e-Course PGS 503 : Intellectual Property and Its Management in Agriculture

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Index
Topic Page No.
Patent Act 1970 1-2
Patent System In India: 2-4
Origin and History including a brief
introduction to UPOIV for protection of plant
varieties
4
Protection of plant varieties under UPOV and
PPV & FR act of India
4-5
Plant breeder’s rights: 5
Registration of plant varieties under PPV & FR
Act
5-6
Breeders, researcher and farmers rights 6-7
Convention of Biological Diversity 7
International Treaty on Plant Genetic
Resources for Food and Agriculture
7-8
Indian Biological Diversity Act , and its salient
features, access and benefit sharing
8-10
Patentability 10
Process and product of patent 10
Filling of patent 10-11
Patent specification 12
Protection of various types of intellectual
properties
13
Fundamentals of patents, copyrights and
geographical indications
13-14
Designs and Layout 14-16
Trade secrets and traditional knowledge : 16-17
Trademarks, protection of plant varieties and
farmers’ rights and bio-diversity protection
17-19
Protectable subject matters, protection of
biotechnology, protection of other biological
materials, ownership and period of protection
19-21
National Biodiversity protection initiatives 21-22
Conservation of Biological Diversity 22-23
International treaty on plant genetic resources
for food and agriculture
24-25
Licensing of technologies, Material transfer
Agreements, Research collaboration
Agreements, License Agreements
25-30

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ASSIGMENT 1:-
 Patent Act 1970 :
According to Sec 3 of the Patent Act, 1970 :
• Inventions contrary to well established natural laws
• Commercial exploitation or primary use of inventions, owhich is contrary to public order or
morality which causes serious prejudice tohealth or human, animal, plant life or to the
environment.
• Mere Discovery of a Scientific Principle or formulation of an Abstract Theory discovery of any
living thing or discovery of non–living substance occurring in nature .
• Mere discovery of any new property or new use for a known substance or of the mere use of a
known process, machine or apparatus, unless such known process results in a new product or
employs at least one new reactant.
• Substance obtained by mere admixture resulting only in the aggregation of the properties of the
components.
•Mere arrangement or re-arrangement or duplication of known devices, each functioning
independently of one another in a known way
• Method of Agriculture or Horticulture or any process for medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic or other treatment of human beings or a similar treatment of
animals to render them free of disease or to increase their economic value or that of their
products.
• Plants & animals in whole or any part thereof other than micro- organisms, but including seeds,
varieties an d species and essentially biological process for production or propagation of plants &
animals .
• A literary, dramatic, musical or artistic work or any other aesthetic creation including
cinematographic work and television productions .
• Presentation of information
• Topography of integrated circuits.
•Inventions which are Traditional Knowledge or an aggregation or duplication of known
properties of traditionally known component or components.
The following are Non-Patentable inventions within the meaning of Section 3 of Patents
Act, 1970 :
(a) An invention which is frivolous or which claims anything obviously contrary to well
established natural laws;

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(b) An invention the primary or intended use or commercial exploitation of which could be
contrary to public order or morality or which causes serious prejudice to human, animal or plant
life or health or to the environment; (For e.g. process of making brown sugar will not be
patented.)
(c) The mere discovery of a scientific principle or the formulation of an abstract theory (or
discovery of any living thing or non-living substances occurring in nature);
(d) The mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property
or mere new use for a known substance or of the mere use of a known process, machine or
apparatus unless such known process results in a new product or employs at least one new
reactant;
(e) A substance obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance;
(f) Ahe mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;
(g) A method of agriculture or horticulture; (For e.g. the method of terrace farming cannot be
patented.)
(h) Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render them
free of disease or to increase their economic value or that of their products; (For e.g. any new
technique of hand surgery is not patentable)
 Patent System In India:
The Patent System in India is governed by the Patents Act, 1970 as amended by the Patents
(Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents (Amendment)
Rules 2006 effective from 05-05-2006.
Patent system in India is administered under the superintendence of the Controller General of
Patents, Designs, Trademarks and Geographical Indications. There are four patent offices in
India. The Head Office is located at Kolkata and other Patent Offices are located at Delhi,
Mumbai and Chennai. The Patent Information system (PIS) at Nagpur has been functioning as
patent information base for the users. The PIS maintains a comprehensive collection of patent
specification and patent related literature, on a world-wide basis and provides technological
information contained in patent or patent related literature through search services and patent
copy supply services to various users of R&D establishments, Government offices, private
industries, business, inventors and other users within India.
The Patent Information system (PIS) at Nagpur has been functioning as patent information base
for the users. The PIS maintains a comprehensive collection of patent specification and patent
related literature, on a world-wide basis and provides technological information contained in
patent or patent related literature through search services and patent copy supply services to

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various users of R&D establishments, Government offices, private industries, business, inventors
and other users within India
Hierarchy of Officers in Patent office:
• Controller General of Patents, Designs, Trademarks & GI
• Examiners of Patents & Designs
• Assistant Controller of Patents & Designs
• Deputy Controller of Patents & Designs
• Joint Controller of Patents & Designs
• Senior Joint Controller of Patents & Designs
Types Of Patent Applications
1) Ordinary Application
2) Application for Patent of Addition (granted for Improvement or Modification of the already
patented invention, for an unexpired term of the main patent
3) Divisional Application (in case of plurality of inventions disclosed in the main application).
4) Convention application, claiming priority date on the basis of filing in Convention Countries.
5) National Phase Application under PCT.
Jurisdiction of Patent offices in India
An applicant or first mentioned applicant in case of joint applicants can file application for patent
at the appropriate Patent Office under whose jurisdiction he normally resides or has his domicile
or has a place of business or the place from where the invention actually originated. For the
applicant, who is non-resident or has no domicile or has no place of business in India, the
address for service in India or place of business of his patent agent determines the appropriate
patent office where applications for patent can be filed.
Office Territorial Jurisdiction
Patent Office Branch, Mumbai The States of Maharashtra,Gujarat, Madhya
Pradesh,
Goa and Chhattisgarh and the Union Territories of
Daman and Diu & Dadra and Nagar Haveli
Patent Office Branch, Chennai The States of Andhra Pradesh,Karnataka,Kerala,
Tamil Nadu and the Union Territories of
Pondicherry and Lakshadweep.
Patent Office Branch, NewDelhi The States of Haryana,Himachal Pradesh,Jammu

