Guest Post: The Traditional Knowledge Digital Library and the EPO


Tufty the Cat, who is qualified as a U.K. and European patent attorney and who maintains a blog by the same name, accessible over here has written for us this interesting guest post on the veracity of the several claims made by TKDL. Tufty had earlier left a comment on one of my posts questioning the veracity of TKDL’s claim of foiling an European patent application for certain properties pertaining to milk. Subsequent to that comment, I invited Tufty to write us a guest post on the several claims made by TKDL with regard to the several EP applications that it had claimed were either withdrawn or modified as a result of TKDL evidence. Image from here.
The Traditional Knowledge Digital Library and the EPO
by
Tufty the Cat

Traditional knowledge (TK) is often cited as being relevant to intellectual property, and it is sometimes even argued that TK justifies some kind of sui generis IP right. Whether TK could in any sense be considered to be an IP right is contentious, and is not the subject of this post. It is less contentious that TK would at least be considered to be prior art.
Under European law, the state of the art is “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application” (Article 54 EPC). This would certainly cover traditional knowledge, which is often communicated by use and by word of mouth. A problem with such disclosures is that of proof. The EPO is typically reluctant to accept oral disclosures as prior art unless backed up with sufficiently persuasive evidence. This is where the Traditional Knowledge Digital Library supposedly comes in. The TKDL, a collaborative project between the Council of Scientific and Industrial Research and the Department of Ayurveda, Yoga and Naturopathy, Unani, Siddha and Homeopathy, was set up in 2001 to document traditional knowledge that was claimed to be already known in India, sometimes for hundreds of years.
As claimed on the TKDL website, “TKDL gives legitimacy to the existing traditional knowledge and enables protection of such information from getting patented by the fly-by-night inventors acquiring patents on India’s traditional knowledge systems. It will prevent misappropriation of Indian traditional knowledge, mainly by breaking the format and language barrier and making it accessible to patent examiners at International Patent Offices for the purpose of carrying out search and examination“. Apart perhaps from the claim about “fly by night inventors”, this all seems quite sensible and generally a good thing. After all, patents should not be granted for inventions that are already known.
The TKDL website has a list of European patent applications in which “citation of TKDL references as prior art have led to significant strides towards achieving the goal of preventing misappropriation of Indian Traditional Knowledge“. At the time of writing the list refers to 79 European applications that have been either withdrawn, refused or amended, allegedly as a result of TKDL cited references. One of these, EP2251029, was recently the subject of an article in the Times of India, which was noted by Spicy IP. The TofI stated that “India has successfully foiled a bio-piracy bid by a Swiss multi-national firm to patent an age-old Indian home remedy – milk as a laxative“. Was this true? Had the TKDL been used in this way, and had a patent application really been made for milk as a laxative?
As expected, the truth is a little less dramatic. The application in question, filed by Nestec S.A. (the Nestlé Research Center in Lausanne, Switzerland) in 2009, was published in November 2010 after having been thoroughly searched by the EPO. The search report cited 17 documents as being relevant to the claimed invention, all of which were relevant to at least claim 1 of the application, which read “Ingestible composition enriched in lactoferrin to be administered to adults and/or the elderly“. The European examiner stated in the search opinion dated 23 October 2009, that the application had several problems under European patent law, one of which was that the claimed invention was not new in light of ten of the cited documents.  Following an examination report issued in June 2011 confirming this finding, third party observations under Article 115 EPC were filed by CSIR on 13 September 2011. An extract from the TKDL was provided, citing various compositions including cow’s milk for use in the treatment of constipation among other ailments. The applicant then failed to file a response to the examination report in due time, with the result that the application was deemed withdrawn on 24 January 2012.  (Incidentally, this is not yet necessarily the end of the line for the application, as a response can still be filed by 3 April 2012 if the applicant uses further processing.)
From only a quick review of the prosecution file, it is clear that the TKDL references would be far less relevant than any of the ten documents already cited by the examiner.  It is hard to see how the references would make any difference at all to the outcome of the application, which would most likely be refused, or at least substantially limited, as a result of the far more detailed references already cited by the examiner. To claim that the TKDL had “successfully foiled a bio-piracy bid” seems therefore to be plain wrong. 
This was, however, only one case where the TKDL has been used against a European application.  Surely there would be other cases where the TKDL has been effective in stopping a “bio-pirate” from appropriating Indian traditional knowledge? Looking at several of the other applications cited by TKDL, it is not clear that it has been effective in any cases.  There is, as far as I can see, only one instance where an application was refused in light of TKDL documents (EP1747786), and in that case the grounds for refusal also related to documents already cited by the examiner.  In another case claimed by TKDL to have had a decision to grant set aside, the application in fact proceeded to grant and remains in force after no opposition was filed. In the many other examples cited by TKDL, I have been unable to find any where a TKDL reference has been decisive in preventing an application from proceeding. 
From this brief review, it appears on the face of it that the TKDL, although possibly useful in some limited circumstances involving over-broad applications, is of fairly limited use. Although it has been claimed (in the above mentioned TofI article) that thousands of applications had previously been wrongfully granted as a result of a lack of information on traditional knowledge, this seems to be far fetched given that TKDL is unable to provide any convincing examples of applications being refused on grounds of a TKDL reference. Can anyone else find one?

