik Guha) that will soon be published by the Columbia Journal of Asian law.

As I state in my interview to Unni:

“This was a truly revolutionary process in law making and I was pleasantly surprised at the level of openness and consultation. Never before in IP law making history has there been such a meaningful consultative process, where a Parliamentary standing committee took the pains to understand the nuances of a technical legislation from a wide array of stakeholders. Indeed, many amendments have already been executed by the government to the original text to make the current version of the bill more “public interest” friendly.

While the bill was initiated and peddled through in the most opaque manner, the level of consultation by the government towards the fag end of the process was truly inspiring. Enabling all of us to have more faith in the working of the world’s largest democracy!”

For a complete version of Unni’s succinct piece, see here. For his previous piece reflecting on an earlier sitting of the Parliamentary standing committee, see here. Before I sign off, let me leave you with an issue that’s been tickling me: isn’t it rather paradoxical that standing committees have “sittings”?

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.

3 comments.

  1. AvatarDr.A.S.Rao

    Not in the know of the act and changes coming thro , other than Unni’s reports. When working in the government, I have found govt approvals , non-exclusive contracts and third party licensing provisions have only nuisance value. Why advocate them now?

    Reply
  2. AvatarAnonymous

    The key changes as highlighted by MR.Unni dealing with assignment is present in the old draft of the bill under sec 8!!!!!!. What is the amendment in assigment part of the act then?

    Reply
  3. AvatarGena777

    The changes to the bill are good news. It now looks like it’s in a much more palatable form. The prior, penal provisions in the bill’s earlier version were especially unsettling; I don’t think that it’s generally in the public interest for patent law and criminal law to intersect.

    Reply

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