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and Kashmir, Punjab, Rajasthan, Uttar Pradesh,
Uttaranchal, Delhi and the Union Territory of
Chandigarh.
Patent Office, Kolkata The rest of India.
 Origin and History including a brief introduction to UPOIV for protectionof
plant varieties :
The International Union for the Protection of New Varieties of Plants (UPOV) is an
intergovernmental organization with headquarters in Geneva (Switzerland). UPOV was
established by the International Convention for the Protection of New Varieties of Plants. The
Convention was adopted in Paris in 1961 and it was revised in 1972, 1978 and 1991. The
objective of the Convention is to provide and promote an effective system of plant variety
protection, with the aim of encouraging the development of new varieties of plants, for the
benefit of society.
 Protection of plant varieties under UPOV and PPV & FR act of India :
Plant varieties, however, must be protectable by patents or by a special system (such as the
breeder’s rights provided in the conventions of UPOV). India has adopted sui-generis system and
brought “Protection of Plant Varieties and Farmers’ Rights Act 2001” and Rules 2003. The
PPV&.FRA 2001 enacted by India is undoubtedly the trend setter as it is the only one that covers
both plant breeders' and farmers' rights.
Main aim :
• To encourage scientists, farmers, communities for the development of new plant varieties
having quality and production potential
• Registration of varieties for legal protection
• Characterization and documentation of registered varieties
• Ensuring the availability of quality seeds of registered varieties under this Act
• Establishing Gene Funds for rewards and compensation
Protectable Plant Varieties :
If the variety confirms the criteria of Novelty, Distinctiveness, Uniformity, and Stability, they
can be protected.
Any person claiming to be the breeder of variety can apply for protection. The criteria for
distinctiveness, uniformity and stability have their usual meanings. However, there are some
unique
features that the denomination must satisfy to qualify as a registrable variety, and it cannot be
registered if the denomination given to such variety:
 is not capable of identifying such variety;
consists solely of figures;

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 is liable to mislead or to cause confusion concerning the characteristics, value, identity of
such variety, or the identity of the breeder of such variety;
 is not different from every denomination that designates a variety of the same botanical
species or of a closely related species registered under the Act;
 is likely to deceive the public or cause confusion in the public regarding the identity of such
variety;
 is likely to hurt the religious sentiments, respectively, of any class or section of the citizens
of India;
 is prohibited for use as a name or emblem for any of the purposes mentioned in Section 3 of
the Emblems and Names (Protection of improper use) Act, 1950 (52 of 1950); or
 is comprised solely or partly of a geographical name.
 Plant breeder’s rights:
 The Act provides exclusive right to breeder or his successor, agent or licensee to produce,
market, sell, distribute, import and export of seed of his registered variety.
 Use of others’ protected variety for research and developing new variety, but for the
repeated use for commercial exploitation the authorization of breeder will be required.
 Breeder will be entitled to get royalty.
 Registration of plant varieties under PPV & FR Act :
Registration of a plant variety gives protection only in India and confers upon the rights holder,
its successor, agent, or licensee the exclusive right to produce, sell, market, distribute, import, or
export the variety.
Application for registration :
The application for protection under the Act can be made by any of the following persons:
• Any person claiming to be the breeder of the variety;
• Any successor of the breeder of the variety;
• Any person being the assignee or the breeder of the variety in respect of the right to make such
application;
• Any farmer or group of farmers or community of farmers claiming to be breeder of the variety;
• Any person authorized to apply on behalf of farmers; or
• Any university or publicly funded agricultural institution claiming to be breeder of the variety.

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Criteria for registration of new variety :
`1. Distinctiveness - A new variety is deemed distinct if it is clearly distinguishable by at least
one essential characteristic from any other variety whose existence is a matter of common
knowledge in any country at the time of filing of the application.
2. Uniformity - A new variety is deemed uniform if subject to the variation that may be expected
from the particular features of its propagation it is sufficiently uniform in its essential
characteristics.
3. Stability - A new variety is deemed stable if it’s essential characteristics remain unchanged
after repeated propagation or, in case of a particular cycle of propagation, at the end of each such
cycle.
Guidelines for submission of applications for Registration of Plant Varieties :
1) Every application in triplicate must be in writing and signed by the applicant or their
representative. Application should be submitted in hard copy along with all essential
requirements by hand till further notice.
2) 2. Applications will be received only on Monday to Thursday from 10:00 Hours to 15:00
hours. No application will be accepted on Friday, Saturday and Sunday and Public Holidays.
3) Every application must have the name of the applicant, their address and nationally as well as
the address of service of their agent (if Applicable).
4) A person can file upto a maximum of three applications per day.
5) Until otherwise notified in the plant Variety Journal of India, each application should be
accompanied with an application charge of Rs. 200/- each by demand draft drawn in favour of
the “The Registrar, Plant Variety Registrar, New Delhi”.
6) The Application will be received on “first come first serve” basis.
7) No applications will be received after business hours.
8) On successful submission of application, the application will receive an acknowledgement
slip.
9) After submission of application, it will be processed according to the provisions of the Rule
29(2) of the Protection of Plant Varieties and Farmers' Right Rules, 2003.
 Breeders, researcher and farmers rights :
1.Breeders’/ Researchers’ Rights :
 The Act provides exclusive right to breeder or his successor, agent or licensee to produce,
market, sell, distribute, import and export of seed of his registered variety.
 Use of others’ protected variety for research and developing new variety, but for the
repeated use for commercial exploitation the authorization of breeder will be required.

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 Breeder will be entitled to get royalty
2.Farmers’ Rights :
 The Act recognises the farmer not just as a cultivator but also as a conserver of the
agricultural gene pool and a breeder who has bred several successful varieties. There are
provisions for such farmers' varieties to be registered with the help of NGOs or institutions
so that they are protected against being scavenged by formal sector breeders. The main
provisions are:
 Farmer who bred variety are equated with plant breeder for registration, royalty sharing,
recognition and rewards will be entitled to save, reuse, exchange, share the seed of all
varieties.
 Farmers or group of farmers will not be liable to pay any fee in any proceeding before the
authority
 Farmer will not be entitled to sell registered variety through labeling and packaging
 Farmer may claim compensation from the breeder if the variety fail to give projected
performance. However, it will be decided by the PPV & FR Authority keeping in view the
whole circumstances.
 Convention of Biological Diversity :
India has been a party to the Convention on Biological Diversity since 5th June 1992 and ratified
the Convention on 18th February 1994. The Convention on Biological Diversity is one of the
most broadly subscribed international environmental treaties in the world. Opened for signature
at the Earth Summit in Rio de Janeiro Brazil in 1992, it currently has 189 Parties - 188 States and
the European Community - who have committed themselves to its three main goals: the
conservation of biodiversity, sustainable use of its components and the equitable sharing of the
benefits arising out of the utilization of genetic resources. The Secretariat of the Convention is
located in Montreal, Canada. India is also a signatory to Cartagena Protocol on Biosafety signed
on 23rd January 2001 and ratified on 11th September 2003.
 International Treatyon Plant Genetic Resources for Food and Agriculture :
Building on the principles embodied in the Convention on Biological Diversity (CBD), the new
International Treaty on Plant Genetic Resources for Food and Agriculture (ITPGRFA) seeks to
establish principles for facilitating access to plant genetic resources and establishing fair and
equitable mechanisms of benefit sharing.
International Treaty on Plant Genetic Resources for Food and Agriculture (ITPGRFA) was
finally agreed in 2001. The ITPGRFA has the specific objective of facilitating access to plant
genetic resources held by contracting parties, and those in international collections, for the
common good, recognizing that these are an indispensable raw material for crop genetic
improvement, and that many countries depend on genetic resources which have originated

