Biological Diversity

Mandatory Disclosure, PCT and WIPO Conspiracy Theories

In previous posts, Sumathi touched upon an interesting conspiracy theory that attacks WIPO for alleged sneaky attempts to push through a “global” patent proposal.
Some have also expressed the fear that the latest round of amendments to the PCT (Patent Co-operation Treaty) and their consequent incorporation into the PLT (Patent Law Treaty) prevent countries from imposing “mandatory disclosure” norms in their patent regimes. A close reading of the relevant treaties exposes this fear as yet another unfounded one.

As many of you are aware, India, Brazil and a number of other developing countries that host some of the world’s most exotic biodiversity insist on “disclosure” requirements in their patent regimes i.e. that patent applicants disclose the source and origin of any biological material used in their “invention”. The hope is that this patentability prerequisite would help such countries regulate the potential exploitation of bio-diversity resources and ensure that it conforms with “conservation” efforts and promotes norms of fairness by sharing benefits with indigenous communities.

Naturally, these countries are keen on “internationalising” such an obligation, such that even a US researcher would have to disclose “source” in an application filed before the US patent office. This tricky issue was one of the sour points during the failed WTO Doha talks.

Unfortunately, India’s own biodiversity legislation has resulted in the worst bureaucratic nightmare, with our bio-diversity board holding back patent applications and insisting on fanciful royalty “benefit” rates with no rational intelligible basis. Very rueful indeed… and a mistake we must not make whilst drafting out any legislation to regulate traditional knowledge. But I digress here.

A note prepared by me along with one of my research associates, Abira Gupta, argues that notwithstanding the latest PCT incorporations to the PLT, member states are free to insist on “disclosure of source” obligations as a substantive requirement under their national patent regimes and nothing in the PCT or PLT bars them from doing so.

Since India is not a member of the PLT, it need not worry about any binding obligations undertaken under the PLT. However, India’s cause for concern in this regard may stem from the fact that it wishes to “internationalise” the obligation to disclose “source”. Therefore, if PLT members lock themselves into a position where they cannot insist upon disclosure requirements in their national patent applications, this will harm India’s efforts.

More details in the summarised note below:

PLT Amendments and “Mandatory Disclosure of Source” Norms

Article 6 (1) of the PLT effectively states that amendments to the PCT will apply to PLT member countries, in so far as the amendments relate to the form and contents of international applications under the PCT.
A recent PLT Assembly on Sept 22, 2009 considered the application of certain PCT amendments to the PLT. Of the amendments, the one that is important for the purpose of our discussion is the modification of section 204 of the PCT Administrative Instructions which deals with “headings” that are to be included within a patent description.

Under the recent PCT amendment, certain additional headings are to now be included in the patent description. However, this is only recommendatory and not mandatory. Section 204 itself makes this clear by providing that “the headings of parts of the description shall preferably” include the listed items.

Therefore countries are free to disregard such additional headings. They are also free to work out their own headings, in so far as such headings pertain to “substantive” patentability pre-requisites.

In this regard, it bears noting that a “mandatory disclosure requirement” is essentially a substantive condition under patent law, since the failure to furnish such information can lead to an invalidation of the patent (at least under Indian patent law). The PCT as well the PLT being procedural in nature do not regulate or impinge upon such substantive patentability requirements. Article 27 (5) of the PCT confirms this and goes onto say that neither the Treaty nor the Regulations under it are intended to restrain Contracting States from prescribing their own substantive conditions of patentability.

See this excellent paper by Prof Josh Sarnoff (who has guest blogged for us in the past) and Prof Carlos Correa that endorses the above position.

To conclude, a country is free to insist upon a mandatory disclosure requirement in their national patent regime and nothing in the PCT or PLT prevents them from doing so. If any of you have studied this issue and interpret the provisions differently, I’d love to hear from you.

ps: image from here.

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Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

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