TWN Info Service on Intellectual Property Issues (Apr14/01)
02 April 2014
Third World Network

WIPO: Traditional knowledge treaty text inches forward
Published in  SUNS #7775 dated 1 April 2014

Geneva, 31 Mar (Alexandra Bhattacharya*) -- A draft text for a treaty on the protection of traditional knowledge (TK) will be transmitted to the membership of the World Intellectual Property Organisation (WIPO) for its consideration in September this year.

However, many developed countries remain opposed in varying degrees to a legally binding international agreement.

At the same time, developed countries have submitted several proposals, including on databases, which developing countries regard as delaying the text-based negotiations on genetic resources and associated traditional knowledge as mandated by the WIPO General Assembly.

Nigeria expressed concern that these proposals can lead to "possibility of delay", "possibility of distortion" and the "inevitability of delay".

The TK text, after the latest round of negotiations last week (24-28 March 2014) at the WIPO Intergovernmental Committee on Intellectual Property, Genetic Resources, Traditional Knowledge and Folklore (IGC), is heavily bracketed with several alternatives in most of the Articles. This reflects the continuing deep differences between developing and developed countries.

The Fifty-Fourth Series of Meetings of the WIPO Assemblies on 22-30 September will "take stock of and consider the text(s), progress made and decide on convening a Diplomatic Conference, and will consider the need for additional meetings, taking account of the budgetary process".

The 27th session of the IGC will now proceed to consider text on traditional cultural expressions (TCE) in the second week of its meeting at the WIPO headquarters in Geneva (31 March to 4 April).

(The text on genetic resources from the 26th session held on 3-7 February, which is also heavily bracketed, will be transmitted to the WIPO General Assembly too for decision on convening a Diplomatic Conference, a formal procedure to conclude a treaty.)

The first revision (Rev. 1) of the text on the "Protection of Traditional Knowledge: Draft Articles" was circulated at the plenary meeting on the morning of 27 March.

The revised text prepared by the three facilitators - Ian Goss (Australia), Margo Bagley (Mozambique) and Nicolas Lesieur (Canada) - sought to incorporate comments made during last week's "informal" expert group meetings that were spearheaded by the IGC Chair, Ambassador Wayne McCook (Jamaica). (See SUNS #7772 dated 27 March 2014.)

After another round of discussion on the morning of 28 March, a Rev. 2 version was circulated the same afternoon.

The key changes in the Rev. 2 TK text include the following:

* "Policy objectives" have been split into two (there is now a preambular/introductory section and an operational "Policy Objectives" section);

* "Principles" have been removed;

* There is now a "Use of Terms" section which deals with the definitions including on "misappropriation", "misuse", "public domain", "publicly available", "traditional knowledge" and "use/utilization";

* Article 1 on "Subject Matter of [Protection]/[Instrument]" is a cleaner text with three distinct elements based on concepts of collective creation and maintenance, linked with the cultural and social identity, and transmitted from generation to generation;

* Article 2 on Beneficiaries of Protection is now more closely aligned with the TCE text. In particular, in Article 2.2, there is a reference to Member States designating a national entity as a custodian of the benefits/ beneficiaries of protection. "Nations" as beneficiaries remains in brackets;

* Article 3 on Scope of Protection now has a "tiered approach" which distinguishes the various types of TK ("publicly available but neither widely known, sacred nor secret");

* A new Article 3 bis has been created which deals with all "Complementary Measures" such as development of databases;

* Article 4 on Sanctions, Remedies and Exercise of Rights/Application has text that is more streamlined and "alternative" options have been removed though many brackets remain;

* Article 4 bis on disclosure requirement is entirely in brackets with the contested text unchanged;

* Article 5 is now titled "Administration [of Rights]/of Interests" with streamlined text;

* Article 6 on Exceptions and Limitations have been streamlined and shortened;

* Article 7 on Term of Protection/Rights now has one paragraph that reads: "[Member States]/[Contracting Parties] may determine the appropriate term of protection/rights of traditional knowledge in accordance with Article 3/[[which may] [should]/[shall] last as long as the traditional knowledge fulfills/satisfies the criteria of eligibility for protection according to Article 1";

* Article 8 on Formalities now has only two options that read:

Option 1: "[Member States]/[Contracting Parties] [should]/[shall] not subject the protection of traditional knowledge to any formality."

Option 2: "[Member States]/[Contracting Parties] [may] require formalities for the protection of traditional knowledge."

* Article 9 on Transitional Measures has been streamlined;

* Article 10 is changed: in Rev. 1, it was titled "Consistency with the General Legal Framework" with specific reference to the Nagoya Protocol on access and benefit sharing to the Convention on Biological Diversity (CBD) and optional additions such as the UN Declaration on the Rights of Indigenous Peoples. In Rev. 2, it is an entirely bracketed provision and reads:

"[ARTICLE 10

"RELATIONSHIP WITH OTHER INTERNATIONAL AGREEMENTS

"This instrument [should]/[shall] establish a mutually supportive relationship [between [intellectual property [patent] rights [directly based on] [involving] [the utilization of] traditional knowledge and with relevant [existing] international agreements and treaties.]"