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elsewhere. This represents an implementation of the CBD principles taking account of the
specific characteristics of plant genetic resources.
Most varieties now in existence, in particular those derived from public breeding programmes,
contain genetic material from many sources, often derived from genetic material in gene banks,
which themselves may have diverse origins. The ITPGRFA also recognizes the contribution of
farmers in conserving, improving and making available these resources, and that this
contribution is the basis of Farmers’ Rights. It does not limit in any form whatsoever rights that
farmers may enjoy under national law to save, use, exchange and sell farm-saved seed. It also
sets out the right to participate in decision making about, and to derive fair and equitable benefits
from, the use of these resources .
 Indian Biological Diversity Act , and its salient features, access and benefit
sharing :
Indian Biological Diversity Act , and its salient features :
India enacted The Biological Diversity Act, 2002 and The Biological Diversity Rules, 2004 to
fulfill its commitments in the Convention on Biological Diversity and in the Cartagena Protocol
on Bio-safety.
The Biodiversity Act - 2002 of India primarily addresses access to genetic resources and
associated knowledge by foreign individuals, institutions or companies, to ensure equitable
sharing of benefits arising out of the use of these resources and knowledge to the country and the
people.
Various states have also enacted state specific Biological diversity rules namely - Kerala
Biological Diversity Rules, 2005; Sikkim State Biological Diversity Rules, 2006; Nagaland
Biological Diversity Rules, 2010; Rajasthan Biological Diversity Rules, 2010; A.P. State
Biological Diversity Rules, 2009, West Bengal Biological Diversity Rules, 2005; U.P. State
Biodiversity Rules, 2010; Maharashtra Biological Diversity Rules, 2008 etc.
Access to Biological Diversity :
Biological Diversity Act, 2002 lays down certain regulations with reference to access to Biological
Diversity. The following regulations have been placed in Section 3 to 7 of the said act. Section 3 of
the above referred act, requires the following categories of persons to seek previous permission of the
National Biodiversity Authority, to obtain any biological resource occurring in India or knowledge
associated thereto for research or commercial utilization or for bio-survey and bio-utilization –
• A person who is not a citizen of India.
• A citizen of India who is a non-resident as per section 2(30) of the Income-tax Act, 1961.
• A body corporate, association, organization –

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 Not incorporated or registered in India; or
 Incorporated or registered in India under any law for the time being in force which has
any non-Indian participation in its share capital or management. Rule 14 of the Biological
Diversity Rules, 2004 mentions the procedure for access to biological resources and
associated traditional knowledge.
Section 4 of the above referred act requires that every person shall seek the previous approval of
the national bio-diversity authority before transferring the results of any research related to any
biological recourses occurring in, or obtained from India to any person as referred to in section 3
above. Rule 17 of the Biological Diversity Rules, 2004 mentions the procedure for seeking
approval for transferring results of research.
Section 5 of the Biological Diversity Act, 2002 provides that section 3 and 4 above shall not
apply to collaborative research projects involving transfer of biological recourses, between
institutions including governments sponsored institutions of India and such institutions in other
countries if –
• If they confirm to policy guidelines issued by central government in this behalf;
• Be approved by the central government
Section 6 of the Biological Diversity Act, 2002 (18 of 2003) requires that every person applying
for any intellectual property rights in or outside India for any invention based on any research or
information on a biological recourse obtained from India before obtaining prior approval of the
national biodiversity authority. The provisions of this section are however not applicable on
rights relating to protection of plant varieties. Rule 18 of the Biological Diversity Rules, 2004
mentions the procedure for seeking prior approval before applying for intellectual property
protection.
Section 7 of the said Act requires every Indian citizen or a body corporate, association or
organization registered in India to prior intimate the state biodiversity board of the concerned
area from which he/it plans to obtain any biological recourse for commercial utilization or bio-
survey and bio utilization for commercial purpose. The Act empowers state biodiversity board,
wide section 24 to from prohibit or restrict any such activity if it is of opinion that such activity
is detrimental or contrary to the objectives of conservation and sustainable use of biodiversity.
Benefit sharing:
The Biodiversity Act - 2002 primarily addresses access to genetic resources and associated
knowledge by foreign individuals, institutions or companies, to ensure equitable sharing of
benefits arising out of the use of these resources and knowledge to the country and the people.
The Act has specific provisions about ownership of intellectual property rights associated with
exploitation of biodiversity. Industries have to obtain prior consent of the National Biodiversity
Authority before exploring the biodiversity in India. In the event of R&D based on exploitation
of biodiversity and associated local knowledge, there is a provision for sharing of benefits of
such work with the local community. No direct flow of funds is expected to the community.

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Instead the Union Government will reach the benefits through State Governments to the
community.
The Biological diversity Act of 2002 contains 65 sections under 12 chapters while the Biological
Diversity Rules of 2004 consists of 24 rules and one schedule. According to Section 2(b) of the
Biological Diversity Act, 2002 “Biological Diversity means the variability among living
organisms from all sources and the ecological complexes of which they are part and includes
diversity within species or between species and of eco-systems.”
 Patentability:
Within the context of a national or multilateral body of law, an invention is patentable if it meets
the relevant legal conditions to be granted a patent. By extension, patentability also refers to the
substantive conditions that must be met for a patent to be held valid.
Computer databases search is quick and relatively inexpensively. Database searches are most
useful in searching sophisticated inventions, which can be described by precise, well-known
terms of art. They are much less useful in searching mechanical gadget type inventions.
No search will "guarantee" the patentability of any invention. The object is to make a reasonable
assessment of the prospects for obtaining worthwhile patent protection. Search results are also
useful in preparing a patent application.
 Process and product of patent:
You would probably be better served by asking what is a process claim and what is a product
claim. Patents contain claims, usually multiple claims, and they can be either process claims or
product claims. One patent can contain both kinds of claims.
A process claim describes a process; that is, it describes a way of doing something. That
something could be how to make a product, or how to use a product, etc., pretty much some set
of steps or actions.
A product claim describes a product, like a tool, a new type of material, or a system of devices
that work together. Generally any kind of tangible thing.
There are also “product by process” claims. These describe a product in terms of the steps
required to make it. Think of “a pizza made according to this recipe.”
 Filling of patent:
The first stage in life cycle is patent filing after drafting a provisional/complete specification,
which is followed by publication of patent application. The Publication of Patent Application
takes place in the Patent Journal issued by Indian patent office. The publication of a patent
application takes around 18 months from the Priority date/ date of Filing (whichever is earlier).
The publication is followed by next stage i.e. “Examination of patent application” by Indian

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Patent Office: A Request for Examination (RFE) has to be submitted to Patent Office after
Publication of Patent and within 48 months of Priority Date / Date of Filing (whichever is
earlier).The publication stage is next followed by examination stage of patent application. The
examination reports i.e. First examination reports (FER’s) are being issued by Indian patent
office.
The Patent Office provide an Examination Report after checking the patent application on
grounds of the Patentability Criteria and provides the First Examination Report (FER). Response
for the objections are raised in FER has to be submitted within 6 month of date of Issuance of
FER, which can be further extended to three months. After submission of response to FER by the
applicant, the Controller of Patent consider all the objections and check whether all the
objections have been compiled or not. The controller then either issue a hearing notice and
appoint a hearing or may grant patent application and publish the patent application in official
journal accordingly. Once the patent is granted, Annual Fees are required to be paid on and after
third year of grant of the Patent. Annuities are required to be paid each year throughout the life
of the patent i.e. 20 years from the Priority Date / Date of Filing (whichever is earlier).

