Considerations on the new WIPO Treaty on Genetic Resources (Roberto Carapeto)
Introduction
Brazil once again played a pivotal role in shaping intellectual property history. As WIPO member states concluded final negotiations on a Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge at WIPO headquarters in Geneva from May 13 to 24, 2024, Brazil's Permanent Representative to the World Trade Organization, Ambassador Guilherme de Aguiar Patriota, chaired the diplomatic conference which culminated in consensus approval of the new WIPO Treaty[i].
Commenting on the adoption of the Convention, WIPO Director General Daren Tang said: "Today we made history in many ways. This is not just the first new WIPO Treaty in over a decade but also the first one that deals with genetic resources and traditional knowledge held by Indigenous Peoples as well as local communities. Through this, we are showing that the IP system can continue to incentivize innovation while evolving in a more inclusive way, responding to the needs of all countries and their communities." [ii].
Ambassador Patriota also commented on the new Treaty, "a very carefully balanced outcome of this Diplomatic Conference. It constitutes the best possible compromise and a carefully calibrated solution, which seeks to bridge and to balance a variety of interests, some very passionately held and assiduously expressed and defended over the course of decades."[iii].
Since Brazil has led the discussions and this topic is closely relevant to Brazil, I would like to make a few considerations about the new WIPO treaty.
On the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge
The scope of the newly agreed Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge is essentially that if the invention claimed in a patent application is based on genetic resources, each Contracting Party will require the applicant to disclose the source of the genetic resources or the country of origin. Also, if the invention claimed in a patent application is based on genetic resources or associated traditional knowledge, each Contracting Party will require the applicant to disclose the indigenous peoples or local communities that provided that traditional knowledge.
Parties to the Treaty must provide remedies for failure to provide the required information and allow the applicant to correct the missing information, except in cases of fraudulent or willful conduct as defined by domestic law. Sanctions or post-grant remedies may be provided in cases of fraudulent intent with respect to the Treaty's disclosure requirements.
In addition, Member States of the Convention may establish databases of genetic resources and associated traditional knowledge in consultation with indigenous peoples, local communities, and other interested parties as necessary, considering each country’s circumstances.
Some considerations
〇 On the enforcement of the Treaty
The “Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge" will enter into force when 15 countries have deposited their instruments of ratification or accession, which will establish new disclosure requirements under international law for patent applicants for inventions based on genetic resources and associated traditional knowledge. The Treaty made it possible for it to be signed immediately on May 24, 2024, the last day of the final negotiations, after an agreement has been reached. Accordingly, on the same day, Algeria, Bosnia and Herzegovina, Brazil, Burkina Faso, Central African Republic, Chile, Colombia, Congo, Cote d'Ivoire, Eswatini, Ghana, Lesotho, Madagascar, Malawi, Marshall Islands, Morocco, Namibia, Nicaragua, Niger, Nigeria, Niue, North Korea, Paraguay, St. Vincent and the Grenadines, Sao Tome and Principe, Senegal, South Africa, Tanzania, Uruguay, and Vanuatu signed the [iv].
Given that 30 countries have already signed the Treaty, it should not take too long for 15 countries to finalize their ratification procedures and depoist their instruments. However, as the above chart clarifies, none of the IP5 countries have signed the Treaty. In fact, the United States, Japan, South Korea, Canada, the United Kingdom, and other developed countries have joined together to express several concerns regarding the progress of the Treaty. These concerns primarily revolve around the potential imposition of unnecessary obligations on applicants, which they believe could stifle innovation and economic growth. As a result, these countries have not signed the Convention, and they intend to remain cautious about signing it in the future.[v].
Therefore, given that more than 30 countries, including China, the EU, Brazil, and India, already have source disclosure systems in place, and considering that many of them are countries that have signed the Treaty, it is unlikely that even if the Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge comes into force in the near future, it is hard to expect that there will be any significant changes or impacts on companies using genetic resources.
〇 On practical applications
Of course, it is no exaggeration to say that the obligation to disclose the origins of genetic resources and traditional knowledge is important. Countries that have already enacted disclosure requirements for genetic resources and associated traditional knowledge include China, Brazil, India, South Africa, Germany, France, Belgium, Spain, Sweden, Italy, and Switzerland. According to a WIPO survey, as of March 2024, more than 33 countries have enacted the above disclosure requirements.[vi].
On the other hand, the aspects of harmonization through the signed treaties are limited in many ways. Also, there are basically no provisions for international cooperation. Other than the information system, including the database-related provision stipulated in Article 6 of the Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge, no provisions were established that would have much practical impact. For example, although a unified database would probably allow all countries to use it openly, there is no mechanism for the patent office of country A to request information on the use of genetic resources or traditional knowledge originating from other countries. Likewise, no agreement was reached on a mechanism for country A to impose sanctions on country B for non-disclosure of information.
Meanwhile, Article 5.3, as approved in the draft proposed by the United States, provides that Member States may not revoke, invalidate or render unenforceable a conferred patent right solely for the reason that the applicant failed to disclose information[vii]. This significantly reduces the ability of a Member States to provide remedies for failure to provide proper disclosure. It also makes it more difficult to create dissuasive remedies for failure to provide proper disclosure.
