For many important horticultural crops, ex ports constitute a large share of output, so FTO under IP must include freedom in foreign markets. Since the various IP rights important for plants are administered nationally, an exporter must check FTO separately in each foreign market. In general, the tools of biotechnology are more likely to be patented in just the major markets — such as the United States, Europe and Japan — and less likely to be patented in countries with smaller markets. Uses of bio-technologies specifically for minor crops are less likely to be widely patented in multiple countries than are uses in important field crops. However, as a result of the International Union for the Protection of New Varieties of Plants agreement first established in 1961, PVP systems are widely available overseas for the protection of clonally propagated varieties, and such varieties do tend to be widely registered in multiple countries. Still, not all types of bio technologies, genes or plant germplasm can be protected in all countries. For example, utility patenting of plants is allowed in only a few countries . Beyond these trends, however, there are no hard-and-fast rules as to which technology will be protected in which country, as each inventor decides where to seek protection . As a result, those seeking FTO are confronted by an often bewildering international patchwork of IP rights, where the negotiations needed for a particular transgenic variety can differ significantly each time it crosses a national border.Unless a new transgenic variety is developed by an integrated effort at a large company backed by a broad IP portfolio, a number of different owners — including companies, individuals,ebb and flow trays universities and even governments — will have valid IP claims over the technologies and genetic contents that end up being included in it.
That means there are numerous owners to track down, negotiations to conduct, billable legal time to hire, and multiple royalty payments to administer. The costs and headaches involved in working out “who owns what” and “who owes what to whom” can balloon into what economists call the “tragedy of the anti commons” and render the development process unfeasible.Given the smaller markets involved, there is less incentive in industry to consolidate IP portfolios around horticultural crops. Also, not one of the public-sector organizations or their typically smaller commercial partners in horticultural crop development has a complete IP portfolio in plant biotechnology.When technologies are patented, it is often not clear who currently owns particular aspects of each technology. This uncertainty is cleared up in the courts through patent interference cases, where attorneys and scientists under take intensive “surveying” of the “property lines” between the patents and technologies in question. Some times these cases drag on for years, keeping key technologies in legal limbo and the R&D community guessing as to who is the rightful owner. Yet, for most registered patents there is no such scrutiny. As a result, the boundaries for a considerable expanse of technological territory are not clearly demarcated, creating considerable uncertainty as to when a new application could be considered to be infringing or “trespassing.” In horticultural crops, the lack of clarity about the scope and validity of patent claims is especially important. Because the markets are smaller, fewer products have been developed and fewer contests have been fought to establish legal precedents. Furthermore, just the anticipation of possible legal costs can shut a project down before it ever gets off the ground.IP covering a crop variety may be sold, licensed or transferred to another organization at any time. The transfer of rights can occur either in part or in whole .
The transfer can happen in just one territory where it is protected or in multiple territories. The transfer of rights for a biotechnology tool or gene could be specified for use in just one crop , in several crops , or in any and all crops. Finally, to make matters worse, the fact that the IP rights have been transferred may be considered commercially sensitive information and not be made public.Any organization managing the release of a new crop variety faces uncertainty about which IP rights actually cover what technologies, who holds those rights in which countries, and to what degree a specific new transgenic variety infringes on those rights. Resolution of such uncertainty is not less costly for crops with smaller market values. Even after reliable information is obtained, uncertainty remains about negotiating the permissions. IP owners are not required to negotiate licenses, and they may feel there is not enough potential revenue in minor crops to make their licensing efforts worthwhile. They may also be concerned about technology stewardship, given the nervousness among consumers about food biotechnology and its status as a hot media topic. They may worry that the mishandling of their technology by a small and relatively inexperienced horticultural player could lead to stronger regulations, potentially eroding that technology’s value in its major crops, or jeopardize public perceptions about biotechnology overall.In response to IP congestion and continuing uncertainties, several leading U.S. public-sector agricultural re search organizations have come together to create the Public Intellectual Property Resource for Agriculture , an organization providing col laborative IP management solutions to public-sector and smaller private-sector players in horticulture . While individual universities and even the USDA have small and uncoordinated IP port folios in plant genetics, together they hold a fairly comprehensive set of technologies that could be useful for developing transgenic varieties .
