defining an intellectual property policy for inera burkina faso

Intellectual Property Management for Agriculture and Environment Research in Developing Country:

Defining an Intellectual Property Policy for INERA

A Case Study

Under INERA, Burkina Faso -CAS-IP NPI Collaboration Project

KABORE SAWADOGO Séraphine Senior Scientist

INERA

Email: [email protected]

INSTITUT DE L'ENVIRONNEMENT ET DE RECHERCHES AGRICO LES (IN.E.R.A.) 04 BP 8645 OUAGADOUGOU 04

TEL: 50 34-40-12/ 50 34-02-70 FAX: 50 34-02-71

Email: [email protected] Site web : http : //www.inera.bf

Defining an Intellectual Property Policy for INERA, Burkina Faso 1

CONTENTS ACRONYMS ......................................................................................................................... 2 EXECUTIVE SUMMARY ....................................................................................................... 4 CONTEXT AND BACKGROUND .......................................................................................... 5 I INTRODUCTION ......................................................................................................... 6 II OBJECTIVES OF THE STUDY ................................................................................... 7 III METHODOLOGY ........................................................................................................ 7 3.1 Documentation on Intellectual Property in Agricultural and Environmental Research .. 7 3.2 Sensitization of INERA’s scientists on intellectual property at central and regional level. 7 3.3 Writing and submitting a draft document for INERA IP policy (DPPI) ........................... 7 3.4 Holding the Workshop on intellectual property policy of INERA and finalizing the IP

Policy document ........................................................................................................... 8 3.5 Evaluating the IP potential of INERA ........................................................................... 8 IV RESULTS AND DISCUSSIONS ................................................................................. 8 4.1 Burkina Faso regulations in relation to agricultural and intellectual property ................ 8 4.2 Appropriation of intellectual property issues by INERA scientists................................. 9 4.3 INERA Intellectual Property Policy............................................................................... 9 4.4 The INERA IP assets evaluation.................................................................................10 V DIFFICULTIES AND CHALLENGES ENCOUNTERED DU RING THE STUDY .........10 5.1 Getting researchers understand the subject due to low capacity in legislation issues. 10 5.2 Researchers interest in IP ..........................................................................................10 5.3 Contributing to the IP Policy document elaboration.....................................................10 5.4 Ignorance about laws and regulations governing intellectual property in the field of

agricultural research....................................................................................................11 VI CONCLUSIONS / LESSONS LEARNT .......................................................................11 VII ACKNOWLEDGMENTS .............................................................................................12 Appendix 1 Letter from INERA Director to INERA departments..........................................13 Appendix 2 Letter from INERA Director to INERA regional centers ....................................14 Appendix 3 Letter from INERA Director to BBDA general director ......................................15 Appendix 4 Invention Disclosure Form ...............................................................................16 Appendix 5 Workshop report on the validation of the INERA intellectual property policy ...19 Appendix 5.1 Workshop attendance .................................................................................21 Appendix 5.2 Workshop agenda........................................................................................22 Appendix 6 INERA IP policy ...........................................................................................23


ACRONYMS

APC Afric-Propi-Conseils

BBDA Bureau Burkinabé des Droits d’Auteur

CAS IP Central Advisory Service on Intellectual Property

CGIAR Groupes Consultatifs pour la Recherche Agricole Internationale

CNRST Centre National de Recherche Scientifique et Technologique

CORAF Conseil Ouest et Centre Africain pour la Recherche et le Développement Agricoles

CPF Confédération des Producteurs du Faso

CREAF Centre de Recherches Environnementale et Agricole et de Formation

CRREA Centre Régionale de recherches Environnementale et Agricole

DAP Direction Adjointe chargée des Programmes

DGPA Direction Générale des Productions Animales

DGPV Direction Générale des Productions Végétales

DNPI Direction Nationale de la Propriété Industrielle

DPA Département des Productions Animales

DPF Département des Productions Forestières

DPI Droit de Propriété Intellectuelle

DPPPI Document Provisoire de Politique de Propriété Intellectuelle

DPV Département des Productions Végétales

FARA Forum pour la Recherche agricole en Afrique

GRN/SP Gestion des Ressources Naturelles et Systèmes de Production

IDR Institut du Développement Rural

INERA Institut de l’Environnement et de Recherches Agricoles

IP Intellectual Property

IRSAT/DE Institut de recherche en sciences appliquées et technologies

MAHRH Ministère de l’Agriculture, de l’Hydraulique et des Ressources Halieutiques

MARDI Malaysian Research and Development Institute

MCPEA Ministère du Commerce

MRA Ministère des Ressources Animales

NEPAD Nouveau Partenariat Pour l’Afrique

NPI National Partners Initiative

AIPO African Organisation for Intellectual Property

GMO Genetic Modified Organism


IP Intellectual Property

Prog Mong Programme Monogastrique

SDRH Service des Ressources Humaines

SEP Service Etudes et Projets

SISTC Service de l’Information Scientifique, Technique et de la Communication

SLRD Service de Liaison Recherche Développement

WARDA Africa Rice Center

WECARD West and Central African Council for Agricultural Research and Development


EXECUTIVE SUMMARY

Promoting the results of research is of great importance both to ensure continuous development and application of scientific discoveries and technological improvements, as well as to serve as a means to recognise the respective contribution and rights of lead scientists, partners and institutions through the grant of intellectual property rights. In this paper, we will attempt to demonstrate a methodology for creating awareness in IP management and implementing an IP policy for the Institute of Environment and Agricultural Research (INERA), a national research institute in Burkina Faso. As a public entity, INERA has the mandate to ensure the formulation, implementation and coordination of environmental and agricultural research in Burkina Faso. INERA has produced many scientific results and innovations that are placed in the public domain which are promoted essentially through direct exploitation by producers and scientists, and the publication of scientific papers. The present paper emphasizes the need to sensitise and increase the awareness of scientists in IP issues to encourage their participation in IP policy implementation and assets evaluation. Difficulties encountered during the study include lack of awareness of IP issues and low understanding of IP-related legislations. The paper further recommends an implementation of a general IP policy in research at national and regional level in the framework of CORAF/WECARD. Sensitisation through workshops and meetings is essential to increase awareness of scientists and the various actors involved in the promotion of research results.


CONTEXT AND BACKGROUND

Development and application of science and technology in the last decades is increasingly progressing in the developed world with vast possibilities for addressing the challenges of hunger and food security, epidemic and other diseases, environmental challenges as well as human development generally. However, this progress has not necessarily translated into better living conditions for the majority of the people in the South.

Benefiting from the advances in science and technology to generate new knowledge and technologies in accordance with the developmental needs for securing a better life for people remains a challenge for developing countries. This is becoming more challenging with the expansion of intellectual property rights (IPRs) castrating with the funding issues by the public sector. Indeed, funding is one of the major constraints for research in Burkina Faso. Since the end of the World Bank funding for the implementation of the National Programme for Agricultural Services Development, the contribution of the Government in the funding of agricultural research goes only to maintenance costs, functioning costs and salaries. Today, the research activities and results depend exclusively on grants by external partners on the basis of protocols or contracts agreement meeting their specific and targeted objectives in the promotion of the research results.

The Institute of Environment and Agricultural Research (INERA) is one of the four Research Institutes of the National Centre for Scientific and Technological Research (CNRST). INERA is the specialized public entity and officially mandated to ensure the formulation, the implementation and the coordination of environmental and agricultural research in Burkina Faso. Since its creation in 1978, INERA has produced results and innovations based mainly on the living and inert materials. These results are essentially promoted through direct exploitation by producers and scientists in public domain and the production of scientific papers. In general, there has been a very weak promotion of intellectual property in Burkina Faso research reducing the real recognition of the respective rights for scientists, partners and institutions. Indeed, like most national research institutes in developing countries, INERA does not have a specific policy regarding intellectual property. Protocols or contracts agreement with partners are evaluated by the project management office namely the "Service Etudes et Projets" (SEP). SEP staff is made of scientists with no expertise in laws although its mandate is to study deeply all terms of the protocols including the IP issues in order to guide the INERA Director in his responsibility when signing those protocols. Thus, strengthening and building SEP capacity in legislation with regard to IPR management are important and needed.


I - INTRODUCTION

Organizing and strengthening the promotion of research activities in research institutions are becoming essential and strategic. Indeed, we live in a world dominated by knowledge in a highly competitive environment. Moreover, genetic diversity, GMO and biotechnology development and the assistance to development have highlighted the problems related to the ownership of the results of publicly funded research on one hand, and the relationships between public research and the private sector on the other hand.

The Environmental and Agricultural Research Institute (INERA) has the mandate to conduct research in the fields of agriculture and environment with the vision of being a center of excellence for environmental and agricultural research in Burkina Faso. Like all national research centers in developing countries, INERA faces the issue of finding a balance between the free dissemination of its knowledge generated from research and the protection of the results.

