Category Archives: Intellectual Property Rights

India Bayh-Dole legislation – a conspiracy theory?

An article by Latha Jishnu in the Business Standard in India in mid 2008 provides a succinct account of the secretive progress of a piece of Bayh-Dole legislation in India. It sounds rather similar to our experience in South Africa. The Indian Act has subsequently been submitted to Parliament. The Bill was apparently being passed around the various ministries without much transparency when the text of the Bill was published on SpicyIP, an Oxford-based blog. Similar secrecy seems to have been reflected in the South African, process. Although the original draft of the SA Bill was published for comment and the universities’ criticisms of what many considered an unworkable system were noted, it was very difficult to lay hands on subsequent drafts. People I know trying to track the final draft only saw it after the Act was passed, although it appears from personal accounts that industry players were probably consulted in a workshop (in India there appears to have been a workshop for the chambers of commerce and industry).

Jishnu’s article concludes: Technology transfers can and do happen through many channels, and the diverse methods now in use would be restricted by the new law, says Abrol. Nistads is one of the one of the 38 institutes grouped under the Council of Scientific and Industrial Research (CSIR) whose chief, Samir Brahmachari, has been advocating the open source system (reported several times in this column) of collaborative, incentive-based research. What we need is some informed debate on what is India’s best interest at this particular stage instead of going for a wholesale import of an American system that could prove ineffectual. Otherwise, we could be headed for a nuclear deal in our science establishment — corrosive, divisive and ultimately ineffective. A series of SpicyIP blogs goes into the Indian legislation in some detail. It sounds much like what we are facing: 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. Additionally, we’re seeing some great alternatives to the IP model emerging. Indeed, even as we speak, international scholars and activists are debating the merits of incentivising innovation through a variety of alternative means including “prizes”, “advance purchase contracts” etc. Closer home, Dr Samir K Brahmachari, Director General of CSIR, India’s premier R&D body, has been advocating an open source model in drug discovery. This is not to suggest that intellectual property rights (IPR’s) are bad in any way, but only to caution that IPR’s are but one way of incentivising innovation. Given that we are dealing with innovation and creativity, we must be open to trying out some of these alternatives i.e. we need to innovate within our innovation regimes! Particular stress is placed on the damaging effect that this legislation could have on access to medicines in India, given the above. Like our South African legislation, the draft Indian Bill also takes away the discretion of researchers and universities to make their own decisions on how best to make their research work for the public good. Both the decision to patent or a decision to use open approaches are subject to decision by a government office.

The Indian Acr aims to generate revenue through its provisions; however, SpicyIP argues, ‘In fact, the cost of operating a technology transfer office (TTO) often exceeds the money made from technology licensing. CSIR bears out this point well. While it generated approximately US$1 million in licensing revenues in 2004–2005, it spent more than twice that amount on filing patents.’

What is different in India is that there has been a strong activist movement, with a number of individuals and organisations tracking the progress of the Bill, unearthing copies of successive drafts, providing links to commentaries and analysis on Bayh-Dole in other countries  and generating debate. Useful for those who want to explore this issue in more depth.

But this particular budding conspiracy theorist, down on the southern tip of Africa, is asking why the secretive processes in both countries? And why does this legislation seem unstoppable? Is this a big-industry driven initiative and if, so given Obama’s view on scientific research development in last week’s speech, is this Reagon-style legislation what the US still wants?(1) And what of our new pro-poor government? What will our new Cabinet make of what they have been landed with?  Watch this space!

(1) It is to be noted that Professor Arti Rai, one of the authors of a very good article critical of  Bayh Dole’s relevance to developing countries is one of Obama’s IP advisors.

Obama promises to restore science to its rightful place

President Obama has made the headlines with his speech to the National Academy of Sciences. First of all, he is apparently unusual among Presidents for attending the NAS annual meeting, but he also made a powerful speech promising to put science and research at the heart of the recovery of the US, with substantial increases in investment.The full text of his speech can be found on the New York Times Dot Earth blog which will be running a commentary space on the speech.

