marker-assisted selection in wheat - ictsd

Chapter 20 – Impacts of intellectual property rights on marker-assisted selection 417working under conditions that require theuse of confidentiality agreements or nondisclosureagreements (NDAs). Examplesinclude MAS work being carried out byan employee of a company that requiresemployees to sign confidentiality agreements,or MAS carried out as part of jointwork where breeders have been required tosign confidentiality agreements.This is a very common type of protectionused by commercial breedingcompanies involved in the developmentand use of markers and software in all sectorsof agriculture. If a company becomesconcerned that a trade secret risks beingexposed, it may file a defensive patentapplication to ensure that a competitor willnot obtain rights that would preclude useof its own trade secret. Obviously, whena patent application is filed on an inventionthat includes confidential information,the information will no longer be a tradesecret. The applicant presumably wouldonly resort to such a move if the possibilityof “independent invention” were high, andthus the risk of disclosure in a patentapplication balances the risk of having thecompetition “know” of your trade secret.This will happen because of the way inwhich patent examiners normally decideif an invention is “new”. Often such decisionsare based upon the national IP law’sdefinition of “new”, as in the United Stateswhere there is a grace period of one year tofile a patent application after an invention ismade public and also where only use withinthe United States is considered to renderan invention “not” new. A patent examinercannot know that an invention has beenused or described prior to the filing of apatent application if the invention is kept asconfidential information. Therefore patentrights could be awarded to someone whoactually copies a trade secret and companiesmust then consider filing for a patent or runthe risk that a secret will be the subject of acompetitor’s patent.Why would a company not simply filea patent application for each marker thatit identifies? There are several strategicreasons. It is expensive to file for patentprotection and, also, the applicant must disclosethe invention and all of the specifics ofthe invention to satisfy the written descriptionrequirement of enablement. For amarker, this means that the applicant wouldneed to disclose its nucleic acid sequenceif it is known and, by wanting the rightsover the use of the marker in MAS, alsothe trait(s) that is(are) associated with thepresence (or absence) of detection of themarker, etc.Obviously, it is impossible to list specifictrade secrets that exist in MAS technology,although one indication of the existence ofthese can be a reference to a “personal communication”as, for example, in the case ofthe “15PICmarq” marker listed in Table 1of the paper by Dekkers (2004). However,there are examples of information thatis of the opposite nature, i.e. informationthat is publicly available and that canbe used without permission because it isin the public domain such as informationpublished by the United States FederalGovernment, or because no attempts aremade to enforce rights. The companywww.resgen.com, for example, sells kitscomprising simple sequence repeat (SSR)primers mainly for use as MAS markersfor many different species and based onsequences that have been published. Thesemay therefore be covered by copyright, butthese rights are not enforced.Contractual arrangementsAn additional, “non-statutory” systemof rights (Ricketson, 1984 as referenced