Patent Traditional Knowledge

Evaluating the veracity of CSIR-TKDL claims


In the recent past, CSIR -TKDL (Traditional knowledge digital library) has gone on an overdrive touting several sensational claims. This post aims to evaluate the veracity of these claims and also examine whether the investment involved in the TKDL effort is actually worthwhile. In fact, our friends at IP Kat particularly Darren Smyth and Tufty the Cat got the debate started and have written a couple of posts regarding this. You can read these posts here and here.

Image from here

CSIR – TKDL self-proclaimed “milestones”
In the first instance, a European patent application EP2689806 claimed an oral composition comprising: an extract from Myristica fragrans (Nutmeg extract). CSIR TKDL (enthusiastically) filed third party observations objecting to the patent claims and citing several TKDL references in support. In response to the examiner’s search opinion, the applicant first tried amending the claims then finally abandoned the patent. The Indian government then came out with a press release stating that “India had foiled an attempt by consumer goods giant Colgate-Palmolive to patent a mouthwash formula containing herb extract by citing ancient texts that show it was traditionally used in ancient medicinal practices.” The prosecution history reveals that the examiner primarily relied on a prior US patent application to reject the EP patent claims. However the examiner did in fact find the TKDL citations to be relevant too. So I don’t quite agree with the Tufty the Cat’s opinion that “the recent claim by the Indian Government is not just a bit exaggerated, but completely false.
In the second instance, another patent application EP2361602 the first claim claimed a method of treating hair i.e. specific sequence of applying certain chemicals onto hair. The dependent claim made specific reference to the chemicals claimed in claim 1 and also stated that some chemicals can be used in combination with certain conventional herbal agents (curcumin, pine bark extract, green tea) for treating hair. As one could imagine, TKDL acting as a caped crusader jumped in to foil yet another attempt by a “diabolical” foreign MNC to patent traditional knowledge! While the TKDL citations were taken into account by the examiner, it did not play an instrumental part in the prior art rejections and subsequent abandonment of the patent. Moreover these EP patent claims can hardly be construed as patenting of turmeric and pine bark extract per se.  Further the examination on this patent application is still in progress. So the Government’s press release stating thatIndia once again has been successful in protecting its traditional knowledge by preventing an attempt made by Europe’s Leading Dermaceutical Laboratory-Pangaea Laboratories Limited, to take patent on a medicinal composition containing turmeric, pine bark and green tea for treating hair loss  is a hyperbole and a bit premature.
 
Swaraj brought to my attention another completely bizarre TOI news report where CSIR- TKDL claimed that, “It has been observed that several patents have been issued in the West for various yoga techniques. Many have copyright on those.”  A cursory search at the USPTO database revealed several patents for yoga accessories such as specialized yoga mats, yoga towels and even techniques to videograph/record a particular yoga class session. However I could not find any patents claiming the “Yoga posture” itself.
In the same article, I was dismayed to read that the Government is spending its resources and has shortlisted over 1500 asanas and videographed over 250, classifying them as “traditional knowledge” of the country. Further the article states that “this move will help thwart attempts by foreign MNC’s and individuals to get patents and trademark on ancient yoga techniques
TKDL –is this effort meaningful and worthwhile?
It is important to consider whether the time and resources spent on TKDL is worthwhile. I believe that the TKDL was born out of an effort to index and digitize methods and compositions which have been in use over a period of several years, but haven’t been published anywhere or aren’t accessible readily.
The TKDL effort would have probably made sense and was a good tool to invalidate patents in pre –AIA(America invents act) era wherein, United States followed a system of relative novelty and public use/sale in a foreign country before the date of invention was NOT considered invalidating prior use.
However with the advent of AIA, United States has adopted the concept of absolute novelty prior public use/sale anywhere in the world before the effective filing date is considered invalidating prior use. Post AIA, US and EU both follow the concept of absolute novelty and the inventions indexed by TKDL would fall within the definition of prior art and preclude patentability. Additionally after the Myriad gene patent case and Mayo vs. Promethus, the USPTO issued guidelines which pretty much bar anyone from patenting a naturally occurring plant extract/chemical. Considering all this, I wonder whether the traditional knowledge digital library is useful for challenging patents as claimed.
One should probably consider filing an RTI to find out how much the TKDL initiative costs. The government is spending significant resources trying to maintain a “traditional knowledge “database, actively monitoring patent applications filed all over the world and filing invalidation actions/ oppositions against patent applications worldwide. While other countries like China and Korea also maintain a traditional knowledge database, I haven’t seen them investing time and money in challenging frivolous patents filed worldwide.
Further, as Prashant has noted in several of his previous posts the secret and closed nature of the TK database prevent it from being utilized as a meaningful resource for other research purposes.
I welcome our reader’s comments and thoughts regarding this. Do you think the Indian Government’s TKDL is a meaningful exercise worth the taxpayer’s money?
Madhulika Vishwanathan

Madhulika Vishwanathan

Madhulika is a registered Indian patent agent and has completed her Master’s in Pharmacology from the Institute of Chemical Technology (ICT), Mumbai. Her interests include issues involving pharmaceutical and biotechnology patent law, regulatory aspects like Hatch Waxman litigation and antitrust law.She is currently working at law firm based out of Memphis, TN.

