At WIPO, US Plays Hypotheticals With Swiss Law On Disclosure Of Genetic Resources In Patents

With discussions in full swing at the World Intellectual Property Organization on how to protect genetic resources in intellectual property rights, and in particular whether the disclosure of the source of genetic resources should be mandatory in patent applications, the United States has tabled a document hypothetically applying the mandatory disclosure legislation of Switzerland to a US patent.

The document [pdf] titled “Seeking a better understanding of Switzerland’s ‘Federal Act on the Protection of Nature and Cultural Heritage,’ and ‘Federal Act on Patent for Inventions’ by hypothetically applying them to U.S. Patent Number 5,137,870,” takes as an example a patent on antibiotics.

The WIPO Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (IGC) is meeting from 30 May to 3 June.

The document, numbered as an official committee document, says “disclosure requirements have been characterised as simple transparency requirements, which will not be burdensome to patent applicants.” But it adds that the US review of disclosure requirements “however, suggest that this requirements will be difficult for applicants to satisfy, and that applicants will be required to disclose many sources of any genetic resources (GR) used at some point in making the invention, as well as those which could have been used.”

The law of Switzerland has been taken as a first example, the document says, and “if this exercise improves our understanding of the disclosure requirement in Switzerland, then we plan to undertake the same exercise using the laws of other World Intellectual Property Organization (WIPO) members.”

The document describes the different hurdles and risk of penalties and rejection of the patent met by the applicant if he had to comply with the Swiss legislations.

In conclusion, the document says, “Overall it is clear that the Swiss disclosure requirement is not a simple ‘check box’ requirement and considerable time would be required to determine whether and how to meet the requirement.”