It is instructive to compare Obama’s proposals with the policy developments we are facing in South Africa. The IPR Act of 2008 is based in the USA Bayh-Dole Act  of 1980. Not to labour the point too crudely, that is 29 years ago. We are forgetting the fundamental injunction that policy formulation needs to look forward, not backwards if it really to advance the country. The philosophy behind Bayh-Dole was informed by a Reagon-style economic vision that imploded in 2008 and one that the Obama adminstration is aiming at undoing. That outdated view says that the economy is all and that if universities act like businesses and commercialise their research, using patenting and revenue-seeking, then this will bring benefit to the country through economic growth and trickle-down. In my next few blogs I will be exploring the debate on how this has really worked (or rather, not worked) and what alternatives are now being proposed in other countries for effective innovation.

But for now, let us celebrate Obama’s speech and see what vision it embodies, rather than the dysfunctional ‘managemented’ view we currently live with. He talks of the crisis: ‘a medical system that holds the promise of unlocking new cures and

treatments — attached to a health care system that holds the potential for bankruptcy to families and businesses; a system of energy that powers our economy, but simultaneously endangers our planet; threats to our security that seek to exploit the very interconnectedness and openness so essential to our prosperity; and challenges in a global marketplace which links the derivative trader on Wall Street. The main focus is on medicine and energy for a sustainable environment, both with a strong human perspective.

Obama’s vision is of an interdisciplinary, international, collaborative and open scientific system. For a start, the policy system is being opened up:

As part of this effort, we’ve already launched a web site that allows individuals to not only make recommendations to achieve this goal, but to collaborate on those recommendations. It’s a small step, but one that’s creating a more transparent, participatory and democratic government. Then science itself is perceived as a collaborative open system: In biomedicine… we can harness the historic convergence between life sciences and physical sciences that’s underway today; undertaking public projects — in the spirit of the Human Genome Project — to create data and capabilities that fuel discoveries in tens of thousands of laboratories; and identifying and overcoming scientific and bureaucratic barriers to rapidly translating scientific breakthroughs into diagnostics and
therapeutics that serve patients.

And of course, with someone like Harold Varmus leading his scientific team, one hopes that open access will be on the agenda of a new scientific system.

Science is seen as not only the ivory tower (although basic science is given a strong emphasis) but scientists are preceived as potential activists. Applied research is valued and Obama places a strong emphasis on the potential role of the young and of the role that scientists can play in taking their knowledge into the schools and the community to help enthuse and inspire a new generation.

Ultimately, in typical Obama vein, it is a moral vision that drives this iniitiave, although substantial funding is going to drive it:

Science can’t answer every question, and indeed, it seems at times the more we plumb the mysteries of the physical world, the more humble we must be. Science cannot supplant our ethics or our values, our principles or our faith. But science can inform those things and help put those values — these moral sentiments, that faith — can put those things to work — to feed a child, or to heal the sick, to be good stewards of this Earth.

We need to ask whether our policies are in line with this renewed vision from the country that drives sceintific research in the world and if we are ready to collaborate with Obama’s USA.

IPR Act Regulations – IP under uncertainly in South Africa

Derek Keats. the Deputy Vice-Chancellor of Knowledge management at Wits University has posted a series of blogs in the proposed Regulations for the implementation of the IPR Act. He thinks – and I agree – that they will probably be unworkable and that they will almost certainly act as a hindrance and not a help to research effectiveness in the country.