Good knowledge and management on issues related to research results including intellectual property is a guarantee of success in the process of results promotion.

The Consultative Group on International Agricultural Research (CGIAR) is a network of independent institutions working in the field of agricultural research. The CGIAR mission consists “of achieving sustainable food security and reducing poverty in developing countries through scientific research and research-related activities in the fields of agriculture, forestry, fisheries, policy, and environment” ((http://www.cas-ip.org/). Thus giving access to research results to benefit poor farmers is a big issue for CGIAR.

The Central Advisory Service on Intellectual Property (CAS-IP) aims to assist the CGIAR, partners and the CGIAR system in an understandable approach for managing assets of an intellectual center as public goods (http://www.cas-ip.org/). Indeed, the primary focus of CAS-IP is to address Intellectual Property Management issues that impact on the accessibility of CGIAR centre’s public goods to intended beneficiaries. Indeed, CAS-IP helps the CGIAR by providing legal information to the CGIAR that can benefit poor farmers in developing countries.

To achieve this, CAS IP has established since May 2007 a network of members called National Patners Initiatiave (NPI) covering 4 continents (America, Europe, Africa and Asia). INERA is a NPI member.

In the framework of this initiative, CAS IP provides close support for building capacity and facilitating exchange of experiences between CGIAR centers and National Agriculture Research Systems (NARS). Grants are provided annually on the basis of competition to help members address specific issues of their institutions in the field of intellectual property.

In December 2008 INERA was granted an award from CAS IP for a case study addressing the issue of intellectual property management. The case study aims to develop INERA intellectual property policy while seeking a balance between free dissemination of generated knowledge and the protection of research results.

The study was conducted with the support of the Burkina Faso Copyright Office (BBDA) whose experience in the protection of copyright was capitalized and contributed to writing the final document regarding the INERA intellectual property (IP) policy.

This report is structured as follows:

Study Objectives; Methodology for developing INERA IP policy, The INERA IP policy; Difficulties and challenges encountered during the study; Conclusion / lessons learnt;


Acknowledgments.

II - OBJECTIVES OF THE STUDY

The overall objective of the case study is to contribute to the improvement of agricultural research, technological development and innovation in Burkina Faso. Specifically, the study aimed at improving information on intellectual property in the field of agricultural research.

Four results were expected from this study: 1. The definition of policy and regulations to address the IP issues in agricultural research at

national level; 2. The identification of intellectual assets for IP protection for INERA; 3. The organisation of an IP forum to facilitate communication on IP related issues between

IP practitioners in Burkina Faso; 4. The improvement of Burkina Faso IP practitioner’s capacities.

III - METHODOLOGY

The study was conducted by the SEP (Projects and Studies Service) of INERA headquarters assisted by BBDA (Burkina Faso Copyrights Office) and using the methodology as described in the proposal:

Literature review on intellectual property in agricultural and environmental research; Sensitizing INERA scientists on intellectual property at central and regional levels; Writing and submitting a form on INERA IP assets evaluation for INERA scientists; Writing a draft document on IP policy and regulations; Sharing the draft document on INERA IP policy and regulations with all INERA regional

research centres (Kamboinsé, Farako-ba, Saria, Kouaré, Katchari and Di) through meetings and discussions ;

Adopting an Agricultural Research IP Policy for Burkina Faso through a workshop on INERA Intellectual Property Policy;

Finalizing the document and reporting the Case study Results to CAS IP manager.

3.1 Documentation on Intellectual Property in Agric ultural and Environmental Research

The documentation was mainly based on the results of IP policy developed by other members of the National Partners Initiative (NPI) including the IP policy of MARDI, MOI University, etc. Documentation available on the internet was also used.

At the level of Burkina Faso, existing laws related to intellectual property in agriculture and AIPO laws were considered.

3.2 Sensitization of INERA’s scientists on intellec tual property at central and regional level

The sensitizing of INERA’s scientists and raising awareness on IP were conducted at two levels:

1. At INERA headquarters, it consisted of exchanges with the Director, the deputy Director and the executive staff in formal meetings (board, committee management);

2. At the regional research centres, meetings with scientists were held during the SEP staff field trips.

3.3. Writing and submitting a draft document for IN ERA IP policy (DPPI)

The first draft of INERA IP policy was written by the SEP team. This draft was then submitted to BBDA and WARDA for review. Working sessions with BBDA were organized in Ouagadougou resulting in an improved draft document named the draft document on INERA IP policy (DPPI). This DPPI was then sent to most of the INERA scientists for review and observation/ amendment.


SEP organized field trips in the five regional centres of INERA in order to discuss the content of the DPPI and to collect new inputs for the improvement of the document.

3.4 Holding the Workshop on intellectual property p olicy of INERA and finalizing the IP Policy document

The INERA IP Policy workshop was organized by SEP according to the following steps: (i) identifying the main stakeholders and defining significant topics related to intellectual property in agricultural research; (ii) identifying key persons for the workshop, (iii) writing and submitting invitation letters at the signature of the Director of INERA (iv) sending invitation letters to all participants (Appendix 1, 2 and 3) (v) holding the workshop. The INERA IP policy document was finalized by a committee designated by the workshop participants. The committee consisted of SEP DNPI, BBDA and APC firm and was given the mandate to analyse all inputs from the workshop outputs and to finalize the document. The working approach was based on exchange of mails followed by a working meeting for contributions analysis and their integration in the final the document.

3.5 Evaluating the IP potential of INERA

With the support of BBDA, SEP adapted a form namely the “Invention Disclosure Form” (Appendix 4) for the evaluation of INERA IP assets of. The form was sent to all regional research centres for completion. Filling instructions were provided by mail, by telephone and also in situ during SEP field trips.

IV - RESULTS AND DISCUSSIONS

4.1 Burkina Faso regulations in relation to agricu ltural and intellectual property

The main law related to IP on agriculture especially in the field of variety creation is the LAW N ° 010-2006/AN of March 31, 2006 regulating plant seeds in BURKINA FASO. This law regulates all activities relating to plant seeds (agriculture and forestry) in Burkina Faso (Art 1 and 2): plant seeds (farm seed and forest reproductive material); varieties , improved varieties , local varieties , strain seeds, pre-basic seeds, foundation seeds, forest basic material, certified seeds (Art.5). It defines the conditions for management and protection for plant varieties. It also specifies the role deserved to research institutes (Art. 6).

Regarding plant variety rights, the law states that “any breeder who creates a new variety is eligible for plant variety right in accordance with the legislation. No new variety may be protected by a patent. (Art. 11). Furthermore, it clarifies the role of the State regarding the preservation of traditional genetic plant resources as national heritage in the perspective of conserving biodiversity and protecting the interests of local people (Art 13). The conditions of their use and management are defined in Art 14 and 15.

In other words, this law aims to create conditions in promoting seeds quality and productivity as well as in marketing and seeds utilisation for national goals regarding agriculture modernization, forestry development and food security.

This law is consistent with the Agreement revising the Bangui Agreement of 02nd March 1977 establishing the African Intellectual Property Organization (AIPO) and ratified by Burkina Faso in [?]. Therefore, any IP protection and regulation should be under this law.

Intellectual creations are regulated by Law No. 032-99/AN, 22nd December 1999 on protection of literacy and artistic property . This law protects intellectual works that are original intellectual creations in the literacy and artistic domains. It applies to works of citizens of Burkina Faso, audiovisual works, published works and architectural works.


Application of this law is stated by decrees and orders: (i) Decree No. 2000 573/PRES/PM/MAC/MCPEA / MJPDH on pricing right on graphics and plastics works,, (ii) Order No. 01-053/MAC/SG/BBDA – 20th March, 2000 on the regulation of fee collection and (iii) Order 01-054 / MAC / SG / BBDA F- 20th March, 2000 on the regulation of distribution rights.

4.2 Appropriation of intellectual property issues b y INERA scientists

Discussions and exchange in formal and informal meetings raised the question of intellectual property in agricultural research for INERA (Table 1). These questions, widely discussed during the workshop are related to:

- The protection of scientific publications, theses, technical reports and related IPRs; - The opportunity for INERA scientists and breeders to commercialize varieties outside the legal

framework; - IPRs issues regarding animal production, mapping and socio-economics; - The royalties sharing ; - The research results quality assessment and assets evaluation for protection; - Certificate of plant variety protection (VOCs) and AIPO; - Law and regulations on seeds in Burkina Faso.

