[A2k] IP-Watch: Disclosure, Sanctions – Still To Be Overcome In WIPO Genetic Resources Negotiations

Thiru Balasubramaniam thiru at keionline.org
Thu Jun 28 23:53:01 PDT 2018


Disclosure, Sanctions – Still To Be Overcome In WIPO Genetic Resources


Efforts to draft new language to bridge gaps in this week’s negotiations on
a potential treaty protecting genetic resources at the World Intellectual
Property Organization were praised by a number of participants. However,
what is now presented as a “package” proposition, focusing the instrument
on patents, left some developing countries with the feeling that the
concessions they made on the patent-only focus are not being met with a
similar efforts by others, in particular on a proposed disclosure
requirement for patent applicants.

The 36th session of the Intergovernmental Committee on Intellectual
Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) is
taking place from 25-29 June.

Yesterday, a first revision [pdf] (Rev1) of a consolidated document [pdf]
relating to intellectual property and genetic resources (draft treaty
language) was issued.

In charge of drafting the revision were two facilitators, Paul Kuruk,
vice-chairman, Ghana International Trade Commission (GITC), Ministry of
Trade and Industry, and Lilyclaire Bellamy, executive director, Jamaica
Intellectual Property Office (JIPO). They were supported by the friend of
the IGC chair, Margo Bagley, professor at Emory University School of Law,
United States (from Mozambique). They collectively presented the various
changes to five articles on 27 June.

The five articles of the consolidated text (draft treaty text) that were
revised and edited are: Article 1 (Definitions), Article 2 (Objectives),
Article 3 (Subject Matter), Article 4 (Disclosure requirement), and Article
6 (Sanctions). Articles 2, 3, 4, and 6 are part of a broader section of the
text based on the concept of a mandatory disclosure of the origin of
genetic resources and associated traditional knowledge (TK).

IGC Chair Ian Goss tries to keep the tone amiable. Football, anyone?

The drafting team sought to find a compromise position based on the outcome
of the discussions from three “contact groups”, a new tool for a way
forward devised by IGC chair Ian Goss at the last IGC, to allow for smaller
groups of discussion feeding into the drafting of revisions, and also on
member states comments at the opening of the session, Goss said.

Three contact groups were organised this week: one on subject matter,
chaired by Faizal Chery Sidharta from Indonesia, IGC vice-chair, one on
triggers and content of disclosure, chaired by Jukka Liedes from Finland,
IGC vice-chair, and one on the consequences of non-compliance, chaired by

Article 1 – Definition, Some Want Single List

The Article is divided into two sets of definitions: terms used in the
operative articles, and other terms. In the terms used in the operative
articles, the original definition of country of origin mentioned the first
country which possesses the genetic resources in in-situ conditions. The
proposed text now reads “country of origin of genetic resources means the
country which possesses those genetic resources in in-situ conditions.”

A definition of providing country was deleted as it is not considered as
being usable in operative articles, Goss specified.

During discussions about the revision on 27 June, Switzerland noted its
preference for the use of definitions common to several international
instruments, such as the Nagoya Protocol on Access to Genetic Resources and
the Fair and Equitable Sharing of Benefits Arising from their Utilization
to the Convention on Biological Diversity, in particular for terms like
country of origin, utilisation, genetic resources, and genetic material.

Preston Hardison, speaking for the Indigenous Caucus, said in-situ is a
very generic term as it applies to many different circumstances, such as
normal use and scientific use, and suggested to use “in-situ natural
conditions.” This suggestion was supported by South Africa.

Brazil remarked on what they said is an “artificial” division of
definitions. Egypt also voiced concerns about the same issue, and called
for a “unified” list.

Article 2 – Objective

In Article 2, the facilitators, as explained by Bagley, removed brackets
around “IP” and “patent” system and only retained “IP.”

Member states have been divided on whether a disclosure requirement should
apply to only patent applications, or to other types of IP rights, such as
geographical indications, or trademarks.

The facilitators, Bagley said, included in the revision a new Article 5
stating that the applicability of a disclosure requirement to other areas
of IP and emerging technologies, “shall be reviewed no later than four
years after the entry into force of this instrument.” A working group would
be established to work on the review.

This solution would allow to proceed by step, first concentrate on patents,
and then possibly include other IP tools, at a future time period.