Some of his comments:

Most importantly, innovation thrives in the absence of impediments. Every time a researcher must go to NIPMO for permission, there is another barrier to innovation. More barriers equates to less innovation. This is a sine quo non, and cannot be changed… These regulations will stiffle innovation, not just in software, but in almost every sphere of research endeavour. They are bad for innovation, they are bad for research, they are bad for business, and they are bad for South Africa. Research innovation is something that is made from a harvest of passion and energy, and the capacity for the unfettered creativity that universities make possible. Anything that reduces that capacity for unfettered creativity, and creates the risk of a passion drought will undermine innovation and lead to less, not more, innovation. This is something that I know with as much certainty as I know I have 10 fingers (currently). Much as software patents favour existing large companies, and make
it difficult for a new company to become large, these regulatins will have a small negative impact on the research superstars, but will make it much more difficult to become a new superstar, and will drive
passionate people away from research into other carreers. Academic freedom is important to people, and people do innovation. Trample on it at your peril!If you look at the range of work that these regulations cover, which
is effectively all knowledge work undertaken with public funds, the range of knowledge needed to make non-spurious decisions is enormous. The level of talent that will be needed for the imlementing body,
NIPMO, to work is very high. These are not decisions that can reasonably be expected to be taken by inexperienced people who have just completed a masters degree. They need experienced researchers,
with doctorates and many years of research and development experience. Such people simply do not exist in South Africa. They could be taken out of the Universities, but then that would undermine the innovation process they are supposed to be managing. So where will they come from?

Finally, he makes a set of useful suggestions on how things could and should work:

  • Leave critical decisions close to the site of the action,
    where people are most familiar with the challenges and opportunities
    and can act in an agile manner with the minimum of delays;
  • Ensure
    that the services are available to assist with commercialization of
    research, including legal services, product development assistance, and
    that these are available with minimum of fuss whether a proprietary or
    open source business model is followed;
  • Ensure that there
    is a National fund to help startups fight patent challenges from patent
    trolls and other holders of spurious patents, especially large
    multinational corporations with large patent portfolios which may
    contain numerous dubious patents;
  • Recognize that the vast
    majority of researchers are not doing research that will lead to
    commercial products, and do not bring the whole innovation regime in
    South Africa under these regulations, where social and cultural
    innovation will be stiffled; rather provide means to assist and inform
    such researchers to find commercially or socially beneficial uses for
    their research when they tell you they would like your help;
  • Where
    software and documentation in various forms are concerned, accept the
    National Policy on Free and Open Source as also being an important
    guide for action among responsible, knowledgeable researchers.

I hope Wits University’s reposnse to the Regulations will incorporate all o of this.

IPR Act Regulations promulgated – the death knell for open science in South Africa?

The Deprtment of Science and Technology has published the Regulations for the implementation of the IPR Act of 2008. These have serious implications for researchers and the universities and research institutions they work in and even more dire implications for open access and open innovation in South Africa. I set out below my preliminary reading of what these Regulations might mean. However, they are not very well drafted and contain some confusions, so it would be good to share reactions from researchers on how they see this affecting their research practices. The time for responding is short – we have until 8 May. How this relates to what is happening in the rest of the world will follow in subsequent blogs, as will feedback as UCT and other institutions grapple with what this means for how research will be carried out in South Africa.

A brief recap for those who are not familiar with the Act.

The full name of the Act is The Intellectual Property Rights from Publicly Funded Research and Development Act, 2008. (I blogged the Draft Bill last year here and here and here and here and here) In 2009, one would expect a piece of legislation dealing with publicly funded research to be dealing with access to research, but that could not be further from the case of this legislation. To put it briefly, this is designed to ensure that all publicly funded research gets intellectual property protection for the purposes of commercialisation. This seems to be the only way that this legislation can conceive of public benefit from research. Open innovation, open science, open access and open source have to get special permission from the bureaucrats before they will be allowed.

The provisions of the Act

Before looking at the Regulations, researchers need to grapple with the basic definitions and provisions in the Act:

  1. The central provision of the Act is that universities carrying out research from public funds have to assess and report on all research carried out in the university that might have the potential for IPR protection and commercialisation. (Which being translated means they are patentable – but beware; it means more than that, as set out below.)
  2. If the university/researcher does not want to lock down the IP in the research, then this decision has to be made according to the guidelines provided by the national IP Management Office (NIPMO) and it has to be notified of this decision. NIPMO then reviews this decision and can, if it disagrees with the university, acquire ownership of and obtain statutory protection for the IP in this research. In other words, the university and its researchers no longer have the right to make their own decisions on how best to ensure the impact of their research.
  3. Research funded by private organisations only counts as not being publicly funded if the full cost of the research is covered, including all direct and indirect costs (15b). Does this mean that if you are running a research programme with donor funding, but UCT supports your office and computer infrastructure, your research is subject to this Act?

