AUTHOR: David Downes TITLE: CIEL Asks US Patent and Trademark Office to Boost Recognition of Traditional Knowledge PUBLICATION: Submitted by the author to BIO-IPR DATE: 3 August 1999
CIEL ASKS US PATENT AND TRADEMARK OFFICE TO BOOST RECOGNITION OF TRADITIONAL KNOWLEDGE
Center for International Environmental Law August 1999
On March 30, CIEL challenged the US patent on the ayahuasca vine, on behalf of the Coordinating Body of Indigenous Organizations of the Amazon Basin (COICA), the Coalition for Amazonian Peoples and Their Environment (Amazon Coalition). The United States Patent and Trademark Office (PTO) is now reexamining that patent.
Meanwhile, on August 2 CIEL filed comments with the PTO calling for changes in the procedures for identifying prior art during the examination of a patent application. The comments were also supported by COICA, the Amazon Coalition, and the Indigenous Environmental Network North American Indigenous Peoples Biodiversity Project.
Traditional and informal knowledge developed and maintained by indigenous and local communities is a significant "prior art" resource for innovation, particularly in pharmaceutical and other technologies based upon biological diversity and biological resources. Such prior art is relevant in determining whether patent applications in such fields of technology describe inventions that meet the requirements for patenting of novelty and non-obviousness.
As illustrated by the ayahuasca and turmeric patents, PTO's current approach leads to problems in identifying such prior art and ensuring that patenting requirements are met. In our comments, CIEL recommends improvements that the PTO could make to procedures and practices, within the framework of existing law. (The PTO is currently considering changes in its regulations, but no changes in legislation.)
These proposed changes would significantly enhance the ability of patent examiners to assemble and review the prior art relevant to an application. At the same time, they would enhance recognition of the contributions of indigenous peoples and non-Western cultures to universal knowledge, enhance incentives for the conservation of traditional knowledge systems and associated biodiversity, and encourage equitable sharing of benefits between the users of traditional knowledge and those who have created and maintained it. Of course, these changes would not fully address widespread concerns, but they would be a step in the right direction.
Under the United States Constitution, the underlying mission of intellectual property law is "[t]o promote the progress of science and useful arts." One of the ways that patent law promotes this goal is through the disclosure to the public of the basis for an invention (patent applications become publicly available if the patent is granted). The proper acknowledgment of "prior art" - that is, discoveries by others in the same field of technology to which the invention is an addition is valuable both as a resource for future innovators and as recognition accorded to the predecessors whose intellectual labors made the invention possible.
In this context, disclosure of traditional knowledge that forms part of the prior art "promotes the progress of science and useful arts" by according recognition to knowledge created by cultures whose contributions have often been unrecognized and undervalued. Creating positive incentives to maintain these knowledge systems in turn can create an incentive for the knowledge holders to continue the traditional practices by which they have maintained high levels of biodiversity in their homelands over many generations. Indeed, the Convention on Biological Diversity recognizes this linkage - it requires governments to take steps to respect, preserve and maintain indigenous and local peoples' traditional knowledge, innovations and practices, and encourage equitable sharing of the benefits from its use.
A copy of CIEL's comments (warning - a highly technical document, in Word format, of 138 KB) can be obtained by request from Kris Genovese at CIEL, cielkg(at)igc.org.
For more information, please
contact Glenn Wiser
David Downes,
Senior Attorney Center for International Environmental Law
(CIEL) 1367 Connecticut Ave., N.W., Ste. 300 Washington,
D.C. 20036 U.S.A. Tel: +1 (202) 785-8700 Fax: +1 (202)
785-8701 E-Mail: ddownes(at)igc.apc.org WWW:
AUTHOR: Nidhi Nath Srinivas
TITLE: 'Opposing patents is not government's job' : Jyoti
Sagar IN: Economics Times (New Delhi) DATE: 29 July 1999
URL:
'OPPOSING PATENTS IS NOT
GOVERNMENT?S JOB? : JYOTI SAGAR Economic Times / Nidhi Nath
Srinivas / 29 July 1999
The Indian government last
week announced its intention to examine the implications
of the patents on karela, jamun and brinjal and how to
challenge them. As India is yet to file its protest against
the basmati patent after more than 18 months of technical
and legal analysis, mounting a fresh offensive is hardly
likely to be easy.
