Thinking Aloud on Disclosure of Origin

by Graham Dutfield (Herchel Smith Senior Research Fellow, Queen Mary Intellectual Property Research Institute, Queen Mary, University of London)

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What do we all mean by “disclosure of origin”?

“Disclosure of origin” has become a collective term for certain requirements to be incorporated into patent law. These requirements vary widely in terms of the weight and nature of the legal, administrative or informational burdens placed on patent applicants and owners. Accordingly, it is convenient to describe three types of disclosure requirement.

Version one – “voluntary disclosure”
The least burdensome of these types is to encourage the disclosure of genetic resources and/or traditional knowledge relevant to an invention being patented. Its omission would not disqualify the patent application from being accepted, being granted, or being subsequently enforced. In other words non-compliance gives rise to no legal consequences. Such disclosure aims to serve the purpose of enhancing transparency in terms of international commercial transfers of genetic resources and traditional knowledge.

Version two – “mandatory disclosure”
A closely related incarnation of disclosure of origin would be to make this requirement mandatory, with failure to disclose or dishonest disclosure having one or some of the following consequences: the patent application would not be accepted; it would be rejected during the prosecution stage; if granted it would not be enforceable; or if granted it would be revoked with possible criminal sanctions for wrongdoers. The burden of compliance is placed on the patent applicants and the patent granting offices. The role of provider country governments would be to monitor compliance and take legal action in cases of alleged non-compliance. In the case of both types of disclosure requirement, what is being proposed, one presumes, is that the country providing the resource should be disclosed whether or not it is the country of origin. In other words, it is the country of source that should be disclosed.

Version three – “proof of legal acquisition”
A somewhat different version of the disclosure of origin requirement would tie the patent system more closely to the CBD’s access and benefit sharing (ABS) provisions, in particular to the ABS regimes operating in those countries directly providing the genetic resources and/or traditional knowledge. One way to implement this is to require patent applicants to submit with their application official documentation from provider countries proving that genetic resources and – where appropriate – associated TK were acquired in accordance with the ABS regulations including conformity with 3 such obligations as prior informed consent, with the terms mutually agreed between providers and the recipients, and with the need to comply with CBD Article 8(j) on the knowledge, innovations and practices of indigenous and local communities. To harmonise the rule and make the requirement operate more effectively, there could be an international certification of origin system. The Bonn Guidelines on Access to Genetic Resources and Fair and Equitable Sharing of the Benefits Arising out of their Utilization refer to ‘a legally recognized certification of origin system as evidence of prior informed consent and mutually agreed terms’. The idea here is that if provider countries were to agree on some common requirements and procedures, standardised certificates of origin could be used which all national and regional patent offices would recognise.

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