Access Benefit Sharing

Justice U.C. Dhyani of Uttarakhand High court passed a ruling deciding several writ petitions filed by various paper mill companies against notices issued against them by the Uttarakhand State Biodiversity Board (SBB).

The impugned notices were sent by SBB as it considered that the petitioners failed to provide prior intimation to SBB for obtaining biological resources for certain purposes as per sections 7 and 24 of the Biological Diversity Act, 2002.

Section 7 mandates prior intimation for obtaining biological resources for commercial utilization, bio-survey and bio-utilization for commercial utilization. Section 24 gives the SBB the power to restrict or prohibit any of the above activities should they be found to be detrimental. The Petitioners approached the writ court demanding several reliefs challenging SBB’s demand for information on access for material from other states being unconstitutional. The other pleas taken included:

    1. non- applicability of the Guidelines on Access to Biological Resources and Associated Knowledge and Benefit Sharing Regulations, 2014 to transactions between Indian entities;
    2. interpretation of the term “commercial utilization” as per s.2(f)- Petitioners argued that they belonged to an industry, which would not fall under ‘commercial utilization’ as defined in Section 2(f).;
    3. interpretation of the term “‘biological resource’ – Petitioners argued that waste paper is not a ‘biological resource’ as defined u/s.2(c);
    4. no restrictions/actions can be taken by the Board u/s. 24(1) in the absence of rules being framed u/s 63 and s.2(k) of the Act;
    5. reliance of the Board, in the impugned notices, on the act and guidelines issued by the Central government being unconstitutional.

Findings in the order:-

Preliminary objection on the maintainability of the writ petition u/s. 52A of the Act were raised by the SBB arguing that Section 52A allowed for an appeal to the NGT from an SBB or NBA order, which is where the grievance should have been filed.

Section 52 deals with an appeal to National green tribunal (NGT). Section 52A states that any person aggrieved by any determination of benefit sharing or order of the National Biodiversity Authority or a State Biodiversity Board under this Act, on or after the commencement of the National Green Tribunal Act, 2010, may file an appeal to the National Green Tribunal established under section 3 of the National Green Tribunal Act, 2010, in accordance with the provisions of that Act.

Petitioners counter argued that since no order was passed by the SBB u/s. 24(2) of the Act the matter was not cognizable by the NGT and the writ was maintainable. The Court by agreeing with the Petitioners arguments upheld the maintainability of the writ petitions.

The Court refraining from giving any opinion on the issue of whether ‘waste paper’ would be considered as biological resource or not, has ordered that the Petitioner is under liability and is bound to give desired information of access, which is an admitted position, within the territorial boundary of Uttarakhand to the SBB.

Further, the Court dealt with the issue of liability of petitioners of giving information to the SBB in the absence of any rules and prescribed form. The Court ruled that the Petitioners are bound by section 7 of the Act to give prior intimation of any access of biological recourse even in the absence of any prescribed form. Furthermore dealing with the modality of said information, where the SBB has not made any rules and have not provided forms, the Court held that it should be left to the discretion of the Petitioners to supply desired information in whatever form they like but with due regard to the provisions of the act.

The writ petitions were dismissed with the following directions:

  1. the Petitioners to provide information to Uttarakhand SBB in respect of biological resource obtained from Uttarakhand within four weeks;
  2. that Uttarakhand SBB not to compel the Petitioners to submit information from outside the territorial boundaries of the state; and
  3. no penal action to be prosecuted provided the Petitioners comply with this order.
Advertisements

NATIONAL BIODIVERSITY ACT: ISSUES AND RECOMMENDATIONS

An IP stakeholders meeting was held on 14th December 2016 at Udyog Bhawan, New Delhi.  Upon the request by the government, Anand and Anand made a short note with regard to the NBA related patent issues along with the recommendations. The note is being reproduced below for purpose of dissemination of information and awareness of issues in relation to NBA.

1. DELAY/90 DAYS WINDOW CRITICAL- COLLABORATION OF NBA AND PATENT OFFICE

LEGAL POSITION

Under Section 6 of the Biodiversity Act,2002 the NBA is required to dispose of an application for permission to apply and be granted an IP right within a period of 90 days from the date of receipt.

