5    Research Collaborative Agreements and Bioprospecting in Costa Rica: Scientific, Technological and Legal Impacts

Giselle Tamayo, Lorena Guevara, Ana Huertas, Bioprospecting Strategic Action Unit, Instituto Nacional de Biodiversidad (INBio), Costa Rica

There are several questions that have been consistently raised after the first research collaborative agreement (RCA) was signed between Merck & Co., Inc. and the Instituto Nacional de Biodiversidad (INBio, National Institute of Biodiversity of Costa Rica) in 1991. While that is not the only RCA that has been signed with an industrial partner, most of the terms and conditions negotiated in that agreement provided a baseline for other RCAs and for the structure of the Convention on Biological Diversity (CBD) in 1992 (Sittenfeld and Gámez 1993, Sittenfeld and Lovejoy 1998, Tamayo et al. 2004). After 16 years of INBio experience, impacts can be assessed from a number of standpoints: scientific, social, technological, legal, economic, and of course, from the viewpoint of conservation. The intent in this chapter is to focus on the scientific, technological, and legal impacts associated with the bioprospecting agreements negotiated, since the other issues mentioned have been discussed extensively in other publications (Mateo 1998, Mateo et al. 2001, Guevara 2003).

Since its inception, INBio has recognized the need to build strong ties with the academic sector, both national and international, in order to strengthen the scientific component of its activities. In this regard, INBio has signed cooperative agreements with major public and private universities in Costa Rica and abroad. The international academic dimension has been considered a key aspect and therefore a network of collaborators has been nurtured, expanded, and consolidated over the years. At the organizational level, INBio's Assembly of Founders includes highly accomplished scientists and other outstanding professionals and members of civil society. The Assembly, along with two international advisory boards shape and monitor the path of the Institute.

As in other aspects of life, the first experience in this particular case, the first negotiation process, was difficult since INBio was building its scientific core from the ground up and shaping its strategy. The authors' object in this chapter is to put into perspective the initial conditions that prevailed and how they influenced the scientific and technological development within INBio-Bioprospecting, as well as how they influenced the final legal framework that Costa Rica has created and adopted.

5.1 Overview of INBio's bioprospecting approach and its technologies

5.1.1 INBio's philosophy

The protection of natural resources in Costa Rica dates back to the first years of Costa Rica's independent life as a nation (1828) and was strengthened from 1970 to 1990 when the greatest number of protected areas was created. The country established an ample legal framework that translates into more than 300 laws and decrees that regulate the management of biodiversity and cover a wide array of topics both socioeconomic and cultural, as well as scientific-technical and managerial. These guidelines are of national, regional, and international scope (Obando 2002).

Nevertheless, the conservation ‘way of life’ was initially adopted by Costa Ricans as an effort for preservation; hence, the idea was to maintain the protected ecosystems untouched and unveiled. It was from 1988 onward that the first steps toward a strategy of Save-Know-Use (Figure 1) were taken, resulting in legal and institutional changes (Ugalde and García 2003). The country concluded that ‘they had to seek the opening of the wild areas to a population that would also see in them something that belonged to them, something very valuable and worth taking care of, an appropriate place for intellectual and spiritual recreation, from which, economic benefits can be derived without inflicting harm on the biological resources. In this way, the old philosophy, the philosophy of custody, should give way to another one, one of sustainable use of biodiversity resources.’ (Gámez 1999).

As part of the institutional and ideological changes that took place in the country, INBio was founded in 1989. INBio was created by recommendation of a governmental commission that considered the need for the creation of a new organization that had as its priority the generation of knowledge of the biological diversity of the country and the promotion of its nondestructive and sustainable use (Matamoros and García 2000).

The vision of INBio – from the first year of its creation – touched on ‘an organization that, focused on the management of information, began the process of knowledge generation based on field activity and the inventory laboratory to then curate and process the information in a variety of ways and to finally disseminate it to two types of customers: those of an economic nature and those of an intellectual nature’ (Gámez 1991). The evolutionary process of INBio and all the activities developed since its inception, have clearly demonstrated that its philosophy has centered on the elements of the strategy for conservation of biodiversity (Watson et al. 1995): Save-Know-Use, illustrated in Figure 1.

Figure 1 Save-Know-Use

Approximately 25% of the Costa Rican territory falls into a given protection category and conservation areas are managed by the National System of Conservation Areas (SINAC, its acronym in Spanish), a governmental unit under the Ministry of the Environment and Energy (MINAE). INBio works closely with SINAC and MINAE and it has contributed to the conservation initiatives of the country (Save) with information, knowledge, and to a certain extent, with resources. In particular, the information regarding species and ecosystems has been essential for decision making related to conservation. Additionally, INBio has been a reference organization and source of constant support to the Costa Rican government, providing not only answers to queries for decision making, but also being a driving force and facilitator of processes of great national importance as, for example, the development of the National Strategy for Conservation of Biodiversity.

In terms of knowledge generation (Know), INBio has dedicated and continues to dedicate the largest part of its activities to the generation, systematization, and dissemination of information and knowledge about Costa Rican species and ecosystems. The collections that INBio has are very important in terms of their size and how representative they are with more than 3 million specimens. It is also the only institution that has all of its collections systematized in a database (known as ‘Atta’), which was developed specifically for the management of the species inventory information (Obando 2002). The advancement in the discovery of new species has been thanks to the support of a network of international taxonomists who contribute their expertise ad honorem for the identification of species, many of which are new for science.

INBio has translated the Use component into a number of important applications. The systematization of information and knowledge has been performed in different formats, useful to diverse target audiences, which range from elementary school students to policy makers and highly specialized scientists. This has allowed INBio to offer different product categories, from games and electronic documents for children to scientific books and interactive exhibits in the INBioparque, which is really the use of biodiversity for educational purposes and awareness of the value. In the same way, the knowledge generated by INBio has been used for the interpretation of trails for private and public protected areas and to support touristic developments.

In terms of bioprospecting or the systematic search for genetic and biochemical resources with application in a myriad of areas such as pharmaceutical or biotechnological industry, INBio continues to establish alliances with the academic and high-tech industrial sector. In these alliances, the key elements or criteria for controlled access, compensation, training, and technology transfer are upheld. These elements are integral today in the CBD and the Biodiversity Law of Costa Rica (No. 7788, 30 April 1998) and they were the basis for the negotiation with Merck & Co., Inc. back in 1991 (Tamayo et al. 2004).

With an enriching growth process throughout the 16 years since its foundation, INBio has evolved towards a strengthened mission: ‘to promote a greater awareness of the value of biodiversity to achieve its conservation and to improve the quality of life of people’, whereby the decision was made that the information to be generated must truly have an impact on conservation and development (Ugalde and García 2003). INBio, as a young organization, has changed dynamically over the past years, yet its goal is achieved by constant work in five areas of action: inventory and monitoring, conservation, communication and education, biodiversity informatics, and bioprospecting.

5.1.2 Overview of INBio's technological evolution

INBio-Bioprospecting favors those agreements in which there is significant value added in the process, that is, significant work to be carried out in Costa Rica. Therefore INBio has built a solid platform in terms of infrastructure and human resources, which, along with its solid and long-lasting alliances at the national and international levels, enable it to offer technological advantages over other possible competitors. Three main technological processes make INBio an innovative, efficient, and attractive organization: inventorying, biodiversity informatics, and bioprospecting. The first two evolved mainly at the same time generating a combined technological development, while the latter required more tailor-made projects and therefore, its technology and scientific priorities change over time. The technological development of the in- ventorying and biodiversity informatics processes

INBio's main activities began with the inventory process. There, it has emphasized technologies centered on gathering information and keeping it safe (inventorying and biodiversity informatics). As with most developments within INBio, these two processes require the active participation of collaborators. The current level of knowledge of Costa Rican biological diversity would not have been possible without the support of international specialists who have found in INBio and Costa Rica a laboratory for the discovery of new species. ‘To have been able to accomplish a number of alliances has been an important success factor for the institution’ (Gámez 1999). With the support of national and foreign specialists, it has been possible to generate information on ecosystems which together with the species, make up an important source of data, useful for conservation purposes and the sustainable use of the elements of biodiversity.

