Guest Post: Barriers to Recognition and Unheeded Warnings: The TKDL Saga

In continuation from his previous post titled “Questioning the Fallacy of a Closed-Access TKDL“, in this post, Balaji Subramanian puts forward some well thought out structural and legal critiques of the TKDL which he opines has rendered its usage sub-optimal. This 2 part series is Balaji’s first entry to our SpicyIP Fellowship applicant series. [Readers interested in finding out more details about our SpicyIP Fellowship applicant series can click here.]

Barriers to Recognition and Unheeded Warnings: The TKDL Saga

By: Balaji Subramanian

In my previous post, I’d examined the closed nature of the TKDL as a resource. Here, I go on to narrate other criticisms of the database, and contrast it against recommendations made by the WIPO.

The success or failure of defensive protection strategies such as the TKDL rests on two pillars: a legal element and a structural one.

Legal Barriers

The most important requirement that the TKDL must fulfil is for its data to meet the criteria established for prior art in various jurisdictions. This would entail ensuring that the knowledge is made available in a valid form, with clear evidence of the date of its publication, and the presentation of the knowledge in a manner that clearly establishes that the patent claim is anticipated by the data contained in the library.

The most TKDL-friendly jurisdictions are those such as the EU. The European Patent Convention (EPC) defines prior art (the “state of the art”) as “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”. Thus, innovations detailed in the works indexed by the TKDL would fall within the definition of prior art, and therefore be unpatentable – assuming, of course, that all the works digitised and translated by the database were publicly available. The compatibility of the EPC’s definition of prior art with the TKDL is evident – the database’s self-proclaimed “successes” – around 120 of the 180 “successful outcomes” are in Europe.

On the other end of the spectrum is America. Pre-AIA 35 USC §102 stated that a person “shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent;
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States”.

This effectively excludes protection for any knowledge unknown in the United States. Further, given the restrictive access to the TKDL, it appears that the database would not fall within the definition of a “printed publication”, since it has never been “published” – merely circulated among patent examiners on conditions of non-disclosure. Thus, it appears that there may be no legal basis for the TKDL to be cited as evidence of prior art in jurisdictions that have such definitions of prior art.

Structural Barriers

Apart from the possible incompatibility of the TKDL with patent law in certain countries, there exist fundamental problems endemic to the approach taken by the TKDL. As an archive of prior art, the TKDL has placed the burden of enforcing TK assertions upon patent examiners around the world. It has pigeonholed itself into a doctrine that has a tendency to go largely unheard in patent examinations. With studies (Lemley and Sampat, 2009, specific to the US) showing that more experienced patent examiners, typically occupying higher positions in the patent office, are less likely to cite examples of prior art in their examinations, and still other analyses (Sampat, 2010, also US-specific) (paywall) showing that applicants are extremely unlikely to provide and identify prior art surrounding their claims, it is evident that there are structural imbalances working against the efficacy of the prior art doctrine in preventing illegitimate patent claims. Thus, efforts must be made to counter this imbalance at two levels: first, access to the TKDL must be made as easy as possible; second, the TKDL has to undertake affirmative patent monitoring efforts.

Patent monitoring, while onerous and expensive, is nevertheless necessary for the success of a defensive system such as the TKDL, especially in those jurisdictions which do not have the legislative framework to enable provisions (of the CBD and elsewhere) that mandate disclosure of genetic material sources.

The Way Forward

The WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore has extensively discussed measures to increase the effectiveness of defensive publication strategies. Three areas highlighted in its report are especially relevant to the TKDL.

First, the TKDL must ensure that it has the informed consent of the communities who evolved the knowledge that is being indexed. Further, the TKDL must clearly distinguish between TK that exists in the form of published, but inaccessible literature (slokas, hymns, etc.), and TK that is unpublished. While the database must aggressively index the former, alternative protection strategies, such as those under the law of trade secrets, must be evolved for the latter.

The next recommendation of relevance is the TKDL’s availability to the public. It has already been stated that the TKDL fails miserably on this count. Indeed, the very notion of an archive that claims to contain prior art but remains confidential seems absurd.

Finally, the Committee speaks of the management of rights arising from the publication, another front on which the TKDL appears lacking. No mechanism seems to exist to manage the copyright subsisting in the archive, and even the potential for copyright infringement by the digitisation of works has been ignored, as previously stated.

Thus, the areas of improvement for the TKDL have been clearly enunciated in a document published in 2003 – well before the completion of the project. It remains to be seen why the CSIR has not taken these considerations into account, despite the fact that they arose from a body such as the WIPO.