The concept of public domain was born out of the intellectual property system, according to some. However, what constitutes the public domain depends on national interpretations. A recent seminar organised by the World Intellectual Property Organization was an occasion for speakers from diverse horizons to present their experience in the context of traditional knowledge and genetic resources. The relevance of a disclosure requirement in patent application to prevent wrongful patents was also discussed [Note: Article 2 of 2].
The Seminar on Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions: Regional, National and Local Experiences took place from 30 March – 1 April.
One of the aims of the seminar, according to sources, was to keep the conversation going at WIPO on the issue of the protection of generic resources (GR), traditional knowledge (TK), and traditional cultural expressions (TCEs) at WIPO. WIPO member states’ inability to reach an agreement at the last General Assembly on the work of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), no sessions of the IGC have been planned in 2015 so far (IPW, 1 October 2015). A decision about the IGC is due to be taken by the next WIPO General Assembly in September.
The seminar programme [pdf] featured four roundtables. These included: Regional, National and Local Experiences with the Meaning and Relevance of the “Public Domain” in the Context of Traditional Knowledge and Traditional Cultural Expressions; National Experiences with Disclosure Requirements related to Genetic Resources and Associated Traditional Knowledge.
Different concepts of Public Domain
Lim Heng Gee, professor, Faculty of Law, Universiti Teknologi Mara, Malaysia, said there are wide differences in the concepts of public domain, prior art and publicly available. In his presentation [pdf] he said that in relation to the intellectual property system, the concept of “public domain” is applied in at least in three distinct ways. These are: the public domain as a restriction on granting IP rights; as a limit to the duration of IP rights; and as a ground for the loss of IP rights, for example in the case of an invalidation when a trademark becomes generic or through non-use.
Ian Goss, general manager, Strategic Programs, IP Australia, said the scope of protection of TK and TCEs is challenging, with different policies in member states. In his presentation [pdf], he said there is no single definition of the public domain that applies to all IP rights and the public domain is commonly used as a copyright term, although not clearly defined.
He also said there is a clear moral obligation to protect and sustain the culture of indigenous people and encourage access to their knowledge but respect their right to keep that knowledge secret.
For Ruth Okediji, professor of law, University of Minnesota Law School (US), and member of the National Copyright Reform Committee, Nigerian Copyright Commission, the public domain is much more than a defensive tool, a constraint or “a garbage.” These things are all in the public domain, but not all what the public domain is, she said.
In the context of the IGC, she said, there is a conflict between two terms, the notion of the commons and the notion of public domain. The public domain consists of things free for all to use. Within basic Roman law there are four categories in which things are public, she said: things that are un-owned, such as the air, the sea; things that are publicly owned and made open to the public by law, such as education or parks; things that are owned by a public group; and things that cannot be owned such as with divine or secret status.
“Saying that something is in the public domain does not mean it is free to appropriate,” she said.
The absence of control, which many indigenous groups feel today over their TK and TCEs is very real, she said. Absence of control though is not an absence of ownership, she added.
The public domain is a national concept and there are a varieties of way things become part of that domain. It is important to understand that the public domain is neither adverse to a multilateral system that would protect TK and TCEs, neither it is hostile or incompatible with it, she said.
Industry Perspective: No Need of International Treaty
Jens Bammel, secretary general, International Publishers Association, said the debate on traditional knowledge has been oversimplified in Geneva and does not “reflect a reality where collaboration between publishers and indigenous peoples works well and where a number of different mechanisms have developed to ensure the interests of indigenous people are respected,” according to an IPA release.
“There are a growing number of examples where the inclusion of indigenous peoples’ cultural expression and knowledge…. is well managed,” he said. He called for more sharing of best practices, “rather than hope that an international treaty can address these real and practical concerns.”
Disclosure Requirement, Credibility of IP System, Speaker Says
Pierre du Plessis, senior consultant, Centre for Research Information Action in Africa, Southern Africa Development and Consulting, Namibia, said in his presentation [pdf],”it would be foolish to assume all is well in the IP world,” referring to the “social contract” being undermined by industry preference for trade secrets, ever-greening of patents, and “patent trolls using IP to block benefits to the public.”