The inventory process was biased initially towards plants and arthropods. Mammals, other vertebrates, marine invertebrates, and microorganisms were not included at first, either because they were already fairly well known, as was the case for mammals, or because the institution lacked taxonomists or experts on those particular organisms, as was the case for microorganisms. In more recent years, large groups such as fungi have also been incorporated, and the work has included some initial efforts on molecular taxonomy of selected microorganisms.

It is important to emphasize that INBio's resources were very limited at the beginning and hence its informatics platform was limited to personal computers. All data related to collections, taxonomic identification and distribution were kept on personal databases, which were supported on commercial software and created either for Mac (most arthropods) or PC (plants) environments. The need to have a reliable, unified, and robust process for storing data was evident. The most important contribution of INBio to the national inventorying process was to create a systematic platform for gathering information, which incorporated barcoding technology to tag and track specimens, an interactive parataxonomist-curator-taxonomy experts core and the first biodiversity inventory management data system (BIMS) to keep records of collections. This updated strategy clearly begins with the definition of taxonomic groups, categorized by organisms to be studied.

The implementation of the process took around five years to be fully operational and benefited from the Inter-graph-INBio Research Collaborative Agreement (RCA) in 1994. The BIMS, originally programmed in a tight informatics software was migrated to a more robust and user-friendly system, called Atta (http://atta.inbio.ac.cr/attaing). This is the information system that facilitates the processes of capturing, managing, generating, and disseminating information on Costa Rican biodiversity. The system maintains a relational Oracle® database with over three million records (as of 2005), and also includes interfaces to export information to standard tools such as ArcView® and MS-Excel®. The design and implementation of Atta took several years and it became a powerful and recognized tool for information retrieval at the species and specimen levels for each collection made by the Institute. The development of this system was recognized with the 2003 Environment Award given by the Tech Museum of Innovation (San Jose, CA USA), which honors innovators from around the world (http://techa-wards.thetech.org/laureates). The technological development of the bio-prospecting process

Upon INBio's creation in 1989, it was clear that the development of the Use component from the general strategy would follow, but it was not until 1991 that bioprospecting activities actually began, thanks to a grant given by the John D. and Catherine T. MacArthur Foundation to Prof. Thomas Eisner at Cornell University, Ithaca, NY USA. The grant provided the basis for the first research collaborative agreement with an academic institution and the aims were to develop and execute the strategy for chemical prospecting.

The initial criterion was based on building alliances with Costa Rican institutions and research groups – still used today with different scopes – which enabled INBio to have the first chemical prospecting projects allocated within main public national universities. INBio wanted to avoid duplication of efforts and recognized the excellence of the Costa Rican academic research groups and therefore acted as a catalyst. While the results of such an endeavor were limited in terms of products and publications, it allowed INBio to align research groups toward a common goal which benefited from the infrastructure and knowledge that were beginning to be developed.

Nevertheless, with the 1991 Merck-INBio RCA it became clear that some infrastructure had to be in place within INBio. Hence resources to be able to collect, catalogue, prepare samples for extraction, and conduct taxonomic studies on collected material were set up at INBio. With time, the infrastructure grew to include extraction and fractionation for chemical prospecting, and since 1997, the laboratory expanded to include resources for biotechnological and gene prospecting.

INBio has signed more than thirty agreements with both academia and industry, and each agreement is different from the others. From the technological standpoint, each agreement requires that different capabilities be available within INBio. Therefore, laboratories and human resources have to be highly flexible and versatile.

Currently, the Bioprospecting Strategic Action Unit covers more than 1,100 square meters equipped with the following resources and capabilities:

These resources were set up with significant technology transfer and training from collaborators. In terms of infrastructure, the Bioprospecting Strategic Action Unit is a very flexible and versatile resource, built with an investment of more than US$2 million to date gathered from different sources, where microbiologists, biologists, forestry engineers, agronomists, chemists, biotechnologists, mycologists, business administrators, and molecular biologists are dedicated to adding value to Costa Rican genetic and biochemical resources. The Unit is divided into three main areas under the coordination of a General Manager: administrative, scientific, and business development.

Most of the past and ongoing projects are focused on chemical and biotechnological prospecting therefore the infrastructure that INBio has built in the past years is concentrated on these two areas. While the first relates to the search for small molecules with innovative uses (for example, as antibiotics, pesticides, new fragrances, etc.), the second deals with the search of DNA sequences, genes, or whole organisms with general applications in the biotechnological area. Given the nature of the collaborations, it is highly likely that the infrastructure will either grow or change with time, according to the project needs. The impact of inventorying and biodiversity information on the bioprospecting process

The impact that the inventorying process and the development of information systems have had on bio-prospecting is important particularly in the negotiation process and in those projects where taxonomy has to be assessed. Some proposals need, beforehand, a list of possible species and information on distribution and natural history. In this regard, the bioprospecting process has the geographical advantage of sharing the same infrastructure with the inventorying process, but the information on taxonomy and distribution is usually the same as the one that any other researcher from any part of the world could access through the internet.

Naturally when taxonomy is known, there is already a high added value implicit in the negotiation. The fact that more than 90% of the Costa Rican plants are known provides an interesting negotiation tool with both advantages and disadvantages:

Such is not the case for less known and poorly understood organisms, such as insects and microorganisms in general, although from the first group there is significant knowledge that has been generated by INBio. Even if taxonomy is not known, INBio gathers data on the ecosystems where they are found and builds complementary and valuable information.

It is important to recognize that taxonomic efforts are very expensive and are usually excluded in projects, at least at early stages. For bioprospecting purposes, an organism should be identified only when it has been assessed as having some potential. If one recalls that there are 360,000 expected species of insects in Costa Rica to be found, and less than 20% of those have been taxonomically described, conducting bioprospecting-based research on insect taxonomy would require too much effort and funding and most industries or organizations would not support such activities. In this regard, natural history and ecosystem information seems to be of more assistance. The same is also true for microorganisms, although, in contrast to other organisms, microorganisms present distinct features: if the organism can be cultured, and it is accessible, there would not be any dependence on the original source – no ‘re-supply’ issue (see below). On the other hand, if the organism cannot be cultured, its DNA could be obtained and, once accessible, genomic libraries could also be built from it without any dependence on the original source.

One related aspect is that the negotiation of projects based on microorganisms usually begins with two misleading questions: What do you have in your collections? followed by: Could you guarantee that you would not work with the same species with other partners? While the first question tries to add a monetary and intellectual value to the collection, the second one deals with another important issue, which is exclusivity. It is hard to estimate the potential of a collection in terms of its diversity, without knowing the taxonomy of species included in it, and without conducting any effort to estimate the redundancy of the collection. Therefore, the real value of live and limited culture collections is questionable and they compete with larger collections, such as the American Type Culture Collection (http://www.atcc.org/About/AboutATCC.cfm) with about 18,000 bacterial and over 27,000 filamentous fungi and yeast strains; the German Collection of Microorganisms and Cell Cultures (Deutsche Sammlung von Mikroorganismen und Zellkulturen, http://www.dsmz.de/) with over 14,000 strains; the Japan Collection of Microorganisms (http://www.jcm.riken.go.jp/JCM/aboutJCM.html) with over 12,000 strains; and the British National Collections of Industrial, Food, and Marine Bacteria (http://www.nci-mb.com/html/culture_collection.php) with over 7,000 bacterial strains. Mergers and acquisitions bring an additional challenge as well, since large private collections have been built within industries and they constitute an asset in the negotiation process.

INBio has established a small facility as a culture depository of fungal and bacterial strains, although the decision to build it took several years. The current strategy focuses on delivery of extracts not of live material. Therefore, live specimens are kept following different protocols and an RCA is structured under the premise that INBio could re-supply more material once a promising activity is discovered.