Table 1: Sensitization meetings on INERA IP Date Venue Audience

5/ 12 / 2008 INERA Board meeting - Ouagadougou

Director of INERA, Deputy Director in charge of Programmes ; Heads of Central Services centraux and related

15/06/2009 INERA Executive committee

meeting - Ouagadougou INERA, Director Deputy director, Heads of central services and related Heads of departments Head of CREAF Regional Directors of Agricultural and Environmental Research Program Managers

18-21/06/09 Farakoba/ Bobo Dioulasso CRREA - West scientists 29 /06/ 2009 Saria CRREA – Centre Scientists 23/06/09 Fada N’Gourma CRREA – Est Scientists 25-26/06/09 Dori CRREA – Sahel Scientists 02-03/07/09 DI CRREA – North Scientists 11 Août 2009 Kamboinse CREAF Scientists 11 Août 2009 Ouagadougou INERA (Headquaters, Departements, Regional

Research Centres, ), IRSAT, IDR, MAHRH, Animal Ressources Ministry, Environment and Life Framework Ministry, Burkina Faso Industrial Property managers (DNPI BBDA, Cabinet Afric Propi Conseil) Burkina Faso Farmers Confederation (CPF)

4.3 INERA Intellectual Property Policy

Participants at the INERA IP Policy workshop amended the draft document prepared by the SEP with the support of BBDA. Indeed, they contributed in improving the DPPI: restructuring the document, including specific aspects such as institutional and legal framework. Appendix 5 shows the workshop report while appendix 6 presents the INERA IP policy final document.


The INERA IP Policy consists in the following points: - Background and current situation, - The institutional and legal framework, - Guidelines, - Fields of application, - Rights and obligations with respect to IP, - Intellectual property rights, - Disclosure and publication of results, - Confidentiality, - Revenue sharing, - The implementation of the INERA IP policy, - The definition of terms/Glossary.

4.4 The INERA IP assets evaluation

Intellectual Valuation of Intellectual Property Assets (IPAs) from R&D is central in providing incentives for innovation. While it offers Research and Technology institutions or organisations exclusive marketing rights to exploit their inventions commercially, it is imperative to evaluate their values to appropriate the economic benefits of IPAs. INERA IPA evaluation conducted in this study shows a general lack of awareness and understanding from scientists themselves which affected the overall process. This situation explains the non promotion of many results from INERA research notably the ones concerning breeding and natural resources management techniques. Anyway, discussions and exchanges created awareness and raised more interest for research results promotion and enhancement through IP protection.

V DIFFICULTIES AND CHALLENGES ENCOUNTERED DURING TH E STUDY

During this case study, five main challenges and difficulties were encountered.

5.1 Getting researchers understand the subject due to low capacity in legislation issues. When one speaks about IP, the first understanding is its relation to law. Thus, being agricultural researcher, one could doubt on its capacity in managing with laws. Indeed, INERA scientist’s background doesn’t include training in law. In most universities, academic courses do not specifically include legal aspects. This low capacity of scientists in legislation issues made more difficult the understanding of the issue. For many of them, it was the first time they were earring about IP.

5.2 Researchers interest in IP

Raising awareness on IP does not necessarily means ensuring interest. Workshops and discussions did not automatically create big interest for many researchers. Many researchers did not pursue how their findings could be concerned by IP. Plant breeders were highly interested on IP while Animal production specialists could not understand how they could be involved in the process of IP management. Indeed, those who did not pursue their own interest were not available for discussions with SEP staff during the regional meetings.

The lack of interest is also due to the lack of incentives for promotion in the field of research which is based on number of publications and not on patentable products. In addition, most scientists being civil servants or government contractors workers, promoting research results is seen as a government duty. Therefore, researchers do not see the need to invest themselves in IP management. In general, researchers have no entrepreneurial or managerial skills for IP management

5.3 Contributing to the IP Policy document elabor ation

As a consequence of the non–familiarity with IP issues, many of INERA scientists were not available to contribute in the elaboration of the IP policy draft. Their schedule was often very restrictive due to their involvement in several protocols that are considered to be a priority. In fact, because of the very


low financial support by the Government to research, INERA scientists are rather involved in calls for proposals in the framework of collaborative research with external partners.

In addition, INERA IP assets evaluation failed. The main reasons explaining this situation is the lack of interest and understanding. Breeders were not convinced about the possibility to protect formal.

5.4 Ignorance about laws and regulations governin g intellectual property in the field of agricultural research

Many scientists know very little about the national law on copyright, seeds and the AIPO arrangements/ measures concerning plants varieties, limiting thereby their interest in IP. Indeed scientists, specifically breeders are not well informed on IP protection. For most of them, it was the first time they were really dealing with this issue.

5.5 Unavailability of resource persons for the IN ERA IP assets evaluation

SEP is in charge of this issue within INERA, but it lacks in adequate qualified personnel in this field especially.

Nevertheless, the personal implication of the Director of the Institute and the perseverance of the SEP allowed taking this study to an end. All the statutory meetings or working meetings with the scientists were used as opportunities for sensitization. The staff of the SEP went around all the research centers to inform the scientists and discuss with them about the need for their support; it’s a fact that it was necessary to make them understand that this study is not the SEP’s project but a project in the interest of the Institute and the scientists. We also obtain from BBDA a promise to help with the IP inventory. Using internet especially the CAS IP web site was very helpful to get information on IP management.

VI – CONCLUSIONS / LESSONS LEARNT

Results from this study showed the importance of results promotion in agricultural research in Burkina Faso. Moreover, this study has, in the end, provided a sustained awareness of INERA scientists and their local partners (producers and extension services) on the issue of intellectual property. Despite the difficulties encountered in understanding the subject, the different actors showed a particular interest in IP management for research results and innovation. The issue interested not only researchers but also development actors showed a particular interest.

It can be said that the study has achieved its goal. Indeed, a procedure in collaboration with CIRAD has started to protect two sorghum varieties. Discussions are also underway to extend protection to other crops such as maize and groundnuts.

From questions raised by stakeholders during the INERA IP Policy validation workshop, the following recommendations are made:

- Organization of workshops on intellectual property and related legislation in Burkina Faso. These workshops should bring together on one hand INERA and IRSAT scientists, and on the other hand stakeholders from development institutions and NGO actors which must also be aware of the national regulations on IP including those related to seeds and plant varieties;

- Further study to effectively assess the potential of INERA in term of protection and promotion of its research results;

- Strengthening the SEP staff including a lawyer for activities relating to IP. Sensitisation should be done continuously to keep scientist and actors awareness.

In general, the implementation of this study helps understanding the reasons for the very low consideration of intellectual property in internal or partnership research proposals. The main reason was the lack of awareness in IP issues due to lack of information and training. The power of information was confirmed all along the study as many scientists ended understanding the necessity for protecting some of their results. Indeed, information and exchanges on IP can make a big difference.


The case study also created a big interest for the whole CNRST which is in the process of defining a general IP policy regarding research and technology in Burkina Faso. INERA IP policy may serve as a basis for the general IP policy definition for the research in the country.

At a regional level, especially for West Africa French speaking countries, CORAF/WECARD may lead IP issues awareness creation in the region in collaboration with FARA and NEPAD. Regional workshop may help and contribute to strengthen scientist’s knowledge and interest in IP issues. This is now becoming a big issue especially with the development of biotechnology in agriculture which is raising more and more the biosafety issues. Agricultural research results promotion is needed to ensure sustainable development in general. For the particular issue of IP, scientists and their partners (producers and extension services, regional partners, funding partners) should be continually aware on the necessity to promote creation and innovation through formal recognition and incentive.

VII - ACKNOWLEDGMENTS

On behalf of INERA, I would like to express my gratitude to CAS-IP for making possible the case study. The gratitude is not only for funding the study but also for accepting INERA, a French speaking Institute, to take part to this important initiative on the Intellectual Property in Agricultural Research. Special thanks to Dr Victoria Henson-Appolonio (CAS-IP-Italy), Karine Malgrand (NPI-France) who supported and encouraged me during the implementation of the study. I also want to thank BBDA, the DNPI and APC for advising and supporting SEP during the DPPDI development and also for the facilitation during the validation workshop and the final document writing. Any omissions and errors remain the authors’ own.

The individual case studies and the compilation are licensed under the Creative Commons Attribution-Noncommercial-Share Alike 3.0 Unported License. To view a copy of this license, visit http://creativecommons.org/licenses/by-nc-sa/3.0 or send a letter to Creative Commons, 171 Second Street, Suite 300, San Francisco, California, 94105, USA.

Recommended citation: Kabore Sawadogo Seraphine. 2010. Defining an Intellectual Property Policy for INERA, Burkina Faso. In: CAS-IP NPI. 2010. Institutionalization of Intellectual Property Management: Case Studies from five Agricultural Research Institutions in Developing Countries. CAS-IP, Rome, Italy.

