Bridges Weekly Trade News Digest • Volume 10 • Number 20 • 7th June 2006
Developing Countries Propose Trips Amendment Requiring Disclosure In Patent Applications
Several developing countries led by India on 31 May formally proposed text for an amendment to WTO intellectual property rules that would make it mandatory for patent applicants to disclose the use of any biological resources or associated traditional knowledge in their inventions. However, it has not affected Members’ basic disagreement on how best to achieve the objectives of biodiversity conservation and intellectual property protection, as was apparent during an informal 6 June gathering (see BRIDGES Weekly, 22 March 2006). Countries including the US, Japan, and Canada insisted that in light of the substantial differences on what approach to take, it was too early to start negotiating on a specific text.
Draft TRIPS article would make disclosure mandatory
The sponsors of the proposal — Brazil, India, Pakistan, Peru, Thailand, and Tanzania, subsequently joined by China and Cuba (WT/GC/W/564/Rev.1) — believe that mandatory requirements for disclosure and proof of benefit-sharing are the best way to curb biopiracy and the uncompensated use of genetic resources. They seek to modify the conditions for patent applicants set out in Article 29 of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) with the express purpose of "establishing a mutually supportive relationship" between it and the Convention on Biological Diversity (CBD).
Specifically, they have proposed adding an ‘Article 29bis.’ This new article would oblige WTO Members to require patent applicants to disclose the source (provider) and country of origin of any biological resources or associated traditional knowledge used in their invention. Patent-seekers would also have to demonstrate that they had received permission to use the genetic material or traditional knowledge as per the domestic laws of the country where they obtained it, along with proof of "fair and equitable benefit-sharing arising from the commercial or other utilisation" of the resources. Even after their applications were accepted, patent-holders would be obliged to disclose any "new information of which they become aware." Members would have to publish the disclosed information.
Significantly, the proposed amendment would require Member governments to empower domestic authorities to deny and revoke patents "when the applicant has, knowingly or with reasonable grounds to know, failed to comply" with the disclosure requirements, or provided false information.
Divisions make future of proposal unclear
The proponents of the amendment had been calling for text-based negotiations on the issue for several months, during sessions of the TRIPS Council as well as the separate informal discussions on the issue conducted by WTO Deputy Director-General Rufus Yerxa. They have been opposed by countries which argue that a new disclosure requirement would not help prevent ‘bad’ patents (i.e. erroneously granted ones) incorporating naturally-occurring genetic resources, and could instead generate burdensome procedures.
During Yerxa’s consultations on 6 June, negotiators reiterated these positions, albeit this time in reference to the new proposal. Non-sponsors Ecuador and Colombia expressed support for the proposal. Delegations including Australia, New Zealand, Singapore, and Taiwan, in addition to Canada, Japan, and the US, countered that Members remained too deeply divided to start text-based negotiations.
Norway, which has been supportive of demands for disclosure requirements both in the WTO and the World Intellectual Property Organisation (WIPO), expressed sympathy for the proposal but indicated that it would come forward with one that was less far-reaching.
The EU, in statements at the WTO and WIPO over recent years (see IP/C/W/383), has indicated interest in an option which would make disclosure of the country of origin mandatory, but not enforceable by the potential revocation of patents. It has expressed support for amending WIPO agreements on patent law to include obligations on disclosure, but specifically insisted that incorrect or incomplete information should not have any effect on the validity of patents granted. Furthermore, the EU would not require proof of compliance with access and benefit sharing regulations. The "demandeurs" for a disclosure requirement within the TRIPS Agreement have been unenthusiastic about the EU’s preferred approach.
Explicit link to GI extension
Notably, Switzerland has explicitly linked the new proposal to ongoing discussions on whether the higher level of geographical indication (GI) protection currently accorded to wines and spirits should be extended to other products. Switzerland would prefer for disclosure to be dealt with under the auspices of WIPO. During the consultations, Switzerland reminded Members that ‘GI extension’ was its priority, and it would want to see progress on the issue if it were to start negotiating disclosure requirements in the TRIPS Agreement.
Several trade observers have posited the notion of a potential tradeoff between GI extension and the TRIPS-CBD relationship to break the deadlock on both issues. Switzerland and the EU believe that commercial opportunities arising from expanded GI protection for products such as ‘Parma ham’ could partially compensate their agricultural producers for subsidy and tariff cuts under the Doha Round. However, ‘new world’ countries such as Argentina, Brazil, Canada, Chile, and the US, remain adamantly opposed to GI extension. Some of them are opposed to disclosure requirements as well.
GI extension and the relationship between the TRIPS Agreement and the CBD are both ‘outstanding implementation issues’ under the Doha mandate. Yerxa indicated that he would convene further consultations on each of the two issues on 13-14 June. The TRIPS Council may also discuss disclosure requirements during its 14-15 June session.
ICTSD reporting.