Japan said they cannot accept the revision as it stands, and asked that the
previous formulation be restored. Patents are more relevant to GRs, the
delegate said, adding that the country recognises that biopiracy is an
issue, but can be prevented by using appropriate examination with the help
of databases. Discussions concerning geographical indications and trademark
should be left to the WIPO Standing Committee on the Law of Trademarks,
Industrial Designs and Geographical Indications (SCT), he said. The United
States also supported the previous formulation.

Article 3 – Subject Matter – Indigenous Peoples Outraged

For this article, the drafting team removed an alternative to keep a
simplified description: “This instrument applies to genetic resources, and
[traditional knowledge associated with genetic resources].”

Several countries, including South Africa, Egypt, Morocco, and Switzerland,
asked that the brackets be removed around TK associated with GRs.
Switzerland voiced doubts about the usefulness of this particular article,
but said the instrument should also cover TK associated with GR in order to
support mutual supportiveness between international instruments.

The United States supported the brackets and asked that the alternative,
which referred specifically to patent applications be reinstalled.

The Indigenous Caucus representative, Preston Hardison, made a strong call
to remove the brackets around traditional knowledge. He characterised those
brackets as a red line for indigenous peoples.

“We have made many compromises,” he said. “We do not reject traditional
knowledge databases as we did many years before,” but are just asking for
proper safeguards in the construction and operation of those databases.

The new Article 5 is a major concession, he went on, providing flexibility
to accommodate the interest of all member states.

“We demand those brackets be removed, we cannot go forward on this
instrument,” he said, “We don’t know why we are even here if there are
continued proposals to say that traditional knowledge should not be here,
indigenous peoples should not be here, it should just be an instrument on
genetic resources” focusing on issues of patentability.

“We have an agreement in Nagoya [The Nagoya Protocol on Access to Genetic
Resources and the Fair and Equitable Sharing of Benefits Arising from their
Utilization to the Convention on Biological Diversity] that the whole of
our issues” will be dealt at WIPO, he said, in reference to the inability
to agree on IP issues during the Nagoya Protocol negotiations, sending the
IP discussions to WIPO.

Disclosure Requirement, Narrow or Broad Focus

Article 4 on disclosure requirement was edited by the drafting team, and
the text of the paragraphs of the article rearranged. One alternative
paragraph (4.2) was deleted. This paragraph said the disclosure requirement
should not place an obligation to provide information regarding compliance
with access and benefit-sharing requirements, including prior informed

Of concerns of some countries, as voiced today, including the European
Union members, was the replacement of the words “directly based on” with
“makes use of”.  The EU also asked that the previous paragraph 4.2 be
reinstalled. The United States also requested the reintroduction of
“directly based on.”

This suggestion was opposed by other countries, such as Brazil, which
explained that derivatives and digital sequence information should be taken
into consideration. The expression makes use of is more flexible, the
Brazilian delegate said.

China remarked on the fact that researchers and inventors know where they
obtained the genetic resources they are using. If the country of origin is
not known, the patent applicants can still provide information as to where
they obtained the resources. The delegate suggested to remove the word
“source” from paragraph 4.2. This position was supported by the South
African delegate, who added that an addition should be made to this
paragraph to say applicants must indicate the origin of the resources they
used after due diligence has been done. Egypt and Nigeria concurred.

Article 7: Sanctions and Remedies, Cannot Promote Lawlessness

The discussions on sanctions and remedies got impassioned after some
countries, such as Switzerland, Japan, the European Union, and the United
States expressed disagreement with paragraph 7.2 which states that the
validity of a patent should not be affected in case of failure to fulfil
the disclosure requirement, unless it results from a fraudulent intention.

Switzerland said it was not in a position to support the invalidation of a
patent based on non-compliance. The disclosure requirement is a
transparency measure in this instrument, which is unique, and would require
unique sanctions, such as fines as post-grant sanctions.

South Africa said the treaty should not be above the law, as fraud in most
societies is considered to be unlawful. “We cannot promote lawlessness” in
WIPO, the delegate said. Egypt approved, as did Brazil, which said adequate
punishment is needed in case of fraud. It is necessary, the Brazilian
delegate said, to avoid applicants being tempted to try their luck if the
cost of non-compliance is too low. Excluding revocation is favouring
lawlessness, he added.

The Brazilian delegate cited the possibility of revocation following
fraudulent intention of Article 10.1 of the Patent Law Treaty.

This afternoon, the IGC is meeting in closed informal session to further
try to find consensus on those articles.

Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International
41 22 791 6727
thiru at keionline.org

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