Appendix 1


APPENDIX 1: LETTER FROM INERA DIRECTOR TO INERA DEP ARTMENTS

Appendix 2


APPENDIX 2: LETTER FROM INERA DIRECTOR TO INERA REG IONAL CENTERS

Appendix 3


APPENDIX 3: LETTER FROM INERA DIRECTOR TO BBDA GENE RAL DIRECTOR

Appendix 4


APPENDIX 4 : Invention Disclosure Form

INVENTOR INFORMATION:

CONFITENTIAL 1. Primary INERA Contact for this Invention: _______________________________________

Inventor#1: Signature ______________________________ Date ___________________________________ Printed Name in Full (Dr./Mr./Ms.) ___________________________________________________ Citizenship: _____________________ Gender: __________________________________ Home Address: __________________________________________________________________ _______________________________________________________________________________ Official Title/Position: ______________________________________________________________ Business Address: ________________________________________________________________ Direct Telephone : __________________ Div./Dept. Telephone: _____________________ E-Mail Address:________________________________ Additional Inventor (#2): Signature ______________________________ Date ____________________________________ Printed Name in Full (Dr./Mr./Ms.): _________________________________________ Citizenship: __________________________ Gender: ____________________________________ Home Address: ___________________________________________________________________ ________________________________________________________________________________ Official Title/Position: _______________________________________________________________ Business Address: _________________________________________________________________ Direct Telephone : __________________ Div./Dept. Telephone: ______________________ E-Mail Address: ______________________ Additional Inventor (#3): Signature ______________________________ Date ____________________________________ Printed Name in Full (Dr./Mr./Ms.) ____________________________________________________ Citizenship: __________________ Gender: ____________________________________________ Home Address: ___________________________________________________________________ ________________________________________________________________________________ Official Title/Position: ______________________________________________________________ Business Address: ________________________________________________________________ Direct Telephone : __________________ Div./Dept. Telephone: _____________________ E-Mail Address: ______________________ Additional Inventor (#4): Signature ______________________________ Date ____________________________________ Printed Name in Full (Dr./Mr./Ms.) ____________________________________________________ Citizenship: __________________ Gender: ___________________ Homeaddress:____________________________________________________________________ Official Title/Position: ______________________________________________________________ Business Address: ________________________________________________________________ Direct Telephone : ________ Div./Dept. Telephone: _____E-Mail Address: ___________________

Appendix 4


2. DESCRIPTION OF TECHNOLOGY AND SUGGESTED SCOPE Title of Invention: How would you characterize the stage of this technology? (Check appropriate box): Concept Reduced to ice Working Prototype Description of Invention: Description should include: 1) a problem, 2) how your invention solves this problem, 3) the conceptual idea of the invention, 4) how to make and use the invention, 5) specific examples, if appropriate. ___________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________________ 3. BACKGROUND “STATE-OF-THE-ART” INFORMATION: Please list references that would be helpful in understanding the context of this invention including articles that give background information, information regarding competing technologies, and indications of technical problems that exist in this area 4. NOVEL FEATURES: (Please attach a detailed description, if necessary, for clarity.) Specify the novel or new features of your invention. ____________________________________ ______________________________________________________________________________ What is the problem your invention seeks to solve? ____________________________________ ___________________________________________________________________________ Are there other solutions to this problem? Who are some other organizations involved in this area? : ______________________________________________________________________________ ______________________________________________________________________________ How does your invention different from these other solutions? _____________________________ ______________________________________________________________________________ 5. DATE OF INVENTION AND FUNDING SOURCE FOR WORK: What is the date when this invention was first conceived? ___________________________________ What was your funding source when this invention was conceived? _____________________________ (This date should be documented in your laboratory notebook. Please give the reference numbers and the physical location of these lab records.)____________________________ __________ Did you continue to work on your concept without interruption._____________________ What is the date when this invention was first reduced-to-ice? __________________ What was the source of funding for work involved in the reduction-to-ice?___________ _____ What are and where is this evidence of this reduction-to-ice? __________________________ 6. FUTURE PLANS REGARDING YOUR INVENTION: Is additional research required to complete testing and development of your invention? If yes, is this research being actively pursued? What is the funding source? 7. POTENTIAL COLLABORATORS FOR YOUR INVENTION: List commercial organizations or others that might be interested in your invention:

8. PUBLIC DISCLOSURE OF YOUR INVENTION: Please give the date, place and circumstances of any disclosure of your invention: Please give the date, place and circumstance you anticipate you will publicly disclose your invention: List individuals, not employees of INERA, to whom you have disclosed information regarding this invention: 9. RESEARCH SUPPORT:

Appendix 4


Please check of the appropriate boxes below to indicate research support. In the space below the boxes, please indicate relative percentage (%) of contribution from each sponsor. INERA unrestricted funding Other public organization funding Private funding In-kind support INERA time, facilities, or materials

10. INERA ADMINISTRATIVE REVIEW AND ACCEPTANCE OF THIS DISCLOSURE (For INERA Administrative use only.)

This invention disclosure has been reviewed, understood, and accepted on behalf of INERA by: _______________________________ _________________________________ _______________ Printed Name Signature Date

Appendix 5


APPENDIX 5: WORKSHOP REPORT ON THE VALIDATION OF TH E INERA INTELLECTUAL PROPERTY POLICY

On the 12th August 2009 was held in the conference room of the Environment and Agricultural Research Institute (INERA), the validation workshop on the intellectual property Policy Charter of the institute.

The workshop was attended by representatives of ministries responsible for environment, agriculture and livestock, as well as the others stakeholders in IP management for agriculture research : National Directorate of Industrial Property (DNPI), Burkina Faso Copyright Office (BBDA), Cabinet AFRIC PROPI - CONSEI (CPA), Rural Development Institute (IDR) from Bobo-Dioulasso University, Research Institute for Applied Sciences and Technology (IRSAT), Burkina Faso Farmers Confederation (CPF) and Scientists from all INERA scientific departments (appendix 5.1 ). The workshop was chaired by the Director of INERA and was attended by the Deputy Director (DAP). The agenda is given in appendix 5.2.

Opening Ceremony

In his opening speech, the DAP on behalf of the Director, welcomed the participants before giving the floor to him for opening the workshop.

After welcoming the participants to the validation workshop, the Director of INERA in his speech put emphasis on the current situation of research in Burkina Faso. He highlighted in particular the issue of funding and INERA dependency to external financial resources. Despite these difficulties, INERA has generated many results and got high reputation in the region. The director presented the background and the reasons that led INERA to develop a policy on intellectual property which is the subject of the present validation workshop. Before declaring the workshop opened, he invited the participants to make sure the document, from the outputs from this workshop, is the starting point of a new dynamism for greater ambitions for Burkina Faso environmental and agricultural research development and innovations.

The work of the workshop

Before starting the workshop itself, presentation of participants was done. The workshop took place in plenary in 2 phases.

The first phase was punctuated by three presentations chaired by the Director of INERA. The first is an introductory presentation made by the DNPI on "Intellectual Property in the agricultural and environmental research and technological innovations. He focused on some general intellectual property in conjunction with the Agricultural Research (definitions, types), then showed how INERA is affected by IP issues, as well as areas of likely PI’s interest.

The second presentation was given by a Breeder from INERA. The subject was about the issues relating to the use of scientific research and innovations in relation to IP. He gave some definitions like "Discovery / Discoverer", "Invention / Inventor," Innovation / Innovator". For him, the research results are mainly directly used by INERA itself, farmers and to some extent the agro-industry. This situation has to be improved. Thus, promotion of the research results should also include the IPR which is currently almost inexistent; reasons for situation being the lack of training and education in IP management, the weak private agricultural sector and poor farming systems based on small family farms.

The third presentation was given by the director of unique private office for IP management in Burkina Faso, namely the so called AFRIC-PROPI-CONSEILS (APC). The presentation focused on the role of a private agency in the process of protecting innovations from research results. He first presented the IP management as a new profession in Burkina Faso. He defined the IP manager according to AIPO (Art 2, 3 Is IP manager « any physical person or legal body authorized to act on behalf of another person or legal entity, in order to do transactions of industrial property with AIPO » (art 2 rules related

Appendix 5


to IP managers). Then, conditions to be an IP manager were given as well as the mandate of an IP manager in the process of research results protection.

Following these presentations, an overall synthesis was made by DAP before discussions took place with BBDA as moderator. The discussions focused on several aspects including:

- The correlation between DNPI and private consulting firm/ agency in the monitoring of IP rights (IPR);

- The profitability in research results protection; - The free dissemination of results and IP; - Costs of monitoring and maintenance of IPR; - The issue of already published results; - IP on animal species by analogy with IP on plant varieties.

