Patent

India’s TK database wins early successes at EPO


The Traditional Knowledge Digital Library (TKDL), recently reconstituted to form an independent entity within the Council for Scientific and Industrial Research (CSIR), has already achieved early successes in its mandate to “prevent the misappropriation of Traditional Knowledge” in the international patent arena.

Until now, many may have believed the potential of the TKDL to be merely academic, cloaked as it is in the linguistic maze of India’s TK, bio-medical and other arcane histories.

But current statistics from TKDL may have changed all that, and indeed may bear enormous significance on the recognition of TK as a legitimate source of information, a position that India has had to fight for in the past in the IP arena.

What is equally important, and may tend to be glossed over as an “incidental expense”, is the effective cost involved in using TK as a tool to prevent bad patents from being granted. (Drum roll) The cost, counting the recent successes achieved by the TKDL at the European Patent Office, as of now is, hold your breath, ZERO. More details below.

TKDL sniffs success at the EPO

According to data revealed by Dr V K Gupta, the ‘architect’ behind TKDL, re-designated now as the Director of the new TKDL unit, the TKDL has impacted at least 36 applications at the European Patent Office (EPO), with which the Indian entity has an access-sharing agreement. (Information available on the TKDL website, which shows only 32 applications, may be slightly older data.)

In two out of the 36 cases, the EPO set aside its decision to grant patents, within a period of two weeks of receieving evidence from the TKDL. This may have included the case of a patent sought by Perdix, a Spanish-owned multinational on a herbal-based remedy to address the depigmentation of skin (anti-vitiligo cream). According to the TKDL website, the EPO has since re-opened that case for substantive examination. Note also that these invalidations were made at NO cost, as against conventional costs of some hundred thousand USD, if not more, and requiring the better part of a decade to resolve.

There is further information that in two other cases, applicants unilaterally withdrew their applications upon being informed of TKDL evidence. At least one of these is Unilever, the multinational conglomerate which also has a very strong Indian presence.

The TKDL appears confident that similar successes will be achieved in a significant majority of the remaining cases.

Does open-access TK prevent biopiracy or facilitate it?

However, there hovers in the air a word of caution about opening up access to the traditional knowledge resources of any country or community, and the potential misuse that can be made of such a resource. (Image from here)

One such voice comes from RS Praveen Raj, a frequent commentator on SpicyIP, who writes on his blog:

It is hard for the Patent offices to keep the contents of TKDL secret from third parties, since no patent could be denied without disclosing the entire gamut of coded TK associated with the invention to the claimant…. It is going to be a great opportunity for the fraudsters to file patent applications purely on conceptual grounds (which would look like as if they had performed the invention), only to see that they could fetch the authentic information on a TK practice/product.”


One counter-argument to this could lie in the fact that a resource like the TKDL has merely expanded the audience of published texts that contain references to traditional knowledge. Assuming that evidence of prior art, regardless of its regional or linguistic origins, remains a ground for invalidating a patent or an application, there may be little to worry about.


TKDL and the world, and WIPO’s renewed mandate


Arguably, the TKDL story is also a boost for WIPO’s inter-governmental commitee (IGC) on TK, genetic resources and traditional cultural expressions. Recent months have seen the mandate of the IGC swing from abandonment to hope, and this Indian project may just have something going for it here.

India, while not the only country to have a strong TK base, may be the only one to have a resource like the TKDL which has collated multiple sources of information extant in multiple languages at one place in a manner that is easy to access to different categories of users. Not surprisingly, other countries are trying to devise a similar system for themselves, but no one appears to have been as successful. Perhaps it is time to initiate a open-learning process as well, where India can share her experience in what continues to be an expansive task.

12 comments.

  1. AvatarR S PRAVEEN RAJ

    Of Course, TKDL is the right strategy to prevent the direct misappropriation of Traditional Knowledge already in public domain and known to a large cross-section of people (wound healing property of turmeric for example) . However, it is learnt that the concept of TKDL is being extended (in combination with “Prior Informed Consent” and “Access and Benefit Sharing” tools) to enable codification of community-owned Traditional Knowledge also. In the latter case, it is a clear injustice to those communities, if TK of this nature is shared with patent offices. Patent Examiner can limit the scope of a patent claim on TK (or reject it altogether), only if he/she gives the relevant extract from TKDL to the inventor to show that it is a “prior art”. Then it would fall in public domain, hence affecting the livelihood of communities. Fraudsters may file patent applications purely on conceptual grounds (which would look like as if they had performed the invention), only to see that they could fetch the authentic information on a TK practice/product.

