In previous posts, Sumathi touched upon an interesting conspiracy theory that attacks WIPO for alleged sneaky attempts to push through a “global” patent proposal.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.
