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Bioproperty: An Essential Tool in Conservation, Tech Transfer and Commercialization


Richard S. Cahoon
Bioproperty Strategy Group
STEM
Pune, India Dec 2011

Today's Discussion
- Bioproperty and its relevance
- Examples of bioproperty
- Using bioproperty for strategic purposes
- Creating bioproperty
- Bioproperty types and their uses
- Case studies
- Summary

A hard lesson in bioproperty:

Taq Polymerase and Yellowstone National Park
- DNA analysis becomes a news item
- Taq polymerase is basis of technology
- Thermus aquaticus – collected in Yellowstone
- Kary Mullis-Cetus own three patents
- Cetus sells patents to Hoffman-LaRoche ($300million)
- Yellowstone’s share = ??
- A case of bioproperty failure
- The Lesson:

What is Bioproperty?

All property rights in non-human, wild and domestic biota, their parts, progeny, and by-products.

Includes property rights held
- Res publicae (public property, govt controlled)
- Res privatae (private property)
- Res communis (private property held by a group)
- Res nullius (no property rights...air, for example)

Property Rights and “Ownership”

“Ownership” is a loose term for the combination of several separate, bundled rights. Including, the right to: possess, exclude others, use, gift, sell, trade, destroy, etc (there are 12 rights, including a negative right –liabilities)

An owner may hold some, but not all of these rights. Examples: a house with a mortgage, a car with a bank loan, clothing at the cleaners, loaning a car to a friend

Bioproperty and its Relevance

Property = right to control
- Possession and use (e.g., conservation)
- Value capture (economic and non-economic value (e.g., ecological, philanthropic, social, etc.)

Biological subjects are important
- Historical (wildlife, livestock, crops)

Modern (biotechnology)
- Governments control some wild bioproperty
- Researchers create technology bioproperty for the public good and commercial value
- Industry wants to commercially use bioproperty
- Bioproperty is valuable for multiple reasons

Examples of Bioproperty

- Govt-controlled wild animals and plants
- Animals in a zoo
- Crops in a field
- Seeds in a bag
- Animals in a flock or herd
- An endangered species
- A collection of germplasm (tissue bank, seed repository
- A cell line in test tubes/petri dish

Basic Bioproperty types: tangible and intangible

Tangible bioproperty
- Traditional rules of livestock and crop ownership
- Bailment contracts and personal property
- [bailment = right to possess but not own]
- Government right to control possession (e.g. Biodiversity Act of India; Endangered Species Act of US; Biodiversity Convention; Convention on International Trade in Endangered Species)

Intangible bioproperty
- Patents
- Plant Breeder’s Rights
- Trade secret
- Trademark

Implementing Bioproperty

- Bailments
- Control possession, especially before IP
- Material transfer Agreements (critical for future trade secret use (e.g., in-house microbial fermentation)
- important in controlling collections
- Patents
- Microbes, cell lines, genes, other DNA methods
- Plant varieties (in U.S.)
- PBR’s
- Plant varieties
- Trade secret
- Production systems, formulations

The Bioproperty Complex

A particular bioproperty is often covered by a unique set of different property types.

Examples:

A microbial cell line may be patented and covered by a bailment contract
Patent = right to stop making, use, sale
Bailment = right to possess (but not to own)

A transgenic crop maybe covered by a patent (on the transgene for example), PBR, and a Material Transfer Agreement (a bailment)

Bioproperty for strategic purposes

Control of possession, use, reproduction, sale export for:
- Conservation
- Stewardship
- Public good, philanthropy
- Creating and managing partnerships
- Incentive to invest in technology development
- Sale, licensing
- Wealth creation

Creating Bioproperty in a biota conservation context

Inventory the types of biota and applicable local, state, and national laws

Understand the mix of res publicae, res nullius, and thresholds for creation of res privatae

Immediate control of access to possession and use...if possession is allowed, what use?

The grand policy decision:
- Should commercialization be allowed at all?
- If it is done sustainably?
- If financial benefits are shared for conservation?

Creating Bioproperty in a technology commercialization context

Inventory the types of property that are possible

Define the property types that are feasible

What is cost–effective?
- Immediate assertion of tangible property rights

Bailment control?

Feasible and enforceable?
- Patentable? PBRable?
- enforceable?

Geographical strategy

Link bioproperty strategy to overall goal

Case studies

TPA promoter from Desmodus (vampire bat)
- No bailments
- Patents on gene and method
- Trade secret on production system

Virus resistant GM Papaya
- Bailments
- Patents on: genes, method, construct, plants (U.S.)
- PBR

Trichoderma harzianum (“T22”)
- Bailments
- Patents
- Trade secret on production and formula

Insect resistant tomatoes
- Bailment
- Future PBR
- Trademark

Summary

Bioproperty is an “umbrella” term covering many types of wild and domestic biota, biological technology and property types

Bioproperty is a mosaic of property types

Each bioproperty type has its own set of advantages and disadvantages

Strategic goal defines the approach

Be alert to opportunities to create bioproperty and be careful not to lose them accidentally


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