The protection of traditional indigenous knowledge by intellectual property law

Table of Contents

Abstract

Statement of word length

I INTRODUCTION

II DEFINITION OF TRADITIONAL INDIGENOUS KNOWLEDGE

III THE SCOPE OF MISAPPROPRIATION OF TRADITIONAL INDIGENOUS KNOWLEDGE

IV THE NEED TO PROTECT INDIGENOUS KNOWLEDGE, CONFLICTING INTERESTS, AND THE OBJECTIVES OF PROTECTION
A Why Should Traditional Knowledge Be Protected?
B The Conflicting Interests
C Objectives of Protection

V INTERNATIONAL BACKGROUND
A The Voice of the Indigenous Peoples Themselves
B The Convention on Biological Diversity
C The TRIPs Agreement
D The WIPO’s Efforts in terms of Traditional Knowledge Protection

VI CONSIDERATION OF POTENTIAL MEANS OF PROTECTION
A Protection by Already Existing Means of Intellectual Property Protection
1 Protection by Patent
2 Protection as Undisclosed Information
B Implementation of Safeguards within Patent Application Proceedings
1 Protection by Morality Clauses
2 The New Zealand Model – Maori Advisory Committee
3 The Indian Model
4 Amendment of Article 29 TRIPs Agreement
5 General Considerations on the Implementation of Safeguards within Patent Application Proceedings
C Protection by Intellectual Property Right Sui Generis
1 Contents of the IP Right Sui Generis on Traditional Knowledge
2 Holders of this IP Right Sui Generis
3 Duration of Protection
4 Registration

VII CONCLUSION

Bibliography

Abstract

Indigenous people often know a lot about the healing properties or other useful characteristics of their indigenous plants. This knowledge usually has been passed on within the indigenous community from generation to generation and is therefore regarded as traditional knowledge. This traditional knowledge is of great value for the pharmaceutical industry. Accordingly, it has been explored, used as the basis for subsequently patented inventions, and sometimes misappropriated by pharmaceutical companies from the “developed” world.

This essay seeks to provide an overview of the problems and issues that arise where traditional knowledge meets the “Western” intellectual property regime. The questions that are sought to be answered are: Why should traditional knowledge be protected as intellectual property and how could this be done? Many approaches have been made, both on an international and a national level. Several of these solutions will be presented and discussed in this essay. It will be seen that already existing intellectual property rights are not suitable for the protection of traditional knowledge. Compared with this, the implementation of safeguards within patent application proceedings seems to be more appropriate and effective. However, this approach turns out to be not comprehensive enough. Therefore, this essay recommends the protection of traditional knowledge by an intellectual property right sui generis, specially designed for that purpose. This solution is favourable because it is the most complete one, is able to address all issues in an appropriate way, and can strike a balance between the involved conflicting interests.

Statement of word length

The text of this paper (excluding table of contents, footnotes and bibliography) comprises approximately 7432 words.

I INTRODUCTION

Imagine this scenario: A pharmaceutical company obtains knowledge from an indigenous community about – for example - the healing properties of a local plant. This knowledge has been passed on within the indigenous community for many generations. The undertaken interviews save thousands of hours of laboratory work. On the basis of the newly obtained information the company develops a new pharmaceutical product and gets a patent for it. Although the indigenous people may have made a big contribution to the invention, they do not participate in the benefits of commercialisation. The publication and commercialisation of their traditional knowledge may even conflict with the community’s cultural values.

The value of indigenous people’s traditional knowledge can be derived from at least two different aspects. Firstly, this knowledge is expression of the indigenous people’s culture and identity and is often of great traditional value for this community. Secondly, the traditional knowledge can be of great value in terms of the development of new pharmaceutical products. On that score it is not only the commercial value that has to be considered, but also the benefit which new – especially pharmaceutical - products can have for mankind.

Although it is desirable to protect traditional knowledge for these reasons, the current intellectual property regime can merely cope with this desire. Since traditional knowledge is passed on within indigenous communities through many generations, it usually lacks novelty and originality and can therefore not be protected under patent or copyright law. Besides that, the limited duration of protection – inherent in the current system of intellectual property rights – is not commensurate with the significance and value traditional knowledge often has for indigenous communities. This is only to mention a few of the issues that arise when one tries to protect traditional knowledge with the current means of intellectual property law.

The need for change towards protection of indigenous peoples’ rights has been recognised both internationally and by several jurisdictions. The problem has been addressed by the Convention on Biological Diversity (CBD) and is also subject of an ongoing project of the World Intellectual Property Organization (WIPO). Besides that, affected jurisdictions – such as New Zealand and India – have made efforts to protect the interests of their indigenous people.

