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4-Patents: Public sector collaboration for agricultural IPmanagement

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TITLE:  Public Sector Collaboration for Agricultural IP Management
SOURCE: Science, Vol 301 (5630): 174-175, by R.C.Atkinson et al.
DATE:   Jul 11, 2003

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Public Sector Collaboration for Agricultural IP Management

Richard C. Atkinson, Roger N. Beachy, Gordon Conway, France A. Cordova,
Marye Anne Fox, Karen A. Holbrook, Daniel F. Klessig, Richard L.
McCormick, Peter M. McPherson, Hunter R. Rawlings III, Rip Rapson, Larry
N. Vanderhoef, John D. Wiley, Charles E. Young*

The impact of public-sector research is evident in many technology
sectors, and this is particularly true in agriculture. Dating back to the
establishment of the Land Grant College system in 1862, universities and
other public-sector institutions have been the leaders in developing
improved crop varieties that were transferred to farms and to the
agricultural industry through cooperative extension services in the
United States or equivalent organizations internationally. However, this
model is changing rapidly because of increased intellectual property (IP)
protection of agricultural inventions, as well as the development of a
research-intensive private sector that is making notable contributions to
enhancing the productivity of U.S. agriculture. The private sector
logically focuses on crops such as corn and soybeans where markets are
large, which leaves the development of small specialty crops for the
United States and subsistence crops important to the developing world
mostly in the hands of the public sector.

In the past 25 years, fundamental changes in the nature and ownership of
innovations in basic and applied agricultural research have complicated
the mission of our public research institutions. As the importance of
biotechnology in biological research increased, the possibility of
patenting and licensing biotechnology expanded through changes in the
legal and policy framework. The Supreme Court decided in 1980, in Diamond
vs. Chakrabarty, that living, human-made microorganisms can be patented.
Also in 1980, the Bayh-Dole Act was passed to encourage U.S. universities
to patent their innovations and to license them to private-sector
companies in order to encourage their commercial use (1). Since that
time, formal mechanisms for transfer of public research results to the
private sector for further development have accelerated, and there has
been a marked increase in the number of public-sector patents and the
licensing of technology to the private sector.

Agricultural technologies pose a particular challenge for university
technology transfer programs in balancing the objectives of technology
commercialization with humanitarian purposes or for applications to
specialty crops. Some offices have addressed these challenges by
instituting licensing practices that foster commercialization while
preserving rights for philanthropic purposes or by working to keep
certain technologies in the public domain (2). Similarly, the U.S.
Department of Agriculture continues its policy of making technologies
broadly available (3). However, these practices are not universally
applied across institutions, with the net result that, although many
significant discoveries and technologies have been generated with public
funding, these discoveries are no longer accessible as "public goods."

Our institutions have found that the public research sector finds itself
increasingly restricted when wishing to develop new crops with the
technologies it has itself invented, including so-called "enabling
technologies"--the research tools necessary for further experimentation
and innovation. In agricultural research, applied research and genetic
improvement of crops are derivative processes based on pre-existing plant
material, and each incremental improvement now brings with it a number of
IP and germplasm constraints that have accumulated in the plant material.
When IP rights for agricultural materials and technologies are held by
multiple public- and private-sector owners, this fragmentation produces
situations where no single institution can provide a commercial partner
with a complete set of IP rights to ensure freedom to operate (FTO) with
a particular technology (4). Along with major commercialization problems
associated with public acceptance and regulatory approval, limited or
conditional access to a wide range of patented technologies has been
identified as a significant barrier to the applications of biotechnology
in the development of new crops. This is particularly true for
subsistence and specialty crops, the historically important work of
public-sector research (5, 6). A prominent example of the complexity
resulting from fragmented technology ownership is "GoldenRice" (pro-
vitamin A rice) in which more than 40 patents or contractual obligations
associated with material transfer agreements represented potential
constraints for commercial development (7).