9 comments.

  1. Ehsan Qureshi

    TKDL…great work.
    A TK book told that if you are in hurry to go somewhere, you have to use fast vehicle.
    So, because the prior art is available,I am going to file the Third party submissions, pre grant oppositions and post grant oppositions against Bikes makers, Car Manufacturers, Air plane manufactures, if they have patents on that.
    If any patent will be cancelled or withdrawn, (I don’t care, whatever reason behind). The CREDIT will go to My Third party Submission.
    PLEASE DO’NT DISTURB, I AM BUSY.

    Reply
  2. Onkar Singh

    I believe that there is a need to document or preserve Traditional knowledge in some way. TKDL is one of them. I also believe that investment involved in the TKDL effort is actually worthwhile. because, we can not evaluate the worth of TK. Absence of such documentation can result in any situation, if holder of such knowledge demise.

    Reply
  3. Shashank Mauria (S. Mauria, ICAR)

    One needs to study and compare time and money spent in this direction in China and Korea vis-a-vis India; and provide a perspective. But I agree with Onkar Singh’s comment. At the same time, your statement about chasing ‘frivolous’ patents is absolutely right. But again, we may need to develop a guideline on what could be ‘frivolous’ or not. Certainly, we can not and should not be chasing each such patent in the rest of the world. Litigation cases like ‘basmati’ and ‘haldi’ patents may suggest that patents with economics or prestige at stake (brand or TK prestige in these two cases) may be a worthwhile effort; but not in every case. In contrast, cases like transgenic cotton patent of Agracetus in USA and India, the just disposed off case of Nap-hal wheat patent in Supreme Court of India (on 16.2. 2016) point to your suggestion of not spending the valued time and money in frivolous patents. I think some IP law students can research each of these cases to develop a guideline.

    Reply
    1. Shamnad BasheerShamnad Basheer

      Dear Dr Mauria. Great to hear from you. Could you please send us more details on the US Wheat case (Nap-hal wheat patent) case? You say this was disposed off this month by the SC?

      Reply
  4. S Mauria, ICAR

    Dear Dr Shamnad Basheer,

    It was writ petition (civil) no. 64 of 2004 with Research Foundation for Science, Technology and Ecology and ANR as the petitioner versus Union of India and Ors, seeking a writ of mandamus directing the respondents to challenge the patenting of wheat by the US Company, Monsanto. The case was initially handled by Deptt of Agriculture and Cooperation, Govt of India and later transferred to DARE/ICAR. In all, there were three patents in question viz. EP0445929, , US patent 5859315 and 5763741 The issue was examined through committees with Sect DARE and DG ICAR as the Chair. It was not felt worth the time, effort and money required to contest the case in US/Europe. The final disposal is available on website of Supreme Court of India.

    With regards,

    Mauria

    Reply
  5. Seemantani Sharma

    A worthwhile endeavor to highlight the discrepancies on the “self – proclaimed milestones” and the actual outcome. Alas , this zealousness has been taken rather seriously by CSIR for the major milestones section of the website is suddenly under construction (check back soon!).
    Another oddity is the list on”TKDL Success Against MNC’s” albeit bereft of other details (patent office, application etc). Perhaps these diabolical MNC’s need no fair treatment.

    Reply
    1. Aar Tee

      The answer is a firm NO. The concern is hypothetical and a figment of imagination. There is no dilution in CSIR’s commitment to TKDL though retweaking based on past learnings expert’s opinion and evolving Govt. policies in the best interest of the country is a possibility. The activities at TKDL are run in a project mode and all projects have an end date. The current projects being part of 12th Five Year Plan of erstwhile Planning Commission will come to an end in designated time frame i.e., 31 March 2017. Thereafter a project as per new guidelines and framework of NITI Ayog will be put in place. The revised TK protection endeavour with appropriate scope enhancements, learnings from objective criticism, value additions and alignment with the latest Cabinet approved DIPP Policy will SURELY and DEFINITELY go on.

      Reply

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