Strengthening the Indian Bayh Dole bill: A provision for recovery in case of fraud?


Shamnad had recently discussed the presentation of the report of the standing committee to both houses of the Parliament on the Indian version of the Bayh Dole Act.  Recent case law in the U.S. suggests that the clause 20 of “The protection and utilization of public funded intellectual property bill, 2008”, hereafter “The bill,” may need “more teeth” for effective implementation.  The teeth may either come in the form of a direct clause or in the rules.  
The case of interest here is St. John’s University v. Bolton, where a Federal Court affirmed the bid by a university to bring suit against a former professor and his star student on the grounds of fraud and breach of contract claims. The university alleged in its complaint that the professor and the student had secretly patented research done at the university and collected more than  $100,000,000 in patent licensing fees.
The bill provides for a recovery of the total amount of the grant and with interest and barring the recipient from future grants in case of a breach.  See clause 20, The bill.  
I do not believe that a direct fraud provision in the act would encourage a purpose of The bill – encourage innovation.  However, a provision empowering universities or any entity that disbursed the funds to recover the entire proceeds (less the minimum due to the inventors) may prove to be useful.   
When reading cases like the one discussed above, do you feel that a specific ‘fraud provision’ needs to be included, or whether a clause in the rules for implementing the bill will suffice? 


Image created: www.wolframalpha.com

Rajiv Kr. Choudhry

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

One comment.

  1. AvatarAnonymous

    I believe it is important to have such a penalizing provision in the bill itself for it will deter those who try to secretly patent their work when the same is being funded by the Government. it would in fact pave way for innovators with some integral values (i.e. those who don’t cheat the state or the entity that is funding their research)

    Reply

Leave a Reply

Your email address will not be published.