This section sets the scene for the case study by analyzing multilateral negotiations on the disclosure obligation after TRIPS. Section 4.2.1 will summarize different categories of opinions at TRIPS council, and Section 4.2.2 will trace the multi-forum negotiations at TRIPS Council to the WIPO IGC.
4.2.1 A spectrum of positions on the disclosure obligation
Though international laws are non-hierarchical in general, Article 16.5 CBD provides a guide to the relationship between intellectual property laws and the CBD:
The Contracting Parties, recognizing that patents and other intellectual property
rights may have an influence on the implementation of this Convention, shall
cooperate in this regard subject to national legislation and international law in order
to ensure that such rights are supportive of and do not run counter to its objectives.
15 Megadiverse countries proposed at the WTO forum that TRIPS and CBD are in conflict with each other. They further proposed the disclosure obligation as a solution to reconcile the conflict by subordinating intellectual property law to ABS, one of the CBD objectives. Most developed countries do not recognize the conflict because the text of the CBD does not contain a clause expressly overriding intellectual property rights in the case of express inconsistency. As a result, the necessity to incorporate the disclosure obligation into the international and national laws becomes questionable.The TRIPS-CBD relationship was incorporated as one of the outstanding implementation issues into the Doha Round work program. The disclosure obligation has been proposed as a solution to the conflict. As a result, the TRIPS Council became the forum for the discussion of the disclosure obligation since 2002, following the Doha Ministerial Declaration.16 However, these discussions were informal, and the disclosure obligation has not been negotiated as an independent issue. India, Brazil and other megadiverse countries, including China, endeavored to promote text-based
15 Article 16.5 of CBD.
negotiations on the disclosure obligation,17 but the efforts failed in 2006. Since then, discussions on the disclosure obligation have remained part of the Director-General’s consultative process, and no substantive negotiations on this issue have taken place.
There are three categories of opinions on the disclosure obligation among WTO Members (Table 9). First is the need for a strong disclosure obligation on the basis that there is an inherent conflict between TRIPS and CBD. India first proposed the possibility of disclosure obligation as a solution to the relationship between TRIPS and CBD.18 Brazil added support to India’s initiative by further specifying that Article 27.3 TRIPS should be amended to include evidence of PIC as a condition for patentability.19 After the Doha Ministerial Declaration, more megadiverse countries associated with India and Brazil with a clearer agenda of disclosure of origin by adding a new Article 29bis to TRIPS dedicated to the disclosure of origin of genetic resources.20
The second category is a weak disclosure obligation supported by the EC, Switzerland, and Norway, arguing that there need be no inherent conflict between the two agreements, but the disclosure requirement could be included in the patent application procedure as a formal requirement. Accompanying this position of non-conflict between CBD and TRIPS, the EC and Switzerland also proposed that WIPO IGC should be a proper forum for related discussions or negotiations. Nonetheless, both the EC and Switzerland played a cross-forum game and
17 WTO General Council, Trade Negotiations Committee, TRIPS Council, Doha Work Programme – the Outstanding Implementation Issue on the Relationship between the TRIPS Agreement and the Convention on Biological Diversity, Communication from Brazil, China, Colombia, Cuba, Pakistan, Peru, Thailand and Tanzania, IP/C/W/474 (also circulated as WT/GC/W/564/Rev.2 and TN/C/W/41/Rev.2), July 5, 2006.
strategically involved both fora of WIPO and WTO. 21 Norway also supported the view that disclosure should be a formal requirement. However, in contrast to the EC and Switzerland, Norway proposed to amend TRIPS to incorporate the disclosure obligation.
In 2008, the EU and Switzerland joined the developing countries to support starting negotiations on the disclosure obligation in Draft Modalities for TRIPS Related Issues (TN/C/W/52). 22 Over two-thirds of WTO Members co-sponsored this proposal. As discussed in Chapter 3, the GI Register and GI Extension are the other two issues included in this proposal. This proposal was intended to balance the different interests. It did not mention the discrepancy between the megadiverse countries and the EU on this issue but focused on making a joint effort to promote text-based negotiations.