It is hard for synthetic or combinatorial chemists to deny the potential of natural products as sources of valuable compounds with therapeutical applications. Natural products offer a myriad of chemical scaffolds hard to find in synthetic approaches, yet most recently the development of high-throughput screening systems and related technologies makes it easier to test millions of synthetic compounds instead. There are some minor undesirable characteristics exhibited by natural products that favor the use of combinatorial chemicals, although the former are usually more successful. One of these characteristics is the so called re-supply issue. On one hand, biodiversity-rich countries offering access to their genetic resources will desire to keep control on their genetic arsenal and, on the other, pharmaceutical industries need to be certain of securing more material when there is a lead to follow up. In INBio's experience, re-supplying material is an indication of research development and should not be hindered; on the contrary, it must be defined and recognized when agreeing on the RCA terms. In most cases the final product is a semi-synthetic compound or derivative from the original one, and therefore, the resupplied material is used basically in its development and is usually needed in fair quantities. Most industries fear that there would not be a commitment to offer reproducible conditions (same geographical collecting site, same extracting methodology, etc.), and therefore avoid the inclusion of natural products in their drug-discovery programs. In this regard, INBio has been successful in re-supplying material when needed.

If a semi-synthetic or derivative is the final product, identification of the target source is important only for scientific purposes and therefore taxonomical efforts are usually on the sidelines. RCAs cover intermediate and final products, independently of the source of the materials and the identification of those materials is important to avoid redundancies. But if the natural product itself is the one to be developed, then the taxonomical identification of the producing species becomes important as the source of such materials. It has been argued that current technologies will allow the taxonomical identification of an extract source – chemotaxonomy approach – and hence to offer ‘blind’ coded extracts is highly naïve. These technologies have been developed to avoid redundancies, known as the dereplication process. A significant proportion of naturally occurring compounds are widely distributed among species, that is, they are always found in raw extracts and most recent reports indicate the presence of same or related compounds in plants and endophytic symbionts for example (Puri et al. 2005). The chemotaxonomy approach is useful only when desired chemical characteristics are needed and it is rather naïve to think that industries are generating technologies to unveil the genetic source, while what they are developing are technologies for chemical identification and avoidance of redundancies. Taxonomical capabilities are important for the biodiversity-rich partner instead who has to demonstrate that it is highly efficient in re-supplying materials in a reproducible and reliable manner. Collaborations that include DNA and live samples must be carefully evaluated. They do not present the re-supply issue, since the sample itself is sufficient to provide endless quantities of expressed substances. In this regard, follow-up tools and reports must be addressed in the RCA.

Human resources for collecting and curation of materials differ between the Bioprospecting and the Inventory strategic units and the information obtained from bioprospecting activities is not uploaded to the institutional database. Most donors of the inventory work expressed concerns of benefiting private enterprises if both processes got mixed up and they were separated from the beginning. There are four important implications arising from this executive decision. First, manpower is somewhat duplicated – for example, parataxonomists who collect for the inventorying process, do not collect for bioprospecting. Second, database development evolved at different speeds. Third, tough negotiations have to be made, since most companies wrongly believe that they could benefit from an existing platform without substantial financial support. Finally, as a result of all the above, bioprospecting at INBio was consolidated as a self-sustained initiative and was conceived as a highly flexible and versatile unit. Nevertheless the existing platform of the inventorying process – even from the beginning – and its data management were needed in the scientific and negotiation processes, depending upon the targeted organism.

Independent of the type of collaboration signed, the tracking of samples and extracts has always been in the bioprospecting agenda. Therefore, the Unit has structured its own systems to follow up on samples, and their development has been independent from that of BIMS and Atta. Upon collection of a sample, it is given an INBio code number that will identify the sample throughout every further step. This may include, for example, drying, grinding, extracting, and pre-fractionation. This code is basically used for internal use and traceability purposes. When a sample is ready to be delivered to a research partner, it is given a unique bar code number and labeled accordingly. When a partner needs re-supply or complementary information, it has to provide the bar code number and all associated information will be extracted from the databases. This system has proven to be reliable and associated information can easily be obtained. Improvements such as web access to selected information are the next development steps. Most likely, the first to benefit from such infrastructure will be academic partners.

5.1.3 Overview of inactive bioprospecting projects

Since 1991, bioprospecting RCAs have addressed some key elements: projects have to deal with nondestructive uses of biodiversity, access to biodiversity has to be controlled so there is a limit on the quantity of material being collected and the number of site visits for collection purposes, industrial partners have to contribute to conservation through an up-front payment which can be up to 10% of the negotiated research budget, technology transfer in the form of protocols or equipment which are essential to undertake the research activities are factored into the project, training of national scientists (either through on-site training in Costa Rica or abroad) takes place, and compensation provisions through both research budgets and equitable benefit-sharing mechanisms are established.

INBio has executed a number of projects through RCAs. Some of them are on going (‘active’) and others have concluded (‘inactive’). Before turning to a more specific discussion of active RCAs, we first briefly summarize the status of inactive ones. RCAs typically are made up of the body of the agreement with all the contractual, administrative, and regulatory specifications and annexes including among other things, the work plan and budget. The RCA includes an effective date, the research period, and the agreement term and stipulates the articles and obligations that would survive any expiration or termination.

Our criterion to catalogue a project as ‘inactive’ shall be that the research activities – under the RCA – that INBio was to perform in accordance with the agreed work plan have ended. Furthermore, renewals of specific RCAs were considered as individual data points when enumerating inactive projects. INBio has 22 inactive projects as of 30 June 2005 (Table 1): 16 were of a chemical prospecting nature and six were of a biotechnological prospecting character. The fact that projects are inactive does not mean that obligations for compensation, intellectual property rights, reports, etc. have terminated. These provisions typically survive beyond the expiration of the project activities to be carried out specifically by INBio.

Table 1: Inactive INBio-Bioprospecting Projects (as of 30 June 2005)*

* This table focuses only on research collaborative agreements; hence, material transfer agreements, service contracts, and other types of agreements and projects are excluded from its scope.

In 1991, with the first RCA, INBio had neither the expertise nor the required infrastructure (lab space, equipment) to carry out chemical prospecting processes. However, it did have 4% of the world's biodiversity, inventory and natural history information, knowledgeable people willing to rise up to the challenge, and a corporate partner that accepted the key elements mentioned in the beginning and that wanted to invest in natural products. The bioprospecting agreement offered infrastructure and equipment investments at the University of Costa Rica, training, and up-front fees for conservation and compensation; protected areas also benefited.

From the beginning, the strategy of INBio has been to add as much value as it can ‘in country’ and to build and strengthen technological and scientific capabilities based on the demands and needs of its academic and industrial partners, both national and international. It is understandable that the first project in plant chemical prospecting required significant investment and that INBio could add lesser value then than it can today after more than a decade of expertise. The Institute also relies on interactions between different disciplines, such as molecular biology, microbiology, plant biotechnology, and mycology to have an integral scientific approach to problem solving.

Throughout the years, and in spite of INBio having to build its capabilities from the bottom up, aspects such as access to biodiversity, preliminary data, strategic alliances, ability to innovate, respond quickly, and carry out quality work remain critical issues in any negotiation. Scientific capabilities have been nurtured during these years and technology has played a major role in negotiation as well. It is difficult to imagine today a negotiation without such basic tools as internet access, e-mail, and conference calls. Despite the fact that nothing can replace face-to-face meetings, these tools have provided INBio with a means to explore potential opportunities, write grants and follow up on project activities in a timely and cost-effective manner.

A robust scientific basis for the project is essential in any negotiation. In this regard, trends in natural product research also impact project conception and prompt introspective reviews on the type of information that INBio should be generating to meet the demands of the projects and to continue to promote a greater awareness of the value of biodiversity. The bioprospecting trend to shy away from macroorganisms, such as plants, and to focus on and explore uncommon microbes poses interesting questions related to inventory efforts. Sixteen out of the 22 inactive projects mentioned above have utilized inventory information in one way or another. However, it is understandable that from a microbial standpoint, and due largely to the costs involved, identifying bacteria and microfungi in an industrial setting could be justified from a cost/benefit perspective only once an exciting and promising lead natural product is identified. Advances in molecular taxonomy technologies and decreasing costs for sequencing have helped to identify microorganisms of interest. In the way that INBio advocates and undertakes bioprospecting activities, an inventory of microorganisms from different sites and at diverse times within the country is a very valuable asset to biodiversity and ecosystem knowledge in general; a tool for conservation. Hence, INBio negotiates the inclusion of molecular taxonomy efforts in its microbial projects.

