TWN Info Service on Intellectual Property Issues (May24/06)
28 May 2024
Third World Network

WIPO: US-led developed countries pushed to control genetic resources and traditional knowledge treaty

Geneva, 28 May (K M Gopakumar and Chetali Rao) – Developed countries imposed their will to conclude the treaty on intellectual property (IP), genetic resources and associated traditional knowledge (GRATK) at the World Intellectual Property Organization.

The Diplomatic Conference to conclude the treaty on IP and GRATK adopted the final act of the treaty text in the early morning of May 24. The Conference President’s proposal was adopted with two important changes on provisions related to sanctions and remedies, and revisions. There was no reopening of other provisions of the President’s proposal. These changes are reflected in Articles 5 and 15 of the final draft.

US pressure to change the language

TWN learnt that textual changes in Articles 5 and 15 were due to pressure from the United States (US). On Article 5.3 the US had insisted on adding more words to curtail the freedom of countries to invalidate patents.

The President’s proposal on Article 6.3 stated: “Subject to Article 6.4, no Contracting Party shall revoke or render unenforceable the patent solely on the basis of an applicant’s failure to disclose the information specified in Article 3 of this Treaty”.

The final treaty was changed to “Subject to Article 5.4, no Contracting Party shall revoke, invalidate, or render unenforceable the conferred patent rights solely on the basis of an applicant’s failure to disclose the information specified in Article 3 of this Treaty” (emphasis added).

[The proposal of the President as well as the final version of the treaty dropped Article 4 on exceptions and limitations. This resulted in the renumbering of Article 6 on sanctions and remedies as Article 5]

The US proposed inserting additional words such as “extinguish”, in addition to revoke and invalidate. The ensuing negotiations led to the replacement of extinguish with “invalidate”.

Similarly, the US also successfully changed the wording in Article 14 dealing with revision of the treaty. The President’s proposal stated: “This treaty may only be revised by a Diplomatic Conference of the Contracting Parties. The convocation of any such Diplomatic Conference shall be decided by the Assembly.”

This provision would have barred the participation of any non-Party country from participating in the amendment of the treaty in future. In other words, it would have prevented many developed countries including the US, which are not expected to ratify the treaty, from participating in the future amendment.

To check that the US proposed amendments to the Presidents’ proposal and removed the words “Contracting Parties”. The final version of the treaty states: “This Treaty may only be revised by a Diplomatic Conference, in accordance with the Vienna Convention on the Law of Treaties. The convocation of any such Diplomatic Conference shall be decided by the Assembly”.

Article 39 of the Vienna Convention on the Law of Treaties, which deals with the general rules regarding treaty-making, including amendment of treaties, reads: “A treaty may be amended by agreement between the parties. The rules laid down in Part II apply to such an agreement except insofar as the treaty may otherwise provide”. This Article and Part II of the treaty is silent about the participation of non-party countries in the treaty amendment.

However, Article 40 of the Vienna Convention deals with the amendment of multilateral treaties. Relevant paragraphs of Article 40 state:

“1. Unless the treaty otherwise provides, the amendment of multilateral treaties shall be governed by the following paragraphs.

2. Any proposal to amend a multilateral treaty as between all the parties must be notified to all the contracting States, each one of which shall have the right to take part in:

(a) the decision as to the action to be taken in regard to such proposal;

(b) the negotiation and conclusion of any agreement for the amendment of the treaty.

3. Every State entitled to become a party to the treaty shall also be entitled to become a party to the treaty as amended.”

Article 40 does not offer any clarity with regard to the participation of non-parties in the treaty amendment. In other words, the Vienna Convention does not prevent the participation of non-parties in the amendment of a treaty.

However, it is now up to the Assembly of the new treaty to determine the participation in the revision of the treaty, of countries that have not ratified it. A developing country delegate told TWN that by agreeing to the US proposal developing countries have decided to postpone this battle to the future.

Culmination of two and half decades’ process

The adoption of the treaty culminates two and half decades of struggle to fix the misappropriation of GRATK through intellectual property claims, especially patents. However, the effectiveness of the treaty is undermined by the limited scope of the mandatory disclosure requirement provision.

The treaty does not bring patents using digital sequence information (DSI) of genetic resources (GR) within the scope of the mandatory disclosure requirement. Since the majority of the GR- based patents are using DSI instead of the GR in its physical form, disclosure of the origin of country or source of GR is not required for such patents.  Nevertheless, nothing in the treaty prevents a country from introducing mandatory disclosure for a patent that involves the use of DSI. However, while countries can still make it mandatory to disclose the source of DSI of GR. the treaty did not succeed in placing the most effective disclosure requirement through an agreed international legal obligation. This creates loopholes of escape as national laws will not be consistent on mandatory disclosure requirement.

Another important adverse implication of the treaty is related to the curtailment of imposing effective sanctions on the failure or wrongful disclosure of country of origin or source because the treaty limits the right of revocation of the patents only to the “fraudulent intent in regard to the disclosure requirement”. This would drastically limit the possibilities of revocation because fraudulent intent is often difficult to prove. This becomes further complicated in the light of Article 3.5, which prohibits Contracting Parties from placing an obligation to verify the information provided through the mandatory disclosure. It states: “Contracting Parties shall not place an obligation on Offices to verify the authenticity of the Disclosure”. 

The adoption of the treaty in the early hours of the morning of 24 May as well as the statements and signing ceremony saw emotional moments. Many developing country delegates and indigenous peoples’ representatives expressed their happiness at the culmination of the treaty negotiations and at the same time recognised the limitations. An academic observer told TWN that seeing those emotional responses to the treaty, he is convinced that law’s role  is not always for providing justice but for peace and reconciliation.