Large agricultural biotechnology companies have assembled the IP assets
needed to develop new crop products by investing in targeted research, by
licensing important technologies, and by a series of strategic mergers
and acquisitions. Several companies have effectively used these
proprietary technology platforms to develop new varieties of major crops
that enhance farm productivity and to reduce environmental impacts both
in the United States and internationally (8, 9). Meanwhile, work on crops
of less commercial interest has progressed slowly. Therefore, we, as
leaders of our institutions, are now collectively asking whether
institutions such as ours can do a better job in fulfilling our mission
in support of agriculture in the United States and developing countries.

One of our institutions conducted research to evaluate the structure of
IP ownership in the area of agricultural biotechnology (10). This study
found that roughly one-fourth of the patented inventions were made by
public-sector researchers (see the figure), which is substantially larger
than the IP portfolio held by any single agricultural biotechnology
company. It is, however, highly fragmented across institutions and across
technology categories. And much of this IP has been licensed, often under
terms that are confidential but which have likely resulted in greatly
restricted access to the underlying technologies.

Figure 1 Annual grants of U.S. utility patents in the area of plant

This study suggested that, apart from a few important exceptions, public-
sector scientists have invented many of the types of technologies that
are necessary to conduct basic biological research and develop new
transgenic plant varieties. For instance, they have developed
technologies to transfer genes into plant cells, have characterized
specific DNA elements that drive unique patterns of gene expression; and
have identified many genes that confer important plant traits. Such
discoveries underscore the fact that public-sector research institutions
have been significant sources of technological innovation in agriculture.
They also suggest that, in the future, end products can still be
delivered with FTO for specific purposes. A number of strategies can be
envisioned to enhance FTO with public-sector IP. Informed decisions
regarding dissemination of new knowledge via open publication or
protecting it with a patent are clearly important. While new technology
is judiciously patented, FTO can be enhanced if public-sector
institutions systematically retain rights to use their newest and best
technologies for subsistence and specialty crop development when they
issue commercial licenses. It will also require that they systematically
make their current and future technologies known and available to each
other. We believe a collective management regime would enable an
effective assessment of FTO issues and could begin to overcome the
fragmentation of public-sector IP rights and re-establish the necessary
FTO in agricultural biotechnology for the public good, while at the same
time improving private-sector interactions by more efficiently
identifying collective commercial licensing opportunities.

To develop this strategy and to realize what we believe will be
significant benefits both for U.S. agriculture and for the world's food
security, we are establishing the Public-Sector Intellectual Property
Resource for Agriculture (PIPRA). We have been aided by the Rockefeller
and McKnight Foundations who also see the importance of PIPRA for
furthering their goals of achieving food security for the poor and
excluded of the world.

Although PIPRA is a public-sector initiative, we recognize that
continuing and enhancing our good relationships with the private sector
will also be a critical component of developing and implementing a
successful collective strategy. We have the following near-term objectives:

A review of public-sector patenting and licensing practices. We will
explore and clarify the implications of our IP patenting and licensing
practices. We will seek "best practices" that will encourage the greatest
commercial development of publicly funded research innovations while also
retaining rights that public research institutions need to fulfill their
mission of research for the broader public benefit.

A collective public IP asset database. There are several efforts under
way to develop databases of patented agricultural technologies so that
public-sector researchers can be informed about FTO obstacles at the
initiation of their research. Two of the most useful are the databases
under development at the U.S. Department of Agriculture's Economic
Research Service and at the Center for Application of Molecular Biology
to International Agriculture (CAMBIA), located in Australia (11). These
efforts, although extremely valuable, lack important information about
the most current licensing status of patented technologies. PIPRA will
complement them by developing a common database that provides an overview
of IP rights currently held by the public sector, including up-to-date
information about licensing statuses.

Shared technology packages. PIPRA is exploring the possibility of pooling
specific public-sector technologies, making technology "packages"
available to member institutions and to the private sector for commercial
licensing or, at the very least, for designated humanitarian or special
use. Patent pools have been used effectively by companies to expedite the
development and diffusion of innovations that draw on many technology
building blocks with multiple patents. Although we recognize that public-
sector institutions have little prior experience with patent pooling, a
well-known exception is Columbia University, which participated with nine
companies in the pool of patents for MPEG-2 digital video technology,
PIPRA will explore the feasibility of assembling complementary sets of
key agricultural technologies that might help public-sector researchers
obtain FTO in crop biotechnology and significantly reduce the transaction
costs now associated with negotiating the large number of licenses
required to develop a new cultivar. PIPRA will also explore whether such
packages might create additional opportunities to generate royalty income
to support public-sector research by providing convenient one-stop-
shopping for commercial licensing.