5.1.4 Costa Rican political and legal context for the development of INBio

As mentioned before, Costa Rica has an adequate legal framework that enables it to regulate a number of diverse aspects related to the management of biodiversity. This situation, coupled with the pioneering experience in the establishment of scientific research collaboration agreements with industry and academia in the international scene, has provided INBio and the country comparative advantages in the negotiation of these agreements, when compared to other countries with equal or more biological wealth.

The favorable conditions to develop initiatives related to conservation, as well as the establishment of the National Strategy for Conservation and Sustainable Use (Obando et al. 2000), based on the principles of Save-Know-Use, has enabled an increase in the knowledge of the different values of biodiversity and how it – if conserved and used sustainably and intelligently – can contribute to improvement of the quality of life of Costa Rican society. The birth of INBio as an organization, supported in its conception and spirit by the Costa Rican government, and the permanent manifestation by the Institute of its position as a partner and ally of the National System of Conservation Areas has allowed the country to be the pioneer in terms of access and use of genetic and biochemical resources.

The term ‘genetic resources’ is defined for the first time in Costa Rican legislation in law No. 7416 (1994) which ratified the CBD. Notwithstanding anything in the foregoing, the sovereignty of the country over its genetic resources is enacted in the Wildlife Law No. 7317 of October 1992. In this law, wild fauna is considered public domain and wild flora is declared of public interest. Additionally, in Article 4 the ‘production, extraction, commercialization, industrialization and use of genetic material of wild flora and fauna, its parts, products or sub products’ are declared of public interest and national heritage.

In terms of access and use of resources, the Wildlife Law in article 36 stipulates that ‘Costa Ricans and foreigners are authorized to exercise scientific and cultural collections of animals and plants, their products or sub products and to carry out research as long as it does not contravene the regulations of this law and its rules’. In the same way, Article 50 stipulates that ‘any research and development activities that are carried out in order to obtain new varieties, hybrids, drugs or any other type of product that can be obtained from wild species, its parts, products or sub products, have to have the corresponding authorization from the General Head Office of Wildlife’. Before the Wildlife Law became effective and during the first years of its implementation, the steps for access to wild materials for research purposes involved a complex process, which differed according to the authority responsible for the custody of the diverse categories of wild areas under protection where the access would take place.

Since 1992, and towards the end of 2003, INBio executed its bioprospecting activities, backed by the Wildlife Law and having as an action framework the Agreement signed with MINAE, formerly the Ministry of Natural Resources. In this agreement, the interest of both parties to work jointly to generate knowledge about Costa Rican biodiversity, the interest of the government to support the activities of INBio, and the commitment of the Institute to comply with all the dispositions of the standing and enforced legislation were outlined – including the request of the needed permits by the government to access the biochemical and genetic elements and resources present in the protected areas under SINAC management.

During all these years, INBio has requested over 70 permits for the execution of its research projects by the Bioprospecting Unit and even though in the beginning their attainment was not easy, with the passing years, a special process (‘Ventanilla única’) was created that facilitated all the procedures for granting permits for collection in State-protected areas. By means of Ventanilla Única up to December 2003 – the date the general guidelines for access and use of genetic and biochemical resources (in accordance with the 1998 Biodiversity Law) came into effect – all research permits that involved both the use of biological resources, as well as the use of genetic and biochemical resources, for basic research or bioprospecting were presented and granted by this office. The permits, up to this point, were granted in a period not exceeding 15 days and the information as well as the requested requirements were relatively straightforward to present. It is important to highlight that all projects, active and inactive, are and were carried out under the umbrella of a collection permit, which is renewed upon request depending upon the duration of the collaboration.

In the first and historic negotiation initiated in 1990, ‘logic and adherence to justice and equity’ reigned. From this point onward, INBio has chosen to continue to share with the government – in equal terms and when the collecting takes place in State-protected areas – the economic benefits that may arise with the aim to secure that the future benefits for the use of the biodiversity resources are allocated in their entirety to ‘knowledge and conservation of biodiversity’. Also, a principle was established for the Institute to act as a partner in joint research collaboration projects and not as a mere provider or supplier of raw material. This is to say that, to any biological resource used, INBio adds value of information and processing, which is valued and recognized by the partner (Gámez 1999).

Other relevant considerations were also established which served as the basis for the enactment of specific legislation in the area of access and use of genetic and biochemical resources of the country, such as the 10% contribution from the research budget which is transferred directly to the protected wildlife areas of the State, a monetary compensation in the form of royalties from those products that reach the market, technology transfer, training for national researchers, equipment, and the required infrastructure to conduct the proposed investigation and to strengthen national capabilities. These considerations imposed by INBio and particularly the guidelines established in the Wildlife Law, were the framework that supported all the activities developed by INBio until the end of the year 2003.

The Biodiversity Law began to take shape in the year 1996, when different groups manifested the need to consolidate and to provide legal support to the national system of conservation areas and to establish specific guidelines for the access and use of genetic and biochemical elements of biodiversity in the context of the CBD. Before and after the CBD, Costa Rica defined the rules of the game for the development of bioprospecting projects and the majority of them are reflected today in the enforced Biodiversity Law. National and international institutions, which have signed RCAs with INBio, know and have accepted these rules.

The Biodiversity Law was approved in 1998 and it laid out the basic requirements for access, the requirement for prior informed consent (PIC), the terms for technology transfer and equitable distribution of benefits, and the way in which the activities would contribute to the conservation of species and ecosystems. The application of the Biodiversity Law in the area of access came into effect at the end of the year 2003, when the specific guidelines to regulate access and use of genetic and biochemical elements of Costa Rican biological diversity were approved. With the entry into effect of the Biodiversity Law and particularly the above-mentioned guidelines, the requirements for granting the access permits became a little more complicated. An obligation is established to generate a file for each permit, to complete an access request form and a technical guide with information on the project and the documentation of PIC, which is granted, in the case of areas under the jurisdiction of the State, by the conservation area directors, 11 in total.

As with the Wildlife Law, the implementation of the new guidelines has taken time and in one way or the other, research projects have suffered delays. At one point, the academic sectors even expressed their concern that these guidelines would become an obstacle for the scientific and technological development of the country. However, the implementation process has evolved positively. INBio was the first organization to which a permit was granted under the new access guidelines and the first to establish a general framework agreement with the Technical Office of the National Commission of Management of Biodiversity (CONAGEBIO), in order to make procedures more agile. On another front, the Institute is discussing with SINAC the establishment of a unique procedure for the directors of the conservation areas to have a better response time for the requests of PIC coming from INBio. Until these procedures are optimized, the permits will not be secured in a period of less than two months, even though it might be a shorter time depending on the conservation area which has to grant the PIC. At this point the PIC is the most significant bottleneck in the process of securing an access permit.

But have these changes in the legislation pertaining to access and use of genetic and biochemical resources affected the negotiation of scientific collaboration agreements for bioprospecting? In all of the cases, the companies or organizations interested in working with INBio are apprised of the guidelines and the timeframe needed to obtain an access permit is explained to them. Also, it is stated that compliance with the scope of the agreement is subject to the granting of the access permit. In this manner, the only way that a negotiation may be affected is if a permit were not granted at all, as has occurred in countries such as Colombia or Brazil.

In the case of academic organizations, mainly material transfer agreements have been used and, in these, the sovereignty of the State over the biological resources has been emphasized. The use of the biological resources for purposes different from the ones of the agreement or for nonauthorized uses is precluded. INBio also reserves the right to intellectual property when applicable and the possibility of benefits in the case that a protectable discovery is found with possibilities to generate intellectual or economic gains.

National conservation policies and the level of awareness attained by Costa Ricans in regard to the importance preserving and sustainably using biodiversity as well as the existence of organizations like INBio have favored the establishment of bioprospecting agreements or contracts. In RCAs with national and international companies (pharmaceutical, biotechnological, agricultural) the scientific collaborations are structured under the philosophy of the State being a partner, not a supplier. Companies know about the enforced legislation from the beginning, they recognize the sovereignty of the country over its resources, and accept that compensation will be required for their use.

