NCCR IP9 WORKSHOP

1
NCCR International Trade

• NCCR IP9 WORKSHOP
• 17th May 2006
• Scope of Patent Rights
• By
• Aida Dolotbaeva

2
Issues

• Scope of protection for biotechnological
  inventions
• The scope and nature of the research/
  experimental use exemption
• Is there any need to introduce farmers privilege
  into Patent Law?

3
Scope of protection for biotechnological
inventions

• EU Directive 98/44/EC
• Article 8(1) The protection conferred by a
  patent on a biological material possessing
  specific characteristics as a result of the
  invention shall extent to any biological material
  derived from that biological material through
  propagation or multiplication in an identical or
  divergent form and possessing those same
  characteristics
• Article 8(2) The protection conferred by a
  patent on a process that enables a biological
  material to be produced possessing specific
  characteristics as a result of the invention
  shall extend to biological material directly
  obtained through that process and to any other
  biological material derived from the directly
  obtained biological material through propagation
  or multiplication in an identical or divergent
  form and possessing those same characteristics.
• Article 9 The protection conferred by a patent
  on a product containing or consisting of genetic
  information shall extend to all material, save as
  provided in Article 5(1), in which the product is
  incorporated and in which the genetic information
  is contained and performs its function.

4
Scope of protection for biotechnological
inventions

• Is such an expansion of patent rights
  justified?
• Is a minimal functional effect within the new
  host sufficient to extend the patent rights? What
  should be the contribution of the function in the
  next generation?
• When should the patent right be exhausted?
  Where should protection end?

5
The scope and nature of the research/
experimental use exemption

• Different countries have different scope of the
  research exemption.
• There have been calls for the clarification of
  research/experimental use exemption.
• Do we need research exemption in the field of
  biotechnology?
• - to solve the issues of dependency, i.e.
  patent thicket and tragedy of the anti- commons
  (Heller and Eisenberg,1998)?
• - to allow experimentation to discover new
  functions of the patented DNA?
• In relation to plant, should there be an
  equivalent research exemption under patent law as
  provided for by the sui generis system of
  protection of plant varieties?

6
Is there any need to introduce farmers privilege
into Patent Law?

• To what extend do we need harmonization of the
  patent system and PVP in relation to the farmers
  privilege?
• In what forum should that harmonization be
  undertaken?
• What are the implications for farmers in
  developing countries which are highly dependent
  on seed-saving?

7
Thank You

• Thank You for your attention.