This essay aims to provide an overview of the problematic issues of the protection of traditional knowledge where this knowledge is endangered to be exploited by others, eg pharmaceutical companies. Several approaches will be discussed. It appears that the already existing means of intellectual property protection are not suitable for traditional knowledge. Compared with this, the implementation of certain safeguards in patent application proceedings offers a good protection mechanism. However, investigated more closely, this way to protect traditional knowledge turns out to be not comprehensive enough. Therefore, this essay suggests the creation of a new intellectual property right sui generis, especially drafted for the protection of traditional knowledge. In this way it is possible to balance the conflicting interests and respond specifically to the arising needs of indigenous communities.

II DEFINITION OF TRADITIONAL INDIGENOUS KNOWLEDGE

The definitions of traditional or indigenous knowledge vary, depending on the particular context in which they occur.^[1] So defines the Convention on Biological Diversity (CBD) traditional knowledge as “knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity”.^[2] The World Intellectual Property Organization understands traditional knowledge as “tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields.”^[3] This broad understanding (including traditional folklore) reflects the WIPO’s aim of elaborating solutions for all IP-related problems connected with traditional knowledge in a broad sense.

For the purposes of this paper a narrower definition is more appropriate, since the focus is on the exploitation of traditional knowledge by pharmaceutical companies or other research organisations who take this knowledge as a basis for their later patented invention. Therefore, here traditional knowledge shall be understood as tradition-based knowledge in a scientific, technical, medicinal, pharmaceutical or agricultural sense. Thereat the term “tradition-based” refers to every knowledge which has been generally transmitted from generation to generation within an indigenous group and, secondly, is connected to a particular people or its territory.^[4] Accordingly, the terms “indigenous knowledge” and “traditional knowledge” are used synonymously. Typically, traditional knowledge is passed on by word of mouth and is not put down in writing.^[5]

III THE SCOPE OF MISAPPROPRIATION OF TRADITIONAL INDIGENOUS KNOWLEDGE

When talking about the misappropriation of indigenous knowledge a distinction has to be made between two different situations. In the first situation traditional knowledge is used as basis for an invention that subsequently gets patented, while in the second situation the patented “invention” is identical with the indigenous knowledge itself. Each scenario triggers different problems and questions. This essay will concentrate on the first situation as its issues are more interesting from a legal point of view.

An example of the first situation where indigenous knowledge has been used as starting point for (real) inventions is the case of the Hoodia Gordonii Cactus. The plant has been known by the San bushmen, an indigenous tribe living in the Kalahari Desert in South Africa, for thousands of years. The men of this tribe used to eat the plant to suppress hunger and thirst when they went hunting. In 1996 the Counsel of Scientific and Industrial Research (CSIR)^[6] managed to extract the molecule P 57, which is responsible for the appetite suppressing effect. The CSIR gained a patent for the extraction procedure and licensed it to Phytopharm, a small pharmaceutical firm from the UK. Phytopharm developed a new cure against obesity on the basis of P 57 and took out a patent for this application of the molecule. This patent was licensed to Pfizer, the big US pharmaceutical concern, for US$ 21 Million.^[7] The San bushmen have never been asked for their consent to this commercialisation of their knowledge. Besides, they were left empty-handed for several years. Only afterwards, in 2002, the CSIR signed an agreement granting the San a share in the profits made from the licensing to Phytopharm.^[8]

The issues of this situation mainly circle around the questions, which role the indigenous community’s contribution to the invention plays and how the involved interests can be balanced against each other.

An example for the second situation, where the indigenous knowledge has been “stolen” and patented as “invention”, is the case of the herb turmeric. This herb has been used in India for thousands of years, inter alia for wound healing. In 1995 a US patent was granted to the University of Mississippi, specifically for the "use of turmeric in wound healing."^[9] Following the complaint of the Indian Council of Scientific and Industrial Research the patent was revoked in 1997 because the “invention” lacked novelty.^[10] The traditional use of the herb in India could be proven by ancient Sanskrit writings.^[11]

In cases like the turmeric case it is not so much the legal uncertainty about the role of indigenous knowledge as such, but rather the flaws of the current patent awarding practice, especially in the USA, that are at issue. Therefore, the issues involved here refer to possible improvements of the investigation of prior art, including the proposed establishment of indigenous knowledge databases,^[12] and the funding of re-examination proceedings.^[13] Since the additional investigation of this second situation and its issues is not in the scope of this research paper, they are mentioned here only for the sake of completeness. This essay will concentrate on the first-mentioned situation where traditional knowledge has been used as basis for further development which eventually resulted in a patented invention.

IV THE NEED TO PROTECT INDIGENOUS KNOWLEDGE, CONFLICTING INTERESTS, AND THE OBJECTIVES OF PROTECTION

The intended consideration of possible solutions for the protection of indigenous knowledge first of all requires a closer look at the problem itself. Why exactly should we seek to protect this knowledge? What interests are involved in the conflict and how are they related to each other? How can the objectives of traditional knowledge protection subsequently be defined?

