Study Maps Global Distribution Of Genetic Resources In Patented Claims

A study of patent activity in the United Kingdom shows widespread global distribution of genetic resources used by UK innovators. The implications of international rules on access and benefit sharing will need to be communicated to these groups, who will among other things have to start assessing their supply chains to ensure full compliance throughout, according to the study author.

The study was carried out by Paul Oldham, researcher at One World Analytics and visiting research fellow at the United Nations University, as part of a project with the UK Intellectual Property Office (IPO) and the Department for Environment Food and Rural Affairs (DEFRA).

The full report is available here [pdf].

Oldham presented his work at a side event, organised by the UKIPO, alongside this week’s meeting of the World Intellectual Property Organization Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (IGC).

The study aims to contribute to enhancing transparency and monitoring of the utilisation of genetic resources (GRs), featured in Article 17 of the Nagoya Protocol on Access and Benefit Sharing. Oldham believes patent documents provide a useful tool for countries to comply with this provision.

Patents filed by UK applications in various patent offices were screened for Latin species names and terms relating to GRs or associated traditional knowledge (TK).

The key points of importance arising from the study were the lack of clarity as to origin of GRs in patent applications and the general preference for use of commercial suppliers to obtain GRs over field collection.

Oldham illustrated his difficulty in screening patents for GRs, for example due to the multiple ways of expressing country names and species names.

The Nagoya Protocol will add additional difficulties, added Oldham. These include identifying whether the patent activity fell within Article 2 of the protocol, and whether the GRs or associated traditional knowledge was actually material to the invention. Article 2 of the Protocol refers to “research and development on the genetic and/or biochemical composition of genetic resources.”

The study offered some points for consideration as to how to respond to and adapt to the protocol:

-A disclosure requirement would mean clear indication of GR use in applications

-Companies would start to have to review their supply chains to identify any use of GRs in any part of the product manufacturing, and

– GR users will need to be informed about and adapt to the “changing landscape of the patent system.”

Additional care must be taken to ensure that patents do not overlap with traditional uses or limit the opportunities of traditional users to develop their GRs and associated TK, and that benefit-sharing partners are well chosen so as to benefit the right stakeholders.

As part of future work, Oldham detailed: the compilation of a company index in the UK to aid dissemination of information about the protocol; compilation of a database of animal GRs by WIPO in collaboration with the UN Food and Agriculture Organization to facilitate identification of GR use in patent applications; and sharing of the study methodology with other countries to help them identify their own use of GRs in innovation.

A source from the IPO told Intellectual Property Watch that this is the first study of its kind that maps use of GRs in patent applications, and said it is hoped to see other countries follow suit.

During a discussion after the presentation, some showed concerns that proposed disclosure requirements were too broad, and might include circumstances in which GRs are used in the process of innovation but may not be material to the end product.

Oldham agreed that the scope of the requirement remains unclear, but added it should be narrowed down to disclosure of sources actually “material to the invention”.

A representative of the Third World Network added that there is a lot of discussion about complicated parentage or fusion of species, but this “can really obviate what really is the matter at hand.” It is important to identify “what is really of utility … and making sure that that and everything else that is appropriate is disclosed,” the representative said.

Julia Fraser is an intern at Intellectual Property Watch. She is currently training to be a solicitor and will start work at an international law firm in London in 2015. She has a BSc Honours in Biology from Edinburgh University where she developed an interest in public health related intellectual property issues.