The third category of opinion was led by the US. The US proposed the contract-based approach to solving the problem of misappropriation.23 The US also argued that the introduction of the disclosure obligation will neither guarantee the PIC nor prevent misappropriation, but add uncertainty to the patent system and introduce administrative burdens.24 This argument was opposed by the megadiverse countries, who argued that the fact that the disclosure obligation is only one of the elements to prevent misappropriation should not be the reason to abandon this approach and take the alternative voluntary approach. Instead, a broader approach is necessary to coordinate the disclosure obligation with issues such as how to distinguish a certain origin when
21 The European Community proposed to the TRIPS Council and the WIPO IGC simultaneously. See
TRIPS Council, Review of Article 27.3 (B) of the TRIPs Agreement and the Relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) and the Protection of Traditional Knowledge and Folklore, Communication from the European Communities and Their Member States, IP/C/W/383, October 17, 2002; and WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Eighth Session, Disclosure of Origin or Source of Genetic Resources and Associated Traditional Knowledge in Patent Applications, WIPO/GRTKF/IC/8/11, May 17, 2005. Switzerland first proposed to reform the PCT regulations to incorporate disclosure requirement at WIPO (PCT/R/WG/5/11) and then proposed to the TRIPS Council to gain support for this proposal at WIPO (IP/C/W/446). See WIPO International Patent Cooperation Union Working Group on Reform of the Patent Cooperation Treaty (PCT), Fifth Session, Proposals by Switzerland Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications, PCT/R/WG/5/11, November 19, 2003; and WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) and the Protection of Traditional Knowledge and Folklore and the Review of Implementation of the TRIPS Agreement Under Article 71.1, Communication from Switzerland, IP/C/W/446, May 30, 2005. 22 WTO Trade negotiations Committee, Draft Modalities for TRIPS Related Issues, Communication from
Albania, Brazil, China, Colombia, Ecuador, the European Communities, Iceland, India, Indonesia, the Kyrgyz Republic, Liechtenstein, the Former Yugoslav Republic of Macedonia, Pakistan, Peru, Sri Lanka, Switzerland, Thailand, Turkey, the ACP Group and the African Group, TN/C/W/52, July 19, 2008.
23 WTO TRIPS Council, Views of the United States on the Relationship between the Convention on Biological Diversity and the TRIPS Agreement, Communications from the United States, IP/C/W/257, June 13, 2001, page 5-6.
24 WTO TRIPS Council, Article 27.3 (B), Relationship between the TRIPS Agreement and the CBD, and the Protection of Traditional Knowledge and Folklore, Communication from the United States, IP/C/W/434, November 25, 2004, Page 2-5.
more than one is identified, and how to monitor patent publication from other countries and initiate the legal procedure. Table 9 shows the specific positions.
Table 9 Positions on the Disclosure Obligation in WTO and WIPO Proposals The relationship
between CBD and TRIPS
Representative supporters
Proposals Positions related to the disclosure
obligation Inherent conflict African Group,
Brazil, China, Colombia, Ecuador, EC, India, Indonesia, Peru, Thailand, Turkey， Venezuela， IP/C/W/195 IP/C/W/284 IP/C/W/356 IP/C/W/403 IP/C/W/420 IP/C/W/429 IP/C/W/438 IP/C/W/441 IP/C/W/442 IP/C/W/443 IP/C/W/459 IP/C/W/470 IP/C/W/474 IP/C/W/475 TN/C/W/52 TN/C/W/59 -Two proposals (1) Amend Article 27.3(b), incorporating disclosure of origin as well as PIC and ABS as part of the requirement for patentability. (2) Amend Article 29bis of TRIPS to incorporate the disclosure of origin as part of the disclosure obligation.
- The nature of disclosure should be substantive: without disclosure, the patent application will not be processed before being granted or be invalidated after granted. - The scope of information to be disclosed is extensive, including associated traditional knowledge. - No inherent conflict; but - International action should be enhanced in relation to the patent system to ensure implementing the mutual supportiveness of both Agreements EC, Norway, Switzerland Switzerland: IP/C/W/284 IP/C/W/400 IP/C/W/423 IP/C/W/433 IP/C/W/446 Norway: IP/C/W/473 IP/C/W/491 European Communities: IP/C/W/383 WIPO/GRTKF /IC/8/11 (proposal to the WIPO IGC) TN/C/W/52
Disclosure obligation with three proposals:
- Amend Patent Cooperation Treaty (PCT) to explicitly incorporate the disclosure obligation (Switzerland);
- Amend existing international legal framework for patents, such as the proposed Patent Law Treaty (PLT), or the Patent Cooperation Treaty (PCT) to incorporate the disclosure obligation. Disclosure should be a formal requirement in patent applications (EC);
- Amend Articled 29 TRIPS to incorporate the disclosure
obligation. Disclosure is the formal requirement and penalties incur for non-compliance outside the patent system (Norway).
The three categories of opinion on the disclosure obligation can be seen as a spectrum of options for the disclosure obligation and depicted as such (Figure 10).
Figure 10 the Spectrum of Opinions on the Disclosure Obligation
To date, no consensus on the disclosure obligation has been reached in these WTO negotiations. That means WTO Members are free to decide on: (1) whether to introduce the disclosure obligation into their domestic law, and (2) a specific mechanism for the disclosure, either in its weak form or strong form.
4.2.2 Disclosure obligation negotiations: from TRIPS to WIPO
In parallel with negotiations on the disclosure obligation at the TRIPS Council, the WIPO IGC was established in 2001 and gradually became another forum for the negotiation of the disclosure obligation. Disclosure obligation was one of the key issues at the IGC. So far, IGC has held 37 meetings on issues related to genetic resources, traditional knowledge, and folklore.
