May 2012

The IP Negotiations Monitor summarizes the latest developments in multilateral and regional fora where intellectual property negotiations are taking place, and informs on upcoming meetings and events.

(Covering period January-March 2012) 

T.R.A.D.E. Occasional Papers 12 December 2003

Executive Summary 

Genetic resources, traditional knowledge and folklore are simultaneously valuable internationally traded assets and the intensely symbolic property of traditional communities. The conventional intellectual property rights system does not provide adequate recognition of the unique nature and context of genetic resources, traditional knowledge and folklore and, as such, both defensive protection under the conventional framework and the development of a sui generis regime need to be considered. As the World Intellectual Property Organization’s (WIPO) Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (IGC), commences work under the extended mandate decided at the thirty ninth series of meetings of the WIPO Assemblies in September/October 2003, it is essential for developing countries to consider a number of issues regarding the protection for genetic resources, traditional knowledge, and folklore:

The protection of rights in genetic resources could clearly benefit from a normestablishing forum that would play an advisory role to sectoral fora, such as the Convention on Biological Diversity (CBD), the Food and Agriculture Organization (FAO) and the World Trade Organization (WTO), and the agreements that they monitor and implement. The varied nature of the application of genetic resources for commercial and other purposes suggests that intellectual property rights issues relating to them could be better addressed through this means rather than by means of an international instrument whose scope and objectives would be difficult to clarify. The protection of rights in traditional knowledge, whether commercial or cultural in nature, requires the establishment of a binding international regime. However, there is, as yet, insufficient information regarding the scope, nature and objectives of such a regime. The elaboration of this information should be undertaken as a matter of urgency and with the clear statement that the intention is to use it as the basis for the development of a binding international regime. In the interim, a norm-establishing forum to play an advisory role to national intellectual property offices and international fora regarding the consideration of the defensive protection of traditional knowledge under the conventional intellectual property rights framework is required. The protection of rights in folklore, whether commercial or cultural in nature, also requires the establishment of a binding international regime. Unlike the situation with traditional knowledge generally, there is already a substantial body of knowledge that could serve as the basis of negotiations for the development of this regime. A key question for countries is whether they wish to establish a regime for the protection of folklore in parallel with one for the protection of traditional knowledge generally or whether they wish to address these two related fields in the same instrument. The continuation of the IGC in its current form, with a broad or ambiguous mandate, creates a risk that it will spend a significant proportion of its time establishing its specific objectives. To avoid this, specific proposals, such as for an international instrument with clearly definable objectives and possible mechanisms, need to be made in the March 2004 session. These proposals should seek the support of the widest possible grouping of developing countries at the earliest opportunity. The objectives of the extended mandate of the IGC should focus on establishing focused frameworks for future action, and the basis of the substance of this action, rather than on the, perhaps impossible, goal of adopting the detail of a binding agreement. A clear identification of the objectives, scope and basic mechanisms of an international agreement, and the means for its completion, should provide enough momentum for finalising the negotiation of a binding agreement even after the expiry of the IGC’s extended mandate.

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TRADE-RELATED AGENDA, DEVELOPMENT AND EQUITY (T.R.A.D.E.) Occasional Papers 9

by Manuel Ruiz - October 2002

Executive Summary

i. Over the past few years, the patent system has come under considerable criticism for its failure to prevent the misappropriation of traditional knowledge. While there is wide agreement that positive protection of traditional knowledge can not be successively accomplished through the patent system, increasingly, consideration is being given to suggestions to use the patent system as a defensive measure against misappropriation of traditional knowledge. One option under discussion in both the WTO and at WIPO is to introduce changes in the system both in terms of rules and practices to ensure that prior art searches fully take into account existing traditional knowledge as part of the state of the art. ii. The concern is primarily that patents have been granted for inventions which did not meet fundamental requirements for patentability, when compared to traditional knowledge from which these inventions might have directly or indirectly been derived from. Had the relevant traditional knowledge been known to patent examiners at the time of examining the patent applications, it would have been considered as prior art and, subsequently, may have defeated the claims that the invention was new and involved an inventive step. In a nutshell, the problem that this paper seeks to address is the following: Although there is traditional knowledge being held and used by indigenous peoples and there are publications, databases, journals, periodicals and other means through which traditional knowledge is being disseminated and made public, rarely is traditional knowledge considered as part of the prior art during examination of patent applications.

iii. This paper is aimed at examining some aspects of the debate on whether and how traditional knowledge could formally be considered as prior art during the examination of patent applications. It discusses the role of databases in making traditional knowledge accessible for purposes of prior art searches and makes recommendations on how best to ensure the patent system does not undermine efforts to protect traditional knowledge. The debate on mechanisms to protect traditional knowledge is no doubt a large and extremely complex one and this paper does not intend to be a comprehensive and detailed analysis of the different issues at stake. The intention is to highlight some salient features of the on-going debate on recognizing traditional knowledge as prior art in the patent system and the issues arising with regard to systemizing traditional knowledge in databases as a defensive measure to protect traditional knowledge. iv. The paper first looks at definitional issues regarding prior art and the importance of the concept within the patent system. Secondly, the paper examines the relevance of traditional knowledge as prior art in the patent system. Thirdly, the paper reviews the general problems related to traditional knowledge as prior art under the patent system. The paper then examines the definitions of prior art in Japan, the US and under the European Patent Convention, as well as current trends and practices in page viii these systems and under the Patent Cooperation Treaty system. Sixth, the paper looks at progress in the discussions on traditional knowledge as prior art within WIPO and in the other fora in which the issue is being discussed. Finally, the paper presents some specific recommendations on how to improve operational aspects of prior art searches to cover traditional knowledge.

v. The recommendations underscore the need to ensure that the International Searching Authorities under the Patent Cooperation Treaty system and national patent offices, fully take into account relevant traditional knowledge when such knowledge constitutes prior art in relation to a claimed invention. At present, the International Search Guidelines under the Patent Cooperation Treaty and the practices of designated searching authorities do not include a specific requirement for the review of traditional knowledge during patent searches. In this context, the paper considers issues and suggests options regarding: a) how information relating to traditional knowledge which is in the public domain can be made available to patent offices through, for example, databases; b) developing appropriate information systems on traditional knowledge; and, c) formally recognizing traditional knowledge as prior art for purposes of examination of patent applications. Incorporating traditional knowledge into systematic and organized databases, however, raises questions regarding the impact of these organizational measures on indigenous people. Consequently, the paper also emphasizes the importance of taking into account the impact the codification of traditional knowledge might have on measures being put in place to positively protect traditional knowledge. vi. Apart from making recommendations for the improvement of the search procedures through mechanisms such as databases and traditional knowledge registers, another option explored in the paper is requiring patent applicants to disclose if any traditional knowledge forms part of the claimed invention. In cases where traditional knowledge forms part of the claimed invention, the paper recommends that patent applicants disclose the source of such traditional knowledge and provide evidence of prior informed consent and equitable benefit sharing with the source communities and/or countries.