All of this has been possible thanks to the security and political and legal openness that the country has offered and, in particular, to the support provided by INBio. But not everything has been easy. The national and international critiques of INBio in reference to the signature of the original Merck agreement are well known and still remain today, particularly by those who insist on measuring the success of the relationship only in terms of monetary benefits and not by taking into account the benefits of training, infrastructure, capacity building via equipment, and positioning of INBio and the country as a true partner in the systematic search for products derived from biodiversity.

5.2 Key technologies used in the context of active bioprospecting projects

5.2.1 Bioprospecting projects: Objectives, partners, and negotiation process of contracts

Current bioprospecting projects are subdivided into two broad thematic areas: chemical prospecting and biotechnological prospecting. Within the framework of the former prospecting strategy, natural products – in spite of being valuable sources of therapeutic agents – have been alternately acceptable and unacceptable targets in pharmaceutical drug-discovery programs. This has been evidenced as well in the types of projects that INBio has pursued in recent times which are mostly academic, focusing on neglected tropical diseases. Projects typically last for several years, as was outlined above for inactive projects. Few of the past and current projects last for only one year and they are usually very limited in scope. Chemical prospecting projects

In the chemical prospecting realm, INBio participates in the ChagaSpace Project (for more information visit the web page www.chagaspace.org). This multicenter project – headed by Dr. Lawrence DeLucas from University of Alabama at Birmingham, AL USA – focuses on finding a solution to one of the most serious problems in public health of Latin America: American Trypanosomiasis or Chagas disease. INBio's participation involves the extraction and isolation of inhibitors of trypanothion reductase from selected plants and microfungi extracts. A total of nine participating institutions in five countries collaborate on this project: the National Aeronautics and Space Administration and the University of Alabama at Birmingham in the USA; the Escuela de Agricultura de la Región Tropical Húmeda (EARTH), the Universidad Nacional, and INBio in Costa Rica; the Universidad Católica del Norte and the Universidad de Santiago de Chile in Chile, the Universidad de la República in Uruguay, and the Instituto Nacional de Parasitología in Argentina. INBio negotiated its participation in this federally funded consortium through an agreement with EARTH.

In 2003, INBio started participating in a regional project entitled ‘Utilization of regional flora as a source for antifungal, antiparasitic and anticancer molecules’ headed by Dr. Mahabir Gupta at the Universidad de Panamá. The partners have been Universidad Nacional de Rosario in Argentina, the Universidad Mayor de San Andrés in Bolivia, the Universidad Nacional de Colombia in Colombia, the Universidad de San Carlos in Guatemala, and the Centro de Investigaciones Farmacognósticas de la Flora Panameña at the Universidad de Panamá and the Instituto de Investigaciones Científicas y Servicios de Alta Tecnología in Panamá. This project is funded by the Organization of American States (OAS) and involves the preparation of selected plant extracts to be assayed by the partner institutions as well as fractionation of promising extracts. INBio was invited to be a part of this consortium in 2003 by the principal investigator.

In order to follow up on the promising leads generated through the OAS-funded project, INBio applied for grant funding from the local Consejo Nacional de Investigaciones Científicas y Tecnológicas (CONICIT). The grant was approved and the project entitled ‘Phytochemical study of four selected species for the discovery of natural products with antifungal, antiparasitic and anticancer activities’ was initiated.

INBio is participating with Harvard University, Cambridge, MA USA in two grants, both recently approved and financed by the National Cancer Institute (NCI) and the Fogarty International Center at the USA National Institutes of Health. While the focus of the first grant, which is led by Dr. Chris Ireland from the University of Utah, is primarily centered on cancer, the second one, led by Dr. Jon Clardy, has a broader approach and includes central nervous system afflictions, cancer, and tropical parasitic ailments among others. In the case of INBio's participation the focus is on microfungi.

Thanks to the support of an Inter-American Development Bank/Multilateral Investment Fund project granted in 2000, INBio gained a relationship with the national productive sector and it was possible to apply the knowledge and technology acquired through the alliances with large companies. Under the scope of this support, INBio collaborates with Laboratorios Lisán S.A., a Costa Rican company, in a project to develop pharmaceutical products from popular medicinal plants. The first product from this collaboration, known as Q-assia®, was launched in 2004 and yielded the first royalty stream for INBio. This first product is based on a standardized extract of a tree from the Costa Rican flora known popularly as ‘Hombre Grande’ (big man) and whose scientific name is Quassia amara in the Simaroubaceae family. A second product was launched recently in 2006, marketed as Estilo®, and it is produced from a standardized extract from Justicia pectoralis, a tall herb in the Acanthaceae family. It was from the sale of Q-assia®, that INBio and MINAE received the first royalties for the access and sustainable use of Costa Rican biodiversity. Both products are produced and sold by the natural products branch of Laboratorios Lisán, called Lisanatura and the technological development transferred from INBio to the Costa Rican company involved the optimization and quality control of extracts, analytical methods to monitor standardization, and evaluation of suppliers of raw material. The research collaboration agreement signed with Lisán was profiled as a case study (Rosales 2004) in a project sponsored by the United Nations Development Programme's Special Unit for Technical Cooperation among Developing Countries, the Third World Academy of Sciences, and the Third World Network of Scientific Organizations.

An agreement with a Japanese academic institution has been recently approved and signed to evaluate the potential of Costa Rican plants in selected human health target areas. This constitutes INBio's first agreement with a Japanese university and the project is scheduled to continue until 2008. The collaboration will be expanded shortly to develop potential biotechnological products. Biotechnology prospecting projects

INBio has three on-going biotechnology-based projects with local partners:

Additionally, there are two projects with international counterparts:

INBio-Bioprospecting has also diversified its service portfolio to include fractionation services using its BioXplore© technology, educational talks, capacity building on negotiation processes, chemical analyses, and biological assays, among others. It has also strengthened its scientific guidance by establishing a Scientific Advisory Board with outstanding professionals both in the corporate and academic sectors. It is without a doubt that the negotiation processes in terms of bioprospecting have evolved. In time, the infrastructure, equipment, and mainly the acquired technology and knowledge have enabled INBio to establish relationships in more favorable conditions.

With a beginning in chemical prospecting and the establishment of a number of agreements in this area, INBio has a first-rate chemical laboratory, with qualified researchers in the development of projects that involved extraction, protocol standardization, and even structural elucidation. This has facilitated the establishment of agreements with the pharmaceutical industry, but also of research agreements with universities and research centers of great prestige such as Cornell University, Harvard University, and the National Cancer Institute in the USA and the Swiss Tropical Institute, to name a few.

Biodiversity prospecting did not stop at chemical prospecting. With the establishment of agreements with biotechnology industries, INBio established a Plant Biotechnology Laboratory, a Molecular Biology Laboratory, and a Microbiology Laboratory. Particular and specific projects are developed in each laboratory. But at the same time, activities to support chemical prospecting are carried out – be it development of cultures of undifferentiated tissue or ferments of microorganisms for the subsequent search for secondary metabolites.

With the passing of the years, there has been a diminished interest by pharmaceutical companies for natural products, so it has become more difficult to establish agreements in this area. Companies are not willing to invest large sums in random research. Biodiversity per se is not the only driver. Adding value to samples, not only from the standpoint of processing, but also from an information perspective about proven applications is preferred. Because of this, the strategy in past years has been to strengthen the Scientific Advisory Board, to widen the web of academic collaborators, and to access grants through strategic partners which would allow INBio to show attractive results for industry.

Along the same lines, emergent biotechnology industries have been an interesting option because they are a channel to reach larger companies both in the pharmaceutical and agricultural sector. The caveat there is that the research budgets do not compare with the ones that large companies were once willing to contribute.

This is how the portfolio of projects of INBio has been changing with time, giving more importance each time to the establishment of projects funded through grants for the generation of information about uses of Costa Rican biodiversity and their potential application in the control of important diseases such as cancer, AIDS, diabetes, Alzheimer's and other neurodegenerative diseases, malaria, and Chagas among others.

