marker-assisted selection in wheat - ictsd

Chapter 20 – Impacts of intellectual property rights on marker-assisted selection 413Examples of published patents whererights have been awarded in the area ofMAS include the basic PCR amplificationprocess patents in the United States, USPatent nos. 4 683 195, 4 683 202 and 4 965188, originally issued to the Cetus Companyand then assigned to Hoffman-Roche in1992, on the use of DNA polymerase basedon the Taq polymerase enzyme isolatedfrom the organism Thermus aquaticus. Asthese amplification patents expired worldwidein March 2006, when only the basictechniques and reagents covered by thesepatents are used, one does not now haveto be concerned with infringement of thesepatents anywhere. However, the equipmentused to control the reaction conditions mayalso carry IPRs on its own and most PCRtechniques currently used are patented asimprovements to the basic technology. Forexample, Applied Biosystems’ PCR andreal-time instrument patents and otherPCR-related patents such as US Patent no.5 656 493, are still in effect. A licence tothese instruments and other patents maybe needed in the United States in order touse their thermal cyclers to carry out PCR,although this is normally granted as partof the purchase price of the equipment andreagent kits. Table 1 contains additionalexamples of selected patents that are associatedwith MAS.Another strategy that should be pointedout is the concept of “defensive” patents.Patent rights may be awarded in most jurisdictionsover processes (actions/processes),and machines, manufactures and compositionsof matter (things). Enforcement ofpatent rights, e.g. bringing a lawsuit againsta person or forcing a licensing situationwhen a person is practising your invention(infringing your rights) without permissionis less equivocal when the infringementinvolves making, using, possessing orselling an object or composition. However,the detection of infringement of methodsclaims is often much less straightforward.A patent owner would need to have insightinto or gain access to how something wasmade or formed by the other party (potentialinfringer), in order to know whetherhis/her patented process or method wasbeing used. This means that it can be evenmore costly and time-consuming to pursuepotential infringers of methods claims thanlawsuits involving infringement of making,buying or selling a patent-protected materialor composition. Thus, sometimes acompany or institution will decide to filea patent application, seeking rights overa method where such a filing will simplyrepresent an attempt to preclude a competitorfrom preventing the company fromcarrying out a method, without concernsof infringement. Such a method or processpatent would likely never be enforcedexcept in blatant infringement and is onlysought to provide insurance for the filingorganization to lower the risk that theorganization will be sued by someone else.The distinction between a patent that isfiled defensively and one that is filed to preventsomeone from practising the claimedinvention can be very subtle. A discussionof patenting strategies including defensivepatents can be found at www.271patent.blogspot.com/2006/09/valuing-patentsand-patent-paradox-why.html.This is anarea of patent law that is always in flux andenforcement can be very complicated andexpensive.CopyrightsThese rights are awarded for creativeinnovations that are “fixed” in a printed,video, audiotape or other recorded form.Copyrights only cover the form of thefixation, and not the ideas or concepts