IP Rights Holders Frown On Proposed Changes To WTO TRIPS Agreement

By Kaitlin Mara
Some intellectual property rights holders and their representative governments are looking with concern at the drive to hold discussions on draft modalities for IP issues in this week’s World Trade Organization mini-ministerial.

Letters sent early this week to the United States Trade Representative and European Union External Trade Commissioner by developed-nation industry associations call potential amendments to the WTO intellectual property agreement “at the very least premature” and warn of potential “negative outcomes” for industry. Some from industry are on hand this week in Geneva to reinforce the message.

A majority of WTO members, mainly developing countries, have called for consideration of three IP issues in this week’s meeting, in the hopes of receiving a ministerial-level mandate to negotiation on them. A smaller group, such as the United States, Canada, Australia, Chile and Costa Rica, are opposed.

The IP issues are: an amendment to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to protect biodiversity and traditional knowledge as defined by the UN Convention on Biological Diversity (CBD); creation of a register for geographic indications (GIs) – product names associated with specific locations and characteristics; and the possible extension of high-level protection on GIs currently enjoyed by wines and spirits to other products.

The CBD amendment has wider support than the two GI issues, which are seen to be mainly in the interest of European members, but the CBD group and the GI group have linked their efforts to achieve IP modalities during the Doha trade-liberalisation talks. Well over 100 WTO members support discussion on the TRIPS issues this week, some indicating that it is critical to progress in the overall round.

The CBD amendment is intended to bring the legally-binding TRIPS agreement more closely in line with the voluntary CBD, to help prevent misappropriation of genetic resources or knowledge taken from indigenous or local communities, by requiring patent applications to contain disclosure of origin of those resources. It also is hoped by some developing countries that an amendment would include provisions ensuring that local communities benefit from the use of their resources in patented products, such as pharmaceuticals.

Letters from Lobbyists

On Monday, the Washington-based National Foreign Trade Council sent a letter [pdf] to USTR Susan Schwab and EU Trade Commissioner Peter Mandelson, stating that industry is “very concerned” about the possibility of negotiations on TRIPS this week.

“Both these issues are beyond the negotiating mandate of the Doha Round and have no place in the crucial discussions taking place in Geneva this week,” said the letters, referring specifically to GI extension and to the biodiversity amendment. “The mandates are clear,” the letter continued, “and there is no basis for re-opening the TRIPs Agreement, as proposed, at this time.”

Patent System “Not the Place” for Biodiversity Concerns

It is the biodiversity agreement that has generated the most concern on the part of representatives mainly from biotechnology and pharmaceutical industries who generally agree that “the patent system is not the right place for these problems to be confronted.”

Some WTO members agree. One developed country government source said it was unclear that the introduction of a disclosure requirement to TRIPS is the “right way to solve problems of biopiracy and biodiversity protection.” Prevention of erroneous patents is already within the scope of the patent system, added the source, and a database for genetic resources and related traditional knowledge to help patent examiners would be preferable.

Misappropriation of biodiversity and misuse of traditional knowledge should be dealt with by state authorities, or by requiring benefit-sharing with traditional knowledge holders “as a condition of obtaining access to genetic resources,” said a biotechnology industry representative.

A 16 July letter from the Washington-based Intellectual Property Owners (IPO) Association to USTR Schwab agreed, saying attempts at protecting traditional knowledge holders via the patent system are “misplaced.” Such matters should rather be dealt with “at the time of access [to genetic resources] rather than at the time of filing patent applications,” via agreements between holders and users of genetic resources, the letter added.

If the issue must be addressed in multilateral fora, said an 11 July policy statement from the International Chamber of Commerce (ICC), it is better done within the CBD or within the World Intellectual Property Organization (WIPO), where work on these issues has been ongoing for several years. Databases and digital libraries of traditional knowledge, to aid patent examiners searching for prior art in examining patents, are suggested as alternatives to new patent requirements. Proponents, meanwhile, see WTO as having more impact, and have been frustrated with the slow progress at WIPO.

The IPO letter said these organisations are “still in the process of identifying the best means for achieving access and benefit-sharing goals related to use of genetic resources” and that an amendment to TRIPS would “undermine [their] ongoing work.”

Uncertainty and Need to Define Terms

Also oft-repeated is the concern about a “lack of technical specificity” in definitions of terms used in proposed amendment language. The ICC statement called the biodiversity amendment “not ripe” for negotiation, citing “widely” different proposals on the scope and nature of a CBD amendment. Generally, the CBD amendment is discussed as being a requirement that the origin of genetic resources used in patent applications be disclosed within the application.

Where disagreement remains is in whether it should also include provisions for benefit sharing with, and prior informed consent, of the community from which genetic resources came. Also not agreed is whether a patent could be revoked after granting for insufficient disclosure.

Industry representatives say that better definition is needed as to what “access” means, what “benefit-sharing means,” what “disclosure” would entail, and how far mandates would stretch. The IPO letter worries that a disclosure requirement could extend far beyond its original mandate to encompass “research tools that are used only tangentially” or to “information that has been available in the public domain for many years.”

Uncertainty in how to satisfy a disclosure requirement, plus the fear of losing patent rights after the fact, weakens the innovation incentive the patent system was designed to foster, said the biotech industry source. A 14 July letter to the European Commissioner for External Trade, signed by Brussels-based trade association BusinessEurope, says disclosure will create “unacceptable levels of legal uncertainty” in the protection of IP in international trade.

Several industry sources also mention the recent arrest of two Czech nationals who collected several hundred insect specimens from a Singalila National Park in India. It is illegal under Indian law to take large numbers of insects from protected areas, a stipulation that news sources say originated with the nation’s signing of the CBD. The Czech scientists have reportedly said they did not know, and industry representatives have said this is a potential consequence of a CBD amendment and that “it is actually quite difficult to get approval” for foreigners to do scientific research in India.

Some WTO members have cited the delicacy of the wider Doha Round as reason to hold off discussions on TRIPS issues at this time. The main issue is finding solutions on agriculture and non-agricultural market access, they argue. But proponents of TRIPS issues have said that politically it would be difficult to agree to the main areas of the negotiations without progress on the TRIPS issues.

The developed country source raised questions about transparency, as well, asking why negotiations on the GI register had been happening largely in informal settings rather than through formal proposals, and added that there was “not a critical mass” on GIs, that CBD has more support behind it.

Kaitlin Mara may be reached at kmara@ip-watch.ch.