Freedom to Operate and Intellectual Property Inventory
As processes, materials and methods are patentable subject-matter, it is likely that research inputs for the development of a new product, such as a new crop variety, may be protected. As such, it is prudent to ensure that the appropriate licences are obtained from the owners of the intellectual property in the research inputs before any substantial product is developed. This process is often termed as ‘freedom to operate’ or FTO.
Transporting rice in a boat
In the development of Golden Rice®, for example, when this new, vitamin A-enriched rice was finished it turned out that a considerable number of research inputs that had been used to develop this species were patented. When patented inputs have been used without proper prior permission, there are two possibilities: the first is to convince the patent holder to agree to a retroactive licensing arrangement, which of course, puts the user in an awkward position of having to admit to infringement and yet to try to negotiate acceptable terms! With pressure from the public community at-large, this was accomplished in the case of Golden Rice® and thus the new variety can then be commercialised as was the case with Golden Rice®. The other possibility is that the owners object to the use of their patents and are not prepared to negotiate a retroactive licence; this could have happened with Golden Rice®, –But, fortunately, it didn’t. The new development cannot then be commercialised and would have to be destroyed. For this reason, a freedom to operate search, at least at some informal level, should be conducted for each different input to the research before the research begins in earnest.
In addition to the above, it is also not uncommon to find clauses requiring scientists working on a project to submit intellectual property disclosure reports periodically, in a research agreement. In the CGIAR’s Generation Challenge Programme, for example, scientists are required to make an inventory list of all intellectual property used and developed as part of the collaboration.
If you would like more information on how to set up an intellectual property inventory system, please let us know.
