Water-Efficient Maize for Africa: PIPRA Supports CIMMYT in Negotiations

PIPRA and Morrison & Foerster, LLP played a key role supporting public sector interests on behalf of CIMMYT in recent negotiations surrounding CIMMYT’s role in a $47 million dollar project to deliver drought-tolerant maize to sub-Saharan Africa.

The Bill & Melinda Gates and Howard G. Buffett Foundations announced their support this week for a project, led by Nairobi-based AATF (The African Agricultural Technology Foundation), in collaboration with Monsanto Company and CIMMYT (The International Maize and Wheat Improvement Center) that will work to provide new varieties of water-efficient, locally-adapted maize for small-scale African farmers.

Maize is the staple food for more than a quarter of a billion Africans and, according to 2008 estimates produced by the USAID Famine Early Warning System Network, climate change could decrease rainfall in eastern and southern Africa by up to 25% over the coming decades. “By 2020 all of Africa will have an expected crop reduction ranging from 10-20 percent,” according to John Shroder, Professor of Geography and Geology at University of Nebraska Omaha.

Drought-tolerance in maize to increase food security in Africa is the subject of much ongoing global research. The Water-Efficient Maize for Africa (WEMA) project represents a key public-private partnership in this area, combining Monsanto's expertise in molecular marker assisted breeding and transgenics with CIMMYT's advanced breeding programs for tropical maize, and AATF’s experience in the stewardship of genetically modified (GM) projects.

CIMMYT chose PIPRA and technology transactions attorney Jonathan Dickstein from the San Francisco offices of law firm Morrison & Foerster to integrate public sector issues and interests on behalf of CIMMYT into the WEMA public-private partnership (PPP) research agreement. PPPs can be difficult to negotiate, given the deep cultural differences between the public and private sectors related to confidentiality, publication rights, public goods, and intellectual property rights. PIPRA offers a unique resource with its experience in articulating public sector goals and its mission to provide services to support the strategic management of intellectual property rights among public agricultural research organizations worldwide.

USPTO Rejects HIV/AIDS Drug Patents after considering prior art

On 23 January, 2008 the Public Patent Foundation announced that the USPTO rejected four patents assigned to Gilead Sciences that related to the HIV/AIDS drug tenofovir disoproxil fumarate (TDF). The Public Patent Foundation filed a third party request for re-examination, submitting prior art that had not been disclosed in the patent prosecution process. For more information on the patents, the reexaminations, and the Public Patent Foundation, see: http://www.pubpat.org/gileadhivaidsdrug.htm.

Wrap-up of Pipra's workshop in Vietnam

We've been meaning to write for some time about our recent workshop in Vietnam. As many "Pipra friends" know, we have a grant from the Sasakawa Peace Foundation (SPF) to teach about IP management in Vietnam. We're helping public research institutions there learn about patenting, in-licensing, out-licensing, commercialization, and, in general, how to maximize the return on their public research dollars.

On November 27th and 28th, PIPRA hosted the first of three annual workshops in Hanoi, Vietnam entitled “Intellectual Property Rights and Commercialization of Research Results of Institutions in the Field of Agriculture and Biotechnology” (a long title, which, we are told sounds better in Vietnamese!). The workshop was co-organized with the National Office of Intellectual Property (NOIP) and the Ministry of Agriculture and Rural Development (MARD).

We happy to say that the workshop was an unqualified success. We had over 80 attendees from more than 21 different institutions and some excellent speakers including Ramon Oliveros, from IRRI; Atty. Antonio Beronio, from PhilRice; Dr. Shashank Mauria, from ICAR; and Dr. Saowaluck Pornkulwat from Monsanto Thailand.

Apply Now for the Plant Breeding Academy – Space is Limited!

The Plant Breeding Academy (PBA), sponsored by the UC Davis Seed Biotechnology Center, is accepting applications for Class II, which will begin in September 2008. Already accepted to the new class are a number of outstanding professionals from the US, Europe and Africa. These individuals work with a variety of crops including grains, vegetables, and legumes.


The PBA is a two year program designed to meet the needs of working professionals, giving them the critical tools they will need to manage a breeding program. Meeting for six one-week sessions over two years, the academy’s schedule allows participants to maintain their current working positions. The course includes lectures, field trips, discussions, homework, and a comprehensive final project where students design a breeding program.


Taught by internationally recognized plant breeders, the PBA is limited in size to give students personal attention. Visit the Plant Breeding Academy website for more information and to apply for the 2008-2010 Academy. For questions, contact Cathy Glaeser, Program Representative, at clglaeser@ucdavis.edu, or 530-752-4414.