    Reply
  2. AvatarD.Bheemeswar

    I congratulate all who have contributed for bringing out such important and essential digitization of Indian Traditional Knowledge. Probably this may reduce the bio-piracy as well as formula hijacking. It is well known that India has very rich Traditional knowledge.

    Reply
  3. AvatarR S PRAVEEN RAJ

    As someone worked closely with Kerala Government in devising ‘IPR Policy of Kerala’ (released on 27th June 2008), I find that the concept of “knowledge commons” is very suitable for protection of TK and its ‘in situ’ preservation and sustained development, if the same is governed through “community protocols” (respective communities will decide the terms and conditions for sharing their TK).

    Kerala IPR Policy ‘per se’ may have limitations (some academics call it a ‘utopian’), but it gives an alternate way of thought at a time the world goes MAD in search of tools to ‘make a difference’ from the conventional strategies of TK protection. There is consensus among IPR Experts as to the need of a ‘sui generis’ legislation. How can it be done ? confusion still prevails. There are of course flaws in Kerala IPR Policy also. Lot of brain storming will have to be done to find a comprehensive solution to address misappropriation of TK.

    Let me add below the gist of ‘Kerala IPR Policy’ for the comments of ‘Spicy IP’ readers.

    Suigeneris legislation for “rights” on Traditional Knowledge : Kerala’s IPR Policy Imperative

    Kerala IPR Policy proposes to acknowledge the ‘deemed rights’ for the Traditional Knowledge holders and to make them aware of their rights. The policy document advises to commit all traditional knowledge, including traditional medicines, the practice of which sustains livelihoods of many, to the realm of “Knowledge Commons” and not to the “Public Domain”. “Knowledge Commons” refer to the knowledge, which is the collectively produced sphere of ideas and which is left unencumbered for the greater benefit of all.

    While the Policy envisages ‘proprietary rights’ on traditional knowledge, all the right holders will be deemed to be holding their rights under a “Commons License”, wherein the right holders shall permit others the use of the knowledge in their possession for non-commercial purposes. It is further stipulated that any development made using this knowledge licensed under the above obligation should be put back to the realm of “Knowledge Commons”, say “Traditional Knowledge Commons”, and hence denying the scope of patenting thereof.

    The word “Commons License” used here is based on the fundamental concept of “Creative Commons” employed by open source advocates, but its scope varies significantly from that of “Creative Commons License”. Specific provisions for such “Traditional Knowledge Commons License” will have to be worked out to ensure free, non-commercial reproduction and codification of the Traditional Knowledge. It shall be a kind of “deemed licence” which immediately applies on the user of TK, the moment he decides to employ it for any purpose. The provisions for governing the deemed license/community protocols are to be laid down in the legislation.

    According to the policy document, the custodians/preservers of the TK (viz. tribal community, family etc) will be acknowledged as the ‘right holders’, but they are obliged to subject the TK possessed by them for the non-commercial purposes of all. Hence the knowledge is revealed for documentation, and enabling further research thereof. However these right holders can license the TK under their possession to others for commercial purposes on negotiated terms and conditions in accordance with the provisions of “Commons Licence”/community protocols. In respect of such TK, where it is the livelihood of numerous practitioners strewn across Kerala, the State will be deemed to have rights over such Traditional Knowledge. Even though State holds the ownership on such TK, all the actual practitioners of this TK will have an autonomous license for right of commercial use from the State. But these Licensees are not empowered to sub-license this right of commercial use to anybody else, and the right for transferring licenses will solely be enjoyed by the State.

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  4. AvatarR S PRAVEEN RAJ

    The concept of “deemed rights” to TK holders and “deemed license’ proposed by Kerala IPR Policy is an “out of the box” thinking.If the western world can introduce a concept of trading intellectual property through TRIPS and the concept of “ACCESS and BENEFIT sharing”, why can’t we think of a new CONCEPT from EAST ?