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 Patent specification:
There are two types of patent documents usually known as patent specification, namely
(i) Provisional Specification and (ii) Complete Specification
 Provisional Specification :
A provisional specification is usually filed to establish priority of the invention in case the
disclosed invention is only at a conceptual stage and a delay is expected in submitting full and
specific description of the invention. Although, a patent application accompanied with
provisional specification does not confer any legal patent rights to the applicants, it is, however,
a very important document to establish the earliest ownership of an invention.
The provisional specification is a permanent and independent scientific cum legal document and
no amendment is allowed in this. No patent is granted on the basis of a provisional specification.
It has to be a followed by a complete specification for obtaining a patent for the said invention.
Complete specification must be submitted within 12 months of filing the provisional
specification. This period can be extended by 3 months. It is not necessary to file an application
with provisional specification before the complete specification. An application with complete
specification can be filed right at the first instance.
 Complete Specification :
Submission of complete specification is necessary to obtain a patent. The contents of a complete
specification would include the following:
1. Title of the invention.
2. Field to which the invention belongs.
3. Background of the invention including prior art giving drawbacks of the known inventions &
practices.
4. Complete description of the invention along with experimental results.
5. Drawings etc. essential for understanding the invention.
6. Claims, which are statements, related to the invention on which legal proprietorship is being
sought. Therefore the claims have to be drafted very carefully.

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ASSIGMENT 2:-
 Protection of various types of intellectual properties :
The different types of Intellectual Property Rights are:
i. Patents
ii. Copyrights
iii. Trademarks
iv. Industrial designs
v. Protection of Integrated Circuits layout design
vi. Geographical indications of goods
vii. Biological diversity
viii. Plant varieties and farmers rights
ix. Undisclosed information
 Fundamentals of patents, copyrights and geographical indications :
Patents:
Patents are an exclusive right granted by a country to the owner of an invention to make, use,
manufacture and market the invention, provided the invention satisfy the following criteria:
• Novelty: not known as prior art
• Non- obviousness: Must involve inventiveness
• Usefulness: Invention must have industrial application
It provides the invention satisfies certain conditions stipulated in the law. Exclusivity of right
implies that no one else can make, use, manufacture or market the invention without the consent
of the patent holder. This right is available only for a limited period of time. However, the use or
exploitation of patents may be affected by other laws of the country which has awarded the
patents.
Patents in the law is a property right and hence, can be gifted, inherited, assigned, sold or
licensed. As the right is conferred by the State, it can be revoked by the State under very special
circumstances even if the patent has been sold or licensed or manufactured or marketed in the
meantime. The patents right is territorial in nature and inventors their assignees will have to file
separate patent applications in countries of their interest, along with necessary fees, for obtaining
patents in those countries.

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Copyrights:
Copyright is a right given by the law to creators of literary, dramatic, musical, performances and
artistic works and producers of cinematograph films and sound recordings.
In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the
public adaptation and translation of the work. There could be slight variations in the composition
of the rights depending on the work.
Anyone who claims copyrights in a work can use copyright notice to alert the public of the
claim. It is not necessary to have a registration to use the designations though it is highly
advisable to incorporate a copyright notice like the symbol, etter "c" in a circle or the word
"Copyright" followed by name of copyright owner and year of first publication.
Geographical indications:
Geographical indications (GI) are indications that identify a good as originating in the territory of
a country, or a region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographic origin.
Geographical indications serve the same functions as trademarks, because like trademarks they
are:
1. Source-identifiers,
2. Guarantees of quality, and
3. Valuable business interests
GIs have emerged as one of the important features of the IPR regime of India. After the
Geographical Indications Act came into force on September 15, 2003, many famous products of
India such as Darjeeling tea, Ponchampalli and Chanderi silk, have been notified as GIs. A
Geographical Indication (GI) is an indication which identifies agricultural, natural or
manufactured goods originating from a definite geographical territory, as having a special quality
or reputation or other characteristics.
History speaks of Christopher Columbus charting out a new route to India, lured by the wealth of
its spices, while English breeders imported Albian horses to sire Derby winner's. China silk,
Dhaka muslin, Venetian glass all have reputations carefully built up and meticulously maintained
by the masters of that region, combining the best of Nature and Man.
 Designs and Layout:
Industrial designs refer to creative activity which result in the ornamental or formal appearance
of a product and design right refers to a novel or original design that is accorded to the proprietor
of a validly registered design. Industrial designs are an element of intellectual property.
Designs Act, 2000 :
Article means any article of manufacture and any substance, artificial, or partly artificial and
partly natural; and includes any part of an article capable of being made and sold separately.

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"Design" means only the features of shape, configuration, pattern, ornament or composition of
lines or colours applied to any article whether in two dimensional or three dimensional or in both
forms, by any industrial process or means, whether manual, mechanical or chemical, separate or
combined, which in the finished article appeal to and are judged solely by the eye; but does not
include any mode or principle of construction or anything which is in substance a mere
mechanical device.
The layout-design of a semiconductor integrated circuit means a layout of transistors and other
circuitry elements and includes lead wires connecting such elements and expressed in any
manner in semiconductor integrated circuits.
Semiconductor Integrated Circuits Layout-Design (SICLD) Act, 2000 :
The Semiconductor Integrated Circuits Layout-Design Act, 2000 was passed to fulfill India’s
obligations as a TRIPS signatory. It provides protection for semiconductor Integrated Circuit
layout designs. The main purpose of the Act is to provide for routes and mechanism for
protection of IPR in Chip Layout Designs created and matters related to it
The important provisions of the Act are –
• Jurisdiction to the whole of India;
• SICLD Registry - where the layout-designs of integrated circuit chips can be registered;
• Defines layout-designs of integrated circuits which can be registered under the Act;
• Duration of registration of layout-designs;
• Rights conferred by registration;
• Infringement of layout-designs;
• Procedure for assignment and transmission of registered layout- design;
• Appellate Board as a forum of redressal;
• Treatment of Royalties;
• Provisions in case of national emergency or extreme public urgency
• Penalties;
• Provision for agents;
• Reciprocity provision with other recognized countries.

