IPR in the post CBD and WTO
regime
P. Pushpangadan
National Botanical Research Institute
(Council of Scientific & Industrial Research),
Lucknow-226001,INDIA
World Trade and Economies:
The Paradigm Shift
• “Resource – based economies’ to ‘Knowledge –
based economies’
•
21 st Century
Knowledge”……
will
be
the
Century
of
“A nation’s ability to convert knowledge in to wealth
and social good through the process of innovation
will determine its future” ( R A Mashelkar, 2001)
• Era of knowledge engineering knowledge societies
and knowledge industries.
Intellectual Property Rights (IPR)
Intellectual Property (IP) means the creative
products emanating from human mind/brain and
IPR are the legal rights governing those rights
granted to individual(s) or corporate bodies to
have monopolistic ownership or control over. Such
IP exercise of human brain such as thoughts,
invention, processes, ideas having innovative and
inventive steps capable of industrial applications.
The holder of IPR gets an exclusive right over the
use.
Features of IPR
• It is intangible
• Has the character of a property
• Recognized by international and national laws
• Can transformed or sold or licensed like any other property
• Protected against wrongful expropriation
• Innocent use can be interpreted as an infringement.
Patent
Patent is a set of exclusive rights
granted by a government to an
inventor or applicant for a period timenormally 20 years from filing date. It is
essentially a monopolistic rights i.e a
negative right as it excludes others
from making, using, selling, or
importing patented invention.
IPR Power……
TOP 10 Patent Infringement Damages Awards in U.S. ($ M)
Hughes Aircraft v US '94
Exxon v Mobil '98
Hughes Tool v Smith '86
Coca cola v Mexican
City of Hope v Genetech '02
Polaroid v Kodak 91
0
100
200
300
400
500
600
700
800
900
Chronology of
Patent/Monopolistic Rights
700 B.C.
Greece
Idea of Monopolistic Rights/Privilege
15th
Century
1421
Italy
Patent introduced
Republic of
Florence
First known patent grant by a “State” to an
inventor
1474
Venice
Patent Ordinance
Great
Britain
Great
Britain
Granting rights and privileges to inventors by
Queen Elizabeth I
1623*
Statute of Monopolies proposing grant of exclusive
rights to inventors for new inventions for a period of
14 years.
* In 1623, Great Britain proposed granting exclusive rights for new inventions with a term of
14 years through an act of the Parliament, known as the Statute of Monopolies Act of 1623. It
was only towards the end of the eighteenth century and during the nineteenth century that
comprehensive patent statutes got formalized in various countries, including France and USA.
World Intellectual Property Organization (WIPO) &
World Trade Organization (WTO)
1883 A.D.
Paris Convention for the Protection of Industrial Property
1886 A.D.
Berne Convention for the Protection of Literary and Artistics Works
1891 A.D.
Madrid Agreement Concerning the International Registration of
Trademarks
1947 A.D.
Formation of General Agreement on Tariffs & Trade (GATT)
1958 A.D.
Lisbon Agreement for the Protection of Apellations of Origin and their
International Registration
1961 A.D.
Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations
1967 A.D.
Decision to form World Intellectual Property Organization (WIPO) by
UN
1970 A.D.
Patent Cooperation Treaty (PCT)
1994 A.D.
WIPO established WTO which administered the TRIPs
2005 A.D.
(1st Jan.)
TRIPs came into full force
History of Indian Patent System
1856 The Act Vi of 1856 on Protection of Inventions based on the British Patent Law
of 1852. Certain exclusive privileges granted to inventors of new manufacturers
for a period of 14 years.
1859 The Act modified as Act Xv; Patent Monopolies called Exclusive Privileges
(making, selling and using inventions in India and authorizing others to do so for
14 years from date of filing specification).
1872 The Patents & Designs Protection Act.
1883 The Protection of Inventions Act.
1888 Consolidated as the Inventions & Designs Act.
1911 The Indian Patents & Designs Act.
1972 The Patents Act (Act 39 of 1970) came into force on 20th April 1972.
1999 On March 26, 1999 Patents (Amendment) Act, 1999 came into force from
01.01.1995.
2002 The Patents (Amendment) Act 2002 was passed in June 2002.
2003 The Patents (Amendment) Act 2002 came into force from 20th May 2003-work
started on further amendment to the Patents Act.
Status of IPR Laws in India
• Patents – Amendment Act 2002 Passed – Rules finalized and Patents
(Amendment) Bill 2003 introduced.
