Legal regimes have consistently struggled to balance protection in intellectual property with encouraging innovation. While issues of novelty to even warrant protection have always been an issue in patent law, it has specifically come to the forefront regarding indigenous practices that has been known for generations. In May 2024, after years of discussion, the Word Intellectual Property Organization (WIPO herein) successfully adopted the first treaty acknowledging the intersectionality of intellectual property, genetic resources, and traditional knowledge, but only time will tell how the parties to the convention will grapple with its enforcement.[1] In an attempt to encourage uniformity across countries, WIPO could create their own database to track traditional knowledge and practices, and they could provide training to patent examiners, so all examiners have the same knowledge base on the global scale.
The Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge (Treaty herein) requires international patent applicants to disclose “any Indigenous Peoples and/or communities that provided traditional knowledge…the applicant drew [from] in creating the invention” they are seeking a patent for.[2] Under the Treaty, sanctions could be enforced against those who fail to disclose that their invention was “based on genetic resources or associated traditional knowledge,” but it also provides the applicant the opportunity to rectify a disclosure oversight.[3] While the treaty has been adopted, it has yet to come into force, and will do so three months following the acquisition of fifteen ratifications and accessions.[4]
Since the Treaty is not currently in force, it is unclear how exactly member states will enforce the requirements, including appropriate sanctions and remedies. Article 5 of the Treaty requires that parties to the Treaty have “appropriate, effective and proportionate legal, administrative, and/or policy measures” to address a failure to disclose.[5] The Treaty fails to specify what remedies would be sufficient to satisfy the Article 5 requirement, so this is left ambiguous for parties to interpret.[6] While individual countries would likely appreciate the ability to issue remedies as they see fit, the lack of specification will inevitably lead to inconsistent punishments across countries. Additionally, a patent cannot be deemed unenforceable or invalid solely based on a failure to disclose traditional knowledge, it must be coupled with fraudulent intent.[7] This also leaves room for differing enforcement, because different legal schemes may analyze fraudulent intent more leniently, and therefore allow patents to remain valid when they would be invalidated in other countries.
In addition to inconsistent enforcement, databases for traditional knowledge in patents are not required by the Treaty, and therefore will likely be implemented by some countries and not by others. Databases are a powerful tool imperative to the patent world, because they collect and store information that assists in prior art searches and in the enforcement of patent rights.[8] Article 6 states that parties “may establish information systems of genetic resources and traditional knowledge” and should make the information “accessible to Offices for the purposes of search and examination of patent applications.”[9] This language does not mandate countries to implement databases for the relevant data, and many will likely choose to not create a new database if it is not required to not incur additional cost. This is especially important when conducting a prior art search. Without databases offering this information, it is difficult for patent applicants to check that their described invention does not involve traditional knowledge, and it makes patent examining less efficient because they will have to conduct lengthy research on their own to ensure the disclosure requirement is being enforced. The training of patent examiners also varies by country, and if the country has the burden of effectively training examiners in the relevant searches for traditional knowledge, inconsistent application of the Treaty will occur.
The Treaty did contain an “Agreed Statement” that could help with creating a more uniform enforcement scheme. The statements requested the Assembly of the International Patent Cooperation Treaty (PCT herein) to amend the PCT to allow “applications who file an international application under the PCT…to comply with any formality requirements related” to disclosure set out in the Treaty.[10] Without this amendment, requesting this declaration from a PCT applicant would “conflict with PCT provisions.”[11] There has historically been strong opposition to a national disclosure requirement regarding the source of traditional knowledge, so it is unlikely that this amendment will occur.[12]
It is likely that enforcement will be left in the hands of the individual parties, so one suggestion is for WIPO to create a database to collect and store data on sources of traditional knowledge to ensure that all patent examining offices have access to the same information. It could be difficult to get countries to send data to WIPO for them to compile the data. However, if all parties are willing to become signatories to the Treaty, they will want to further the goals of the Treaty, and therefore should not be opposed to sending their data to WIPO. Additionally, WIPO could provide training resources so patent examiners from all Treaty parties have the same training in reviewing patent applications and running prior art searches in sources of traditional knowledge.
With the power imbalance between indigenous communities and big companies, it is important to establish protections for traditional knowledge originating with indigenous peoples.[13] The Treaty is a big step in this direction, but its implementation will be important to ensuring indigenous communities are protected uniformly across the globe.
[1] WIPO Member States Adopt Historic New Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, WIPO Doc. PR/2024/919 (May 24, 2024), https://www.wipo.int/pressroom/en/articles/2024/article_0007.html.
[2] Daniel S. Volchok et al., World Intellectual Property Organization Adopts Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, Wilmer Hale (Aug. 26, 2024), https://www.wilmerhale.com/insights/client-alerts/20240826-wipo-adopts-treaty-on-intellectual-property-genetic-resources-and-associated-traditional-knowledge#:~:text=Following%20nearly%20twenty%2Dfive%20years,or%20communities%20that%20provided%20traditional.
[3] Id.
[4] WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, May 24, 2024, WIPO Doc. GRATK/DC/7.
[5] Id. at art. 5.1.
[6] Markus Nolff, Finally! WIPO Treaty on Disclosure of Origin or Source of Genetic Resources & Associated Traditional Knowledge in Patent Applications: The End or just the Beginning?, 104 J. Pat. & Trademark Off. Soc’y 397, 399 (2024).
[7] Id.
[8] Database basics, Microsoft: Support (2024), https://support.microsoft.com/en-us/office/database-basics-a849ac16-07c7-4a31-9948-3c8c94a7c204.
[9] Supra note 4 at art. 6.
[10] Id. at 6 n.4.
[11] Supra note 6 at 406.
[12] See id.
[13] See Ugonma Nwankwo and Charles Kenny, Their Knowledge, Their Rights: Using Traditional Knowledge and Intellectual Property to Protect, Ctr. for Glob. Dev. (Mar. 1, 2021), https://www.cgdev.org/blog/their-knowledge-their-rights-using-traditional-knowledge-and-intellectual-property.