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Criteria for registration of Chip Layout Design
A Layout design that is:
• Original
• Not commercially exploited anywhere in India or convention /reciprocal country
• Inherently distinctive
• Inherently capable of being capable of being distinguishable from any other registered layout
design
 Trade secrets and traditional knowledge :
Trade secret:
A Trade secret or undisclosed information is any information that has been intentionally treated
as secret and is capable of commercial application with an economic interest. It protects
information that confers a competitive advantage to those who possess such information,
provided such information is not readily available with or discernible by the competitors. It
therefore becomes imperative to strengthen the confidentiality around the trade secret by
ensuring that contractual obligations are enforced on persons who are allowed to use the trade
secret, especially, when it is licensed to a third party.
Since there is no documentary evidence such as a Letters Patent or a Copyright registration or a
Trademark Registration to prove that the trade secret was originally created by the proprietor, it
is essential to maintain proof of creation of trade secret either by mailing the information to
oneself and retaining postmarked and sealed envelope or by depositing a copy of the information
with a third party that would maintain a dated copy.
Trade secret remains confidential for indefinite period of time as per the will of the proprietor
provided the security and its confidentiality is not breached. There is no specific legislation
regulating the protection of trade secrets in India. India follows common law approach of
protection and all matters relating to it are generally covered under the Contract Act, 1872. So, if
the information constituting trade secret is leaked, legal action can be brought against the parties
who have leaked it under the Law of Contracts.
Traditional knowledge:
An invention which, in effect, is traditional knowledge or which is an aggregation or duplication
of known properties of traditionally known component or components.
India is an acknowledged centre of crop diversity, and harbours many wild relatives and breeds
of domesticated animals. The CBD offers opportunities to India to realize benefits from its rich
biological resources and associated traditional knowledge.

18. 17
The CBD also provides for equitable sharing of benefits arising from the utilisation of traditional
knowledge and practices, with holders of such knowledge. This has made it necessary for a
legislation to be put in place, which lays down the framework for providing access, for
determining the terms of such access and for ensuring the equitable sharing of benefits.
Does the legislation provide for protection of traditional knowledge?
Considering these complex nuances, an enabling provision for protection of traditional
knowledge has been made under this legislation. The modalities for protecting indigenous
knowledge are still emerging and evolving and therefore the measures for doing so have been
left open and flexible under this provision. It provides for interalia registration of knowledge, and
for developing sui generis system for protecting traditional knowledge .
 Trademarks, protection of plant varieties and farmers’ rights and bio-
diversity protection:
Trademarks:
A trade mark (popularly known as brand name) in layman’s language is a visual symbol which may
be a word signature, name, device, label, numerals or combination of colours used by one
undertaking on goods or services or other articles of commerce to distinguish it from other similar
goods or services originating from a different undertaking.
• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods or services of one undertaking from those of
others.
• It should be used or proposed to be used mark in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the goods or services and
some person have the right to use the mark with or without identity of that person.
Trade Marks are distinctive symbols, signs, logos that help consumer to distinguish between
competing goods or services. A trade name is the name of an enterprise which individualizes the
enterprise in consumer’s mind. It is legally not linked to quality. But, linked in consumer’s mind to
quality expectation.
Key Features of Trademark
• Trademark must be Distinctive
•Trademark must be used in Commerce
Types of Trademark
• Trademark,
• Servicemark,

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• Collectivemark,
• Certification Mark
Protection of plant varieties and farmers’ rights :
A plant variety represents a more precisely defined group of plants, selected from within a
species, with a common set of characteristics.
The Protection of Plant Varieties and Farmers' Right Act, 2001 has been enacted to provide
for the establishment of an effective system for protection of plant varieties, the rights of farmers
and plant breeders and to encourage the development of new varieties of plants.
The objectives of the Act are:
• to establish an effective system for protection of plant varieties, the rights of farmers and plant
breeders and to encourage the development of new varieties of plants;
• to recognize and protect the rights of the farmers in respect of their contribution made at any
time in conserving, improving and making available plant genetic resources for the development
of new plant varieties;
• to protect plant breeders’ rights to stimulate investment for research and development both in
the public and private sector for development of new plant varieties;
• to facilitate the growth of seed industry in the country that will ensure the availability of high
quality seeds and planting material to the farmers.
According to the Act, the term 'variety' means "a plant grouping except micro organism within a
single botanical taxon of the lowest known rank, which can be:-
(i) defined by the expression of the characteristics resulting from a given genotype of that plant
grouping;
(ii) distinguished from any other plant grouping by expression of at least one of the said
characteristics; and
(iii) considered as a unit with regard to its suitability for being propagated, which remains
unchanged after such propagation; and includes propagating material of such variety, extant
variety, transgenic variety, farmers’ variety and essentially derived variety".
Bio-diversity protection :
Biological diversity is the hallmark of life on earth. It is very backbone of sustainable
development. The current Intellectual Property Rights (IPR) regime is encouraging
commercialization of seed development, monoculture, protection of new plant varieties,
microorganisms, and genetically modified organisms. As a consequence, our rich biogenetic
diversity is being eroded irreversibly. We must find out a path to make an alternative approach
that will bring a balance in between formal Intellectual Property (IP) system and sustainable
aspects of biodiversity.

20. 19
Biological Diversity Act, 2002 of India has defined various terms. “Biological Diversity” means
the variability among living organisms from all sources and the ecological complexes of which
they are part and includes diversity within species or between species and of eco-systems .
Biodiversity is the basic of our sustainability. The developed countries are not rich in biogenetic
resources but are better equipped in research and development. They use the biogenetic resources
accessed from the developing countries. As a result, there is a beginning in the unprotected flow
of genetic information from the developing countries to the capital-rich west, and a protected
flow in the reverse direction mainly through patents and Plant Breeders’ Rights (PBR). It has
both visible and invisible impacts. Genetic erosion is one of the most important invisible impacts
that is in long run manifested visibly with the loss of biodiversity.
The National Biodiversity Authority (NBA) under the Ministry of Environment and Forests is
the concerned Authority for the purpose of Biodiversity.
India enacted the Biodiversity Act 2002 to ensure maintenance, sustenance and development of
its biodiversity. The Act has specific provisions about ownership of intellectual property rights
associated with exploitation of biodiversity. Industries have to have the prior informed consent of
the National Biodiversity Authority before exploring the biodiversity in India. In the event of
R&D based on exploitation of biodiversity and associated local knowledge, there is a provision
for sharing of benefits of such work with the local community. No direct flow of funds is
expected to the community. Instead the Union Government will reach the benefits through State
Governments to the community.
 Protectable subjectmatters, protection of biotechnology, protection of other
biological materials, ownership and period of protection :
Protectable subject matter :
 Literary, artistic and scientific works;
 Performances of performing artists, phonograms, and broadcasts;
 Inventions in all fields of human endeavour;
 Scientific discoveries;
 Industrial designs;
 Trade marks, service marks, and commercial names and designations;
 Protection against unfair competition; and
 “All other rights resulting from intellectual activity in the industrial, scientific, literary or
artistic fields.”
Protection of biotechnology :
The development of the genetic resources of biodiversity is known as biotechnology. Broadly
defined, biotechnology includes any technique that uses living organisms or parts of organisms