Jyoti Sagar, senior partner of
Kumaran and Sagar, India?s attorneys in the basmati case,
however, believes it is not for the government to oppose
such patents. In a conversation with Nidhi Nath Srinivas
he explains why.
[Q] Should India approach the US
Patent Office for revoking the patents obtained for
products based on bitter gourd, jamun, and brinjal? [A] US
Patent No 5,900,240 (May 4, 1999) has been issued for a
herbal composition comprising a mixture of at least two
herbs selected from Momordica charantia (Bitter gourd),
Syzygium cumini (Jamun), Gymnema sylvestre, (gur-mar) and
Solanum melongena (brinjal) for use as hypoglycemic agent.
Any person can challenge a patent of the above nature in the
US by citing documents published before the date of filing
of the case.
[Q] Does India need institutionalised
procedures for opposing such patents? [A] Patents are
private rights granted to individuals or companies, and
opposing patents is usually left to the aggrieved
individuals, companies or organisations. Even in developed
countries, there are no government-sponsored or
institutionalised procedures for opposing patent
applications. While granting patents, officers overseas
check the printed publications available with them to find
out whether the invention before them is novel and
non-obvious. Prior public use of the invention in the same
country would be a bar to the grant of a patent. But they
have no access to traditional knowledge or customary
practices on any country, including India. Prior use in any
country outside of USA does not bar the grant of a patent
in USA. The law is the same in India.
[Q] Would
the creation of a database of traditional practices help?
[A] Definitely. What we need is to develop a database of the
traditional knowledge and customary practices prevalent in
India, especially those relating to Indian systems of
medicine. Such a database can be made available to the
patent offices abroad, particularly in the US, Japan and
Europe, so that the chances of our traditional knowledge
being made subject matter of patents are significantly
reduced.
[Q] How can we ensure that India is alert
to future infringement of its rights? [A] In many of the
cases what one is trying to prevent is the creation of a
patent monopoly in respect of a subject which is largely in
public domain. For example, in the Haldi case while the US
patent was revoked, it does not mean grant of patent or
similar rights to any Indian organisation. Some foreign
patents may arouse a sense of national indignation even
though commercial interests are not affected. One could,
therefore, see the need for a Patent Watch Cell, which
could keep a watch on patents being applied for or
obtained in important jurisdictions.
[Q] India?s
patent office needs immediate upgradation and
centralisation. Do see a way out of hurdles such as these?
[A] Yes, technical, financial and human resources are
required to correct a fairly grim situation. There are
about 30,000 applications pending for examination. In
addition, already about 3,000 black box applications have
been filed and more will get filed in the next five years.
All these will surface for examination after January 1,
2005. More than 13,000 applications have also been filed
in overseas patent offices under the Patent Cooperation
Treaty since December 8, 1998, in which India is designated
as one of the countries where patent protection will be
sought. When these applications enter the national phase
for examination, there will be a substantial increase in
the workload of the examiners. Add to that the increase in
applications consequent upon TRIPS implementation and the
work load of dealing with Exclusive Marketing Rights. But
the number of examiners is inadequate: only 32 as on 30
December 98.
AUTHOR: Vandana Shiva TITLE: Biopiracy: need to change
Western IPR systems IN: The Hindu (New Delhi) DATE: 28
July 1999 URL:
BIOPIRACY: NEED
TO CHANGE WESTERN IPR SYSTEMS The Hindu / Vandana Shiva /
28 July 1999
The patents on the anti-diabetic
properties of 'karela', 'jamun', and brinjal once again
highlight the problem of biopiracy - the patenting of
indigenous biodiversity-related knowledge.
U.S.
Patent No. 5,900,240 was granted recently to Cromak
Research Inc., based in New Jersey. The assignees are two
non-resident Indians, Onkar S. Tomer and Kripanath Borah,
and their colleague, Peter Gloniski.
The use of
'karela', 'jamun' and brinjal for control of diabetes is
common knowledge and everyday practice in India. Their
use in the treatment of diabetes is documented in
authoritative treatises such as the "Wealth of India',
the "Compendium of Indian Medicinal Plants' and the
"Treatise on Indian Medicinal Plants'.
