Collaborative IP – real world experiences

Agricultural and environmental technologies

Population~2.2 fold increase

We need to produce 38% more rice by 2030“International Food Policy Research Institute”

Except > shift to animal based diets and> demand for bioenergy

OVERALL DEMAND MAY BE ADDITIONAL 75%

Technology can make a difference...

• Coastal and natural resource management• Climate data & early warning systems• Low carbon electrification• Water management• Agriculture

Agricultural/environmental research – increasingly a private asset…

US Patents granted in agricultural biotechnology

Lignocellulosic biofuels

US 2007/0022495 A1patent application

1.A transgenic plant having an improved trait relative to a control plant, wherein: (a) the transgenic plant comprises a recombinant polynucleotide encoding a first polypeptide having a conserved domain at least 65% identical to the conserved domain of a second polypeptide selected from the group consisting of SEQ ID NO: 110, 112, 116, 120, 124, 128, 131, 135, 139, 143, 147, 151, 155, 159, 163, 167, 171, 175, 179, 183, 187, 191, 195, 199, 203, 207, 211, 215, 219, 223, 227, 231, 235, 239, 243, 247, 251, 255, 259, 263, 267, 271, 275, 280, 284, 288, 292, 296, 299, 303, 306, 309, 313, 317, 321, 325, 329, 333, 337, 341, 345, 349, 353, 357, 361, 365, 369, 373, 377, 381, 385, 389, 393, 397, 401, 404, 406, 409, 413, 416, 419, 422, 425, 428, 431, 435, 439, 443, 447, 451, 454, 458, 462, 465, 468, 471, 475, 478, 482, 485, 489, 493, 497, 501, 505, 509, 512, 515, 519, 522, 526, 530, 534, 538, 542, 546, 550, 553, 557, 561, 565, 568, 571, 574, 577, 581, 585, 588, 591, 594, 597, 601, 605, 609, 613, 616, 620, 624, 628, 632, 636, 640, 644, 648, 652, 656, 660, 664, 667, 671, 674, 678, 682, 686, 689, 692, 696, 700, 704, 708, 712, 715, 719, 723, 727, 731, 734, 738, 741, 745, 749, 752, 756, 760, 762, 766, 770, 774, 778, 782, 786, 789, 793, 797, 801, 805, 809, 813, 816, 819, 823, 827, 831, 835, 839, 843, 847, 851, 855, 859, 863, 867, 871, 874, 878, 882, 886, 890, 894, 898, 901, 905, 909, 913, 917, 921, 925, 929, 933, 937, 941, 945, 949, 953, 957, 960, 963, 966, 970, 973, 976, 980, 984, 988, 992, 995, 999, 1003, 1007, 1011, 1015, 1019, 1023, 1027, 1031, 1037, 1041, 1045, 1049, 1052, 1056, 1060, 1064, 1067, 1071, 1075, 1078, 1081, 1085, 1089, 1093, 1097, 1101, 1104, 1108, 1112, 1116, 1120, 1123, 1126, 1130, 1134, 1138, 1142, 1145, 1148, 1151, 1154, 1157, 1161, 1165, 1169, 1173, 1177, 1181, 1185, 1188, 1192, 1195, 1199, 1203, 1207, 1211, 1215, 1219, 1222, 1226, 1229, 1233, 1236, 1240, 1243, 1247, 1251, 1254, 1258, 1262, 1266, 1269, 1273, 1277, 1281, 1285, 1289, 1293, 1297, 1300, 1304, 1308, 1311, 1314, 1318, 1322, 1326, 1330, 1334, 1338, 1342, 1346, 1350, 1354, 1358, 1361, 1365, 1369, 1372, 1376, 1380, 1384, 1388, 1392, 1396, 1400, 1404, 1408, 1411, 1415, 1419, 1423, 1427, 1431, 1435, 1439, 1443, 1446, 1449, 1452, 1455, 1459, 1463, 1467, 1470, 1474, 1477, 1481, 1488, 1492, 1495, 1499, 1503, 1507, 1511, 1515, 1519, 1522, 1526, 1530, 1533, 1537, 1541, 1545, 1549, 1553, 1557, 1561, 1565, 1568, 1572, 1576, 1579, 1583, 1586, 1589, 1593, 1596, 1598, 1602, 1604, 1608, 1611, 1614, 1617, 1620, 1624, 1628, 1632, 1636, 1640, 1645, 1648, 1652, 1656, 1660, 1664, 1668, 1672, 1676, 1680, 1684, 1688, 1692, 1696, 1700, 1704, 1707, 1711, 1715, 1719, 1722, 1726, 1729, 1733, 1737, 1741, 1745, 1749, 1753, 1757, 1761, 1765, 1769, 1773, 1777, 1781, 1785, 1789, 1793, 1796, 1800, 1803, 1806, 1809, 1812, 1816, 1820, 1824, 1827, 1831, 1835, 1838, 1841, 1844, 1846, 1850, 1853, 1857, 1861, 1865, 1869, 1873, 1877, 1881, 1885, 1889, 1893, 1897, 1901, 1904, 1908, 1912, 1916, 1920, 1924, 1928, 1932, 1935, 1939, 1943, 1949, 1957, 1961, 1964, 1967, 1970, 1973, 1977, 1981, 1984, 1986, 1988, 1990, 1992, 1994, 1996, 1998; and 1999-2007; (b) the improved trait is selected from the group consisting of larger size, larger seeds, greater yield, darker green color, increased rate of photosynthesis, more tolerance to osmotic stress, more drought tolerance, more heat tolerance, more salt tolerance, more cold tolerance, more tolerance to low nitrogen, early flowering, delayed flowering, more resistance to disease, more seed protein, and more seed oil relative to the control plant. 2.The transgenic plant of claim 1, wherein the conserved domain is at least 80% identical to the conserved domain of the second polypeptide.