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to make or modify products, to improve plants or animals, or to develop microorganisms for
specific uses (Congress of the United States, Office of Technology Assessment, 1990). Mankind
has used forms of biotechnology since the dawn of civilization. However, it has been the recent
development of new biological techniques (e.g., recombinant DNA, cell fusion, and monoclonal
antibody technology) which has raised fundamental social and moral questions and created
problems in intellectual property rights.
Intellectual property protection for biotechnology is currently in a state of flux. Whilst it used to
be the case that living organisms were largely excluded from protection, attitudes are now
changing and increasingly biotechnology is receiving some form of protection. These changes
have largely taken place in the USA and other industrialized countries, but as other countries
wish to compete in the new biotechnological markets, they are likely to change their national
laws in order to protect and encourage investment in biotechnology.
There is at the moment no clear international consensus on how biotechnology should be treated.
Although bodies such as the World Intellectual Property Organization (WIPO, the United
Nations permanent body primarily responsible for international cooperation in intellectual
property), and the Organization for Economic Cooperation and Development (OECD) have
conducted separate studies and produced various reports, these have only sought to make
governments more aware of the potential problems and to offer some suggested solutions. In
view of the highly controversial nature of providing intellectual property protection for
biotechnology, it is likely that in the short term developments will be at a national and regional
level.
Protection of other biological materials :
For applications relating to biological material, the Act strictly requires that the description of
such biological material shall be included in the complete specification including all available
characteristics of the material so that the biological material is correctly and particularly
identified and/or indicated in the specification.
Therefore, when a biological material is identified in a specification and such a material is not
available to the public and the same cannot be fully and particularly described as required under
Section 10(4)(a) and (b) of the Patents Act, such material shall be deposited with the
International Depository Authority under the Budapest Treaty, on or before the date of filing as
per Section 10(4)(ii) of the Act.
Protection of ownership :
An owner can institute a reinvestication or seek an order for ejecment to recover his movable or
immovable property from whoever is in possession without the owner’s consent, irrespective of
whether possession is bona or male field .

22. 21
Period of protection :
A trade mark registration is valid for ten (10) years from the date of application. Six months prior
to the expiry of the ten years, the registrar will notify the owner of the trade mark of the
imminent expiry of the concerned trade mark.
The owner may then apply for a renewal which covers the next 10 years and the renewal can
continue every 10 years thereafter upon payment of a renewal fee. Renewal of Trade or Service
mark is done on form TM 10 . If at the expiration of the time prescribed for renewing the
mark, the conditions have not been duly complied with, the registrar may remove the trade mark
from the register.
 National Biodiversity protection initiatives :
The most important objective of this principles is that human beings are at the centre of
sustainable development concerns. The other relevant principles on which the objectives are
premised include: Right to development; Precautionary approach; Economic efficiency, Entities
with ‘incomparable’ value ; Equity; Public trust doctrine; Decentralisation; Integration;
Preventive actions; and Environmental offsetting. This principle, which have an established
genecology, provide the necessary overall guidance for the implementation of the objectives. The
objectives are broad-based and relate to current perceptions of key threats and constraints to
biodiversity conservation.
These may accordingly evolve over time. The objectives are to be realized through various
strategic interventions by different public authorities at Central, State and local Government
levels. They are to also form the basis of diverse partnerships. India has developed organizational
structure and policy framework for protection of country forest.
 National biodiversity action plan : This was approved by the Union Cabinet on 6th
February ,2008.
 National wildlife action plan :NWAP was first adopted in 1983, based upon the
decision taken in 11th meeting of the Indian Board for wildlife held in 1982.
Strengthening and integrating in situ, on farm and ex situ conservation - To protect and
conserve through in situ, on farm and ex situ conservation, major national bio-geographic zones,
critical ecological systems and genetic resources, which are essential for life support, livelihoods,
food and nutritional security; and are in consonance with the national economic growth and
broad conception of human well-being.
Augmenting of natural resource base and its sustainable utilization - To promote holistic
approach to conservation, enhancement and sustainable utilization of biodiversity, providing
access to bioresearches for all sections of society, in particular the economically poor, which are
most dependant on them, thereby ensuring inter- and intra-generational equity.

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Assessing vulnerability, and adaptation to climate change and desertification- To develop
appropriate tools, methodologies and indicators of impact of climate change and desertification
at the national level. To assess vulnerability of various important national economic sectors to
global threats such as climate change and desertification. To devise appropriate strategies for
mitigating the impact of, and adaptation to, climate change and desertification.
Integrating biodiversity concerns in economic and social development -To integrate
biodiversity concerns into policies, plans, programmers and projects for economic and social
development. · To achieve sustainable development based on protection, enhancement and
management of biological resources.
Developing and consolidating biodiversity databases- To collect collate and integrate
biodiversity information from diverse sources into a national database on different components
of biodiversity with distributed networking systems and linkages. · To intensify the survey,
identification and inventorization of country’s floristic, faunal and microbial resources with
special attention to hitherto unexplored areas, and keystone, umbrella, endangered and endemic
species which need to be conserved on priority basis.
Strengthening implementation of policy, legislative and administrative measures for
biodiversity conservation and management - To review and update the extant policy,
legislative and administrative measures for conservation and management of biological diversity.
To promote greater harmony, synergy and linkages among extant policy, legal and administrative
measures for conservation and management of biological diversity and associated traditional
knowledge.
 Conservation of Biological Diversity :
Objective and advantages of biological diversity:
 Conservation of biological diversity leads to conservation of essential ecological diversity
to preserve the continuity of food chains.
 The genetic diversity of plants and animals is preserved.
 It ensures the sustainable utilisation of life support systems on earth.
 It provides a vast knowledge of potential use to the scientific community.
 A reservoir of wild animals and plants is preserved, thus enabling them to be introduced,
if need be, in the surrounding areas.
 Biological diversity provides immediate benefits to the society such as recreation and
tourism.
 Biodiversity conservation serves as an insurance policy for the future.

