welcome move to secure the nation’s intellectual property
The Lok Sabha has finally passed the long-overdue measure,
“The Protection and Utilization of Public Funded Intellectual
Property Bill, 2007.” The bill was recently introduced in the
Rajya Sabha, so it will take some time before it becomes the law of the
land. Nevertheless, it is a much-welcome step in the right direction.
Kapil Sibal, the Minister for Science and Technology, Government of
India, pointed out that the bill aims at promoting creativity,
innovation, and collaboration in research and development between
government and private organizations; commercialization of intellectual
property, and most importantly, increasing the awareness of IP issues
particularly within academic institutions. These objectives will be
largely accomplished provided the many provisions of the bill are
implemented faithfully and effectively.
There are many positive features in the IP bill, the most significant
being sharing of income or royalties arising out of the IP between the
inventor(s) or creator(s) of the IP and the institutional recipient of
the public funds (Sections 11(a) and 11(b)). This will create a strong
monetary incentive for both the individual scientists and the
organization to adhere to the IP “discipline,” as
enumerated in the various provisions of the bill. In my view, the
government should have actually given something back to itself from the
IP income (say 10 percent), and not left everything in favor of the
Two key provisions will ensure that IP prosecution will not be
compromised either due to unnecessary delays in filing or due to
premature public knowledge.
- Recipients of public funds for R&D will have to
make IP disclosures to the government within a defined time limit of 60
days. Early filing of IP applications is critical to guard against the
possibility of being beaten by a competitor filing for a similar
invention. And invention disclosure is a critical step prior to filing
of an IP application as this gives the institution an opportunity to
evaluate the IP, sort out inventorship and other issues and make sure
that specifications, claims, etc. are fully assembled.
- They will also be prohibited from making public
disclosures, publications and exhibition of IP prior to filing of IP
applications in all applicable jurisdictions. This is again a very
important provision as premature public disclosure has been known to
kill many patent applications on the grounds of prior art, lack of
novelty and “obviousness.”
Two additional provisions address the objective of commercialization of
- Section 10: Recipients of public funds for R&D will
be required to form an IP management committee, whose functions include
assessing market potential, addressing licensing issues, managing funds
and revenues, and managing relationships. Part of the funds for
administering this committee will come from the shared income and
royalties arising out of IP commercialization (Section 11 (c)). The IP
management committee appears to be the equivalent of the
“Office of Technology Management” established by
most American universities. All academic institutions in India
conducting R&D must have such a department.
- Section 7 (c): Institutions having title to public funded
IP are also required to take active steps to commercialize their IP,
and submit bi-annual reports to the government in this regard.
A few provisions in the bill strike are somewhat onerous and perhaps
require a re-think.
- Section 12: Forces recipients to ensure that when they
issue an exclusive license to market in India, the products will be
manufactured in India. This is an unnecessary burden that could
substantially devalue the commercialization potential of the IP, and in
some respects defeats the purpose of the bill. Arguably, this is a
concession made to promote the domestic industry. However, it may not
serve the public good in India if, for example, a pharma company
(domestic or foreign) chooses not to market a fabulous drug in India
even though it was invented here, because this provision will force it
to manufacture the drug in India.
- The government has given itself compulsory licensing rights
either due to international treaty obligations (Section 13) or national
security reasons (Section 18 (e)). However, there is no mention of any
compensation to the IP title-holders. This directly contradicts the
spirit of Section 11 to provide a monetary incentive to the inventor
and the institution to promote innovation.
Perhaps, the single biggest loop-hole that will have the largest
negative impact on the government’s objective to promote IP
awareness is Section 17, which essentially exempts post-graduate
students receiving scholarships, fellowships and grants from all
provisions of the bill. I fail to see why. A vast amount of creative
and innovative R&D is conducted by this group of young
scientists, and it is imperative that in the current global scenario
the IP discipline is inculcated as an integral part of the senior
In conclusion, since over 80 percent of the R&D in
India is today funded by the government, the IP bill is a great step in
the right direction to secure India’s Intellectual Property.
(All views expressed above are the personal opinions of the author and
do not necessarily represent the views of Actis Biologics, the company
where he works.)
Ramani A Aiyer, chief
scientific officer, Actis Biologics, Mumbai.