INBio also started to develop in-house projects, supported by funding from governmental organizations and other donors. The general interest is to continue to attract large industries to look at biodiversity as a source for new discoveries, so that national capabilities continue to be strengthened for the generation of knowledge about the value of biodiversity as a source for products and to support and tend to the needs of the national productive sector based on the intelligent and sustainable use of Costa Rican biodiversity.

5.2.2 Scientific technologies in the context of current bioprospecting projects

As commented previously, the Bioprospecting Strategic Action Unit has developed infrastructure to conduct basic chemical and biotechnological prospecting. As chemical prospecting deals with natural small compounds with potential value to the agrochemical and pharmaceutical industry, most proposals begins with the definition of the biological screenings that will be used, in order to define the quality of the sample needed. It is the current trend however, to avoid testing crude extracts in biological screenings (Eldridge et al. 2002).

Natural products have always accounted for drug discovery with exceptional hit rates. The review presented recently by Newman et al. (2003) provides a thorough and detailed analysis of the contribution of natural products to the development of therapeutic agents. For example, in the period of 1981 to 2002, almost half of small-molecule New Chemical Entities were either natural products or compounds based on natural products scaffolds. Nature has been able to provide very complex structures and therefore it is expected to offer a higher chemical diversity than synthetic compounds (Clardy and Walsh 2004, Koehn and Carter 2005).

Despite this clear trend and the service that natural products have provided to the pharmaceutical industry, most companies shut down or downsized their natural products branches and invested heavily in the construction or acquisition of synthetic libraries. This has been the trend since the early 1990s, when two technological breakthroughs made their appearance: combinatorial libraries and high throughput screening (HTS) systems. HTSs are designed to screen automatically at least one thousand samples per day; therefore, throughput or number of samples available for screenings becomes the issue. Additionally, the post-genomic era provides highly valuable information of metabolic pathways and the discovery of key molecular targets is possible. The understanding of diseases now translates also to better and improved assays, which may also provide the information of a possible mechanism of action. These assays evolve usually every three months, and therefore, the chemical structure of a positive tested sample must be elucidated within that period. This sort of information is available prior to screening when dealing with a synthetic or combinatorial library, which is often not the case with natural products. This fact, in addition to the ‘re-supply issue’ explained before, is the main reason why natural products have been unpopular within recent drug-discovery strategies. Natural sources were tested traditionally as extracts on in vitro whole-cell assays and therefore chemical composition was usually not known. With the development of target-based screenings, extracts cannot always be used, mainly because of the complex constitution of natural compounds (ranging from 10 to 200), possible interference with the detection method and finally, the actual concentration of the active metabolites within the matrix.

To some important extent, these challenges have been addressed by different organizations (Abel et al. 2002, Eldridge et al. 2002) and INBio is not the exception. In order to study less complex matrixes, increase the number of samples for screening, and handle samples ready for automated screening and structure dereplication, the logical strategy is to either pre-fractionate (to produce fractions with two to five compounds maximum) or to fractionate (to produce fractions with one major component with at least 75% purity).

INBio has established the BioXplore© Technology, the initial platform to produce a significant number of fractions or compounds from complex matrixes. The system is fully automated and can fractionate a fairly clean extract of 5 to 10 grams in about 2 hours. It can be programmed to different conditions according to the sample size and nature and provides also the resources to clean crude extracts prior to fractionation when needed. The BioXplore© Technology can generate up to 1,500 fractions per week and while there are still some features that need improvement, it has provided services already to industries and research institutions in Costa Rica and abroad. The system is also designed to produce compounds with at least 90% purity and has been used to produce natural standards for the validation and standardization of herbal products and phytopharmaceuticals.

The infrastructure that is currently at INBio enables scientists to perform selected biological screenings. In 1994, INBio set up a small microbiology facility to perform antibiotic tests. Later on, INBio increased its portfolio of screenings to include a Caenorhabiditis elegans test for detection of nematicidal proteins, the basic brine shrimp test for general toxicity and, more recently, antifungal tests for the detection of pathogen inhibitors, the Aedes aegypti larvicidal test, and a molecular target assay for the development of anti-chagassic leads, based on the inhibition of trypanothione reductase, Plasmodium falciparum glutathione reductase, and the human glutathione reductase.

INBio considered expanding the screening facility, but it was clear that significant investment would be required. On the other hand, INBio has built a large and long-lasting number of collaborators, who in turn, have top-of-the-line screening facilities or have access to them. INBio focuses its in-house efforts towards tropical diseases, especially Chagas disease, one of the most striking diseases causing high rates of mortality and morbidity in Latin America.

The 2003 RCA with the Institute of Chemistry and Cell Biology (ICCB) at Harvard Medical School that allowed HTS of INBio's extracts and thousands of fractions from fungal strains was made possible by an R-21 planning grant financed by several USA institutions: Fogarty International Center, National Institute of Allergy and Infectious Diseases, the National Institute of Mental Health, the National Science Foundation, and NCI. The HTS resources that ICCB offers are rather large even for academic standards. Natural products are prepared in 96- and 384-well microtiter plate formats. By the end of the project (April, 2005), INBio was able to set up a large culture facility that screens hundreds of fungal strains added per year. This project provided a nice example of how INBio had to increase capacity, improve protocols, re-create methods to optimize extraction, improve yields, and, finally, formulate a data system large and diverse enough to track samples from collecting up to pre-fractionation.

The project had several different goals and challenges. The most important goal was to create the basis for the research collaboration with ICCB from the legal and technical standpoint. Once the agreement was signed, activities related to collection, culturing, fermentation and preservation of fungal endophytes, extraction, and pre-fractionation of their cultures were set up and improved, with the aim to increase the number and the quality of samples. This had to be done in a time frame of less than two years, which was accomplished. It involved several workshops on culturing, preservation, and preliminary morphological taxonomy and provided the basis for the execution of the project.

The infrastructure built to conduct chemical prospecting has evolved throughout the years, to respond accordingly to different needs and trends of the drug-discovery scenario. Nevertheless, as commented before, the pharmaceutical industry invested significant funding in building synthetic libraries, which by typical standards, are in the 106 range. This, however, is beginning to change towards the acquisition of natural products, which must be prepared in formats agreeable to HTS standards.

INBio also grew in the gene prospecting area. The Bioprospecting Unit recognized the opportunity of biotechnological and genetic prospecting, and therefore has invested lately on potential ornamental plants, microorganisms (cultured and uncultured), and molecular taxonomy. The Plant Biotechnology Laboratory, set up in 1998, developed protocols for micropropagation of leads and is currently producing orchids, bromeliads, and other potential ornamentals. These in vitro plants could be either introduced in the market as baby plants (export) or could be transferred to a nursery facility for national distribution.

Microorganisms are a rich source of secondary metabolites and proteins. In this regard, INBio invested in training of human resources and equipment acquisition to set up the microbiology and mycology laboratories for bacterial, actinomycetes, and fungal isolation and culturing. These resources will be expanded shortly thanks to the recently awarded grant (end of 2005), as part of the ICBG project, which continued the efforts under the R-21 grant described earlier.

On the topic of uncultured bacteria, INBio is participating on an exciting project to discover cellulases (Brennan et al. 2004) that could degrade cellulose to glucose. Diversa Corporation, along with the California Institute of Technology, Pasadena, CA USA (Caltech) and the USA Department of Energy Joint Genome Institute, is supporting this initiative at INBio. Termites primarily are being used as a source of bacteria. Bacterial DNA is extracted and screened for cellulitic activity. The final aim is to obtain enzymes able to assist in the conversion of biomass into value-added products, such as glucose and ethanol.