A Why Should Traditional Knowledge Be Protected?

Traditional knowledge is a valuable good. But this statement in itself is far too general as that it could justify the implementation of protection mechanisms. On the contrary, leaving this valuable knowledge unprotected and freely accessible for everyone, including pharmaceutical companies, could benefit society in general, because there would be no boundaries for the development of new pharmaceutical products.^[14] However, there is something in traditional knowledge that calls for some kind of protection.

To identify this “something” it appears helpful to look at the reasons why intellectual property is actually protected in general. Reasons can be divided in two different groups:^[15] On one hand intellectual property protection seeks to create incentives for certain desired behaviour, such as the investment in research and development of new products or the publication of valuable information.^[16] On the other hand intellectual property protection aims to reward the labour and creative work of the inventor, author, or generally speaking the creator of a new intellectual concept.^[17] The idea is that everyone should own what he or she produces.^[18] This latter reason for IP protection can be described as a moral or natural right of creators over the fruits of their work.^[19] This includes the right to control the use of their intellectual creation and the right to prevent other from taking an unauthorised and therefore unfair advantage of the creator’s efforts.^[20]

Since traditional knowledge usually develops dynamically over a long period of time and as a response to the need of an indigenous community to adjust with their natural environment, the idea of creating an incentive for the investment in further “research” is not really suitable for traditional knowledge.^[21] But the rewarding aspect of IP protection applies to indigenous knowledge not less than it does to other forms of intellectual property.^[22] The only difference is that in the case of traditional knowledge many creators keep on developing the intellectual concept over a very long period of time, while in the case of conventional creation of intellectual property only one inventor or author works specifically on his project in order to create his new intellectual concept. Considering this, the intellectual work of indigenous communities turns out to be as worth to reward as conventional forms of intellectual property. Therefore, this work’s product should be acknowledged as intellectual property (at least in a broad sense) and should not be treated as un-ascribed information simply being part of the public domain and freely accessible for everyone without any boundaries. This view allows to acknowledge and to reward the special contribution indigenous communities make where their traditional knowledge is used as basis for pharmaceutical inventions.

Apart from that, traditional knowledge needs to be protected also for another reason: the respect for indigenous peoples’ values. The commercial exploitation of indigenous knowledge is not always compatible with the indigenous people’s cultural values. Sometimes their tradition requires that the information at issue is hold more closely or even secret.^[23]

Sometimes the use of an indigenous plant within specific ceremonies is even sacred. An example is the case of the ayahuasca patent. Ayahuasca is used by the indigenous tribes of the Amazonian region as a ceremonial drink derived from various indigenous rainforest plants. Because of its sacred significance - ayahuasca means “vine of the soul” - only shamans are allowed to prepare the ayahuasca vine. It can be characterised as cultural and religious symbol comparable with the Christian cross or the Eucharist.^[24] Despite this special significance the US Patent and Trademark Office (USPTO) issued a patent for the ayahuasca vine to a US citizen. This patent has been revoked later, but only because of the lack of novelty and not due to the described ethical implications.^[25]

Apart from these cases of sacred traditional knowledge it should be considered that most indigenous peoples have a very special relationship to nature. For example, Maori believe in a special relationship between man and nature that requires them to guard over their natural resources for future generations.^[26] Use of these natural resources is permitted, but due to the guardianship role restricted. Extensive commercial exploitation of traditional knowledge may therefore conflict with Maori – or other indigenous people’s – values and ideology.^[27]

These considerations constitute another reason for protecting indigenous knowledge: the respect for traditional values which form the indigenous community’s cultural identity.

However, the restriction on the needs of indigenous communities would be too one-sided.^[28] There is also a public interest in the protection of traditional indigenous knowledge. Firstly, the protection and promotion of traditional knowledge can enhance the willingness of indigenous communities to constructively cooperate with the researching pharmaceutical companies. On that score, protection of traditional knowledge indirectly serves the public interest in the development of new pharmaceutical products. Secondly, there is a public interest in the maintenance and publication of the often very valuable traditional knowledge as such. Without any protection and promotion of this knowledge it is endangered to get lost or to never get recognised outside of the indigenous community that holds this knowledge.^[29]

[...]

^[1] For a comprehensive overview of the spectrum of definitions see P F Kihwelo “Indigenous Knowledge: What Is It? How and Why Do We Protect It?” (2005) 8 JWIP 345, 351.

^[2] Convention on Biological Diversity (5 June 1992) 1760 UNTS 79, art 8(j).