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Types of conservations:
 Ex situ conservation
Conserving biodiversity outside the areas where they naturally occur is known as ex situ
conservation. Here, animals and plants are reared or cultivated in areas like zoological or
botanical parks.
Reintroduction of an animal or plant into the habitat from where it has become extinct is another
form of ex situ conservation. For example, the Genetic gharial has been reintroduced in the rivers
of Uttar Pradesh, Madhya Pradesh and Rajasthan where it had become extinct.
Seed banks, botanical, horticultural and recreational gardens are important centres for ex situ
conservation.
 In situ conservation
Conserving the animals and plants in their natural habitats is known as in situ conservation. This
includes the establishment of
 National parks and sanctuaries
 Biosphere reserves
 Nature reserves
 Reserved and protected forests
 Preservation plots
 Reserved forests
 Agro biodiversity conservation
After the introduction of cotton, tobacco, sugarcane, sunflower, soyabean and so on, farmers
became victims of monocultures in their greed for money. Therefore many of the indigenous
varieties of crops were lost. Moreover, the hybrid varieties of fruits and vegetables (e.g.
tomatoes), introduced for pulp are more susceptible to disease and pests. Though hybrid varieties
are preferred, traditional wild varieties of the seeds should be conserved for future use in the
event of an epidemic which would completely wipe out the hybrids.
Botanical gardens, agricultural departments, seed banks etc., alone should not be given the
responsibility of agro biodiversity conservation. Every farmer, gardener an cultivator should be
aware of his role in preserving and conserving agro biodiversity.

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 International treaty on plant genetic resources for food and agriculture :
The International Treaty on Plant Genetic Resources for Food and Agriculture, also known as IT
PGRFA, Seed Treaty or Plant Treaty , is a comprehensive international agreement in harmony
with the Convention on Biological Diversity, which aims at guaranteeing food security through
the conservation, exchange and sustainable use of the world's plant genetic resources for food
and agriculture (PGRFA), the fair and equitable benefit sharing arising from its use, as well as
the recognition of farmers' rights. It was signed in 2001 in Madrid, and entered into force on 29
June 2004.
Main features:
 Participating countries: There are 147 contracting parties to the Plant Treaty (146
Member States and 1 intergovernmental organization, the European Union) as of
February 2020.
 Farmers' rights : The treaty recognises farmers' rights, subject to national laws to: a) the
protection of traditional knowledge relevant to plant genetic resources for food and
agriculture; b) the right to equitably participate in sharing benefits arising from the
utilisation of plant genetic resources for food and agriculture; and c) the right to
participate in making decisions, at the national level, on matters related to the
conservation and sustainable use of plant genetic resources for food and agriculture. The
Treaty establishes the Multilateral System of Access and Benefit-sharing to facilitate
plant germplasm exchanges and benefit sharing through Standard Material Transfer
Agreement (SMTA).
 However, as Regine Andersen of the farmers' rights project, among others, including
Olivier De Schutter, the UN Special Rapporteur on the Right to Food, argue, the
interpretation and realisation of farmers' rights is weak and is not the same across all
countries. Without a consistent, strong international focus on the realising the rights of
farmers who conserve and sustainably use PGRFA to save, use, exchange and sell seeds
saved on-farm, genetic variety of crops and related agricultural biodiversity will suffer.
 India, for example, includes an interpretation of farmers' rights in its Plant Variety
Protection and Farmers' Rights Act, allowing farmers a restricted right to save and sell
seed they have produced on-farm as they always have, even if it contains genes from a
protected variety., In 2019, the adoption of the United Nations Declaration on the Rights
of Peasants and other people working in rural areas reaffirmed the farmers' rights
contained in the Plant Treaty.
 Multilateral system : The treaty has implemented a Multilateral System (MLS) of access
and benefit sharing, among those countries that ratify the treaty, for a list of 64 of some
of the most important food and forage crops essential for food security and
interdependence. The genera and species are listed in Annex 1 to the treaty. The treaty
was negotiated by the Food and Agriculture Organization of the United Nations (FAO)

26. 25
Commission on Genetic Resources for Food and Agriculture (CGRFA) and since 2006
has its own Governing Body under the aegis of the FAO.
 The Governing Body is the highest organ of the Treaty as established in Article 19.
Composed of representatives of all Contracting Parties, its basic function is to promote
the full implementation of the Treaty, including the provision of policy guidance on the
implementation of the Treaty. The Governing Body elects its Chairperson and Vice-
Chairpersons, in conformity with its Rules of Procedure. They are collectively referred to
as "the Bureau". Some believe the treaty could be an example of responsible global
governance for ensuring that plant genetic resources essential for present and future food
security can be kept accessible to all farmers and in the public domain. Chapter 7 of the
Second Report on the State of the World's Plant Genetic Resources for Food and
Agriculture (SoWPGR-2) entitled "Access to Plant Genetic Resources, the sharing of
benefits arising out of their utilization and the realization of Farmers' Rights" is mainly
dedicated to the International Treaty.
 Governing Body : The Governing Body met for the first time in Madrid in June 2006. It
had a ministerial segment and a ministerial declaration was adopted and included in the
Report.
List of crops covered :
Even foods that have been part of a culture for centuries often are indigenous to a region on the
other side of the world. This global dispersal shows the generosity with which farmers and
farming communities have always shared seeds and genetic materials with neighbors or through
trade. As people ventured forth, looking for new lands, their seeds were part of their diasporas.
As a result, we now live in a world in which not one country can be considered self-sufficient in
terms of being able to survive solely on crops indigenous within its borders. The Treaty
facilitates the continued open exchange of food crops and their genetic materials.
The list of plant genetic material included in the Multilateral System of the Treaty is made of
major food crops and forages. The Forages are also divided in legume forages and grass forages.
They were selected taking into account the criteria of food security and country interdependent.
 Licensing of technologies, Material transfer Agreements, Research
collaboration Agreements, License Agreements :
Licensing of technologies :
Protection of technology must follow its commercialization so that benefits of invention reach to
the public and the return on investment is realized. Licensing of technology has been recognized
a faster tool for technology transfer in advanced countries. It has following features:

27. 26
 Normally, non-exclusive licenses can be executed for technologies such so that these can
lead to their wider adoption and thereby maximize research benefits to farmers and other
end users. For non-exclusive licenses there shall be flexibility in fixing the license fee.
 When a technology is licensed through an open tendering/bidding process it will
normally be given to one licensee. But depending upon the licensee’ s manufacturing
capacity and size of business, other interested parties from outside the territory of his
business/interest may also be considered if the technology has to be rapidly and widely
disseminated. Alternately, a sublicensing clause should be incorporated, which may
require the licensee to share a part of the license fee and/or royalty from any sub-licenses
that he may enter into with that technology.
 Exclusive license may also be issued when (i) an IPR enabled university technology is to
be commercialized in countries abroad, and (ii) the technology is to be disseminated in
difficult areas offering low incentives. As exclusive licenses are preferential,
commensurate license fee and/or royalty will be negotiated and settled on mutually
agreed terms with the licensee.
 The duration for which institution will issue licenses will also be negotiated with the
licensee and settled on mutually agreed terms.
 Licensing for commercialization of Plant Varieties should be based on state and national
priorities and issues of food and nutritional security. The university may decide to place a
plant variety solely in the public domain or else it may be licensed for commercial use on
exclusive or non-exclusive basis. However, registration and protection of all protectable
varieties will be ensured under the PPV&FR Act before placing them in public or
commercial domain.
 Public interest license can be issued to those technologies which directly relates to
farmers.
 The inventors of technology shall have sharing of benefits as per institutional policy.
Material transfer Agreements :
A Material transfer agreement (MTA) is a contract that governs the transfer of tangible research
materials between two organizations, when the recipient intends to use it for his or her own
research purposes. The MTA defines the rights of the provider and the rights and obligations of
the recipient with respect to the materials and any progeny, derivatives, or modifications.
Biological materials, such as reagents, cell lines, plasmids, and vectors, are the most frequently
transferred materials, but MTAs may also be used for other types of materials, such as chemical
compounds, mouse models, and even some types of software.

