US Blindsides Allies Over Patents And Genetic Resources At WIPO

The United States may have hoped for a different result last week when it alienated allies at the World Intellectual Property Organization by issuing a rash criticism of Switzerland’s policy on patents and genetic resources, and threatened to follow with more.

On most issues at WIPO, strong IP-holding countries bond together. But in discussions at WIPO on how to protect genetic resources from misappropriation, some developed countries, such as Switzerland, Australia, New Zealand and Norway, were early supporters of the protection of genetic resources through an international instrument. This runs contrary to the view of other developed countries such as the United States.

A core issue of the discussions is whether patent applicants should have to provide patent offices with the origin of genetic resources they use. The European Union recently agreed on a disclosure requirement.

The demandeurs of a treaty or treaties at WIPO protecting genetic resources (GRs), traditional knowledge (TK) and traditional cultural expressions (TCEs) are mainly developing countries.

Countries such as the United States, South Korea, Japan and Canada, meanwhile, have been reluctant to proceed with an international instrument, and have opposed mandatory disclosure in patent applications.

On 1 June, the US appeared to blindside its allies when it tabled, seemingly without consultation, a 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,” which took as an example a US patent on antibiotics (IPW, WIPO, 3 June 2016).

The document describes hypothetical hurdles, risk of penalties, and rejection of a patent an applicant would have met under the Swiss legislation.

According to the document, the law of Switzerland was taken as a first example, 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 WIPO Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (IGC) met from 30 May to 3 June.

On the last day of the IGC, the US, presenting its document, said the IGC conducts general discussions that  are based on few technical examples. The goal of the document, the delegate said, is to prompt a discussion and seek a better understanding of definition and other texts in the proposed consolidated document.

But Switzerland, in its statement commenting on the US document, said it “seems self-evident that working documents published by WIPO should not present the national legislations of Member States in a faulty and incomplete manner.” (Switzerland, it might be noted, has one of the strongest biotechnology industries in the world.)

Switzerland said the Swiss provisions referred to in the US document were elaborated in a democratic process, involving all stakeholders including industry “and stakeholders critical of patents,” and “strike a delicate balance between all interests concerned.”

The Swiss delegate said a number of erroneous interpretations were made of the Swiss legislation in the US document.

In particular, the Swiss delegate said the US document does not adequately distinguish between the different national provisions in the Swiss legislation concerning genetic resources.

For example, he said, “the document confuses the disclosure of the source requirement as stipulated in the patent law, the notification of the due diligence obligation according to the regulation implementing the Nagoya Protocol, and the product marketing approval procedures.”

“Contrary to the analysis of the US, the due diligence obligation according to the regulation implementing the Nagoya Protocol is not linked in any way to the disclosure requirement according to our patent law,” he added.

The Swiss delegate said the document only risks adding confusion to the IGC discussions on genetic resources and traditional knowledge, and asked that the US delegation withdraw their document from the list of working documents of the IGC. The Swiss delegation intends to submit a paper on the relevant Swiss legislation in the future, he said.

Australia, Ghana, and India supported Switzerland. However, the US said it did not intend on withdrawing its document.

A number of countries currently have disclosure requirements in their laws, as shown on a WIPO table [pdf], such as Brazil, China, the European Union members, Ecuador, India, Peru, the Philippines, and South Africa.