^[3] WIPO (World Intellectual Property Organization) Intellectual Property Needs and Expectations of Traditional Knowledge Holders, WIPO Report on Fact-Finding Missions on Intellectual Property and Traditional Knowledge (1998-1999) (WIPO, Geneva, Switzerland, 2001) 25.

^[4] WIPO (World Intellectual Property Organization) Intellectual Property Needs and Expectations of Traditional Knowledge Holders, WIPO Report on Fact-Finding Missions on Intellectual Property and Traditional Knowledge (1998-1999) (WIPO, Geneva, Switzerland, 2001) 25.

^[5] Peter-Tobias Stoll and Anja von Hahn “Indigenous Peoples, Indigenous Knowledge and Indigenous Resources in International Law” in Silke von Lewinski (ed) Indigenous Heritage and Intellectual Property – genetic Resources, Traditional Knowledge and Folklore (Kluwer Law International, The Hague, 2004) 5, 16; N S Gopalakrishnan “ TRIPs and Protection of Traditional Knowledge of Genetic Resources: New Challenges to the Patent System” [2005] EIPR 11, 12.

^[6] The CSIR is South Africa’s central and premier scientific research and development organisation and has been established in 1945 by parliament.

^[7] Kihwelo, above n 1, 348.

^[8] “Struggle over Hoodia patent continues in South Africa” (12 July 2006) Business Day Johannesburg 6.

^[9] Alyson Slack “Turmeric – TED case studies” (2004) <http://www.american.edu/ted/turmeric.htm> (last assessed 2 October 2006).

^[10] Olufunmilayo B Arewa “Symposium: The First Ten Years of the TRIPs Agreement: TRIPs and Traditional Knowledge: Local Communities, Local Knowledge, and Global Intellectual Property Frameworks” (2006) 10 Marq Intell Prop L Rev 155, 172; Alyson Slack “Turmeric – TED case studies” (2004) <http://www.american.edu/ted/turmeric.htm> (last assessed 2 October 2006).

^[11] Alyson Slack “Turmeric – TED case studies” (2004) <http://www.american.edu/ted/turmeric. htm> (last assessed 2 October 2006).

^[12] Susy Frankel and Geoff McLay Intellectual Property in New Zealand (LexisNexis Butterworths, Wellington, 2002) 113; Max Thümmel “Bedeutung und Schutz von trditionellem Wissen unter besonderer Berücksichtigung von geistigen Eigentumsrechten” StudZR 2005, 505, 532.

^[13] Frankel and McLay, above n 12, 113; Roy V Anuradha “Biopiracy and traditional knowledge” (20 May 2001) The Hindu folio Chennai.

^[14] Lorie Graham and Stephen McJohn “Contemporary and Comparative Perspectives on the Rights of Indigenous Peoples: Indigenous Peoples and Intellectual Property” (2005) 19 Wash U J L & Pol’y 313, 325.

^[15] Lionel Bently and Brad Sherman Intellectual Property Law (2ed, Oxford University Press, New York, 2004) 4.

^[16] Bradford S Simon “Intellectual Property and Traditional Knowledge: A Psychological Approach to Conflicting Claims of Creativity in International Law” (2005) 20 Berkeley Tech L J 1613, 1623; David Bainbridge Intellectual Property (5ed, Pearson, Edinburgh, 2002) 17.

^[17] Thümmel, above n 12, 527.

^[18] Bainbridge, above n 16, 17.

^[19] Bently and Sherman, above n 15, 4.

^[20] Bainbridge, above n 16, 17.

^[21] Thümmel, above n 12, 526.

^[22] Thomas Cottier and Marion Panizzon “Legal Perspectives on Traditional Knowledge: The Case for Intellectual Property Protection” 7(2) JIEL 371, 382; Thümmel, above n 12, 527.

^[23] Frankel and McLay, above n 12, 11.

^[24] Glenn M Wiser “PTO Rejection of the “Ayahuasca” Patent Claim – Background and Analysis” (1999) < http://www.ciel.org/Biodiversity/ptorejection.html> (last assessed 3 October 2006).

^[25] Glenn M Wiser “PTO Rejection of the “Ayahuasca” Patent Claim – Background and Analysis” (1999) < http://www.ciel.org/Biodiversity/ptorejection.html> (last assessed 3 October 2006).

^[26] Frankel and McLay, above n 12, 105.

^[27] Frankel and McLay, above n 12, 11 and 105.

^[28] Tade Matthias Spranger “Indigene Völker, “Biopiraterie” und internationals Patentrecht” GRUR 2001, 89, 91.

^[29] BIODIV Issue paper “Traditional Knowledge – relating to the conservation and sustainable use of biodiversity” (Deutsche Gesellschaft für technische Zusammenarbeit (gtz)) <http://www2.gtz.de/biodiv/download/subjects/tradknowledge_en.pdf> (last assessed on 13 September 2006).