Genetics Disclosure Requirement In IP Applications Necessary To Comply With Obligations, Speakers Say

As World Intellectual Property Organization members struggled this week to find consensus on the wording of a potential treaty protecting genetic resources from misappropriation, a side event explored the role of WIPO and the intellectual property system in preventing such misappropriation.

The South Centre, an intergovernmental organisation of developing countries, organised a side event on the margin of the 29^th session of the Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (IGC).

Carlos Correa, special advisor on trade and intellectual property at the South Centre, said the obligation to disclose the source of genetic resources is necessary if the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and 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 are to be implemented.

Correa challenged the argument used by some developed countries that a disclosure requirement would mean additional costs for applicants, as they merely have to provide information so the nature of the obligation would not translate into additional costs.

He also challenged the argument that a disclosure requirement would put additional burden on IP offices or plant variety protection offices. The burden would be very limited, he argued, as offices would just have the obligation to make public the information they receive.

Another argument voiced by some developed countries is that benefit-sharing would be conditional to the grant of a patent. According to Correa, benefit-sharing may take place in the absence of patents, in the case where genetic resources and their derivatives are used without patent protection, which would mean that multiple users would have to meet access and benefit-sharing obligations.

A number of countries have already included a mandatory disclosure requirement, such as Belgium, Brazil, China, Costa Rica, Denmark, India, Norway, the Philippines, South Africa, Switzerland, Thailand and Vietnam, according to his presentation.

SDGs, Nagoya, ABS Compliance

David Vivas Eugui, legal officer, Biotrade Initiative at the United Nations Conference on Trade and Development (UNCTAD), said the adoption of the UN Sustainable Development Goals places an obligation on UN member states to follow those objectives, in particular target 15.6, which asks to “Promote fair and equitable sharing of the benefits arising from the utilization of genetic resources and promote appropriate access to such resources, as internationally agreed.”

Members of the IGC, as members of WIPO, itself a UN organisation, are bound by the SDG mandate, he said.

The entry into force of the Nagoya Protocol, now including 70 countries and growing, he said, has provided clarity on access and benefit-sharing and set a mechanism for monitoring compliance. The protocol now has to be translated into national laws, he said, but once translated, countries are bound by access and benefit (ABS) sharing rules under the protocol, “like it or not,” he said.

He cited cases in Peru and Colombia where some companies had readily complied with ABS rules. “Nobody died or screamed, it just happened,” he said. He particularly cited Ecoflora, which developed an interest in a fruit with natural blue staining property, as an example of compliance.

Swiss Banks, Disclosure Requirement, All about Secrets

François Meienberg from the Berne Declaration drew a comparison between the Swiss banking secrecy and the absence of disclosure of the source of genetic resources. Before the reform of the banking system brought by pressure exerted by governments on Switzerland and Swiss banks, “they were supporting companies and individual violating the laws of other countries,” he said.

It should be the interest of user countries to enforce the ABS laws of other countries, he said, just as Switzerland lifted bank secrecy to retain its status as a top financial centre.

In Europe, he said, most patents are not issued on the national level but at the level of the European Patent Office, and disclosure requirement is not effectively applied at the EPO. Solutions should be sought in the European Patent Convention, he said.

Meienberg cited a recent case of a Monsanto patent on virus-resistant melons rejected at the EPO on the grounds of insufficient disclosure of the invention (IPW, Biodiversity/Genetic Resources/Biotech, 22 January 2016).

In another case, he said Nestlé had patented rooibos, but the South African government demonstrated that it could only have come from their country. After two years, Nestlé abandoned the patent, he said, and entered into an agreement in line with the biodiversity law of South Africa.

Disclosure in Plant Variety Protection

One of the issues discussed at the IGC this week is whether the disclosure requirement should apply to patents, or to other IP instruments.

Sangeeta Shashikant of the Third World Network illustrated the need to apply disclosure to plant variety protection. She took the example of a case of alleged biopiracy of a purple carrot, originated in Turkey, on which Monsanto obtained plant variety protection in Europe and the United States, thus appropriating a plant essentially created by Turkish farmers.

Without disclosure in plant variety protection applications (PVP), there is no trace of farmers’ contribution, she said. There is a worrying trend that in PVP applications, breeders ask that some information in the applications be kept confidential, she added.

The Union for the Protection of New Varieties of Plants (UPOV) has “historically” voiced its clear opposition on disclosure requirements, said Shashikant. That renders UPOV inconsistent with other sui generis systems of plant variety protection, such as those established by India and Malaysia, which both include disclosure obligations, she said.

In an intervention at the TRIPS Council in 2002, UPOV said, “UPOV is not opposed to the disclosure, per se, of countries of origin or geographical origin of genetic resources in any way that will facilitate the examination of whether a variety qualifies for protection. It should be recalled, however, that under the UPOV Convention, protection shall be granted where the variety is new, distinct, uniform and stable. Further or different conditions for protection are excluded. Therefore, disclosure of origin of genetic resources should not be regarded as an additional condition of protection.”

 

Image Credits: Catherine Saez