The second phase of the workshop was the presentation of INERA policy document on intellectual property (DPPI) by SEP followed by discussions chaired by SEP and facilitated by BBDA. After deep discussions, participants reviewed deeply the document. A committee comprising DNPI, BBDA, APC, INERA Scientists and chaired by SEP was mandated to finalize the document using the right terminology.

The closing ceremony was chaired by the head of SEP. On behalf of INERA Director, DAP and INERA scientists, she thanked all partners for their support and hoping that this initiative may strengthen and enhance the INERA image for sustainable agricultural development in Burkina Faso. She also thanked the scientists and called for a greater involvement and consideration for IP issues related to research. Before closing the validation workshop on the INERA IP policy, she wished a safe journey back home to all participants.

Appendix 5


Appendix 5.1 - Workshop Attendance

N° NAME & SURNAME INSTITUTION E-MAIL PHONE 1 Zidouemba Honoré.

D DGPA/MRA [email protected] 70 73 74 64

2 Traoré Amadou DPA/INERA [email protected] 70 42 94 40 3 Taonda Sibiri Jean-

Baptiste INERA/LRD [email protected] 70 26 22 44

4 Ouédraogo Souleymane

GRN/SP-Ouest/Farako-Bâ

[email protected] 70 26 47 19

5 Bélem Mamounata CREAF/INERA [email protected]

6 Hien Mathieu AFRIC-PROPI-CONSEILS

[email protected] 50 43 66 21/70 24 42 48

7 Médah Philomène AFRIC-PROPI-CONSEILS

[email protected] 76 40 79 08

8 Diallo B. Ousmane DPF/INERA [email protected] 70 00 51 32 9 Nacro Hassan IDR/UPB [email protected] 70 24 78 25 10 Bayala Jules INERA/DPF [email protected] 70 32 38 59 11 Ouédraogo

Tinrmegson INERA/DPA [email protected] 70 26 08 98

12 Lamien Niéyidouba INERA/DPF [email protected] 70 31 90 20 13 Kiéma Raki DGPV/MAHRH [email protected] 70 38 88 44 14 Kafando Abdoulaye INERA/LRD [email protected] 70 27 11 39 15 Traoré Hamidou INERA/GRN/SP [email protected] 70 25 80 60 16 Sanfo R. Marcel INERA/SEP [email protected] 70 53 07 88 17 Barro/Kondombo

Clarisse INERA/DPV-CT [email protected] 70 34 89 69

18 Ouédraogo Oumar INERA-CRREA/Est [email protected] 70 26 07 63 19 GNANDA B. Isidore INERA-Kamboinsé [email protected] 70 28 11 18 20 Ouédraogo Mahama INERA-Kamboinsé [email protected]

m 70 25 58 17

21 Sanou Jacob INERA/Farako-Bâ [email protected] 70 28 37 97 22 Traoré Karim INERA/GRN/SP Ouest [email protected] 70 38 45 52 23 Dao / Sanon Solange BBDA/CAS [email protected] 50 30 22 23 /

76 63 42 05 24 Sawadogo/Kaboré

Séraphine INERA/SEP [email protected] 70 26 78 40

25 Konaté Gnissa D/INERA [email protected] 26 Lompo François DAP/INERA [email protected] 70 26 12 04 27 Bayala Etienne DNPI/MCPEA [email protected] 70 26 74 05 /50

30 09 41 28 Zerbo Mouctar INERA/Direction [email protected] 29 Bilgo Ablassé INERA/Kamboinsé [email protected] 70 24 70 91 30 Ouédraogo Omar CPF [email protected] 76 64 91 29 31 Traoré San INERA/SEP [email protected] 70 28 53 23 32 Palm Kalifa IRSAT/DE [email protected] 78 49 34 16

Appendix 5


Appendix 5.2 WORKSHOP AGENDA 8:30 to 8:45: Opening of the workshop by the Director of INERA 8:45 - 9 am: Introduction of participants 9am - 9:20 Intellectual property in agricultural research and technological innovations by

Ms DAO 9:20 to 9:40: Problem of optimization of the results of scientific research and technological

innovations in IP by Jacob Sanou 9H 40 - 10H: The role of agents in the process of protecting the results of research and

technological innovations 10:10 to 10:30 Coffee break 10:30 - 12H: discussions on the 3 presentations 12H-12h40: Introduction to the INERA PI by SEP 12:40 - 14 Lunch Break 14H-17.30: Discussion and validation of the INERA IP document 17H30 - 18H: Closure of the workshop

Appendix 6

Defining an Intellectual Property Policy for INERA, Burkina Faso

23

APPENDIX 6 : INERA IP POLICY

BURKINA FASO -----------------

MINISTRY OF SECONDARY EDUCATION, HIGHER EDUCATION AND OF SCIENTIFIC

RESEARCH UNITY - PROGRÈSS - JUSTICE ----------

NATIONAL CENTRE FOR SECIENTIFIC AND TECHNOLOGICAL RESEARCH

----------------- INSTITUTE OF ENVIRONMENT AND

AGRICULTURAL RESEARCH (IN.E.R.A.)

04 BP 8645 TEL : 50-34-40-12/ 50-34-02-7

FAX : 50-34-02-71 E.mail: [email protected]

Site web : http : //www.nera.bf

INTELLECTUAL PROPERTY POLICY

Dr SAWADOGO KABORE Séraphine DAO SANOU Solange TRAORE San

November 2009

Appendix 6


24

CONTENTS 1 – CONTEXT ....................................................................................................................................... 25

2 – INSTITUTIONAL AND LEGAL FRAMEWORK ............................................................................... 26

3 – GUIDING PRINCIPLES................................................................................................................... 26

4 – OBJECTIVE..................................................................................................................................... 27

5 – SCOPES.......................................................................................................................................... 28

6 – RIGHTS AND OBLIGATIONS WITH REGARD IP.......................................................................... 28

7 – OWNERSHIP OF INTELLECTUAL PROPERTY RIGHTS ............................................................. 30

8 – PUBLICATION AND DISCLOSURE OF RESULTS........................................................................ 31

Publication of results..................................................................................................................... 31

Disclosure of results...................................................................................................................... 31

9 - CONFIDENTIALITY ......................................................................................................................... 31

At the employee level ............................................................................................................................ 31

At the level of partners and third parties................................................................................................ 32

At the visitors level................................................................................................................................. 32

Confidential information pertaining to third parties ................................................................................ 32

10 – INCOME SHARING....................................................................................................................... 32

11 – IMPLEMENTATION OF THE INERA IP POLICY ......................................................................... 32

ACKNOWLEDGEMENTS...................................................................................................................... 33

APPENDIX : DEFINITION TERMS ....................................................................................................... 34

INTELLECTUAL PROPERTY ............................................................................................................... 34

Industrial property ......................................................................................................................... 34

Copyright and Ancillary Rights...................................................................................................... 35

New Plant Variety Certificates (NPVC)......................................................................................... 35

The know-how............................................................................................................................... 35

SCIENTIST........................................................................................................................................ 35

PARTNER.............................................................................................................................................. 35

INTERNAL, JOINT OR PARTNERSHIP RESEARCH .......................................................................... 36

AGREEMENT PROTOCOL / CONTRACT / SPECIFIC AGREEMENT................................................ 36

CONFIDENTIALITY............................................................................................................................... 36

Appendix 6


25

1 – CONTEXT The Institute of Environment and Agricultural Research (INERA) is the specialized public entity and officially mandated to ensure the formulation, the implementation and the coordination of environmental and agricultural research in Burkina Faso. INERA is one of the four Research Institutes of the National Centre for Scientific and Technological Research (CNRST).

Since its creation in 1978, INERA has produced many results. The results and innovations are based mainly on the living and inert materials. The living material encompasses : the released varieties, the strain varieties, the isolates, the baseline materials, the collections of variety from creation, the introduced varieties, the local varieties from prospecting, collections of parasitic plants, weeds, mushrooms, bacteria, the collections of insects, of viruses and strains (isolates) of phytopathogenic germs. The inert material covers tools, materials, objects; the products and immaterial results constituting data, knowledge, information and know-how : production and protection itineraries, the manufacturing processes, data and databases, research methodologies, etc. As for most of the developing countries, one of the major constraints for research in Burkina Faso is unquestionably that of its low level of funding by the public sector. Since the end of the World Bank funding for the implementation of the National Programme for Agricultural Services Development, the contribution of the Government in the funding of agricultural research goes only to maintenance costs, functioning costs and salaries. Today, the research activities and results depend almost exclusively on grants by external partners on the basis of protocols or contracts agreement meeting their specific and targeted objectives in the promotion of the research results.

In Burkina Faso, the promotion of research results is essentially done through direct exploitation by producers and scientists in public domain and the production of scientific papers. In fact, the Government is the first beneficiary of results produced by INERA, notably through the Ministries of Agriculture, Hydraulics and Fisheries, Animal Resources and Environment.