And the patent claims are appropriating public science and fast pace …

In agriculture and environment, public institutions own a disproportionate percentage of US patents

97%private

74%private

All patents Ag Biotech

Patents

Source: Graff et al., Nature Biotech, 2003

Our own anti-commons

But the public IP portfolio is highly fragmented

PIPRA's founders wanted to created a partnership of public institutions – basically a large patent pool

The reality for agricultural biotechnology

2-3 traits; 3 major crops; 3 dominant companies

Public sector absent from a historical role in food security and food quality

GermplasmGermplasm

Enabling TechnologiesEnabling Technologies

TraitsTraits

VectorsVectorsPromotersPromotersSelectable markersSelectable markersTransformation MethodsTransformation Methods

Disease/Stress resistanceDisease/Stress resistanceNutritional enhancementNutritional enhancementStress (salt/drought) toleranceStress (salt/drought) tolerance

CultivarsCultivars

Enabling Technologies for Plant Transformationextensively patented

Research & Legal/IP Strategy

PIPRADEVELOPMENT OF PATENT POOLS

FOR PLANT TRANSFORMATION ENABLING TECHNOLOGIES

IP StrategyPool Complementary Technologies

based on FTO Information & Scientific Evaluation

Research StrategyDesign, Development, & Validation

of Marker-Excision Plant Transformation Vectors in Model

Plant Systems

Licensing & Dissemination Strategy

Technology Packages available under Pre-Negotiated Non-Exclusive

MTA & Licensing Agreements

Establish Technical, Regulatory, Legal Criteria

Enabling Technologies for Plant Transformation

pPIPRA Vectors with Maximum FTO: Marker Excision Vectors

LBGene of Interest

CassetteRB

RRS

RRS

Recombinase Cassette

Selectable Marker Cassette-Cyt Dea

Selectable Marker Cassette-DEF/Atwbc19Recombinase Module

Selectable Marker Cassette

LB PromoterSelectable

Fluorescent MarkerRB

Transposase Cassette

IR

IR

Gene of Interest CassetteTransposon Module

pPIPRA

Bacterial lR

OripVS1

Col

E1

Module: Recombinase, Transposon

For asexually propagated plants (rootstocks, grapes)

For sexually propagated plants (rice, alfalfa)

PIPRA’s Enabling Technologies for Plant Transformation

Selectable Marker Cassette

LB Promoter Excision Marker RBTransposase

Cassette

TRS

TRS

Gene of Interest Cassette

1. Selectable markersUniversity of Tennessee,University of Kentucky

2. Constitutive and tissue Specific PromotersUniv California,Cornell Univ., AgriFood Canada, public domain

3. Excision markerUniv California

4. TransposaseUniv California

pPIPRA enabling technology system comprised of multiple patented technologies – all from PIPRA members

Pooled and licensed together. Free for non-commercialresearch or for developing country applications.