Moving Forward This is a new initiative for us, but one that reflects--
and means to continue--the long-standing research collaborations that
have naturally existed among agricultural scientists (among others)
across institutions, while recognizing that significant progress in
biological research now requires locating and negotiating for the use of
multiple tools with many different IP owners. More planning, thought,
discussion, and participation are needed to make this collective effort
work, and our hope is that each of you who reads this Forum will initiate
discussions within your institutions about IP management. What is the
balance between the positive effects of IP rights on your institutional
mission and the limitations these rights place on your research and your
ability to apply your discoveries for the greatest public benefit? Open
up the question for discussion, and let us know what ideas are generated.
PIPRA seeks wide participation to mobilize the full scientific capacity
as well as the underlying IP for public-sector agricultural research.
Several organizations are beginning to express their interest and
support, including the Board for International Food and Agriculture
Development (BIFAD), an advisory board on agricultural development
priorities to the U.S. Agency for International Development that involves
many public-sector research institutions (12). We urge public-sector
research institutions that are interested in joining this effort to
contact us (13).

References and Notes

1. D. C. Mowery et al., Res. Pol. 30, 99 (2001).
2. R. N. Beachy, Science 299, 473 (2003).
3. M. Ruff, U.S. Department of Agriculture, personal communication.
4. M. A. Heller, R. S. Eisenberg, Science 280, 698 (1998).
5. B. D. Wright, Calif. Agric. 52(6), 8 (1998).
6. G. Conway, G. Toenniessen, Nature 402, C55 (1999).
7. R. D. Kryder, S. P. Kowalski, A. F. Krattiger, ISAAA (International
Service for the Acquisition of Agri-Biotech Applications) Brief (no. 20)
8. R. H. Phipps, J. R. Park, J Anim. Feed Sci. 11, 1 (2002).
9. J. Huang, S. Rozelle, C. Pray, Q. Wang, Science 295, 674 (2002).
10. G. D. Graff, S. E. Cullen, K. J. Bradford, D. Zilberman, A. B.
Bennett, in preparation.
11. See
12. L. Paulson, U.S. Agency for International Development, personal
13. For more information about PIPRA, including contact information,
14. We thank D. Delmer of the Rockefeller Foundation, A. Bennett of the
University of California, R. Cahoon of Cornell Research Foundation, and
J. Clough of the Meridian Institute for assistance in preparing the draft
of this article.

R. C. Atkinson is president of the University of California, Oakland, CA
94607, USA. R. N. Beachy is president of the Donald Danforth Plant
Science Center, St. Louis, MO 63132, USA. G. Conway is president of the
Rockefeller Foundation, New York, NY 10018, USA. F. A. Cordova is
chancellor, University of California-Riverside, Riverside, CA 92521, USA.
M. A. Fox is chancellor, North Carolina State University, Raleigh, NC
27695, USA. K. A. Holbrook is president of The Ohio State University,
Columbus, OH 43210, USA. D. F. Klessig is president of the Boyce Thompson
Institute for Plant Research, Ithaca, NY 14853, USA. R. L. McCormick is
president of Rutgers, The State University of New Jersey, New Brunswick,
NJ 08901, USA. P. M. McPherson is president of Michigan State University,
East Lansing, MI 48824, USA. H. R. Rawlings III is president of Cornell
University, Ithaca, NY 14853, USA. R. Rapson is president of the McKnight
Foundation, Minneapolis, MN 55401, USA. L. N. Vanderhoef is chancellor,
University of California-Davis, Davis, CA 95616, USA. J. D. Wiley is
chancellor, University of Wisconsin-Madison, Madison, WI 53706, USA. C.
E. Young is President of the University of Florida, Gainesville, FL
32611, USA.

For correspondence, see note (13).


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