    It is better not to have ‘registers’ and ‘registries’ of TK, as registering ‘rights’ make them absolute. “Compulsory licensing”, “license or right” etc. won’t provide solution as the “rights are intact” on registration.

    A “Traditional Knowledge Docketing System (TKDS)” (An Information System) shall be created instead of registers, to indicate the location at which the Traditional Knowledge is available, the community that possesses the TK, and short description of nature of TK and the COMMUNITY PROTOCOL if any.

    However documentation (TKDL) of the ‘TK in public domain’ may be done in national interest.

    Reply
  5. AvatarRob Harrison

    I trust that I may be permitted to comment as a European Patent Attorney dealing with a number of pharmaceutical matters. The creation of the database is to be welcomed. One thing that patent applicants welcome is certainty about the validity of their patents – and the availablity of additional information to patent examiners about prior art is to be welcomed. This increases the strength of the patent system and ultimately leads to greater acceptance of the role of patents in encouraging scientific development.

    It is, however, regrettable that the data on traditional knowledge is not easily accessible to applicants before filing their patent applications. This would help applicants refine their patent applications and better understand the contribution that they (and holders of traditional knowledge) had contributed to the development of technology.

    If I may be permitted to point out one small error in the report – the typical cost of a European Opposition is around EUR 5,000 to EUR 30,000, depending on the complexity of the matter. The costs of national revocations in Europe can be higher – and very much depend on the forum in which they are filed as well as the “quality” of the evidence. I am unaware of a European revocation suit costing several hundred thousand USD (although some US cases exceed that sum).

    Reply
  6. AvatarAnonymous

    European attorneys expect the TKDL contents to be put in public domain. How is safe is the database in the hands of EPO ?

    I’m told by an NGO that CSIR had denied a copy of the agreement between CSIR and EPO when requested.

    What Secrecy and Why ?

    Reply
  7. Avatarmnbvcxzaq1

    R S PRAVEEN RAJ,
    the concern regarding injustice to community on account of the attempted extension of the concept of TKDL “….(in combination with “Prior Informed Consent” and “Access and Benefit Sharing” tools) to enable codification of community-owned Traditional Knowledge…..” is genuine.
    -aditya kant

    Reply
  8. AvatarSumathi Chandrashekaran

    Thanks for your comments, all.

    Praveen Raj, Aditya, Anon — your concerns are well taken. PIC, ABS in the context of community-owned TK are still contentious. I think this might be something countries like India need to fight for at the international level, esp in re the IGC on TK, where a lot things have been threatened, including the suggestion that ‘perpetual protection of TK is “not on the table”.

    http://www.ip-watch.org/weblog/2009/10/22/perpetual-protection-of-traditional-knowledge-%E2%80%9Cnot-on-table%E2%80%9D-at-wipo/

    Rob – Thanks for your insights as a practitioner in Europe. The numbers I cited were based on comments received from our source, and I should have attributed it accordingly, as well as verified the numbers. My mistake.

    Re TK data not being easily available, if I may attempt to defend the complexity involved in making such data available: the volume of information is overwhelming, and is extant in multiple languages, in India, at least. Linguistic experts capable of translating material of a highly technical order would be limited. The historical value of this data also means that some of these languages are probably not in common use, and may even be extinct for all purposes. All of this would make it a daunting task to make *all* TK available at once. The best policy when dealing with anything Indian is to be patient. I keep telling that to myself 🙂 Hopefully, it will all be for the greater common good.

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  9. AvatarSumathi Chandrashekaran

    Anon – Your comment sort of slipped me by — do you have any more details on the refusal by CSIR? What kind of a query was made? Was it made through the RTI? If yes, are there details of the refusal, and so on? Would be great to know. Tks, sumathi

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  10. AvatarR S PRAVEEN RAJ

    @Sumathi and @anon

    Dr. V.K. Gupta, Director of TKDL may be in a position to give authentic information on whether an RTI was received. He can also tell the reasons if it was rejected.

    CSIR website gives his Email Id as [email protected]. I wonder if Spicy IP can take an interview with him

    Reply

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