Saturday, January 16, 2010

Climate Change: Technology Transfer or Compulsory License?

Climate Change: Technology Transfer or Compulsory License?
By: Lawrence A. Kogan, Esq.

President, Institute for Trade, Standards, and Sustainable Development (ITSSD)

Presented at

American National Standards Institute (ANSI) Monthly Caucus Luncheon

January 15, 2010

I. Introduction and Welcome

II. Overview of the Copenhagen Conference

A. Legal Objective:

B. Political Problems:

· Lack of Trust in GHG Emissions Reduction Verification

· Clean/Green Technology Patent/Trade Secret Protections at Risk

o Officials from China, India and Brazil have proposed that new green technologies be made subject to “compulsory licensing”, which is tantamount to waiving IPRs.

§ UNFCCC Arts. 4.3 and 4.5
§ WIPO General Assembly Cluster C “Technology Transfer, Information and Communication Technologies and Access to Knowledge”

C. Non-Legal Result/Outcome: A limited and nonbinding instrument known as the “Copenhagen Accord”.

· Flaws in the UN process, which demands consensus among the members of the international community, were exposed at Copenhagen and caused chaos.

o E-10 group of countries – largest GHG emitters would include: the United States, the European Union, China, Russia, India, Japan, Canada, South Africa, Australia, and Brazil.

III. Top-Down Proposed International Solutions to the Broader Problem that Threaten to Adversely Reform International Regulation of IPRs:

A. Creation and execution of a Doha Declaration on Climate Change:

B. Creation of Multilateral and/or Intergovernmental Funds:

· Fund grants would be subject to “Global Access Principles”, which would set forth rules for the international management of IPRs.

· Funds would create an additional UNFCCC bureaucracy and outside ‘expert’ committees.

C. Proposals Made Within the WIPO Standing Committee on the Law of Patents:

· SCP/14/4 pars. 86-87; 122-123.

· SCP/13/3 at par. 142.

· SCP/13/3 at pars. 13, 46, 91-93 and 141-142; SCP/13/2 at pars. 141-142.

· Mandatory ‘open’ ‘royalty-free’ patent-rich standards coupled with Patent Pools and/or Licenses of Right are favored solutions.


D. Top-Down Patent and Standardization Proposals Made by the Chinese Government at the National Level with International Consequences:

· China 2005 proposal to WTO Technical Barriers to Trade (TBT) Committee G/TBT/W/251, G/TBT/W/251 Add.1. (2005)).

· The Standardization Administration of China (“SAC”)’s recently drafted Proposed Regulations for the Administration of the Formulation and Revision of Patent-Involving National Standards, mandate free-of-charge or FRAND at a price significantly lower than normally royalties patent licensing. Articles 8, 9, 12 and 13.

§ This will have a severe impact on US clean/green technologies.

§ “Only one of the top ten solar photovoltaic (PV) producers in the world is American; only one of the top ten wind turbine producers is American; and only two of the top ten advanced battery producers are from the U.S.

IV. Is There Still a Sufficient Incentive to Innovate in Clean/Green Technologies After Copenhagen and With China in Mind?

· IPRs patents and trade secrets subject to reverse-engineering.

· Costs of compliance will increase to reach GHG reduction targets and reduce job creation.

V. US Domestic Considerations

A. Top-Down Proposed US National Solutions:

· Condition federally funded government patent grants to universities and private parties on the licensee’s exhaustion of the patent on compliance with ‘humanitarian licensing clauses’. (e.g., US NIH)

· Reform Bayh-Dole legislation

B. Bottom-Up University Alternative Licensing Solutions:

· Some US universities have begun to change their licensing practices to incorporate ‘humanitarian’ or ‘open licensing’ policies.

o Humanitarian

o Open Licensing

§ Equitable Access Licensing Clauses

§ Reach-Through Licensing Clauses

VI. Which do you prefer: Tech Transfer or Compulsory License?

A full version of this presentation is accessible online via the website at:

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