How is intellectual property defined in the Act?

In other words, what does this really mean for researchers and who would be affected by it? The primary focus of this legislation is clearly patents, but those researchers who think that their work has nothing to do with patents in South African law need to think again.

The definition of IP in the Act excludes copyrights in published works, and includes ‘creations of the mind’ that are capable of being protected under South African and foreign IP law. That means that software and business processes, patentable in the US but not in SA, have to be considered in terms of this Act. Databases, which are protected under the EU database provisions, would also fall under this legislation. Trademarks, artistic works and designs would presumably have to be considered, too.

It is clear therefore that researchers in humanities, social sciences, business school, and architecture cannot sit back on the assumption that these provisions would not apply to them because what they do is not normally patentable. Nor can any unit working with open source software development. The scale of what this might mean for the university IP office and for individual researchers is daunting; even more so the volume of forms to be filled in. But most of all, it is the loss of freedom for researchers and the university to make their own decisions on how to manage the dissemination of their work and how to ensure its impact that is most threatening.

What do the Regulations say?

When a decision is made on whether or not a piece of research requires protection, the only basis on which the researcher or the university can make this decision on their own is that it is not patentable (2 (2)). In any other case, a form has to be filled in and the decision referred to NIMPO. The criteria that NIMPO will apply include the sector, potential contribution of the research, commercial and social potential and the ability for this work to be protected under any law anywhere in the world.

Provisions are then made for what happens if the State takes over the IP rights (2(8)) and what happens if permission is given for them to be waived (in which case they have to be offered to the funders of the research or, where there is no private funding, to the researcher concerned) (2 (9,10,11)).

Researchers will need to think about how this sits with the funders of research that they carry out.

Open science, open access and open source

There is confusion in the Regulations between public domain, open source and open access (see Andrew Rens’s blog on this question), but Section 2 (12) appears to be trying to say that where a the university wants to make research open access or develop open source software, it has to fill in a form and apply to NIMPO. If the need to make the research open comes from the requirements of cooperative research agreements or funder requirements, then this has to have prior approval from NIMPO. According to the Regulations, NIMPO then decides whether this agreement is in the best interests of the country or not (2 (14)).

It looks as though the university and its research departments will not be able to join collaborative research ventures or accept funding from donors who require open dissemination without government permission.

Andrew Rens thinks this might be unconsitutional – see his Aliquid Nova blog.

Given the requirements of some of UCT’s largest research funders, this is somewhat startling. This would also be threatening to a department like the Centre for Educational Technology, which has contracts with an international consortium, Sakai,  that requires assurance that all software developed has no IP restrictions and is open source.

How is this going to affect UCT’s research collaborations and research funding agreements?

The NIPMO Structures

What skills will the NIMPO Advisory Board, which will oversee all this, bring to bear? It will consist of people chosen for their ‘knowledge and experience in intellectual property management, commercialisation, technology transfer, and business skills’ (4 (6)). In other words, people without special research knowledge or familiarity with disciplinary fields will be making decisions about how research could best impact on the country.

Revenue sharing

Researchers do get the right to revenue earned from the commercialisation of their research (7(1). However, the deductions that can be made before this happens sound somewhat threatening, as they include expenses for ‘filing, prosecution and maintenance of statutory protection; bank fees and other charges for collecting revenues due; defence, validation and enforcement of IP rights; legal advice; market research, marketing and sales, travel costs and admin expenses, up to R1 million (7 (2)). In truth, there is not much likely to be left after all this. If I were a researcher in this position, I would not be holding my breath. Perhaps, like the music recording industry, the creator will land up owing more than is earned.