One can notice an almost total lack of research results promotion regarding intellectual property although whereas these research results are used in plant and animal productions as well as for natural resources management. This situation is explained by many reasons:

- The generation of results and technologies for the Government leads de facto to the public goods. Indeed, the question here is to know whether it is reasonable to demand a right to the non-organized or to informal organized producers supported by the Government. The second question is to know when one speaks about public good; if it is possible to grant intellectual property rights to public sector employees, and then, with regard to the missions of Government, to know if it is reasonable to demand any contribution from producers.

- The organizational context of the beneficiaries of agricultural and environmental research results is not in favour of the optimum protection of research results;

- The economic base related to the private entrepreneurship is not well developed; - The origin of an innovation material and its intellectual property (material being used for the

creation, material from a prospecting). A material from a prospecting cannot be subject to an intellectual ownership because it is a discovery; and for the material used for creation, the property can only be based on what has been developed from this first material;

- The ownership of joint research results; - The training curricula of researchers that totally eclipses the elementary notions of intellectual

property; - The lack of a service in charge of Intellectual Property at INERA.

However, Intellectual Property Rights (IPR) are strong means to ensure the visibility of results through their dissemination and publication on well organized records and managed at the continental or global levels. The New Plant Variety Certificates, the patents for inventions, the copyrights on information and other processes are, in fact, legal instruments for INERA to protect its scientific results and its technological innovations. The setting up of an effective system of results protection generally

Appendix 6


26

encourages innovation to the benefit of society. However, it involves significant investments in terms of financial means, know-how, and manpower, specifically regarding the selection of new varieties in the domain of agriculture, horticulture, forestry, etc.

Thus, intellectual property allows performing the public service mission in increasing knowledge in a framework of fair and equitable recognition of the respective rights of scientists, partners and/or institutions.

From this point of view, the lack of intellectual property promotion is a shortfall for INERA. INERA, as a public utility Institution should :

- Look for a balance between the free dissemination of knowledges generated, and the legal protection of the scientific results;

- Meet the challenge with regard to the various issues including those related to Genetically Modified Organisms (GMO) and Biotechnologies development, and genetic diversity that increasingly involves intellectual property related issues.

2 – INSTITUTIONAL AND LEGAL FRAMEWORK

The current Intellectual Property Policy defines the management framework of intellectual property within INERA. It fits into the vision of scientific results promotion, and it applies to inventions (intellectual property rights on patents), plant varieties, exploitation licences, information and scientific publications from the internal and joint research activities.

This Policy does not replace the law on Regulation of Seeds in Burkina Faso (Law N° 010-2006/AN, of 31st March 2006), neither does it restrict the application; it should be interpreted in the light of this Law.

This Policy does not replace the Law on Copyright in force in Burkina Faso, notably, the Law N°032-99/AN of 29th December 1999, neither does it restrict the application; it should be interpreted in the light of this Law.

This Policy does not replace the terms of the Revised Agreement of Bangui of the 2nd March 1977; it should be interpreted in the light of this Agreement.

INERA should make sure all the scientists concerned have taken cognizance of this Policy and they adhere to it.

Any employee of INERA is subjugated to its Policy on Intellectual Property: copyrights, rights on the inventions and technological innovations, rights on plant variety and mainly know-how.

The rights on creation resulting from collective research or joint activities are recognized in proportion of the contribution of each associate and/or each partner according to the objectives of each type of activities.

INERA should make sure that its associates and partners have taken cognizance of this Policy on Intellectual Property: copyrights, rights on inventions and technological innovations, rights on plant varieties and mainly know-how, and they adhere to them.

3 – GUIDING PRINCIPLES

The Institute of Environment and Agricultural Research is the entity specialized in environmental and agricultural research in Burkina Faso. It comes under the National Centre for Scientific and Technological Research with the mission to organize and manage environmental and agricultural research, to generate technological inventions and innovations, and to contribute to the promotion of scientific and economic outcomes of research.

The mandate of INERA takes into account the followings objectives:

Appendix 6


27

1- To conduct research in the domains of agriculture and environment,

2- To generate technological innovations for the improvement of plant, animal and forestry productions, profitable to the national economy,

3- To disseminate the research products,

4- To collaborate with the research organizations operating in the same domain within Burkina Faso as well as out of the country,

5- To create and to develop a sustainable partnership with organizations and institutions in the domain of environmental and agricultural research,

6- To use the patents and licences and to carry out expertises in its area of competence.

The vision of INERA is to be a pole of excellence on environmental and agricultural research in Burkina Faso.

The Intellectual Property Policy of INERA meets this vision in relation with its mission and mandate. Thus, it aims at the fair and equitable recognition of the respective rights of the employees and partners of INERA in the domain of scientific and economic promotion of scientific results.

It is based on the following guiding principles:

• Guarantee/ensure the visibility of scientific results,

• Ensure the traceability of the technological inventions and innovations;

• Ensure the remuneration of research and spur on the research personnel by profit-sharing;

• Strengthen the reputation and the credibility of the research personnel and guarantee the sustainability of environmental and agricultural research within INERA;

• Contribute to the attractiveness of Burkina Faso in the international competition on technological inventions and innovations in the environmental and agricultural sector;

• Enable research outputs to enhance the performances of the national agriculture;

• Ensure an environment of professionalism and mutual confidence in the relationships with all those who are committed in the activities of innovation, creation and inventions (scientists, users, enterprises, etc.), in the domain of environment and agriculture.

The rights on the creations resulting from a collective contribution should be fairly recognized based on the contribution of each partner, and according to the objectives of each type of activities.

A scientist can claim Intellectual Property Rights (IPR) according to the substantial nature of his/her intellectual or creative contribution to the achievement of a product.

4 – OBJECTIVE

The current Policy on Intellectual Property aims at making sure that the activities of creation, inventions and innovations are carried out in compliance with the mandate of INERA; and according to a business strategy aiming at intellectual and economic beneficial effects for the Institute and its partners.

The specific objectives are to:

Appendix 6


28

1- Ensure that the discoveries, the innovations and the inventions generated by INERA and its collaborators or partners are used for the development of the plant, animal and forestry productions,

2- Encourage and motivate the scientists and the research teams, 3- Allocate funds to carry out future research and generate new technologies creation.

5 – SCOPES

The current policy relates to the Intellectual Property Rights on results of research activities carried out by INERA, or carried out in collaboration with external public or private partners, notably, agricultural companies and enterprises, especially brands and patents, licences and plant varieties. It concerns the plant material (art. 6 of the appendix of the Agreement of Bangui), the inert material, tools, materials and objects, the production itineraries, the manufacturing process and processing, data, databases and laboratory books. These notions are defined in appendix 1.

The current Policy applies to:

- The employees of INERA that contribute to the achievement of the research activities resulting in creations to which the IPRs are attached,

- The external scientists who carry out research activities within INERA resulting in creation to which IPRs are attached,

- The third parties that contribute in the framework of the collaboration or partnership to the achievement of research activities resulting in creations to which IPRs are attached.

6 – RIGHTS AND OBLIGATIONS WITH REGARD IP

The exploitation of scientific results and products should be made through the scientific promotion (publications, communications, data sheets, notes to decision-makers, etc.) and the economic promotion (patent, new plant variety certificates, licences and copyrights).

The scientific promotion of scientific results should be done by scientists that could, if necessary, benefit from the support of INERA and its partners.

The economic promotion of scientific results and products obtained from public grants should be done INERA, that, in collaboration with the scientists, starts the procedure of protection application with the organizations and the administrations of the Intellectual Property (world Intellectual Property Organization (WIPO)), and the African Intellectual Property Organization (AIPO) notably, and supports the related costs as well as those related to the exploitation, the monitoring and the maintaining of the protection rights. INERA will support costs related to publishing the results.

INERA encourages scientists to publish the results of their research activities. However, INERA looks after the qualification and the assessment of the research results and the products.

According to the nature of the results, INERA defines means for protection and exploitation of scientific results and products.

In the case of a patentable result or a plant variety, the text of the patent or the accepted variety is taken into account by INERA as a production of new technological knowledge.

In the presence of a creation or an invention that can be subject to a protection by a patent or the New Plant Variety Certificate, INERA, in agreement with its partners and the concerned scientists could forbid or postpone the publication of results if the dissemination of confidential information related to it risks compromising their protection and their commercial promotion. Reports, theses, dissertations, scientific articles, scientific communications and other presentations whatever the form (oral, written electronic, notably) are considered as dissemination channels for confidential information..

Appendix 6


29

The scientists should declare to the Committee of the Intellectual Property of INERA, the scientific results and products that should or are likely to be subject to protection for economic exploitation purposes. A declaration form is available to that effect.