This
indigenous knowledge and use consists of "prior art'. No
patent should be given where prior art exists, since
patents are supposed to be granted only for new
inventions on the basis of novelty and non-obviousness.
These criteria establish inventiveness, and patents are
exclusive rights granted for inventions.
The
claim to the use of 'karela' or 'jamun' for anti-diabetic
treatment as an invention is false since such use has
been known and documented widely in India.
Biopiracy and patenting of indigenous knowledge is a double
theft because first it allows theft of creativity and
innovation, and secondly, the exclusive rights
established by patents on stolen knowledge and steal
economic options of everyday survival on the basis of our
indigenous biodiversity and indigenous knowledge.
Overtime, the patents can be used to create monopolies
and make everyday products highly priced.
If there
were only one or two cases of such false claims to
invention on the basis of biopiracy, they could be called
an error.
However, biopiracy is an epidemic.
'Neem', 'haldi', pepper, 'harar', 'bahera', 'amla',
mustard, basmati, ginger, castor, `'aramla', 'amaltas' and
now 'karela' and 'jamun'.....
The problem is not,
as was made out to be in the case of turmeric, an error
made by a patent clerk. The problem is deep and systemic.
And it calls for a systemic change, not a case by case
challenge.
If a patent system which is supposed to
reward inventiveness and creativity systematically
rewards piracy, if a patent system fails to honestly apply
criteria of novelty and non-obviousness in the granting of
patents related to indigenous knowledge then the system
is flawed, and it needs to be changed. It cannot be the
basis of granting patents or establishing exclusive
marketing rights.
The problem of biopiracy is a
result of Western style IPR systems, not the absence of
such IPR systems in India. Therefore, the implementation of
TRIPs, which is based on the U.S. style patent regimes,
should be immediately stopped and its review started.
The promotion of piracy is not an aberration in the
U.S. patent law. It is intrinsic to it. The U.S. laws
were originally designed to pirate or borrow industrial
innovations from England. Patents originally functioned as
import franchises or import monopolies. Patents were
given for salt manufacturers, for operating steamboats
even though these were not invented in the U.S.
Later, the recognition and stimulation of inventiveness was
added as an objective, and the criteria of novelty, non-
obviousness and utility were developed as a test for
inventiveness. However, the earlier objectives of
creating U.S. monopolies based on free import of knowledge
from other countries have survived and the U.S. continues
to import knowledge which it then converts to
"intellectual property'.
Article 102 of the U.S.
Patent Law, which defines prior art, does not recognise
technologies and methods in use in other countries as prior
art. If knowledge is new for the U.S., it is novel, event
if it is part of an ancient tradition of other cultures
and countries. This was categorically stated in the
Connecticut Patent Law which treated invention as "bringing
in the supply of goods from foreign ports' that is not
yet of use among us.
'Prior art' and 'Prior use' in
other countries were, therefore, systematically ignored
in the U.S. laws on monopolies granted on the basis of
claims to invention. The same assumption of ignorance as
invention is enshrined in the U.S. Patent Act of 1952.
Section 102 of the Act treats as a 'prior art' use in the
U.S. and publications in foreign countries. Use in
foreign countries is not recognised as 'prior art'.
Section 102 of the U.S. law which defines 'prior art' reads
as follows:-
35 USC 102: Conditions of
patentability: Novelty and loss of right to patent. A
person shall be entitled to a patent unless: A. The
invention was known or used by others in this country or
patented or described in a publication in this or a
foreign country before the invention thereof by the
applicant for patent. Or B. The invention was patented or
described in a trade publication in this or a foreign
country or in public use or on sale in this country more
than one year prior to the date of the application for
patent in the United States.
Use in a foreign
country therefore does not constitute 'prior art' in U.S.
patent law.
Since patents are granted for new
inventions, denial or non- recognition of 'prior art'
elsewhere allows patents to be granted for existing
knowledge and use in other countries. This is the basis
of biopiracy or knowledge of Indian knowledge systems,
and indigenous uses of biological resources being
patented.
The U.S. style patent laws can only
pirate indigenous knowledge. They cannot recognise or
protect it.