There are detailed provisions for how NIPMO will intervene in the granting of exclusive licences, offshore deals, assignment of rights. In the case of exclusive licences granted, NIPMO can walk in and reverse these licences if they think that commercialisation is not adequate.

Auditing and retrospective licensing

Then there is a retrospective clause that says NIMPO can audit a university’s disclosure of IP. The university is required to fill in forms twice a year detailing the IP governed by the Act and how it has been commercialised. Then NIMPO can audit annually. If it finds that any IP has not been declared, then it can retroactively enforce assignment of the rights (11 (2)).

Does this mean that the university’s ability to contract with donors who require assurances of open IP management will be compromised? How could the university offer such assurances if they can be reversed by NIMPO at a later date?

This will surely mean that super-caution will be exercised by submitting everything for approval before research contracts begin. And what effect would that have on research effectiveness?

Research collaboration

When it comes to dealing with private organisations and institutions, the university could licence a share of the IP to a co-owner. If the university enters into a collaborative research agreement, it must retain ownership of any pre-existing IP and commercialise this in line with the Act; retain IP rights in what it produces, or jointly own IP. It must ensure the commercialisation in SA of this collaborative research.

If the partners in the collaboration require open licences, then NIPMO has to approve before the university can enter such an agreement. NIPMO will publish guidelines on how universities have to manage such collaborations (12 (3)).

How will universities manage their research collaborations with this level of interference? And what effect will this have on research output and its social and economic impact?

IP in Publicly Funded Research Bill – does the cure match the disease?

The first question that arises in relation to this piece of legislation is why it has been drafted – what perceived need does it fill? And why the need to draft so widely – and even inventions that might conceivably become patents some day?

As far as I can establish, there are two separate areas that the government feels needs addressing. One is the perception that the universities are not performing well enough in delivering value for the money that is being invested in public research in the country. The other is that South African knowledge resources and intellectual property – as is common across the developing world – risk being pillaged by patent-seekers from the global North, particularly from the USA. In the later view, unless we protect ourselves with a strong IP regime, we will risk losing the exploitation of our intellectual capital to more powerful
Northern pirates and raiders.

As South Africa’s National Research and Development Strategy (2002) said: ‘These are valid concerns. More South African research needs to be more effectively disseminated and exploited for the national benefit. And the risk of predatory raids by US bounty hunters is real enough – the Rooibos case is the most high-profile recent case in this regard and there are genuine concerns about how best to protect traditional knowledge from appropriation. The problem is in the solution being proposed, which, I would suggest, is in fact contrary to some of the DST’s most enlightened – and most central – policy-making and
might well be the wrong cure for the disease.

I was concerned to see in an ITWeb article that Matlu Mabokano, manager of hydrogen and energy at the Department of Science and Technology (DST), is quoted as saying that the Bill is heading for Parliament this week even as comment is being sought. He is quoted as being dismissive of the fact that there have not been many comments submitted yet, accusing South Africans of being chronic last-minuter responders. This seems an opinion based on a blithe assumption that the issues in the Bill are not problematic and are simple and straightforward to respond to. This is not the case -the issues at stake are very complex and it has taken the Australian government, for example 800 pages to summarise the outcome of its consultation on the same issues in the Productivity Commission Report published two months ago. Moreover, as the DST itself wrote in the National Strategy for Science and Technology: ‘International thinking on legislation is as fluid and fast-moving as the new technologies themselves’. Yet Mabokano’s apparent assumption of simplicity and obviousness is not an uncommon view among those who propound proprietary models of IP protection. The Copy/South Dossier, which reviews the global IP regime from the perspective of developing countries, argues that the ‘dominant discourse around intellectual property – whether legal or sociological – starts from some largely unexamined assumptions’.

