There are several options for non-profit research institutions to access patented technologies for research purposes. These include cross-licensing agreements where each party grants rights to their intellectual property; research-only licenses that do not permit commercialization; market segmentation strategies to avoid patent infringement; mergers or joint ventures between parties; cost-free licensing of unused technologies from private companies; patent pooling where rights are aggregated and licensed to third parties; and independent development of alternative research tools. However, current patent law provides no general research exemption, so non-profit institutions still face risks from infringement suits regardless of location or purpose. Mechanisms are needed to clearly define the boundaries between non-commercial research and commercial activities.

1. Accessing other people’s technology
for nonprofit
research
BhavithaPulparthi
15PIM2247
Dept. of
pharmacoinformatics
NIPER
S.A.S.Nagar
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2. Why do we need others technology?
 For basic research purposes
To provide incentives for innovation
To innovators to build upon one another's work
 To facilitate further innovation by public disclosure of
the patented technology
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3. What is patent?
 A grant by the government to new and useful machines,
processes/methods, articles of manufacture, compositions of
matter, or improvements which exclude others from
Making
Using
Selling (or offering to sell)
Importing
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4. No exception from infringement
 There is a need to use a patented invention for research is a
concern in both nonprofit and commercial
 There is no general research exemption in either Australia or
the USA for using other people's patented technologies
 Infringement suits will be filed against universities and
research institutes regardless of their geographical location
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5. contd…
 So there is a need for exemption in non-profit research
institutions from the risk of infringement actions
 The exceptions are usually limited to
research only for improvements of the invention and not to
use of the invention in research
Should be a clear distinction between non-commercial
research and research with a commercial interest
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6. Contd…..
 Non-profit entities and universities have traditionally been
considered as 'pure' academic pursuits
 These are increasingly active in claims for patents, copyrights
and other forms of intellectual properties
 Bayh-Dole Act of 1980, which mandated that USA
government cede ownership of intellectual property originated
from government-sponsored research to the recipient institution
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7. • USA patents were awarded to inventors who
assigned their rights to entities containing the
word 'University' in its name
Year Rate
1981-1985 0.59%
1986-1990 0.96%
1991-1995 1.47%
1996-2000 2.15% 0
0.5
1
1.5
2
2.5
Rate
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8. Commercially orientated research
 Commercial services performed by a non-profit
organization may well attract unwanted attention from a
patent holder
◦ Eg : Florida Prepaid, the alleged infringer the holder of PCR
patent rights contracted to a non-profit cancer research institute
 Indeed, an increasing amount of research is performed as
part of a private-public sector alliance
In the year 2000, at the University of California at Berkeley,
externally funded research projects for research, education, and
public service were in the form of grants of contracts from private
industry
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9. Determining freedom to operate
• to cover full body of patent
• requires skill in reading claims,
specification, and prosecution
claim
interpretation
• Requires a multitude of technologies and
reagents
• 70 patented technologies were used
during research and development
Nature of bio-
technologies
• CAMBIA database- explanation about
patents
• WIPO- patent applications
Tools for
searching patents
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10. Cross licensing
Research only
licenses
Market
segmentation
strategies
Mergers or joint
ventures
Patent pooling
research support
from the private
sector
Cost-free
licensing of
technologies
Clearinghouse
mechanisms
independent
developers of
research tools
Options for accessing other people's
technology
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11. 1. Cross licensing
 A non-exclusive license for commercialization shall
be granted to the research centre at a reasonable
royalty
 A cross-licensing agreement is a contract between two
or more parties where each party grants rights to their
intellectual properties
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12. 2. Research only licenses
 A research license generate externalities to the licensee in the
form of learning-by-doing
 Researches that reduce future dependence on proprietary
technology
 Innovations based on proprietary technology to users in certain
markets offers commercial benefit
 A free research license that does not permit commercialization,
a research tool 'cuckoo's egg' of technology transfer
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13. 3. Market segmentation strategies
 A promising initiative to provide intellectual property
information services for developing-world research
organizations is being pursued by the nonprofit corporation
CAMBIA in Australia
 Markets for intellectual property can also be divided on grounds
other than geography
 Where no patents are held, there can be no infringement
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14.  An appropriate mechanism of
avoiding a patent fight - the
merger is the ultimate cross-
license
 mergers are a prime private-
sector solution, which minimize
the private cost of transactions
in intellectual property used in
research
 Undertaken jointly by two or
more parties
 In 1992 CSIRO in Australia
undertook a joint research venture
with Monsanto to incorporate the
company's Bio technology into
locally adapted cotton varieties
4. Mergers or joint ventures
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15. 5. Cost-free licensing of technologies
 It is possible that the publicity surrounding recent technology
'donations‘ could lead to an assessment of corporate generosity
with respect to their intellectual property rights
 To encourage private sector participation, it might be very
important that ways be found to
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protect the commercial provider
from blame,
loss of reputation,
misuse of their technology,
hazards that might seem especially
in countries lacking effective
regulatory oversight

16. 6. Research support from the private sector
 Involvement of a foundation funded by the multinational life
science corporation, Novartis, in the support of plant biology
research at the College of Natural Resources at the University
of California, Berkeley
 Donations could be motivated by the prospect of tax
deductions in exchange for unused and useless technology
 Non-profits should search for means of making this kind of
transfer easy for the private sector
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17. 7. Patent pooling
 A patent pool is an aggregation of intellectual property rights
that are cross licensed and licensed to third parties
 way to achieve this is to obtain a joint grant of freedom to
operate in certain markets from all holders
 patents in the pool must be essential to practice the technology
 Blocking patents still have not been issued because they are
subject to ongoing interference proceedings in the USA Patent
and Trademark Office
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18. 8. Clearinghouse mechanisms
 An alternate means of lowering the costs of transactions of
technology
 To identify relevant intellectual property in specified
technology environments
 It would be possible to create customized licenses that
increase the use of inventors' technologies and make multi-
patent technology systems readily available and affordable to
researchers
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19. 9. Independent developers of research tools
 A quite different approach is to sponsor creation of substitutes to
existing proprietary research paths
 Example: CAMBIA
 The licensing revenues are used to fund further research and to
support transfer of the technologies to developing countries
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20. Pressing for sharing of technology
 Access to research tools is a burning issue at the heart of non-
profit research on biotechnology in the USA, the world leader in
this area
 Making a common cause with more powerful allies in applying
pressure on holders of intellectual property might help ensure
that in future agreements, any concessions by holders of
proprietary rights are extended to international non-commercial
markets
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21. CONCLUSION
 Worldwide, institutions need to better understand their rights and
responsibilities regarding intellectual property
 Designing policies and operating procedures to ensure sufficient
freedom to operate for public science is becoming increasingly
important
 Freedom to operate will be crucial for public and non-profit
agencies in the developed and developing world
 Implementation of TRIPs as currently formulated will likely
affect the freedom to operate in the next generation of
biotechnologies
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