Licensing Model for Patent Pool

Free transfers Fee based transfers Revenue flow

Vector Technology Providers Pre-negotiated licensing terms

research usePIPRA Design, test, and disseminate plant transformation vector materials under research or commercial MTA/Licenses

humanitarian use

commercial use

Enabling Technologies for Plant Transformation

MTA and inter-institutional agreement

What were the issues?

Licensor of the “pool” carries the potential liability for all technology donors.

Can the technology donors be indemnified and by whom?

Governing law – where?

The focus was on mitigating risks – not on supporting innovation.

Very high transaction costs to coordinate all parties.

A vehicle for partnershipsFoundationsSeed companies

Lessons we’ve learned at PIPRA• Don’t underestimate the transaction costs.• Remember the complexity – technologically, socially,

economically, politically.• Support the interface between public and private sectors • Step away from ideology and look for practical solutions• Support partnerships – north-south, south-south, public-

public, private-private, public-private, etc. • Many IPR ‘solutions’ presented so far are overly simplistic

and unlikely to have the desired impact.

Developing a proactive patent pool that mines portfolios and builds translational partnerships

The Global Responsibility Innovation Alliance (GRIA) provides an interface between the well-resourced engines of innovation in developed countries and the technological needs of the poor.

We can make technologies and knowledge more accessible for pro-poor applications while still preserving commercial markets. But we need good legal tools, and tailored practical solutions.

We can connect partners that will develop and deploy technologies that improve the lives of the poor. But we need a broker to catalyze partnerships.

We can create practical technological solutions to the problems of poverty. But we need better coordination and communication among technology providers, engineers, deployment partners, designers, and the people that use the technology.

Making Solutions AccessibleThe GRIA was founded on the understanding that technology providers want to fulfill their roles as global citizens in contributing to the reduction of poverty, but they face three major hurdles:

They don’t know specifically how to help; there is a lack of good information translating the high-level needs of global poverty into specific contributions of technology and expertise.

The risks are hard to manage; significant risks exist (related to markets, liability, and IP rights) that need to be mitigated with tailored legal and institutional tools.

Partnerships are not easy to build; finding the right partners (often NGOs or public sector partners) and structuring deals for success can be challenging and involve high transaction costs.

As members of the GRIA, companies and research organizations benefit from access to expertise in legal tools and commercialization strategies tailored to provide practical solutions to overcome all of these hurdles.

Global Responsibility Licensing

Our legal tools are built from a growing body of practice creating access to technologies to benefit the poor. Global Responsibility Licensing is designed to make IP available for humanitarian uses while managing institutional risk and preserving protection for commercial uses. These humanitarian uses are differentiated from commercial or emerging market uses.

Global Responsibility Partnerships

Whenever IP or knowledge is being applied to the problems of the poor, good partnerships are the key to achieving impact. As we work to increase access to IP for development uses through Global Responsibility Licensing, we also must provide opportunities to identify partners, build strong pro-poor partnerships, think strategically about commercialization, and enable knowledge transfer.

Sharing knowledge is an integral part of technology transfer; it can be critical for the successful pro-poor application of IP, and the transfer of know-how alone can achieve high levels of impact. But it can be challenging for companies to find the right partners, identify the needs, and navigate the partnerships necessary to implement a successful technical philanthropy program.

Through its dual focus on both Global Responsibility Licensing and on catalyzing partnerships, the GRIA offers the potential to support applications of technology and knowledge to address the needs of the poor.

ActionIdentify potential pro-poor applications of technologies.

Support companies, universities, and research institutes in identifying opportunities for knowledge transfer.

Facilitate due diligence and partner selection for product development and deployment partners.

Support the development of partnerships among technology providers, product  development and deployment partners, and technical philanthropy partners.

Develop commercialization strategies and evaluate opportunities around specific technologies.

Create reporting mechanisms for monitoring success of partnerships.

Thank you.

www.pipra.org

A passive patent pool with admirable objectives and positive corporate PR

• A convenient self-contained battery recycling station that will encourage consumers to exchange their used batteries for new ones or for credit