* Article 11's heading now reads "National Treatment" with the deletion of the words "and other means of recognizing foreign rights and interests" but the three alternatives remain unchanged. The whole Article is bracketed;

* Article 12 on Transboundary Cooperation has been streamlined and shortened.

Member States expressed the following views on the Rev. 1 text:

Kenya, on behalf of the African Group, said that the Group thought that the text was clearer and heading in the "right direction". It did not make specific textual comments in the plenary but said that it hoped that all the remaining articles would be discussed for a comprehensive second revision of the text.

El Salvador said that it welcomed Article 1(c) which stated that the subject matter of the instrument would cover TK which was transmitted from generation to generation, whether consecutively or not. It also said that it was satisfied that the burden of proof was not on the IP office. It added that it was grateful for flexibility in order for national legislation to fill the gaps.

Peru queried as to why "peoples" in the context of indigenous was still in brackets throughout the text.

Indonesia also said that it was ready to "negotiate on the basis of this text" and reserved its specific comments on subject matter, beneficiaries and complementary measures for the expert group process.

India said that specifically on subject matter, it was glad to see that the notions of eligibility had been removed and that the conditions were now not cumulative but standalone. India said that there was a lot of improvement in the scope of protection. It added that it would like to make a reservation on complementary measures (Article 3 bis), stating that they could not be mandatory.

The European Union said that the preamble of the text, while helpful, had not been previously discussed. It said that, "this was the first time we have a preamble". It asked for "reward" to be bracketed in the policy objective of "encourage and reward [and protect] tradition-based creativity and innovation".

It stated that "IP instruments don't offer rewards". It further said that Article 1
(Subject Matter of Protection) was still missing a definition of traditional knowledge and asked if the facilitators were planning on introducing one. (This has now been added to Use of Terms in Rev. 2.)

The EU also stated that in Article 2 (Beneficiaries), "nations" should be bracketed. It added that the current language in Article 3 (Scope of Protection) which included the tiered approach left the lines between different types of diffusion unclear. It also stated that Article 3.1 (Scope of Protection) was based on a "rights based approach" which it was not ready to support. It also added that "peoples" should be bracketed even though it was an emotive issue. It said that solutions were found in the CBD and Nagoya Protocol.

Brazil said that the three different levels found in Article 3 (Scope of Protection) deserved careful review from Member States as this was the first time "levels" of protection were included.

The Indigenous Caucus welcomed Rev. 1, noting that it "provided a good basis for further negotiations". It stated that the text on beneficiaries, objectives and principles was clearer than before. It also stated that the terms "publicly available" and "widely known" as found in Article 3 should be made more clear.

Oman stated that all progress made should be in conformity with international law and that "nations" should remain un-bracketed, as it was consistent with its own domestic legislation which didn't differentiate between indigenous and non-indigenous peoples.

This view with retaining " nations" as beneficiaries was also expressed by Armenia and Jordan.

Iran said that the objectives of the instrument should emphasise not only defensive protection but also positive protection. It added that it would propose language in this regard.

Canada said that it welcomed the division of the "aspirational" from the operational provisions. It stated that the sharing of benefits should not be an objective of this instrument since that was the objective of the Nagoya Protocol. It also called for the bracketing of the word "nations" as a beneficiary. With regard to Article 3 (Scope of Protection), it preferred a "measures based approach". It also expressed concern regarding the introduction of a new dispute settlement mechanism in the text (Article 4.5).

OTHER DOCUMENTS ON TK

The plenary on Friday, 28 March briefly discussed other documents related to TK. These documents are viewed by developing countries as delaying the progress in the text-based negotiations. There was no consensus on taking any of the Joint Recommendations or proposals forward. These have been submitted by different groupings of developed countries.

The four documents for discussion included:

* Joint Recommendation on Genetic Resources and Associated Traditional Knowledge (WIPO/GRTKF/IC/27/6) proposed by Canada, Japan, Norway, the Republic of Korea and the United States of America;

* Joint Recommendation on the Use of Databases for the Defensive Protection of Genetic Resources and Traditional Knowledge Associated with Genetic Resources (WIPO/GRTKF/IC/27/7) proposed by Canada, Japan, the Republic of Korea and the USA.

* Proposal for the Terms of Reference for the Study by the WIPO Secretariat on Measures Related to the Avoidance of the Erroneous Grant of Patents and Compliance with Existing Access and Benefit-Sharing Systems
(WIPO/GRTKF/IC/27/8) submitted by Canada, Japan, Norway, the Republic of Korea, the Russian Federation and USA.