Disclosure requirement is rooted in the CBD, he said, in particular in Article 3 (Principle) and Article 15.1 (Access to genetic resources). The sovereign right of state to dispose of their own resources predates the CBD, he said, but was never applied.
Several countries apply disclosure requirements, he said, such as the Andean Community, Brazil and China. In those countries, patents are not awarded without prior informed consent.
In Egypt and Switzerland, he said, the application is rejected or considered withdrawn if there is no disclosure of the provenance of the genetic resource used. The absence of disclosure constitutes grounds for opposition in India, he said, but bears no consequences in Belgium, Denmark, the European Union, Germany or Sweden. In Norway, he said, penalties are applied for false declaration.
In the context of the IGC, he said a number of issues are unresolved around disclosure, such as whether disclosure should be mandatory or voluntary, what would trigger it, acceptable evidence, how to deal with cases where origin is unknown and whether it would place additional burden on applicants and on patent examiners, and sanctions.
However, the CBD cannot make IP rules so this task is deferred to the IGC, du Plessis said. He called to put a stop to the “childish debate of ‘I want’ or ‘I don’t want'” in the IGC around the issue of disclosure requirement.
He called for an IGC meeting soon and said the coherence and the credibility of the global IP system is at stake. Failure to reach an agreement can undermine developing country commitment to IPRs, the ability of patent examiners to work effectively, fair and equitable benefit-sharing.
There is a need to overcome the suspicion that IP is a tool used by the powerful to steal from the weak, and refute allegations that IP makes the rich richer and everyone else poorer. The use of IP should be stimulated “as a powerful tool for inclusive sustainable development,” he said.
Disclosure Requirement in Switzerland
Martin Girsberger, head of Sustainable Development & International Cooperation, Division of Legal & International Affairs, Swiss Federal Institute of Intellectual Property, presented [pdf] the disclosure requirement in the Swiss patent law.
The requirement includes three main features: scope, trigger and sanctions, he said. An exception can be granted if the source is unknown, in which case the applicant has to provide a declaration in writing.
The disclosure requirement is triggered when the inventor has had access to genetic resources and traditional knowledge, and where the invention is directly based on GR or TK.
The Swiss legislation foresees two types of sanctions. One is a pre-grant sanction, in which the processing of the patent application is interrupted until the lacking declaration is made and if it is not done by a set deadline, the application is rejected. The other is a post-grant sanction for intentional wrongful declaration. However, there is no revocation of granted patents because that revocation would destroy benefit sharing.
Since the law was enacted in 2008, 11 disclosures have been made and two objections have been corrected, he said. The limited number of disclosures is explained because this law only applies to national applications, he added.
Industry Perspective, Disclosure in Applications Undesirable
Dominic Muyldermans, senior legal consultant, CropLife International, said companies never patent genetic resources, rather, they patent an invention. When making an invention, the inventor is not controlling GR, he said, but investing resources in developing something by using GR.
In his presentation [pdf] he said there is a fundamental confusion between the aim of disclosure regarding access and benefit sharing, and disclosure in a patent application. Disclosure for access and benefit sharing enables the collection and transfer of relevant data to assess compliance with relevant access and benefit-sharing (ABS) laws, he said. The “ABS disclosure” is useless to prevent the erroneous grant of patents, he said.
Maintaining the confusion undermines the effectiveness of the patent system, does not enhance compliance towards ABS and does not foster the protection of biological diversity, he said in his presentation [pdf].
A direct link between an invention and accessed GR is difficult or impossible to establish, he said, underlining the fact that many innovations are not protected by a patent. A disclosure requirement in patent applications represents additional administrative burden and complexity for industry, and legal uncertainty, he added.
A second seminar is expected to take place on 23-25 June. All presentations from the first seminar’s speakers are available here.
[This is article 2 of 2. The first article is available here.]
Image Credits: Flickr – Department For International Development – International Development Research Centre -Thomas Omondi
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