The assumption that a strong IP regime on its own fosters development and economic growth is one that is being increasingly challenged worldwide. Policy-making needs to be forward-thinking. As NEPAD argues in its discussion document on science and technology indicators, policy-makers need to be able ‘to discern, based on their expert knowledge, the future trajectories of the subject and the interventions which might improve its development’. The future does not look as if it will be one of proprietary IP systems only.

The DST’s policy on Science and Technology puts the role of technology and the changes being wrought by ICT at the heart of its proposals for development. As the White Paper on Science and Technology says:

The world is in the throes of a revolution that will change forever the way we live, work, play, organise our societies and ultimately define ourselves … The ability to maximise the use of information is now considered to be the single most important factor in defining the competitiveness of countries as well as their ability to empower their citizens through enhanced access to information.

This perspective seems to be missing from the Draft Bill. Worse, in fact the White Paper’s policy perspective, which stresses access and the maximisation of the use of information, risks being marginalised in a vision in this Bill which seeks to subordinate a very wide range of information management to the proprietorial and necessarily secretive
world of patents. South Africa’s Science and Technology Policy is also firmly founded on the need for research to make a public
development contribution: ‘A South African vision of the information society should seek to ensure that the advantages offered by the information revolution reach down to every level of society and achieve as best a balance between individuals and social groups, communities and societies as is practically possible.’ Science and Technology, it argues, must address the real needs of South Africa as for social and economic development. Patents on their own do not achieve this. In fact it is widely recognised that commercialising the research system by focusing on patents alone will advantage inventions that appeal to the wealthy, rather than those that serve the needs of the poor. A patent-driven system of research evaluation, on its own, would tend
to marginalise poorer communities and their needs.

At the very least, a forward-looking Bill would need to address and incorporate the need for non-proprietary methods of production, as this is now mainstream in world thinking and policy-making.

Governments across the world, including the UK, the USA, the EU, and Australia, have convened commissions to discuss and explore this issue. Ironically, South Africa is part of this movement and is a signatory of the OECD Declaration on Access to Research Data from Public Funding , something that would be rendered problematic by this Bill.

Something that the non-proprietary, commons approach is doing in the international arena is re-positioning the developing countries. A symptom is that the Development Agenda being driven by Brazil and Argentina has very recently been accepted on the WIPO Agenda. As Yochai Benkler charted in a complex and tightly-argued paper at the iCommons Summit in Dubrovnik last month, this but one symptom of the fact that we are at one of those turning points where a dominant system – the ‘strong’
IP regime – is being challenged across the globe by a radical re-thinking of how best to achieve the very goals that this Bill
seeks to promote. And, as he argued, this is now a social movement, in the beginning stages, which is moving developing nations from the periphery to the centre of international affairs, a world in which human development and justice are the core drivers, not the specifics of IP law and copyright.

One strong thread in the critiques of the global IP system is that patents in particular are damaging to developing and transitional economies. As Benkler puts it: ‘The above-marginal-cost prices paid in …. poorer countries [as a result of patents] are purely regressive redistribution. The morality of this redistribution from the world’s poor to the world’s rich has never been confronted or defended in the European or American public spheres. It simply goes unnoticed.’ And yes, there is value in effective patents and yes, developing countries have managed to patent successfully themselves. And so my argument is not, in addressing this Bill, that it needs to be thrown out in favour of non-proprietary and open methods of dissemination. It is that, in formulating the Bill as widely as they have, the drafters have sidelined a number of important questions that are being debated around the world as we speak. As the Australian government put it in the Productivity Commission Report:

Universities’ core role remains the provision of teaching and the generation of high quality, openly disseminated, basic research. Even where universities undertake research that has practical applications, it is the transfer, diffusion and utilisation of such knowledge and technology that matters in terms of community well-being. Commercialisation is just one way of achieving this. Productivity Commission
2007: xiii – my emphasis)

In other words, there needs to be more flexibility in the provisions of this Bill for the commercialisation of research results and space for non-proprietary collaborative approaches that could advantage the poorest sections of our community at the same time as we grow our competitiveness in global business.