In addition, the Treaty does not have a retroactive effect on patent applications filed before it came into force. Therefore, in practical terms, the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge is unlikely to solve current problems.
〇 On the scope of the Treaty
Negotiations for this Treaty began at WIPO in 2001. It originally began with a proposal from Colombia in 1999, and the point at first was not limited to disclosure of access to genetic resources but rather ownership of traditional knowledge and attribution of rights related to Indigenous peoples and local communities[viii]. Suppose the initial discussions developed well; Indigenous peoples and local communities have explicit claims to their traditional knowledge. In that case, if an applicant uses traditional knowledge provided by an Amazonian pajé (a leader in many Indigenous communities in the Amazon) in making an invention, the pajé may be able to seek relief against the applicant beyond the scope of the procedural issues related to patent examination. In one example, if a property right were recognized for traditional knowledge, relief for infringement of that right may also be available. Furthermore, if it is stipulated that an implicit contractual obligation arises in addition to the obligation to disclose when filing a patent application when there is access to traditional knowledge and genetic resources, contractual remedies (for example, violation of the principle of good faith) may also be possible.
However, the current Convention on Intellectual Property, Genetic Resources and Associated Traditional Knowledge reached agreement only on provisions concerning aspects of patent prosecution. From the initial discussions, it is possible to say that the scope of the agreed Treaty is very narrow.
On another end, the Convention on Biological Diversity (CBD) introduced the concept of "fair and equitable access and benefit sharing arising from the utilization of genetic resources" (ABS) into international law, and the Nagoya Protocol was adopted in October 2010 as a measure to properly implement international rules on ABS.
It is unfortunate that language on ABS was not included in the approved text of the Treaty. If the Treaty could develop disclosure practices, this could have a positive impact on the implementation of the Nagoya Protocol[ix]. However, the failure to address ABS shows how far the agreed Treaty text has strayed from the original goals of the discussions.
Conclusion
The “Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge" is also the first new WIPO treaty in more than a decade, and while it can be considered a success due to bringing more than 20 years of negotiations to an end, it is doubtful how much impact it will have as a solution to issues related to genetic resources and traditional knowledge. In fact, during the course of the negotiations, many countries opposed moving the Treaty to the final stage[x]. On the other hand, many developing country delegations and representatives of indigenous communities were pleased with the conclusion of the treaty negotiations, although they recognized the restrictive scope of it.
In any case, as stipulated in Article 3 of the Treaty establishing the World Intellectual Property Organization (WIPO), if the objective is to "promote the protection of intellectual property throughout the world," it would be great if the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge could serve as a stepping stone toward this goal of dealing with the issue of traditional knowledge and genetic resources, even if it is only a first step.
(Nagoya University Lecturer / Brazilian Attorney of Law ・ Roberto Carapeto)
[i] WIPO Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge, Diplomatic Conference to Conclude an International Legal Instrument Relating to Intellectual Property, Genetic Resources, and Traditional Knowledge Associated with Genetic Resources, Geneva, May 13–24, 2024, WIPO Doc. GRATK/DC/7 (May 24, 2024), available at https://www.wipo.int/edocs/mdocs/tk/en/gratk_dc/gratk_dc_7.pdf.
[ii] World Intellectual Property Organization (WIPO), WIPO Member States Adopt Historic New Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge, (May 24, 2024), available at https://www.wipo.int/pressroom/ja/articles/2024/article_0007.html.
[iii] Ibid.
[iv] New Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge (GRATK), Cannabis Embassy (May 2024), available at https://cannabisembassy.org/mexta/pm-geneva/gratk/.
[v] Japan External Trade Organization (JETRO), WIPO Treaty on Genetic Resources Disclosure Adopted; Korean Patent Office to Actively Respond with Advanced Nations, (May 29, 2024), available at https://www.jetro.go.jp/world/asia/kr/ip/ipnews/2024/240529.html.
[vi] World Intellectual Property Organization (WIPO), Genetic Resources Disclosure: Overview and Requirements, available at https://www.wipo.int/export/sites/www/tk/en/docs/genetic_resources_disclosure.pdf.
[vii] Third World Network (TWN), TWN Info Service on Intellectual Property Issues (May 24/06), (May 28, 2024), available at https://twn.my/title2/intellectual_property/info.service/2024/ip240506.htm.
[viii] Maria Grazia Dusina, WIPO’s New Treaty on Intellectual Property, Genetic Resources and Traditional Knowledge – A Turning Point for Indigenous Heritage?, European Society of International Law (ESIL) Reflections, Vol. 13, Issue 11 (Sep. 19, 2024), available at https://esil-sedi.eu/esil-reflection-wipos-new-treaty-on-intellectual-property-genetic-resources-and-traditional-knowledge-a-turning-point-for-indigenous-heritage/.
[ix] Ibid.
[x] Akin Gump, U.S. Seeks Comments on Text for WIPO Genetic Resources Treaty, (2024), available at https://www.akingump.com/en/insights/alerts/us-seeks-comments-on-text-for-wipo-genetic-resources-treaty.