The survival of an anachronistic Art.
102 thus enables the U.S. to pirate knowledge freely from
other countries, patent it, and then fiercely protect
this stolen knowledge as "intellectual property'.
Knowledge flows freely into the U.S. but is prevented
from flowing freely out of the U.S.
If biopiracy
has to stop, then the U.S. patent laws must change, and
Article 102 must be redrafted to recognise prior art of
other countries. This is especially important given that
the U.S. patent laws have been globalised through the
TRIPs agreement of the WTO.
In 1999, Article 27.3
(b) of the TRIPs agreement is supposed to come up for
review. This is the article that most directly impacts
indigenous knowledge, since it relates to living
resources and biodiversity. In 2000 A.D. countries can
also call for an amendment of TRIPs as a whole.
Since TRIPs is based on the assumption that the U.S. style
IPR systems are "strong' and should be implemented
worldwide, and since in reality the U.S. system is
inherently flawed in dealing with indigenous knowledge and
is "weak' in the context of biopiracy, the review and
amendment of TRIPs should begin with an examination of
the deficiencies and weakness of Western style
intellectual property rights systems. A globalised IPR
regime which denies the knowledge and innovations of the
Third World, which allows such innovations to be treated
as inventions in the U.S., which legalises monopolistic
exclusive rights by granting of patents based on everyday,
common place indigenous knowledge is a regime which needs
overhaul and amendment.
Instead of being
pressured, as India has been, to implement a perverse IPR
system, through TRIPs, India should lead a campaign in the
WTO for review and amendment of the system. Meantime,
India and other Third World countries should freeze the
implementation of TRIPs. While TRIPs implementation is
frozen for starting a process of review, we should make
domestic laws which protect our indigenous knowledge as
the common property of the people of India, and as a
national heritage. The implementation of the Convention on
Biological Diversity (CBD), enables us to do this. Since
the CBD is also an international treaty, protecting
indigenous knowledge via a Biodiversity Act does not
violate our international obligations. In fact, removing
the inconsistencies between TRIPs and CBD should be
important part of the international campaign for the
review and amendment of TRIPs.
Amending TRIPs and
U.S. patent laws is the challenge we must take up. The
problem is not our IPR systems but the Western style IPR
regimes which systematically enable piracy of indigenous
knowledge and practices through patents.
The
review of TRIPs should be used to start amending these
deficient systems.
Some commentators have suggested
that biopiracy happens because our knowledge is not
documented. That is far from true. Indigenous knowledge in
India has been systematically documented, and this in fact
has made piracy easier. And even the folk knowledge
orally held by local communities deserves to be
recognised as collective, cumulative innovation. The
ignorance of such knowledge in the U.S. should not be
allowed to treat piracy as invention.
Piracy of
indigenous knowledge will continue till patent laws
directly address this issue, exclude, patents on
indigenous knowledge and trivial modifications of it, and
create sui generis systems for the protection of
collective, cumulative innovation.
The protection
of diverse knowledge systems requires a diversity of IPR
systems, including systems which do not reduce knowledge
and innovation to private property for monopolistic
profits. Systems of common property in knowledge need to
be evolved for preserving the integrity of indigenous
knowledge systems on the basis of which our every day
survival is based.
Since neither TRIPs, nor the
U.S. patent law have scope for recognising knowledge as a
"commons', or recognising the collective, cumulative
innovation embodied in indigenous knowledge systems, if
indigenous knowledge has to be protected, then TRIPs and
U.S. patent laws must change.
Nothing less than an
overhaul of Western style IPR systems with their
intrinsic weaknesses will stop the epidemic of biopiracy.
And if biopiracy is not stopped, the every day survival
of ordinary Indians will be threatened, as over time our
indigenous knowledge and resources will be used to make
patented commodities for global trade. Global corporate
profits will grow at the cost of the food rights, health
rights and knowledge rights of one billion Indians, two
thirds of whom are too poor to meet their needs through
the global market place.
India should lose no time
in starting the movement for amendment of TRIPs and U.S.
patent laws. Our survival itself is at stake.
http://www.econet.apc.org/ciel/
http://www.economictimes.com/290799/29opin03.htm
http://www.hinduonline.com/today/stories/05281349.htm