The alliance with Diversa Corporation has been very strategic to build capacity of human resources and to set up the molecular biology laboratory. The laboratory is currently focused on DNA extraction, which could be sequenced abroad and analyze afterwards for molecular taxonomy determination and phylogenetic analysis. Following up on this capacity and under the R-21 umbrella, INBio evaluated a random selection of 100 endophytic fungal isolates to determine the redundancy and diversity of the collection of more than 700 strains gathered in seven months' time. Currently, INBio is also participating, along with the University of Costa Rica and with the support of the Organization for Tropical Studies and the Instituto Centroamericano de Administración de Empresas (Central American Business School) in the evaluation and analysis of DNA data obtained from two marine water samples, gathered by the Sorcerer II expedition at Coco's Island, as part of the Global Program initiative of the J. Craig Venter Institute. It is expected that this sort of information will provide a better understanding of ecosystems and assist in their management.

5.2.3 Contractual provisions: Addressing scientific issues and transfer of technology

No two agreements are exactly the same and the negotiation process in each case is profoundly affected by the people and policies of the institutions involved. Having said this, throughout the negotiation processes, the INBio team keeps in mind the key elements addressed previously and conveys them to the partnering organization from the beginning. The technology transfer and training component-related contractual provisions include elements such as: transfer of proprietary information and equipment, training sessions, protection of inventions, and guidelines for publications which shall be addressed below. Transfer of proprietary information and equipment

This clause is typically associated with the confidential information provision. Partner organizations transfer proprietary information (i.e., protocols), clearly marked as ‘confidential’, so that INBio can use it in the performance of the research activities under the agreement. INBio may continue to use the information for internal purposes as long as it does not disclose the confidential information to a third party. Confidential information is protected for a defined period of time. All the staff working on the project sign confidentiality agreements to ensure protection of the proprietary information. In the case of subcontracting of certain activities, the same provisions apply. INBio scientists may also optimize the protocols and make corrections for the partner along the way so the partner also benefits from these upgrades.

There have also been agreements, especially in recent times, where the protocols used are the ones INBio has optimized through the years. The partner does not supply proprietary information for the early stages of the project. Its proprietary information might be more focused on the screening aspect of the collaboration.

In those cases where INBio does not have the appropriate equipment to conduct the research, the agreement includes the donation of those resources to INBio, and while most agreements are very flexible in their broader utilization, certain agreements restrict their use for length of the agreement term. Others are left wide open for the equipment to be used whenever it is needed. In all the different collaborations, one core element stands out: once the project concludes (project becomes inactive), the equipment is property of INBio or its local collaborators (as the case may be) and may be used for subsequent projects. This is how capacity building is ensured. All technologies acquired by INBio involve heavy reliance on infrastructure and equipment. Training

Agreements typically include provisions for local scientists to be trained by the partnering institution either in the partner's facilities or in INBio. Some of the agreements that are for two or more years stipulate formal follow-up training sessions at least once per year. The training sessions are targeted to at least two local scientists each time to ensure that the knowledge can be transferred adequately to the rest of the team working on the project and to secure the continuity of the research in case one person were to leave. Protection of inventions

Standard agreements address this issue by defining three categories of inventions: sole inventions by INBio, sole invention by the partner, and joint inventions. Compensation is negotiated regardless of who owns the inventions that give rise to a product since the materials ultimately originated from Costa Rica. Diverse scenarios for licensing of sole inventions by INBio to the partner, assignment of rights, and maintenance of patents may also be included. In federally funded projects, rights to inventions by the donor are addressed in the agreement as well. Publications

In many agreements, provisions for joint and independent publications are included. Manuscripts have to be revised by each of the parties and in some cases approved for publication. Contributions by each of the parties' researchers and the funding sources have to be accurately acknowledged.

Publications when dealing with corporate partners have not been easy, especially since companies are very protective of results in order not to jeopardize the intellectual property. This has been one of the obstacles in getting the word across about the value of biodiversity based on concrete results. However, efforts along these lines have been made with corporate partners such as Diversa (Brennan et al. 2004) and Laboratorios Lisán S.A. (Rosales 2004). Benefit sharing

Research budgets, milestones, and royalties payments are in accordance with the agreed-upon activities, added value, and intellectual property rights. In the former, activities are thoroughly described in a work plan that is an annex to the RCA. Milestones and royalties are negotiated up front and depend on several issues, such as targeted markets in addition to those already mentioned.

The national and international industrial partners provide the research budget for the proposed project and an additional up-front fee for conservation consisting of 10% of the said research budget amount is also negotiated. The 10%, if granted, is forwarded to MINAE. From these up-front fees (generated from 1991 through 2004), more than US$600,000 have been transferred to MINAE for conservation-related activities. Budgets range from a few thousand dollars to the famous one million-mark set by the 1991 INBio-Merck & Co, Inc. agreement. Additionally, these bioprospecting deals have contributed more than US$1,500,000 to the conservation areas and public universities of Costa Rica. The approximate economic value of the training of local scientists, the equipment, and infrastructure that these deals have meant exceeds US$1,700,000. In terms of royalty payments based on sales of products generated through collaborations, INBio has received payments from Laboratorios Lisán S.A. and from Diversa Corporation. Although this is a small quantity, it has been very significant and it has already been shared with the MINAE for conservation. Furthermore, INBio still sees significant potential in this regard within the current agreements. It takes several years from basic research to potential patenting and commercial application of active agents and INBio has been apprised of promising developments for year 2007.

When INBio makes a larger contribution to the research and development phases in terms of expertise, proprietary information, equipment, and infrastructure, the Institute has more room to negotiate monetary benefits. This has been the case for the collaborations with local companies and, in recent times, for certain collaborations with international organizations. Negotiators emphasize the INBio strong points from a scientific and technical perspective, but also recognize weaknesses that would need to be addressed during the project. When INBio has added little value from a scientific and technological standpoint, nonmonetary benefits such as equipment and training were emphasized.

5.2.4 Technologies and scientific training transferred to INBio

INBio relies significantly on its collaborators to build internal capacity and to access new technologies. As discussed before, INBio's RCAs involve access to protocols, training opportunities, and technology transfer. All collaborations with foreign institutions and industries include this sort of noneconomic benefits, which in the long run, permeate to national institutions and industries.

Three examples will be discussed briefly. In 1998, Eli Lilly & Co., Inc., Indianapolis, IN USA, began an ambitious program called Isolating Compounds from Extracts (ICE). The aim of the project was to produce clean fractions in an automated fashion, which will be submitted later on to molecular target screenings. In 1999, the company signed an RCA with INBio, to obtain fairly clean plant extracts. The work plan covered a period of 12 months, and involved two months of training of two INBio chemists on the ICE strategy at Eli Lilly, as well as access to the cleansing protocol for plant extracts and feedback on the chemical analysis of the fractions. After the finalization of the RCA, INBio attempted to acquire an alternative technology to ICE and in 2001 began a negotiation process with Eli Lilly for the donation of the equipment, which was achieved by 2002, thanks to the support of CR-USA and the Amigos of Costa Rica foundations. The donation included the refurbishing of the equipment, training of personnel on basic maintenance, transportation, and installation at INBio. Additionally, it included a significant amount of consumables that included chromatographic support and supplies for the plant extract cleansing protocol. INBio developed human interface software to operate peripherals. This set up resulted in the BioXplore Technology©, described earlier. The final transferred technology has an approximately value of US$1,500,000.

Diversa renewed the RCA (formerly with Recombinant Biocatalysis, Inc.) with INBio in 1999 for a period of two years and the collaboration was extended in 2001 for an additional six years. The training of INBio scientists is the focal point of the collaboration, whereas each year the personnel receive training either in situ or at Diversa's headquarters. Diversa provided the equipment for the setting up of the molecular biology laboratory and contributes with reagents and access to their technology for in-house projects. As a result of this collaboration, INBio co-authored a publication on the xylanases program in 2004 (Brennan et al. 2004), and many more are expected to occur in the near future. The training in year 2005 and 2006, involved the participation of experts from the Joint Genome Institute, CalTech, and Diversa, who traveled to Costa Rica.

