|
||
|
TWN
Info Service on Intellectual Property Issues (May24/05) WIPO: President’s proposal on genetic resources and traditional knowledge treaty undermines policy space to revoke patents Geneva, 23 May (K M Gopakumar and Chetali Rao) – The proposal of the President of the Diplomatic Conference for the WIPO treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge (GRATK) undermines policy space to revoke patents for failure to disclose the country of origin or source of GRATK. The proposal was made after the Ad hoc Contact groups and informal Contact Groups could not reach a consensus on many issues especially on Article 6 of the proposed treaty that deals with sanctions and remedies. The President’s proposal took the provisions which reached consensus within the Ad hoc Contact Group and dropped textual proposals which do not enjoy a wide consensus. Sanctions and Remedies (Article 6) The provisions on sanctions and remedies as per the Basic Proposal for the failure of a patent holder to disclose during the pre and post-grant phase of a patent are contrary to the sanction provisions in the national laws of various WIPO Member States. Article 6.1 is a general provision but primarily targets the pre-grant phase. Article 6.1 obligates Contracting Parties to put in place an “effective and proportionate legal, administrative, and/or policy measures to address an applicant’s failure to provide the information required in Article 3”. Article 6.2 obligates Contracting Parties to provide an opportunity to rectify the failure to make the disclosure under Article 3.1 and 3.2 (these 2 paragraphs obligate Parties to make it mandatory for the patent applications to disclosure either country of origin or the source of GRATK) However, Paragraphs 3 and 4 of Article 6 prevent the Contracting Parties from revoking the patent except on the ground of fraudulent intent with regard to the disclosure requirement. These provisions read: “6.3 Subject to Article 6.4, no Contracting Party shall revoke or render unenforceable a patent solely on the basis of an applicant’s failure to disclose the information specified in Article 3 of this Instrument. 6.4 Each Contracting Party may provide for post grant sanctions or remedies where there has been fraudulent intent in regard to the disclosure requirement in Article 3 of this Instrument, in accordance with its national law”. This drastically reduces the policy space of countries by quelling their freedom to impose strict sanctions for the failure to disclose country of origin or source of GRATK. Another important issue with Article 6.4 of the text is the burden of proof emanating from the “fraudulent intent”, which will be on the government authorities or third parties. This should be read with proposed Article 3.5, which states: “Contracting Parties shall not place an obligation on Offices to verify the authenticity of the disclosure”. Article 3.5 effectively prevents patent offices from verifying the disclosure information provided by the applicant. Thus, the revocation of a patent for non-compliance with disclosure requirement in Article 3.1 and 3.2 would be almost impossible under WIPO’s legal instrument. Furthermore, Article 3.3 also provides an escape route to the patent applicant to declare that the required information under Article 3.1 and 3.2 is not available to the best of their knowledge. In such a situation proving fraudulent intent becomes extremely difficult. Article 3.3. states: “In cases where none of the information in Article 3.1 and/or Article 3.2 is known to the applicant, each Contracting Party shall require the applicant to make a declaration to that effect, affirming that the content of the declaration is true and correct to the best of knowledge of the applicant”. In reality, WIPO’s compilation of the disclosure regimes in 30 countries shows that nearly 15 countries including the Andean Community have revocation/invalidation/nullification during the post-grant phases. Among these countries some countries clearly allow revocation on the ground of failure of or wrongful disclosure. For instance, according to Section 64.1(p) of the Indian Patents Act failure or wrongful disclosure constitute a ground for revocation of a patent. Section 64.1 states: “(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, …” The ground in sub-paragraph (p) is “that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention”. The President’s proposal on Article 6 at the time of writing (23 May, 4.00 pm CET) is as follows: “6.1 Each Contracting Party shall put in place appropriate, effective and proportionate legal, administrative, and/or policy measures to address a failure to provide the information required in Article 3 of this Treaty. 6.2 Subject to Article 6.2 (bis) each Contracting Party shall provide an opportunity to rectify a failure to disclose the information required in Article 3 before implementing sanctions or directing remedies 6.2 (bis) A Contracting Party may exclude from the opportunity to rectify under Article 6.2 cases where there has been fraudulent conduct or intent as prescribed by national law 6.3 Subject to Article 6.4, no Contracting Party shall revoke or render unenforceable patent solely on the basis of an applicant failure to disclose the information specified in Article 3 of this Treaty 6.4 Each Contracting Party may provide for post grant sanctions or remedies where there has been fraudulent intent in regard to the disclosure requirement in Article 3 of this Treaty, in accordance with its national law”. Thus, there is no major change in Article 6 except for a new paragraph 6.2 bis. However, it does not change the concern of limiting the freedom to revoke patents on the ground of failure to disclosure. Disclosure Requirement (Article 2 and 3) The President’s proposal retains the text that emerged from the Ad hoc process. The definition “based on” reads: “means that the genetic resources and /or traditional knowledge associated with genetic resources must have been necessary for the claimed invention, and that the claimed invention must depend on the specific properties of the genetic resources and/or on traditional knowledge associated with genetic resources”. As reported earlier it narrows down the trigger for the disclosure requirement and bears the threat of legitimising biopiracy by allowing patent applicants to escape from the mandatory disclosure requirement. Derivatives (Article 9) The President’s proposal retains Article 9 dealing with review, which states: “The Contracting Parties commit to a review of the scope and contents of this Instrument, addressing issues such as the possible extension of the disclosure requirement in Article 3 to other areas of intellectual property and to derivatives and addressing other issues arising from new and emerging technologies that are relevant for the application of this Instrument, no later than four years after the entry into force of this Instrument”. The apprehension among many developing country delegates is that the term “derivatives” could be interpreted as implying the exclusion of derivatives from the scope of the instrument. Such an interpretation would prevent the Contracting Parties form insisting on disclosure of country of origin or source of GRATK in the context of derivatives. Exceptions and limitations (Article 4) The President’s proposal drops Article 4 of the Basic proposal, which reads: In complying with the obligation set forth in Article 3, Contracting Parties may, in special cases, adopt justifiable exceptions and limitations necessary to protect the public interest, provided such justifiable exceptions and limitations do not unduly prejudice the implementation of this Instrument or mutual supportiveness with other Instruments”. On 14 May during the Main Committee 1 discussion, every country except Group B asked for the deletion of Article 4. The President of the Diplomatic Conference is carrying out consultations with various regional groups to build consensus. At the same time the Drafting Committee is meeting to finalise the drafting of Articles 11-23 of the instrument. Another version of the President’s proposal is expected.
|
||