The economic promotion of scientific results and products obtained in the framework of this joint research falls to INERA and its partners. The terms of support and conditionalities of protecting the results and products, the nature and IPRs sharing must be specified in the agreement protocols signed between INERA and its partners.

For the intellectual property created or likely to be created during a joint research, the parties or the participants define jointly the agreement terms that respect the policies and procedures in force at INERA and partner organizations in the framework of an agreement protocol of collaboration or partnership of specific convention.

The protocol of agreement, collaboration or partner ship

The agreement protocol between INERA and its partners should contain arrangements related to the holding of the IPR, the protection, the publication and the use of information. These arrangements should take into account: (i) the relative contributions of INERA and each of the partners, (ii) the profits associated to the grant of licences, patents or new plant variety certificates, (iii) the requirements imposed by the internal regulation of the parties, and (iv) other factors deemed appropriate.

Each of INERA and its partners keep the IPR on the scientific results gained at the date of the signature of the agreement protocol.

In the case INERA holds the IPR on a creation and allows a partner to use it and to bring improvements or modifications, and the partner holds rights on these improvements or modifications, the partner should give INERA the irrevocable and perpetual right to use them without additional compensation and without request.

This same rule applies when INERA allows the partner to translate a work of which INERA holds property rights and the partner holds property rights on this translation.

Patents, plant varieties and trade secrets: the protocol agreement signed between INERA and its partners should include arrangements related to rights on patents, new plant variety certificates, trade secrets and arrangements related to their protection.

The specific convention

Copyright: in the case of a joint research, the specific convention should clarify the respective contribution of INERA and the partner in the implementation of the research.

Sharing the copyright royalties: The parts of the royalties on copyright are set up in the specific convention, unless INERA and its partners otherwise decide.

Sharing of the royalties of patents/new plant variety certificates and trade secrets : unless INERA and its partners otherwise decide, in the agreement protocol, the sharing of the royalties of patents and trade secrets or new plant variety certificates is established in the specific convention.

Transfer of IPR: in the case of joint research, the specific convention should contain an arrangement establishing that neither INERA, nor its partners can lease, whatever the circumstances, the intellectual property rights that they jointly hold with the other partners without a written consent of the latter.

Appendix 6


30

Rights and obligations of the partners

Each of INERA and its partner keep the IPR on the scientific results at the date of the signature of the agreement Protocol.

In the case INERA holds the IPR on a creation and allows a partner to use it and bring improvements or modifications, and the partner holds rights on these improvements or modifications, the partner should give INERA the irrevocable and perpetual right to use them without additional compensation and without request.

This same rule applies when INERA allows the partner to translate a work of which INERA holds property rights and the partner holds property rights on this translation.

The rights coming from an associative contribution are recognized in proportion to the contribution of each scientist or partner.

7 – OWNERSHIP OF INTELLECTUAL PROPERTY RIGHTS

Apart from any modification of this Policy, INERA is the owner of any IP in the following conditions: - IP created by an employee of INERA including the studies carried out under the aegis of INERA (paid or not by INERA). - IP created by a third party on behalf of INERA or pursuant to an agreement with INERA for the supply of resources, the opportunities, the supervision, the salary and any other fund contribution (in the framework of a joint collaboration).

If the scientific results are common, a joint ownership between INERA and the partner(s) is established mentioning specifically the respective rights of each of the parties.

When the partner is a public research body, the rules related to the ownership of the scientific results are defined in the agreements signed between INERA and the body/bodies concerned.

When the partner is a commercial, and if the invention is just a specific application in the technical domain peculiar to the commercial, INERA can grant the full ownership of the scientific results to the commercial, but it should negotiate, in compensation of the abandonment of its property rights, reasonable royalties on the direct or indirect exploitation of the invention and the payment of the total cost of the research. This broad rule also applies to GMO in the following hypotheses: • Case where the genes are provided by a firm and the trials funded by the firm; • Case where the genes are provided by a firm and the research activities funded by Burkina Faso; • Case where the genes have been purchased by Burkina Faso. In the case of material transfer Any material transfer by INERA to a partner in the framework of the research should be subject to an agreement of material transfer that states on:

- The purpose of the material transfer; - The recognition of the exclusive rights of INERA on the material and the associated

information; - The preliminary and written authorization of INERA for any formal protection that could

concern the material and the associated information; - The banning of any manipulations or transformations that could affect the rights of INERA

without its preliminary and written authorization; - The banning of any use of the material in association with another material (biological or not),

except for the needs of the research above defined;

Appendix 6


31

- The use of the material in the respect of national and international laws and regulations in force.

8 – PUBLICATION AND DISCLOSURE OF RESULTS

Publication of results

INERA cheers on its scientists, as well as the associate scientists and partners to publish the results of their research activities subsidized by the Government or funded by technical and financial partners.

However, the right of results publication will be used with discernment, notably in the presence of patentable or sensitive information if their dissemination risks exposing to the disclosure of information deemed confidential or is of nature to compromise the protection or the commercial promotion of certain technical or scientific information.

Disclosure of results

The disclosure of results is made through the channel of reports, dissertations, theses, scientific articles, seminars, workshops and other presentations whatever they are under a written, oral, electronic form or other. In any case, when INERA holds joint intellectual property rights with an associate or a partner, it is imperative the relevant agreement gives INERA the right to approve any disclosure beforehand. If INERA opposes to the disclosure, it should negotiate with the associate or the appropriate partner an acceptable version of the planned disclosure.

Rights of the employees

No INERA employee has the right to protect or to commercially use any IP that he/she has created without a preliminary written report to INERA describing the nature of the IP concerned and the conditions of its creation; and a written answer of INERA on the decision with regard his/her report.

The INERA employee’s report on the protection of the IP will include the elements hereafter :

- The IP creation date; - The identification of any person having contributed to the IP creation; - Any pre-existing IP having been used to create this IP; - Any person other than the originator who claims any right or interest in the framework of the

said IP; - Any contribution or resources of INERA used to create the IP; - Any known or potential use or commercial exploitation of the IP.

9 - CONFIDENTIALITY

With regard to the nature of the information used and spread within the Institute, INERA recognizes the necessity and the importance to protect the confidential nature of its information and to make sure any persons working within it be sensitized to this reality and respect it.

INERA also recognizes the importance to equip itself with tools necessary to guarantee the confidentiality of its information as well as information pertaining to third parties and which has been confidentially obtained.

This confidentiality is valid for own-fund research and joint-fund research as well.

At the employee level

All the INERA employees, whatever their functions, should ensure with their immediate supervisor, the confidential nature of an information or limitations with regard it use or disclosure.

Appendix 6


32

They should show discretion with trade secrets and other confidential information they design and to which they have access in the framework of their functions.

The trade secrets and other confidential information will only be used by the employees for the fulfilment of their functions for INERA. It will only be disclosed to employees who should have access to it, the third parties committed to guarantee its confidentiality and to those who have received the authorization to disclose it.

At the level of partners and third parties

Before disclosing the trade secrets and other confidential information to a partner or a third party, including the external researchers for whatever reason, the INERA employee who compromises with that person should make sure he/she is bound by a confidentiality commitment with INERA, or make him/her sign a confidentiality commitment in a written form prescribed by INERA, according to the case.

According to circumstances, this confidentiality commitment should not only be signed by the person with whom the INERA employee is compromising with, but also by an authorized representative of its employer or the organization that has accepted his/her services.

At the visitors level

A visitor, whoever he/she is, should have a confidentiality commitment with INERA or sign a commitment before studying an agreement protocol developed by INERA or to give him/her access to any research laboratory information or installation. This commitment should not only be signed by the person with whom INERA is compromising with, but also with the person authorized to accept these services.

Unless further arrangements, the university fellow scientists are not considered as visitors.

Confidential information pertaining to third partie s

With regard the information sent to them by third parties on a confidential basis, the INERA employees should adopt the same measures as those of trade secrets and other confidential information of INERA.

10 – INCOME SHARING

The allocation of income from exploitation or promotion of IP generated within INERA will be made in agreement of parties and in accordance with practical and relevant arrangements on the matter. The Steering Committee of the IPR will always be seized about that.

The IP originators will receive, on a confidential basis, a copy of any agreement established between INERA and a third party with regard the industrial and/or commercial exploitation of the IP ; and they will receive under a half-yearly or annual basis, according to the case, a financial report together with the payment, and if needed, the amount due to them, pursuant to this Policy.

INERA reserves the right to propose any other reasonable and practical term for the sharing of the net incomes of such a commercially exploitable IP.

11 – IMPLEMENTATION OF THE INERA IP POLICY

Institutional Management

An IP Committee will be set up within INERA under the aegis of the Projects and Studies Service (SEP) to organize special meetings on the IP. It will be composed of:

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33

- A President - A Vice-President, - A General Rapporteur, - A Deputy Rapporteur, - Four (4) Statutory members.