PIPRA seeks to coordinate the disparate portfolios of its member organizations to support specialty crop applications. With the offices of technology transfer of its member organizations, PIPRA is pursuing several cooperative strategies.First, PIPRA seeks to develop and adopt more precisely focused terms of licensing, with specific distinctions for the “fields of use” to which a technology is licensed. A company that licenses a technology in vented at a university can still get the full benefit of using the technology in those major row crops in their line of business,grow strawberries container even if the license clearly defines and grants exclusive use of the technology in just those crops. Such a license effectively “reserves” the rights to use the technology in any other crops. Horticultural firms could then make separate agreements with the university to use the technology in only their defined specialty crops. An ad vantage of this strategy is that it can also apply to other minor uses, including “alternative” crops and humanitarian applications in staple crops for developing countries . By discriminating be tween big markets and multiple smaller markets — including those with limited commercial value but important social benefits — public-sector scientists could see their inventions earn royalties in the big markets of ma jor row crops while still helping to improve smaller crops or increase food security in world’s poorest regions.A database will, for the first time, list in one place current information about all of the patents of PIPRA’s members and their availability for licensing alongside information about technologies published in the scientific literature , in sufficient detail to identify which technologies can be accessed for which uses. The database will offer a clear, complete and certain “universal listing” of technologies available from PIPRA’s member organizations and the public domain. Commercial patent databases and professional legal staff are available to researchers in large private companies for searching through the “prior art” to make FTO analyses of a new product’s IP position. Such resources are seldom available to academic and government researchers.
The PIPRA database will decrease uncertainty about what cannot be used by showing what can be used.PIPRA is investigating the creation of patent-pooling mechanisms, which would collect IP submitted from its member organizations, package the technologies together and offer unified licenses for the “bundled” IP in a field of use, such as a specific crop, or in a particular state or country. This process mimics, in a virtual way, how large commercial firms have assembled their IP portfolios to provide FTO in major field crops. Its feasibility will depend — at least at the outset — on the extent to which public sector organizations are able and willing to provide access to patents covering key enabling biotechnology tools already licensed to the corporate sector. Even if used to access technologies on just a patent-by-patent basis, coordinated information and streamlined access to academic and government owned IP could help decrease trans action costs and improve efficiency in technology-transfer markets. There is ample room for improvement here, as some have complained that negotiating licenses from universities and government agencies is often less efficient than negotiating licenses from firms. PIPRA can improve public-sector technology transfer for agriculture by providing information, tools and precedents for efficient licensing. Greater opportunities lie in the The costs and headaches involved in working out “who owns what” and “who owes what to whom” can balloon into what economists call the “tragedy of the anti-commons” and render the development process unfeasible. steps being taken to coordinate access, package IP bundles and target uses in lower-value markets such as horticultural crops and traits important for food security in developing countries. These are, generally speaking, areas that commercial firms are not interested or capable of serving. Such collaboration is not surprising, given the history and ethos of cooperation among agricultural experiment stations within the land-grant system. Public-sector institutions also have greater legal flexibility to enter into collective IP management arrangements, given historical antitrust concerns about abuses of patent-coordination efforts in industry. Even more important will be the establishment of ongoing precedents and mechanisms for the treatment of future IP. Academic and government re searchers will go on making important discoveries and inventing new technologies for agriculture. Those future inventions will, from their inception, be handled in ways — such as being listed in the universal database, licensed for targeted “fields of use” and included in IP pools — that will make them accessible in a carefully proscribed manner, not just to top commercial bidders, but to anyone else in the broader agricultural community who can make good use of the technology, including horticultural researchers and growers.Current practices in patenting and intellectual property protection have created barriers to the use of biotechnology and advanced agricultural technologies for the creation and commercialization of new crop varieties. The complex and cumulative nature of biological innovation requires access to multiple technologies that are often exclusively owned or licensed. For example, commercializing a single variety of transgenic tomato could involve obtaining the rights to use a variety of technologies and genes from numerous life-sciences companies, government agencies and universities. Obtaining “freedom to operate” for transgenic crop varieties is difficult. There is considerable uncertainty as to who holds what rights to particular technologies, and negotiating access to those rights is time-consuming and costly. This is a problem for the major international agricultural companies that focus primarily on high-volume crops such as corn, soybeans and cot ton; for research institutions that work on specialty crops grown on much smaller acreages, such as tomatoes, strawberries, apples and cabbage; and for public institutions that work on staple crops for humanitarian use in developing countries. The international agricultural companies have taken steps to solve their FTO problems through mergers and cross-licensing agreements that bring together essential IP components within one company. However, public-sector institutions — such as universities, government agencies, international agricultural research centers and others working on specialty and staple crops — are still struggling to find ways to gain FTO. In addition, donor agencies such as the Rockefeller and McKnight Foundations, which have a long history of investing in agricultural research that benefits subsistence farmers in developing countries, have also found that IP constraints are reducing the flow of technology.Universities and other nonprofit institutions have generated many key patents related to agricultural bio technology and they will most likely remain an important source of innovation. However, no single institution has the complete package of technologies required for commercialization of a biotech variety. Although some institutions are developing ways to deal with these problems, there are still many examples of public-sector inventions that have been licensed exclusively to private-sector partners. In late 2002, representatives of more than a dozen U.S. public-sector agricultural re search institutions joined with the U.S. Department of Agriculture and the Rockefeller and McKnight Foundations to discuss access to patented agricultural technologies for the development and distribution of improved specialty crops and those targeted for the developing world.