Finally, the research collaboration agreements based on USA federal funding are focused mainly on capacity and infrastructure building. The ICBG planning R-21grant, awarded to Harvard and INBio in 2003, provided for a number of workshops on isolation and culturing of endophytic fungi (2003) and on development of taxonomic skills (2004). As a result, INBio's scientists are able to design and improve protocols for culturing by evaluation of chemical fingerprints, to initially discriminate ubiquitous fungi, and to use molecular techniques to evaluate redundancy and diversity. Towards the end of the grant, INBio and Harvard built a strong infrastructure for the collection, isolation, preservation, culturing, extraction, and pre-fractionation of fungal samples and set up a culturing room for medium-throughput fermentations.

These examples illustrate the potential of research collaboration following the framework initially established. Many of INBio partners have made considerable investments in the development and protection of both their technology and intellectual property. In the majority of agreements, the partners, especially international ones, have contributed these two elements to the projects being undertaken. INBio has emphasized technology transfer and training when these collaborations have been structured. What the Institute brings to the negotiating table are limited access to biodiversity, a clear legal framework, a skilled human resource, the ability to provide intermediate products, and a contribution to biodiversity conservation.

When INBio has limited expertise on the topic of the proposed project, its negotiating strategy focuses on capacity building and on the idea that this research would be more cost effective for the partner when carried out by local scientists. In this scenario and depending on the value that the organization can add to the overall process, the agreement reflects INBio's contribution and the associated benefits. When INBio acts as an implementer of technology that is proprietary to the partner, optimization takes place but the Institute has little influence on the scientific direction.

In other instances, INBio is the holder of the chemical or biotechnological prospecting expertise in the project and hence its impact is significantly different. In the agreements with national companies, INBio brought to the projects expertise that another party would rarely have been able to provide and created technological packages (protocols) that were transferred to the local partners – together with training – for implementation and scale up. Partner organizations were also responsible for production and commercialization aspects. As can be perceived, tables were turned and INBio was the one building capacities within the country and the agreements signed with the Costa Rican companies reflected this. More interactions on the overall scientific direction of the project occur when INBio contributes directly with know-how and technology.

It is important to clarify that benefits are negotiated both when technology is transferred from the partner to INBio and vice versa. The guiding principle being that Costa Rican biodiversity is being accessed and researched to see if a potential product can be derived therefrom and that both the organization and the country are entitled to benefits from such products. Of course, when INBio adds more value to the overall process, the percentage of the benefits negotiated is higher.

5.2.5 Issues that may hinder science and technology transfer

Agreements have been tools used for the empowerment of national scientists. In spite of this fact, there might be some issues that could be improved in the structure of RCAs, which must be negotiated beforehand.

Equipment: Some RCAs establish that only their own nationally manufactured equipment can be purchased or donated. This is a limitation, since not all manufacturers produce quality hardware. Additionally, developing countries lack certain needed support infrastructure; without it, the proper operation of the equipment is compromised. Maintenance and repair is usually slow and expensive, and therefore, a developing country has to evaluate carefully the type of infrastructure it can support. Some RCAs restrict the use of the equipment to a particular project, which is not desirable when maximizing resources is key. Finally, some countries have high import taxes even for equipment that is supposed to be used for building national human capacity. Some of these issues are hard to overcome, since they are external to the negotiation process and to the agreed RCA. Nevertheless, efforts are focused on obtaining proper and fair technology and equipment and to secure their maintenance in the long run.

Training/capacity building: Training is centered – as can be expected – on the areas and programs of a given RCA and therefore, it is highly likely that some key technologies are left aside. One alternative to this unavoidable fact is to negotiate at least one training possibility following the needs of the Institute. This is highly feasible but must be included in the negotiation. Training must include as well the elements for maintenance and repair of hardware. One sensitive aspect that must be carefully considered is the possible nurturing of overqualified personnel that could feel unchallenged if the proper infrastructure is not in place. If an institution has a strategic plan for capacity building, this issue becomes unimportant. On the other hand, the investment in of critical mass loss. In a project-driven research model training human resources must consider the possibility this is a fact of life that has to be dealt with.

5.3 Mergers, assignments and market impacts

Contractual provisions have been evolving while INBio has been strengthening its technological capacity. Technological development and the mergers that companies are involved in to acquire innovations, especially in the biotechnology area, have obligated INBio to adapt contractual provisions in its bioprospecting agreements, particularly those related to the definition of ‘product’, the assurance of accurate tracking of the information generated, and the future benefit margins in accordance with the added value of products developed.

Currently, pharmaceutical and biotechnological companies target the search of novel products for different markets, so it is necessary to foresee all possible developments that may arise from a given sample. This is especially important when considering projects in the gene-prospecting area, in which biotechnological tools allow the multiplication and manipulation of the genome. Hence, contractual provisions are established in order to obtain as much information as possible of the use and destiny of the samples, which include reporting and the possibility of INBio auditing the companies where much of the investigation takes place. In the same manner, it is stated explicitly that Costa Rica is the owner of the resource and that as such it must be compensated in case of future benefits.

There is no doubt that with technological advances, the elements of biodiversity may attain an insurmountable value, given the potential of the unknown and the capability of human beings to add value along the development chain of a product. This is why other provisions related with the compensation of potential benefits derived from intermediate products or products that advance in the development pipeline or ‘milestone payments’ have been stipulated. Milestone payments are received before a product reaches the market. In the earliest bioprospecting agreements, these payments were not contemplated.

While INBio has acquired knowledge and strengthened its technological capacity to meet the demands of diverse companies, it has established provisions to include the possibility of INBio becoming a developer and the sole owner of a product obtained from the same samples shared with companies. In this scenario, INBio may apply for patents individually or in a joint manner.

Another aspect that has been reinforced contractually has been the confidential nature of certain information and restrictions against sharing it with third parties. It could be argued that projects that use high technology to decode the genome of diverse organisms whose intent is to make information public and free to all, independently from their origin, jeopardize the sovereignty of the countries over their resources and truncate the possibility of future benefits in those cases when that information is used with commercial purposes by third parties. Hence, the current contracts are very strict in these matters and the aim is – above all – to guarantee that the material shall only be used by the partners for the stipulated uses and if it needs to be transferred to third parties, it should have the corresponding authorization by INBio. Additionally, the new recipient has to assume the responsibilities of the original one.


There are several key components to the development of bioprospecting within INBio as discussed in the previous sections. Science and technology have clearly influenced the way that INBio negotiates and conducts its activities. Information and communication technologies have greatly facilitated contact between prospective partners and INBio in a cost-efficient manner. The fully digitalized biodiversity informatics database, the barcoded label system to track every sample from beginning to end, and the automated fractionation process are all assets that are highlighted in negotiations.

From a general standpoint, the Bioprospecting Unit has built its credibility on scientific knowledge, legal and responsible access to biodiversity, highly skilled human resources, and processing technology. These are the core elements of its negotiation position. As explained in this chapter, research collaborative agreements have been a channel for technology transfer (lab facilities, protocols, and high tech and standard equipment), access to current information (selected partners provide INBio with publications and share presentations on their recent advances and work during their visits), and the training of national scientists.

The basic technologies acquired enable INBio to perform activities in country and have formed the core of the chemical and biotechnological processes which are managed by a multidisciplinary team. The capabilities in place for bioprospecting are rarely found in research institutions in developing countries and put INBio in a solid position when an RCA negotiation begins. Additionally, the unique organizational platform of INBio is not easy to replicate, it is a hybrid, combining a museum, a chemical and biotechnological laboratory, and an educational center.

It should not be forgotten that bioprospecting, from the INBio standpoint, is one more avenue to travel the path to conservation. As such, advances in the science and technological aspects are really geared towards an improved position to promote the awareness of the value of biodiversity.

Finally, the clear legal framework that Costa Rica has adopted, is the basis of any given bioprospecting collaborative agreement. In spite of the fact that improvements on the legal framework can still be made, INBio has helped CONAGEBIO in its implementation and several permits have been awarded to INBio since the entry into effect of the National Guidelines for Access to Genetic and Biochemical Resources in December 2003.

Undoubtedly there are many assets that a biodiversity-rich country can bring to the negotiation table with an industrialized country, but the technological gap will be hard to overcome. The most successful approach in INBio's experience is the development of a web of strong and enthusiastic collaborators, which enables access to high-tech infrastructure and cements long lasting relationships.


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