New USPTO Continuation rules and the implications for Ag Biotech research

The U.S. Patent and Trademark Office (USPTO) released new rules regarding continuations this past August 21, 2007. The new rules, in general, limit an applicant’s opportunities to gain patent protection for any given invention. The number of patent applications that can be filed on one invention are restricted to one parent application followed by two continuations or continuations-in-part (CIP). Also, only one request for continued examination (RCE) in a patent family is allowed, and the number of claims in any patent application is restricted to 25.

There is still some debate, as to how many patents a year will be affected by the new rules. Biotechnology industry representatives are protesting, feeling that a more liberal view of continuations is required for the biotechnology industry. In general, continuations are most popular in the chemical, pharmaceutical and biotechnology fields. Continuations accounted for 70-80% of patents awarded to the top biotechnology companies, in the period from 1995 - 1999. With these new rules restricting applicant’s to filing two continuations, it may be that the biotechnology industry will be severely impacted.

Some industries have a large expenditure of both time and money when obtaining experimental data, especially when human or animal experiments are involved. Continuations help applicants in these situations by allowing an applicant to file one original application, and then subsequent applications for any further claims supported by new experiments. Without an opportunity for the applicant to file a continuation, the ability of an applicant to satisfy all statutory requirements to obtain a patent may be severely restricted.

Some feel the new restriction on continuations will particularly affect small biotechnology companies. Dr. Tom Herlache from the Office of Intellectual Property at Michigan State University (a PIPRA member), believes that the new rules will essentially force applicants to bundle inventions together “so that they do not become prior art against each other”. He feels that the new rules regarding RCE’s “would likely greatly extend patent pendancy and patenting costs”, which would in turn “decrease licensing opportunities somewhat”.

For further information, please see the following links:

http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html

http://www.patentlyo.com/patent/2007/08/continuation-ru.html#more

Farmer petitions Supreme Court to review Roundup Ready patent case

Monsanto owns at least two patents on “Roundup Ready” crops that are resistant to glyphosate herbicides. When farmers purchase seeds for Roundup Ready crops they sign a “Technology Agreement”, which requires among other things, that the farmers do not retain any seeds for replanting and that they pay a licensing fee. In 1998, McFarling, a farmer from Northern Mississippi, signed the agreement, paid the license fees, and ultimately purchased Monsanto's Roundup Ready soybean seeds. In 1999 and 2000, he replanted seeds saved from 1998 without paying license fees. After learning of this, Monsanto sued McFarling for breach of both of their patents (U.S. Patent No. 5,633,435 and U.S. Patent No. 5,352,605).
Following the Federal Circuit’s decision in the second appeal, Monsanto withdrew all claims other than breach of the ‘605 patent for which the company sought damages. McFarling proceeded to argue new grounds for his defense, as Monsanto had withdrawn some claims, which was denied by both the district court and the Federal Circuit.

McFarling claimed that Monsanto's established licensing fee should limit the size of damages awarded. However, a Missouri jury found McFarling liable and awarded damages of $40 per seed bag, even though Monsanto only charges a $6.50 license fee per bag of seed. An injunction was also issued, requiring McFarling to cease usage of seeds saved from 1998. The Court of Appeals for Federal Circuit (CAFC) found that Monsanto's default licensing fee did not limit the possible damages. Furthermore, the court noted that infringement damages could properly include (a) any harm felt by Monsanto as a result of the infringement, as well as (b) any additional benefits gained by McFarling. This included: reputational harm as a result of rogue planters, potential lapses in Monsanto’s database of planting techniques, McFarling’s increase in yield of $31-61 per acre, as well as bargaining power. This decision by the CAFC changes the way patent infringement damages can be calculated and potentially makes allowable damages signifigantly larger.

McFarling has now petitioned the Supreme Court for a grant of a Writ of Certiorari. For further information, please see the following links:

http://www.patentlyo.com/patent/2007/08/mcfarling-petit.html

http://www.patentdocs.us/patent_docs/2007/06/monsanto_co_v_m.html

http://www.fulcruminquiry.com/Monsanto_reasonable_royalty_case.htm

IDRC funding opportunity in developing country IP

IDRC, The International Development Research Centre in Ottawa, Canada has a Call for Proposals related to intellectual property in developing countries. IDRC is seeking proposals for work in the area of increasing developing countries' access to technologies and information contained in existing patents to support innovative research at the national level. The main subject areas of proposals re: patent pools, compulsory licensing, and research exemptions. More information can be found at: http://www.idrc.ca/en/ev-112535-201-1-DO_TOPIC.html