New WIPO Treaty on Patents, Genetic Resources and Traditional Knowledge

Aparna Watal

Partner – Halfords IP

WIPO Approves Landmark Treaty on Patents, Genetic Resources and Traditional Knowledge

On 24 May 2024, after nearly 25 years of negotiations, WIPO’s member states have agreed that patent applicants must disclose the origins of genetic resources and the associated Traditional Knowledge (TK) used in their inventions. Adopted with a consensus of over 150 member states, the Treaty on Intellectual Property, Genetic Resources and Traditional Knowledge (Treaty) marks a significant step towards recognition of traditional knowledge in the patent system, in a fair and transparent manner. Australia, Brazil and India played a significant role in finalising the Treaty.

Why is the Treaty significant?

Genetic resources play a crucial role in addressing global challenges and driving innovation across various industries, including pharmaceuticals, health and food supplements, cosmetics, agriculture, and biotechnology. While natural genetic resources cannot be directly patented, inventions developed using them can be patented. For instance, the Kakadu plum (terminalia ferdinandiana), native to Australia, has exceptionally high vitamin C content and anti-inflammatory properties. Australian Indigenous communities have used the plum fruit and tree for their medicines since before colonisation. Since 2007, over 50 businesses have applied for patents involving or relating to the chemical compounds in the Kakadu plum in various countries. This has the potential of locking out Indigenous Peoples from commercially exploiting their own resources and knowledge. As it is currently not mandatory to publish the origin of innovations, many countries are concerned that patents are being granted that either circumvent the rights of Indigenous Peoples, or are issued for existing inventions. The Treaty seeks to address that issue by ensuring that groups and cultures are recognised and their contributions respected within the global intellectual property framework.

The Treaty has been carefully crafted to avoid prescriptive requirements and definitions (or else, it likely would not have been approved). Instead, it provides high-level disclosure requirements and gives contracting countries ample room to implement the obligations to suit their local patent regimes. For instance, it does not expressly define “Traditional Knowledge” nor does it set out enforcement mechanisms or who might have a right to take legal action for non-compliance with the new disclosure requirements.

What requirements does the Treaty impose?

Under the terms of the Treaty, if a patent application uses genetic resources, or TK associated with genetic resources, such that the resources or the TK is necessary for the claimed invention and the claimed invention depends on the specific properties of those resources or the TK, then the Applicant/s must disclose:

(a)    in the case of genetic resources – the country of origin of the genetic resources used in the invention or the sources of the genetic resources. If there is more than one country of origin, the Applicant/s should disclose the country of origin from which the genetic resources were actually obtained;

(b)    in the case of TK associated with genetic resources – the Indigenous Peoples/local communities who provided the TK used in the invention or any other source of that TK.

If neither the country of origin/Indigenous Peoples nor the source is known, the Applicant/s must declare this, affirming the truthfulness to the best of their knowledge.

Contracting countries will be required to provide guidance to the Applicant/s on how to meet the disclosure requirement as well as an opportunity for the Applicant/s to rectify a failure to disclose or correct any disclosures that are erroneous or incorrect. The Treaty does not require Patent Offices to verify the authenticity of the disclosures.

Importantly, the Treaty proscribes contracting parties from revoking, invalidating, or rendering unenforceable the conferred patent rights solely based on an Applicant’s failure to disclose the above information unless there is additional evidence of “fraudulent conduct or intent.” As a result, should a contracting state find there was a failure to adhere to disclosure of GR and TK, it would have to allow for the missing information to be provided before revoking, invalidating or otherwise sanctioning the patent. This provides some protection for patent holders.

When does the Treaty enter into force?

The Treaty will enter into force once 15 countries ratify it. South Africa, Brazil, Chile, Colombia, Paraguay, Uruguay and Democratic People’s Republic of Korea are some of the countries that appear to have signed the Treaty.

Australia and New Zealand are expected to become party to the new Treaty soon. If they ratify and adopt the Treaty, both countries will need to update their patent laws to incorporate the new mandatory disclosure obligations. At present, the Treaty obligations are not enforceable in Australia and New Zealand.

The Road Ahead

While there is likely some time before the disclosure requirements will become the norm, companies seeking to patent inventions based on genetic resources should consider conducting thorough due diligence to accurately trace the origins of genetic resources and associated traditional knowledge used in their inventions. By aligning their practices with the Treaty’s provisions, patent applicants can not only mitigate legal risks but also demonstrate their commitment to ethical innovation and corporate responsibility in the global marketplace. They can achieve the 4-Ts of disclosure of innovation – Transparency, Traceability, improved Technical prior art, and mutual Trust.

The symbolic importance of the Treaty cannot be overstated – it seeks to finely balance support for genuine innovation while also fostering a collaborative environment where innovation and TK can formally coexist on the International level. The Treaty’s emphasis on transparency and equity seeks to pave the way for achieving ethical bioprospecting practices and driving sustainable development that benefits all stakeholders involved.

For further information, please contact Aparna Watal.