• Industrial Designs – New Law Brought into Force – May, 2001
• Trade Marks – New Law/Subordinate Legislation in force from 15.09.2003
• Geographical Indication – New Law/Subordinate Legislation in force from
15.09.2003.
• Copy Right and Related Rights – Laws Enacted – Handled by Ministry of
HRD.
• Layout – Designs (Topographical) of Integrated Circuits – Act Passed – Yet to
be operationalized – Handled by Ministry of IT.
• Protection of Undisclosed Information – No New Law needed.
• Plant Varieties & Farmers Protection Act – Law Enacted – Yet to be
operationalized – Handled by Ministry of Agriculture.
• Intellectual Property Appellate Board – Operationalized from 15.09.2003
UN-CBD i.e. Convention on
Biological Diversity – is an
international
regulatory
instrument of UN, signed by
the countries of the world –
1992 at Rio de janerio
CBD for the first time affirmed
i.e. Biodiversity of a nation is
its sovereign property and
nobody can access it with our
prior informed consent of the
holder(s) of the biodiversity.
Genesis of the Global Concern on
Biodiversity
 First discussed in 1972 U. N. Conference at




Stockholm
U. N. General Assembly by a resolution on 15th
December 1972 established UNEP. .
First Governing Council of UNEP met in 1973
identified Conservation of Nature, Wildlife and
Genetic Resources as Priority areas.
The World Commission on environment and
Development (WCED) was constituted in 1983.
WCED submitted its report ‘Our Common Future’
in 1987 called for Conservation of Biodiversity
for Sustainable Development.
Genesis of the Global Concern
on Biodiversity (Contd..)
 UNEP constituted an ad-hoc Working Group
of Technological
and
Legal experts to
prepare an international legal instrument for
conservation and sustainable use of
Biodiversity which resulted in ‘CONVENTION
ON BIOLOGICAL DIVERSITY’ (CBD).
• 171 countries signed CBD in June 1992
during the Earth summit at Rio de Janeiro.
 CBD came - into force as an International Law
on 29th Dec. 1993.
Genesis of the Global Concern on
Biodiversity (Contd..)
 India ratified CBD on 18th February 1994 and
came into force from 19th May 1994
 188 countries are now parties to CBD (as on
Aug. 2004)
 OBJECTIVES OF CBD
– Conservation of Biological Diversity
– Sustainable use of its components
– Fair and equitable use of the benefits arising out of
the utilization of genetic resources
The fundamental conflicts
between CBD and WTO
 CBD recognizes the sovereign rights of
nations over their biological resources
and associated knowledge systems.
 WTO do not recognize any informal
knowledge/ innovations of traditional
communities for intellectual property
rights.
 Do not insulate Traditional Knowledge
(TK) from intellectual piracy.
IPR & TK
 IPR: The prime driving force behind
industrial growth and development in
the 19th & 20th centuries.
 WTO do not recognize the informal
system of innovation of indigenous
people.
 WTO do not provide mechanism for
compensation or benefit sharing with
indigenous people.
IPR & TK (Contd..)
 IPR laws in general ignore the interest of
traditional/local communities-
• because their concept of intellectual property
and resource rights are different from those of
the advanced societies of developing
countries and the developed North countries.
 But there are ways in which these laws can serve
the interests of these communities.
 However, acquiring and defending IPR protection
require access to information, good legal advice
and financial resources-which are mostly beyond
the reach of most of the indigenous people.
International Movements for
Protection of TKS

First International Congress on Ethnobiology at Belem, 1987,
came out with the ‘Declaration of Belem’.
The declaration recognized a basic obligation that
procedures to be developed to compensate native people
on their knowledge and on their biological resources.

Second International Congress on Ethnobiology at Kunming,
China in 1990 resolved to establish a Global Action Plan, The
“Kunming Action Plan” for
Specific and urgent action to stop the destruction of
biological and cultural diversity as mandated in the
‘Declaration of Belem’.


Global Coalition for Biocultural Diversity to unite the
indigenous people, scientists and environmentalists
concerned with the protection of indigenous/ local people
rights.
CBD – Bonn Guidelines.
Relevant Provisions of CBD
 Article 3 recognizes the sovereign rights of States
over their biological resources.
 Article 8(j) underlines the need to protect TK and
points to the potential benefits to be realized from
such knowledge through involvement of its holders
and equitable benefit-sharing.
 Article 15 states that when access to genetic
resources is granted, it shall be on mutually agreed
upon terms and subject to Prior Informed Consent.
 Article 15&16 Incentives to biodiversity-rich
countries to conserve and sustainably use their
genetic resources, including joint research, access to
& transfer of technology.