* A new document (WIPO/GRTKF/IC/27/INF 11) on Responses to Questions Regarding National-Level Databases and an International Portal submitted by Canada, Japan, Norway, the Republic of Korea and the USA.

Canada said that the Joint Recommendation on Genetic Resources and Associated Traditional Knowledge (WIPO/GRTKF/IC/27/6) included practical measures to encourage voluntary codes and facilitate databases on genetic resources and associated TK. It believed that the guidelines represented "common ground but would also raise awareness of patents granted in error". It welcomed the co-sponsors for the Joint Recommendation.

Japan, in introducing the Joint Recommendation on the Use of Databases for the Defensive Protection of Genetic Resources and Traditional Knowledge Associated with Genetic Resources (WIPO/GRTKF/IC/27/7), said that this Joint Recommendation was a significantly different version from the last (WIPO/GRTKF/IC/24/7). It said that it was convinced that discussion of this proposal facilitated the ongoing text-based negotiations.

The US introduced the document on the Proposal for the Terms of Reference for the Study by the WIPO Secretariat on Measures Related to the Avoidance of the Erroneous Grant of Patents and Compliance with Existing Access and Benefit-Sharing Systems (WIPO/GRTKF/IC/27/8).

It stated that the 2013 WIPO General Assembly had taken "note of the possibility for members of the IGC to request studies or to provide examples to inform the discussion of objectives and principles, and each proposed article, including examples of protectable subject matter and subject matter that is not intended to be protected, and examples of domestic legislation."

The US, with respect to document WIPO/GRTKF/IC/27/6, said that the document could be used as a confidence- building measure moving forward. It added that as one of the top 20 most mega-diverse countries, the US recognised the contribution of genetic resources to society.

It added, however, that it believed that access and benefit-sharing procedures should be independent of filing patent applications. It noted that patent offices should have information to allow examiners to judge prior art, novelty, inventive step and utility and in this context, databases were pivotal in ensuring patent quality.

Russia stated that document WIPO/GRTKF/IC/27/6 was extremely useful and topical as it contained sections on objectives, principles, and additional measures that needed to be taken to better manage genetic resources and the setting up of databases which would be useful when we work on a manual and other documents. All these will be useful in avoiding mistakes in the areas of patents. It also agreed that this wasn't an alternative solution but complementary to the on-going text-based process.

The Republic of Korea supported the Joint Recommendation on the Use of Databases for the Defensive Protection of Genetic Resources and Traditional Knowledge Associated with Genetic Resources (WIPO/GRTKF /IC/27/7). It recalled that the Korean IP Office had established a TK database which helped to prevent unauthorised use of patents inside and outside the country, to provide knowledge on TK to help latest studies and provide information to patent examiners who were obligated to search the database for prior art.

Indonesia, in expressing the Like-Minded Countries' view, said that although the 2013 WIPO General Assembly had allowed members to request studies, these studies should not delay the progress in the text-based negotiations.

Kenya, on behalf of the African Group, stated that the Group was not in favour of any additional studies as substantial progress has already been made. It added that the recommendation on genetic resources and associated TK was likely to result in the "duplication of our work" so it was better to concentrate on the work done so far.

South Africa, supporting the African Group statement, said that it did not want to see the process delayed or linked to the production of another document. In this context, it could not support the documents. It added that South Africa had participated in the questionnaire and it viewed it as "partisan". It added that the process was not only for the prevention of the erroneous grant of patents but also the legal protection of genetic resources and associated TK. It added that although countries had a right to seek support for research, it was too late in the state of the process to go back to that research.

Iran also stated that the documents submitted would hinder the committee from obtaining its main objective which was the convening of a Diplomatic Conference.

Egypt supported Kenya and South Africa, underlining that if the patent application concerned genetic resources or associated TK on health and agriculture, the inventor must obtain his rights legitimately and with compulsory disclosure.

China also said that the focus should be on the consideration of articles in the TK text to fulfill the mandate of the IGC.

Nigeria also said that there was a need to recognise that many things could be useful in achieving its stated goal; however, there was a need to recognise that they could also be time-consuming and possibly a distraction.

Nigeria expressed concern regarding a "possibility of delay", "possibility of distortion" and the "inevitability of delay".

The Indigenous Caucus, with respect to the proposal on the creation of databases (WIPO/GRTKF/IC/27/7), stated that indigenous peoples had long expressed their longstanding concern on such databases. It stated that the documents limited themselves to the functional requirements of the patent system from the viewpoint of a few (WIPO) Members. However, there was need to look at the risks and the benefits.

It added that the call to expand the scope of the databases did not address underlying cultural issues. It urged proponents to look at the harms and benefits from the perspective of the indigenous peoples and local communities.

(* With inputs from Prof. Marc Perlman.)