ISSUE

The NBA is taking close to 6 to 7 years to grant approval/ permission under Section 6 of the Bio Diversity Act, 2002.

RECOMMENDATION

  • Creation of IP cells: IP cells can be created within NBA, after discussion with the Ministry of Environment and Forest for scrutinizing and disposing of applications for permission under Section 6 of the BD Act.
  • Milestones with timelines can be put in place after due consultation with the NBA for the IP Cell to dispose of requests under Section 6 of the BD Act. The following timeline is recommended:

ADHERENCE TO 90 DAYS TIMELINE CRTICAL FOR AT LEAST THE FOLLOWING REASONS:

  • Section 6 prohibits anyone from making an application for patent outside India without NBA approval.
  • All Paris convention application/PCT applications are time sensitive and, therefore, filing of foreign applications/PCT application cannot be withheld indefinitely.
  • The first proviso to Section 6 states the following:

“Provided that if a person applies for a patent, permission of the National Biodiversity Authority may be obtained after the acceptance of the patent but before the sealing of the patent by the patent authority concerned”

Therefore if an applicant makes an application outside of India, the grant/rejection of his patent by a foreign patent office is not in their control and the applicant cannot be punished for delays with the approval authorities in India.

Proposed time for quick disposal of applications:

0 –DAY: Date of receipt of application

30th DAY: Issuance of formal objections

45th DAY: Terms of Agreement for Seeking IPR

60th DAY: Hearing

90th DAY: Disposal of Application

2. BD/PATENT LINKAGE

LEGAL POSITION

Under the Indian Patents Act, there is no concept of BD/Patent linkage.

ISSUES

Currently, the Indian patent office has not been granting and withholding the grant of patents solely based on the approval not having been obtained from NBA.

RECOMMENDATIONS

  • There is no provision under the Indian Patents Act for withholding the grant for patent subject to NBA approval.
  • Given the limited term of the patent, a patent should be granted if the applicant is able to produce his application for approval made under Section 6. In the event, the NBA approval is declined, the patent holder will not be able to commercialize his patent without penal consequences under the BD Act
  • There is already inbuilt mechanism within the Bio Diversity Act wherein a patent holder by merely seeking and obtaining a patent will not be able to commercialize his research/ invention till such time the patent holder has necessary approvals from the NBA.
  • This is akin to inventions in the field of pharmaceutical. While the applicant might be granted a patent under the Indian Patents Act, it does not give the applicant the right to commercialize the pharmaceutical drug till such time
  • Access; protection of IP rights and commercialization of IP are three different aspects and all cannot be clubbed together for seeking the registration of an invention by the patent office.
  • Therefore, noncompliance of Section 6 is an offence under the BD Act and not under the Indian Patents Act

3.SINGLE WINDOW CLEARANCE 

As of now there are at least three authorities with which an applicant for patent has to deal with:

  1. PATENT OFFICE for seeking registration of patent under the aegis of Ministry of Industry and Commerce;
  2. NBA permission for applying for IP under the aegis of Ministry of Environment And Forest, and
  3. DEPOSITORY INSTITUTES, for e.g NBPGR under the Ministry of Agriculture and Farmers Welfare

RECOMMENDATIONS

A single platform/ window clearance should be created at the macro level wherein of the three ministries streamline procedural issues solely for IP, so that the approval process become hassle free.

4. THE EXAMINATION OF PATENT APPLICATIONS RELATING TO VALUE ADDED PRODUCT/NTC (NORMALLY TRADED AS COMMODITIES)

ISSUE

  • Normally in a first examination report, the Controllers are unable to distinguish as whether the invention uses biological resource/value added product/NTC.
  • Section 6 of the BD Act applies only to biological resource and not to value added product or NTC.
  • Under Section 2(p) of the BD Act, value added products are exempt.
  • Section 40 of the BD Act also clearly states that the Central Government may by notification declare that the provisions of BD Act do not apply to any item including biological resources normally traded as commodity.
  • The Controllers while by way of abundant caution may raise an objection with regard to Section 6 of the BD Act, they need to waive of such an objection and proceed to grant a patent if the applicant gives a declaration or a statement to the effect that the invention does not use biological resources as defined under the BD Act but is for a value added product or NTC as defined under Section 40 of the BD Act.