Relevant Provisions of TRIPs on
Biological Resources
 Under Article 27, virtually all inventions are
to be patented if they are new, involve an
innovative/inventive step and are capable of
industrial application.
 Exceptions to patentability include plants,
animals ( other than microbes) and
biological processes for the production of
the above. However plant varieties must be
protected either by sui generis or by
patenting (27.3(b)).
TRIPS-CBD Relationship
 Absence of explicit compatibility, Difference of
approach and priority given to issues which are
ultimately related. This has led to violation of
the CBD (Articles 8,15 &16).
 TRIPs ignores a vast range of valuable,
traditional knowledge (TK) because it doesn't
meet the standards of patentability.
TRIPS-CBD Relationship (Contd..)
 TRIPs undermines CBD in cases of biopiracy, by
putting the burden of proof on the source
country rather than patentee. Identification of
unique source material as required in Art.29 of
TRIPs is insufficient. Lack of transparency in
the patent application procedure.
 TRIPs doesn't require the recognition of
domestic laws protecting access to genetic
resources and TK and subsequent benefit
sharing.
IPR Issues / Benefit Sharing
Strategies
 Appropriate
Procedures
for
IPR
Protection/Benefit sharing
 Documentation & Registration of TK –
Medicinal plant use & Conservation at
local , state and national level.
 Contribution to TKDL & TKRC
 Value addition to TK & Indigenous
Medicinal Plants – Scaling up IPRs
 Herbal drugs, Pharmaceuticals, Natural
products & byproducts, Nutraceuticals,
Functional foods, etc.
International Regulatory Instruments on ABS
Organization
Agreement
Main Features
World Trade
Organization (WTO)
Agreement on Trade Related
Aspects of Intellectual Property
Rights (TRIPs)
Flexibility of TRIPs Article 27.3 (b) may
allow member states to incorporate ABS“friendly” provisions. Is “legally”
binding via the WTO dispute settlement
mechanism.
Food and Agriculture
Organization (FAO)
International Treaty on Plant
Provides access to 64 crops via a
and Genetic Resources for Food multilateral system, but not for
and Agriculture (IT)
commercial reasons. Legally binding.
World Intellectual
Property Organization
(WIPO)
Inter-Governmental Committee
on Intellectual Property and
Genetic Resources, Traditional
Knowledge and Folklore (IGC);
Substantial Patent Law Treaty
(SPLT)
Establish Prior Art via the creation of TK
database and mirrors the CBD objectives.
However, the SPLT potentially could
subvert these efforts due to the broad
rules for patenting it may present and the
asymmetries it has with the Bonn
Guidelines.
United Nations
Environmental
Program (UNEP)
Convention on Biological
Diversity (CBD)
Presents best practices for ABS via the
Bonn Guidelines. Voluntary; not legally
binding, yet expected to be influential in
the drafting of domestic regulation.
Strength of India in Biodiversity
 Rich in all levels of biodiversity species, genes,
habitat
 Rich in cultural diversity that generated rich
fund of indigenous knowledge systems
 Humanity has tapped only a fraction of this
nature’s vast genetic library
 Over 70-80% genetic resources of India and other
South Asian countries are hitherto untapped.
 Excellent opportunity for hunting novel genes,
drugs, pharmaceuticals, new chemicals/raw
materials for new industrial ventures.
Bioprospecting and the new IPR regime
Given the global trends in capturing the
intellectual property markets, the Third World
nations like India needs to look ahead for the best
possible ways and means by which they can
generate IPR and build up IPR covered
bioindustrial regimes.
Biotechnology (BT), Information Technology
(IT) and Herbal Technology (HT) are the three fast
emerging and powerful areas of R&D in current
century. The rich biodiversity, associated
knowledge systems and human resources etc. are
the strength of Asia-pacific countries, and therefore
have the best opportunity.
Bioprospecting
Chemical Prospecting
Drugs and pharmaceuticals
Pesticides
Cosmetics
Food additives
Other industrially valuable
Chemical products
Gene Prospecting
Genetic engineering
Crop development
Fermentation
Cell culture
Bionic Prospecting
Designs
Sensor technologies
Architecture
Bioengineering
Biomodeling
Bioprospecting: Linkages and leads
Biodiversity
& IK/TK
Biotechnology
Information
technology
Herbal
technology
Bioprospecting
Drug development
Pharmaceuticals
Agrochemistry
Cosmetics
Proteins
Conservation
Sustainable
use
Benefit
sharing
Bioinformatics
Enzymes
New crop varieties
GMOs
GM foods
IPR
Designs etc.
THANKS