Practical Mechanisms for the Defensive Protection of Traditional Knowledge and Genetic Resources Within the Patent System (link)

Geneva, 04 Jun 2003

Document prepared by the Secretariat

I. OVERVIEW

1. This document summarizes the products for the defensive protection of traditional knowledge and genetic resources which have been produced by the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore ("the Committee"). It also reviews certain substantive issues that have arisen during the work of the Committee and identifies areas for future work by other WIPO bodies.

2. The term "defensive protection", when applied to traditional knowledge and genetic resources, refers to measures aimed at preventing the acquisition of intellectual property rights over traditional knowledge (TK) or genetic resources by parties other than the customary custodians of the knowledge or resources.1 The development of measures for defensive protection have constituted a major component of the work of the Committee. An overview of the outcomes produced by the Committee is contained in Annex 1. The present document contextualizes these deliverables within their overall substantive context and a package of policy measures and practical tools for the concerned stakeholders.

3. In the work of the Committee, it has frequently been stressed that protection of TK should be undertaken in a comprehensive manner, potentially using both positive and defensive forms of protection. Defensive protection is no substitute for positive protection, and should not be mistaken for the acquisition and active exercise of rights in the protected material. Its impact is limited to preventing other parties from gaining intellectual property (IP) rights, and does not in itself prevent others from using this material. Often, the active assertion of rights (positive protection) is necessary to prevent the unauthorized or illegitimate use of TK. In some scenarios, defensive protection may actually undermine the interests of TK holders, particularly when this involves giving the public access to TK which is otherwise undisclosed, secret or inaccessible. In the absence of positive rights, public disclosure of TK may actually facilitate the unauthorized use of TK which the community wishes to protect.

4. This document provides an overview of defensive protection measures in the following structure: Section II sets the work of the Committee in context with a case study and some background information regarding defensive protection of genetic resources and TK. Section III sets out considerations for effective defensive publication strategies. Sections IV and V review the outcomes which the Committee has delivered through these Activities in four sessions. These outcomes include both amendments to existing international patent systems and practical tools for stakeholders. Section VI identifies some areas for future work.

Finally, Section VII presents some preliminary conclusions. Annex I sets out a summary table of all the Deliverables and Products produced by the Committee for Defensive Protection of TK and genetic resources. Finally, Annex II provides some background information on the System-wide Information Network on Genetic Resources (SINGER) of the Consultative Group on International Agricultural Research (CGIAR), a global database of genetic resources which has been linked to the WIPO Portal of Online Databases and Registries Concerning TK and Genetic Resources.

II. DEFENSIVE PROTECTION: BACKGROUND

5. Defensive protection in the context of the patent system hinges on the requirement that inventions be both novel (new) and inventive (non-obvious). Both of these criteria are assessed with reference to available prior art: that is, information which was available to the public before the filing or priority date of the patent application. This has a legal aspect and a practical aspect. Legally, the criteria concern all information that is available to the public prior to the filing date or priority date of the patent application. National laws specify what information should be taken into account. For example, at the international level, the Patent Cooperation Treaty (PCT) Regulations (Rule 33(1)) provide that:

"relevant prior art shall consist of everything which has been made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date."

However, this rule only directly concerns the non-binding international search and examination, and the applicable rules for determining what prior art is relevant can vary according to national or regional laws. A strategy for defensive protection clearly needs to take account of the legal situation that applies in any particular country of interest.

6. Practically, during the examination of a patent application, it is not possible to locate literally all potentially relevant information. Even so, it is clearly desirable for examiners to have access to any relevant information, so that when a decision is taken on granting a patent, it is based on as full a background of prior art as is possible. Defensive strategies may therefore involve increasing the practical likelihood that an examiner will locate and consider the relevant information. For example, an obscure publication that is only available in a library in a foreign country will not normally be available to (or even known to) a patent examiner, even though it would be considered relevant prior art if the examiner or other authority had access to it or was aware of it. In practice, an obscure document or publication may not be known to the patent or judicial authorities. A defensive strategy might involve republishing that publication in a form accessible on the internet, linking it to particular search tools, or including it in a database of material specifically identified as relevant for patent examination in a particular field.

7. Defensive strategies therefore have two aspects:

• a legal aspect, ensuring that information is published or documented in such a way as to meet the legal criteria to be counted as prior art in the jurisdiction concerned (this may include, for instance, ensuring that there is a clear date of publication, and that the disclosure enables the reader to put the technology into effect); and
• a practical aspect, ensuring that in fact the information is available to search authorities and patent examiners, and is readily accessible (such as through being indexed or classified), so that it is likely to be found in a search for relevant prior art.

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