28. 27
Types :
Three types of MTAs are most common at academic institutions: transfer between academic or
research institutions, transfer from academia to industry, and transfer from industry to academia.
Each calls for different terms and conditions.
[1] For simple transfers not involving intellectual property, the NIH recommends a Simple Letter
Agreement.
[2] For materials that may be patented or for which more protection is desired, the Uniform
Biological Material Transfer Agreement (UBMTA) can be used. Many U.S. educational
institutions have signed the UBMTA Master Agreement. AUTM (previously the Association of
University Technology Managers) serves as the repository for the original UBMTA Master
Agreements and maintains the list of the signatories.
[3] Signatories to the UBMTA only have to sign an Implementing Letter with the details of the
particular transfer since they have already agreed to all the terms of the Master Agreement.
Research collaboration Agreements:
• The objective of collaborative research agreement is to clarify for both parties what they are
trying to accomplish together and to clearly set forth the rules that will govern the collaborative
effort.
• A good partnership must be mutually beneficial, and an effective collaborative research
agreement will help both parties understand and accept mutual benefit as a goal.
• Of course, simply writing that an agreement is mutually beneficial does not make it so. An
effective agreement must be based on an actual win-win relationship, one that is truly mutually
beneficial. So to start with, the concept of the collaborative research project must involve a
research project through which both parties benefit from the work that will be done .
A research collaborative agreement has five major parts-
i. Statement of objectives :
 Should be concise and clear.
 Use terms that nonscientists will readily understand and avoid the excessive use of
scientific jargon.
 Explain the real-world issues that the collaborative research agreement will address.
 Should articulate both the what and the why of the collaboration.
 When someone outside of the science community reads the agreement, they should be
able to tell why the parties believe it is important to undertake the collaboration.
 Should clearly specify the scientific goals of the collaboration
ii. Statement of work :
 Statement of work is attached to the agreement as an appendix. In drafting this section of
a collaborative research agreement, the parties must work together closely.
 The statement of work contains the scientific objectives, methodologies, and approaches.

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 It should be broken down into subsections, with each section explaining what “partner A”
will do and what “partner B” will do, with the time frames and benchmarks specifically
laid out.
 Should be followed by a description of the methodologies and approaches to be used to
address the scientific questions involved.
 Consider is to quantify the work that is to be done
iii. General provision :
 Is the body of the agreement that covers the how of working together and provides
mechanistic guidance to the scientists at the institute and at the company, as well as to
managers.
 Normally, an institute or an entity has a standardized set of general provisions that has
been reviewed by their legal counsel and that can serve as a starting point for negotiating
agreements.
 A person can often begin to fully understand which points are negotiable and which legal
provisions are required by organization policy or law. At the same time, collaborative
research agreements should be as userfriendly as possible and avoid unnecessary
stipulations.
 There are a wide range of typical general provisions. These include a public disclosure/
publication policy, which addresses how the parties will communicate with each other
and the outside world; reports; confidentiality issues.
 The important issues of intellectual property management and technology transfer from
the institute to the company; regulatory approvals; indemnity and liability statements;
dispute resolution plans; and provisions for termination. This part of the agreement
should also spell out an amendment procedure and name the persons responsible for the
agreement, both managerially and scientifically, at the institute and the company.
iv. Budget :
 There is a tendency to view this as the most important section because it documents the
funding that the parties contribute. This, however, is an improper emphasis.
 Concentrating only on research funding overlooks both the use of the agreement as a
means of technology transfer and as a way to build an intellectual synergism that can
result when researchers collaborate.
 Developing the budget must begin with a clear statement of work. This will help
determine for the collaborators the amount and the timing of the resources required for
the collaborative project. This is the starting point. There must be enough funding to
undertake the project without detracting from other projects that are already underway.

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v. List of materials :
 They are not new TP that will be divided according to the granting clauses. Rather,
materials that are included in the list of materials are fully owned by one of the
collaborators. Sometimes items listed in the list of materials have IP rights associated
with them; sometimes they do not.
 In truly collaborative research, the list of materials may have to be amended on a regular
basis. This will require the agreement to be amended easily (as noted above). A well-
written collaborative research agreement, the list of materials will dynamically respond to
the emerging needs.
License Agreements :
A licensing agreement is a written contract between two parties, in which a property owner
permits another party to use that property under a specific set of parameters. A licensing
agreement or license agreement typically involves a licensor and a licensee.
Licensing agreements delineate the terms under which one party may use property owned by
another party. While the properties in question can include a myriad of items, including real
estate holdings and personal possessions, licensing agreements are most often used for
intellectual property, such as patents and trademarks, as well as copyrights for written materials
and visual art.
In addition to detailing all parties involved, licensing agreements specify in granular detail, how
licensed parties may use properties, including the following parameters:
 The geographical regions within which the property may be utilized.
 The time period parties are allotted to use the property.
 The exclusivity or non-exclusivity of a given arrangement.
 Scaling terms, such that new royalty fees will be incurred if the property is reused a
certain number of times. For example, a book publisher may enter a licensing agreement
with another party to use a piece of artwork on the hardcover editions of a book, but not
on the covers of subsequent paperback issuances. The publisher may also be restricted
from using the artistic image in certain advertising campaigns.
Entering Into a Licensing Agreement
The bargaining power of the two parties involved in a licensing agreement often depends on the
nature of the product.
For example, a movie studio that licenses the likeness of a popular superhero to an action figure
manufacturer might have significant bargaining power in this negotiation, because the
manufacturer is likely to profit immensely from such an arrangement. The movie studio thus has
the leverage to take his business elsewhere if the manufacturer gets cold feet.

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Those entering into a licensing agreement should consult an attorney because there are
complexities that may be hard to grasp for those without a deep understanding of intellectual
property law.
Examples of Licensing Agreements
An example of a licensing agreement in the restaurant space would be when a McDonald's
franchisee has a licensing agreement with the McDonald's Corporation that lets them use the
company's branding and marketing materials. And toy manufacturers routinely sign licensing
agreements with movie studios, giving them the legal authority to produce action figures based
on popular likenesses of movie characters.