The Committee will provide advices on the following points:

- Patents or new plant variety certificate application procedures; - Industrial design registration procedures; - Investigations for the registration of brands ; - Registration of the new plant varieties; - Negotiations and approvals on the IP of INERA.

The INERA IP Committee will examine any IPR application formulated by INERA or any INERA employee.

Procedure for the protection of INERA Intellectual Property

Where IPRs exist or could exist in relation with an INERA particular property, and it is decided that an application for an IPR should be submitted, the SEP in charge of the INERA IP, is mandated to support and to follow the required procedures. All the costs related to such an application will be paid by INERA.

Each INERA employee as a creator should, at the request of INERA, provide the documents required and fulfil any other act deemed necessary or useful to enable INERA to effectively protect and commercially exploit its IP and ensure the implementation of this IP Policy.

If INERA decides not to make a statutory application for the IPR, the employee could apply on his/her own name and should therefore pay all the related cost. According to his/her interest, such an employee, could send a written note to INERA, to request an assignment of all the rights of INERA related to the IP. The IP Committee of INERA will give a ruling on the application before INERA notifies him/her the terms and conditions for the assignment of its rights. Any assignment proposal made by INERA should take into account, and look for reducing as far as possible, all the costs and expenses that fall or could fall to INERA and its agents up to the date of the assignment. To that effect, arrangements could be made by INERA to recover such costs from the net income generated by the IP.

ACKNOWLEDGEMENTS

INERA, through the SEP, would like to express its gratitude to CAS-IP for making possible the case study. The gratitude is not only for funding the study but also for accepting INERA, a French speaking Institute, to take part of this important initiative on the Intellectual Property in Agricultural Research.

Particular thanks go to Dr Victoria Henson-Appolonio (CAS-IP-Italy), Karine Malgrand (NPI-France), who supported and encouraged us during the implementation of the study.

The thanks also go to BBDA, DNPI and the APC, for their advice and supports during the development of the DPPI on the one hand, and on the other hand, for the facilitation during the validation workshop and the finalization of the document.

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APPENDIX 1: GLOSSARY

INTELLECTUAL PROPERTY

By intellectual property, one understands the creations of the spirit: the inventions, the plants varieties, but also the symbols, the names, the images and the industrial designs and geographical indications.

The intellectual property is presented in two aspects: the industrial property and the copyright.

Industrial property

The industrial property includes the invention patents, the brands, the drawings and industrial designs, the geographical indications and the new plant variety certificates.

The patent is an exclusive right granted to an inventor enabling him/her to manufacture, use and/or sell the patented invention for a maximum period of 20 years. The criteria of patent attribution on a technological invention or innovation are: the novelty, the inventiveness (non obviousness), the usefulness and the reproducibility.

Patent protection means that the invention cannot be made, used, distributed or sold without the consent of the patentee. The breach of rights on patents is sanctioned by a legal action before courts, which in most of the legal systems have the competence to make stop the infringements of protected rights. The courts can also nullify the patent.

Though the patents have been defined for an industrial application, with the appearance of the biotechnologies, the patents granting bureaux grant, from then on, patents on micro-organisms, and in certain countries, on any forms of life.

The licences constitute another legal mechanism of intellectual property rights exploitation. Without making a transfer of property, they authorize the use of the patented techniques or product patents, their manufacturing and/or their commercialization. The commercial use of the technological results to which a licence applies, gives right to the payment of royalties to INERA and the scientist.

The brands (trademarks) are distinctive signs used to differentiate identical or similar products offered by producers or service providers. They form a category of industrial property and they are, to that effect, protected by Intellectual Property Rights (IPR).

Industrial designs also merely called drawings concern the ornamental or aesthetic aspect of products. The industrial designs are a type of industrial property assets protected by the IPR.

The geographical indications “are indications used to identify a product as originating from a territory member of World Trade Organization,(WTO) or a region or a locality of this territory, in the case where a quality, reputation, or other determined characteristic of the product can be essentially ascribed to the geographical origin” (article 22.1 of the Agreement of the aspects of the Intellectual Property Rights that concern trade, ADPIC Agreement)

The geographical indications are not limited to geographical names. They can also include other signs of the geographical area, whatever they are made of words, expressions, symbols or emblematic images.

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Copyright and Ancillary Rights

The Copyright and Ancillary Rights are legal instruments that, while respecting and protecting the rights of the originators on their work, contribute to the cultural and economic development of countries.

The copyright plays a key role in the sense that it clearly defines the contributions and the rights of the different stakeholders of cultural industries; and it defines the relationship existing between them and the public. It includes the literary and artistic works that are: novels, poems, theatres, films, music, and work of arts such as drawings, paintings, photographs and sculpture, as well as architectural creations.

The Ancillary Rights to the copyright are the rights that possess the artist-interpreters or performers on their benefits, the recording sound producers and the radio broadcasting bodies on their broadcasting or TV programmes.

The « Internet Treaty » (WIPO Treaty on copyright (WCT)) and WIPO Treaty on the interpretations, executions and phonograms (WPPT)), are part of the action plan in the digital domain of the WIPO, that defines a series of guiding lines and objectives for the WIPO to set up practical solutions to problems created by the incidence of the new techniques on the IPR.

New Plant Variety Certificates (NPVC)

The NPVC gives to breeders, rights very close to rights granted to those patented. The protection concerns the genetic arrangement of a specific variety of plant. The criteria to obtain this protection are the novelty, the distinction, the homogeneity and the stability.

The law regulating the NPVC can grant exemptions to breeders, authorizing them to used protected varieties for a future process of breeding, and to farmers, authorizing them to keep the seeds of their crops.

The know-how

The know-how includes the competences, the expertises, the technical knowledge of scientists and the laboratory results that cannot be protected by the copyright or a patent, but that constitute a real capital for INERA. However, this capital can be passed on a third party, and in this case, be subject to licence agreement between the latter and INERA.

SCIENTIST

In this Policy, the expression scientist refers to any person who carries out spirit creation or development in usual or limited basis within INERA or a partner institution (University, private firm, public body, independent consultant, etc.). The activities can be carried out in an internal, external or joint way.

Internal Scientist : it is an INERA employee with the status of “scientist”.

Associate Scientist : it is a scientist from another research institution in Burkina Faso, who works with an internal scientist on research activities governed by an agreement protocol.

Partner Scientist : it is a scientist from a research institution outside Burkina Faso who works with an internal researcher on research activities governed by an agreement protocol.

PARTNER

The Partner refers to an individual or a legal body such as the scientific and technological organizations of parties, the private sector, the enterprises, the research centres, the universities, the

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branches of legal bodies or any other form of legal entity taking part in the associative research activities.

INTERNAL, JOINT OR PARTNERSHIP RESEARCH

The internal research refers to the set of research projects and activities that are exclusively carried out by the employees of INERA.

The joint or partnership research is the research carried out with the financial support of one or several parties and including a collaboration between INERA and the participants, and referred to as such by writing by the parties or their scientific and technological organisms or institutions; or when the financial support is brought by only one of the parties, by this party and the participants to that project .It thus refers to the set of research projects and activities carried out in collaboration with external researchers to INERA and the INERA personnel.

AGREEMENT PROTOCOL / CONTRACT / SPECIFIC AGREEMENT

Be it funded by a public, para-public, private or community organization any joint or partnership research should be subject to agreement between INERA and the concerned partner(s).

The protocol agreement or the contract refers to the agreement made between INERA and the partner(s) for the progress of knowledge in the environmental and agricultural sectors. It is materialized by a document that defines the general modalities on Intellectual Property and it specifies the conditions related to:

The knowledge of the substantial nature of the intellectual or creative contribution, The confidentiality; The signature of the publications, The disclosure, the consultation and the use of the results, The access to the results; The intellectual property rights.

The INERA Projects and Studies Service (SEP) is in charge of the study, the negotiation and the drafting of the protocols for the specific agreements in respect to the policies and procedures in force in INERA and partners organizations.

The specific agreement defines the IPR and the obligations of each of the parties in the framework of the implementation of the research project that is subject to the protocol of agreement between INERA and its partners.

CONFIDENTIALITY

The confidentiality on information is defined by its holder and who accepts to pass it on, in the condition that the person who receives it keeps it secret or limits it dissemination. It is the holder of the information that ascribes it the confidential quality or information of secret nature.

The information is considered confidential if the holder can draw an economic profit or a competitive advantage from this holding over the persons who do not hold the information, if this information is not of public knowledge or is not publicly available with other sources, and if the holder has not previously made this information accessible without imposing, in due time and in an appropriate way, an obligation of confidentiality.

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