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

9 comments.

  1. AvatarAnonymous

    I appreciate the effort of Mr. Reddy on spending his time and effort on TKDL. As rightly pointed out at TKDL website and by blogger TKDL merely permit examiner to see the published prior art on Traditional Knowledge based applications, to facilitate examiner further. TKDL is sending third party submission at no cost. Jurisprudence to grant or not grant, to consider relevant or not relevant the prior art in TKDL is that of examiner.

    On seeing TKDL website at EPO itself I find several examiner reports highlighting significance of TKDL prior art thus forming the basis of Withdrawal / cancellation/ Claims amended. Some details are given below:

    1. EP1747786 – In the Examiner report dated 28.07.2009 the examiner found all the 5 exhibits filed by TKDL relevant and acknowledged the fact that Cucumis melo has been used in Indian Systems of Medicine since long as evident from exhibits 1-5 cited in the Third Party Observation. Examining Division was intended to grant the patent but after filing of TKDL evidences the case was set aside on 27.07.2009

    2. EP1709995 – In the Examiner report dated 04.03.2010 the examining division in the light of TKDL references has decided to reexamine the present subject matter and acknowledged the fact that the treatment of allergy with Nigella sativa were known before the present priority date. The patent application deemed to be withdrawn on 18.08.2010

    3. EP1825845 – In the Examiner report dated 17.08.2009 examiner stated that the activity of Bacopa monnieri, Silybium marianum, Withania sominifera, Curcuma longa and Camellia sinensis is well known on skin in Indian System of Medicine. The patent application deemed to be withdrawn on 08.04.2010

    4. EP2152284 – In the European search report dated 19.01.2011, the examiner considered the TKDL references very relevant since they cite novelty anticipating prior art documents. Each of the reference discloses compositions comprising all three of the presently specified components i.e. Cinnamomum wightii, Salacia oblonga, Eugenia (Syzygium) for the treatment of Diabetes. Thus the examiner did not considered the present set of claims novel over these references. The patent application deemed to be withdrawn on 23.09.2011

    5. EP2008661 – In the Examiner report dated 08.10.2010, the examiner considered the TKDL prior art relevant and stated that the combination of Calendula officinalis, Aloe vera and Centella asiaticae would be obvious for the treatment of Skin diseases and healing of wounds. The patent application deemed to be withdrawn on 05.01.2011

    It appears blogger is in the habit of creating sensationalization to obtain cheap publicity for him and his blog lack due diligence and homework. There are several such references concerning TKDL evidences which he himself could have found if he has intention to make serious efforts. I will upload more such cases where application is withdrawn or claims are amended due to TKDL.