The EU and Switzerland first proposed the disclosure obligation to IGC because this forum could best accommodate their positions of recognizing disclosure as a formal requirement in patent applications and avoiding discussion of the controversial issue of the CBD-TRIPS relationship. This initiative also gained support from Canada,25 Japan, and New-Zealand26 who denied conflict between the TRIPS and the CBD.
The developing countries initially opposed negotiations at the WIPO IGC. They emphasized that the WIPO IGC and TRIPS Council have different mandates, in particular, an examination of the relationship between TRIPS and CBD is a mandate specific to WTO Members27 and so the TRIPS Council should be the main forum for related negotiations. However, some developing countries
25 WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on June 5, 2007,
IP/C/M/54, July 26, 2007, Para. 58.
26 WTO TRIPS Council, Minutes of the Meeting Held in the Centre William Rappard on June8-9,
IP/C/M/60, September 28, 2009, Para. 37.
27 Ibid, Para. 55.
The US No disclosure
The EU and Norway Proposals: Weak Disclosure Obligation Disclosure of origin as formal requirement in patent application
Megadiverse countries Proposals: Strong disclosure obligation Disclosure of origin as a
substantive requirement to grant a patent
also actively followed up with discussions or negotiations at WIPO IGC. While there has been no obvious progress in the negotiations of the disclosure obligation at TRIPS Council from 2002 to 2010 because of consistent opposition from the US, WIPO IGC reached an initial agreement to undertake text-based negotiations in March 2010. Since then, WTO Members have put more weight to the text-based negotiations at the WIPO IGC.
Notwithstanding the forum shift, negotiations at the WIPO IGC have not been easier than at the TRIPS Council. Since the same key players are involved, and so the same diversity and divergence of opinions reproduced themselves at the IGC. 28 In early 2012, delegations of WIPO member states started to negotiate the draft of a consolidated document at IGC meetings. 29 The disclosure obligation has been one of the controversial issues in the negotiations of the consolidated document during rounds of revision.30 In one version, the disclosure obligation was listed as one of the options in parallel with the defensive protection of genetic resources by establishing related databases.31 This version basically denied the mandatory disclosure option as proposed by the megadiverse countries and the EU. The latest version in June 2016, though stipulating the disclosure obligation in an independent article, contains footnotes to the effect that defensive protection can be considered as the alternative to the disclosure obligation by some contracting members.32 Such an ambiguous and somewhat self-contradictory arrangement suggests the likely strong influence of the US (and Japan).
US dominance has been at work procedurally. The IGC negotiations broke down in 2014 because of the US’ opposition. As a non-permanent committee of WIPO, the mandates of the IGC are
28 See proposals from African Group, Like-Minded Countries, European Communities and its Member
States, Switzerland, and Japan (WIPO/GRTKF/IC/20/INF/11). See WIPO IGC, Twentieth Session,
Proposal of the African Group on Genetic Resources and Future Work, WIPO/GRTKF/IC/20/INF/12, October 17, 2011; WIPO IGC, Twentieth Session, Like-minded Countries Contribution to the Objectives and Principles on the Protection of genetic Resources and Preliminary Draft Articles on the Protection of Genetic Resources, WIPO/GRTKF/IC/20/20/6, October 11, 2011; WIPO IGC, Twentieth Session,
Disclosure of Origin or Source of Genetic Resources and Associated Traditional Knowledge in Patent Applications, Document submitted by the European Community and its Member States, WIPO/GRTKF/IC/20/INF/8, October 17, 2011; WIPO IGC, Twentieth Session, Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications: Proposals by Switzerland, WIPO/GRTKF/IC/20/INF/10, October 17, 2011; WIPO IGC, Twentieth Session,
Additional Explanation from Japan Regarding the Document WIPO/GRTKF/IC/9/13 on the Patent System and Genetic Resources, WIPO/GRTKF/IC/20/INF/11, October 17, 2011.
29 WIPO IGC, Twenty-Third Session, Consolidated Document Relating to Intellectual Property and Genetic Resources, document prepared by the Secretariat, WIPO/GRTKF/IC/23/4, November 2, 2012.
subject to biennial renewal. The renewal was not successful in 2014 because the US did not agree with its normative work program (Saez 2015). In 2015, the African Group proposed to promote IGC as a standing committee of WIPO (the proposed name was Standing Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions, SCTK)33 to avoid biennial review of its mandates. Then the US submitted a counterproposal to discontinue the mandate of the IGC and replace the IGC Committee with seminars, studies, and an expert working group.34 The breakdown shows how powerful actors like the US are skillful in executing a forum-braking strategy to obstruct negotiations on issues it does not favor. It also shows that WIPO IGC is actually a forum vulnerable to games of delay on negotiating the disclosure obligation.