    Reply
  2. AvatarAnonymous

    A curious observation which I would like to share: Apart from those mention by Anon above, the Major Milestones Table available on the TKDL website also consists of cases where there has been refusal to accept TKDL as prior art.

    Time to search!

    Reply
  3. AvatarAnonymous

    Here are some more references where application is withdrawn or claims are amended due to TKDL :

    1. EP1906980 – In the European search report dated 09.11.2009 the examiner considered the TKDL prior art relevant and stated that in the light of TKDL references, the subject matter of claims cannot be considered as novel as Withania somnifera has been used for the treatment of stress and stress related symptoms in Indian Systems of Medicine, since long. The patent application deemed to be withdrawn on 25.03.2010.

    2. EP1795200 – The examiner report dated 23.03.2011 considered the TKDL prior art relevant and stated that the applicant should overcome the raised objections of lack of novelty as present claimed subject matter appear to be obvious in the light of TKDL references. The applicant amended the claims on 22.09.2011.

    3. EP1880719 – The examiner report dated 03.01.2011 considered the TKDL prior art relevant and stated that in the light of TKDL references, the subject matter of claims cannot be considered as novel. The applicant amended the claims on 27.04.2011.

    4. EP1993365 – The examiner report dated 18.11.2010 considered the TKDL prior art relevant and asked the applicant to take position on and reply to the objections raised by the TKDL. The applicant amended the claims on 23.12.2011.

    5. EP2227247 – In the European search report dated 11.04.2011 the examiner considered the TKDL references relevant and identical to that of the application and asked the applicant to reply to the objections raised by the TKDL.. The applicant amended the claims on 17.02.2012

    Reply
  4. AvatarPrashant Reddy

    Dear Anon,

    Thank you for the extensive comments, you have obviously put in a lot of research. I have asked Tufty to reply. In the meanwhile, I request you to not make any personal remarks in the comments section. Imputing motives etc. to bloggers does not help anybody. I let through your first comment because it was well-researched. Please keep the focus on the merits of the debate.

    Regards,
    Prashant

    Reply
  5. AvatarTufty the Cat

    Dear Anon

    I am not going to get into a detailed rebuttal of each and every patent application you mentioned. I will simply stand by my original comment that the relevance of the TKDL has been over-stated, and it is nowhere near as relevant as the people who run it claim it to be. Perhaps if you could acknowledge this we could agree on some points where the TKDL has been of use in preventing over-broad patents being granted. Until then, I shall leave readers to come to their own conclusions.

    As for your comment that I am “in the habit of creating sensationalization [sic] to obtain cheap publicity“, this is rather rich given the claims made by TKDL, which are themselves sensationalist. The article in the Times of India, for example, is a particularly bad example of blatant untruths and exaggeration, as I am sure you will agree. My intention in writing the post was to point out that the claims made by TKDL, in the particular case mentioned in the Times article, were simply wrong. Do you not agree with that?

    Yours

    Tufty Sylvestris

    Reply
  6. AvatarPatent Agents

    It is expected that these applications would be cancelled by respective patent offices or will get withdrawn by the applicants themselves in coming months. Is this true?

    Reply
    1. AvatarSeemantani Sharma

      Can anyone give the statistics of patent applications rejected by USPTO on the basis of prior art in TKDL (since the time USPTO signed the non-disclosure agreement for TKDL). I have written numerous emails to CSIR but without avail. The USPTO refuses to reveal the statistics- on the grounds of confidentiality. Thanks.

      Reply
    2. AvatarSeemantani Sharma

      Can anyone give the statistics of patent applications rejected by USPTO on the basis of prior art in TKDL (since the time USPTO signed the non-disclosure agreement for TKDL). I have written numerous emails to CSIR but without avail. The USPTO refuses to reveal the statistics- on the grounds of confidentiality.

      Reply

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