Intellectual Property Clauses in Benefit-Sharing Contracts
The role of intellectual property rights in the sharing of benefits arising from the use of biological resources (and associated traditional knowledge) is often construed in the form of intellectual property clauses in access and benefit-sharing contracts. Contractual agreements are certainly the most common legal tool, currently used, for regulating access to genetic resources and benefit-sharing. In practice, such contracts often determine, at the point of access, how down-stream intellectual property rights will be dealt with, and in particular how intellectual property rights can be used as a means of equitably sharing benefits.
Contractual agreements may take a variety of forms, and are generally referred to as Material Transfer Agreements ("MTAs"). Intellectual property-related clauses form an important part of MTAs and reflect a range of policy objectives including conservation, food security and the interests of the various stakeholders. MTAs often include the following intellectual property provisions:
- That utilisation of material be for research purposes only;
- That the recipient of biological resources not file patent applications;
- That any intellectual property rights obtained be shared by the parties (for example, the owner of the land where the material is found, the owners of any associated traditional knowledge, the bioprospecting company and any other parties that may have a role in research and development);
- Where a product is successfully developed commercially, an agreement that royalties will be shared between the parties according to an agreed formula;
- Provisions concerning the ownership of intellectual property rights in relation to derivative material;
- Grant-back licences to a biological resource provider for an invention the recipient of the material may patent;
- An obligation to defer publication of any discoveries of resulting inventions.
Contractual agreements may also arrange for a number of other, non-intellectual property-based benefits to be shared with indigenous peoples and local communities in recognition of their contributions. These include, for example, up-front monetary payments, research funding, salaries or infrastructure to resource or land owners, participation in research activities, support for conservation projects, capacity building, assistance with language revival, recovery and recording of traditional knowledge, receipt of technologies developed, and others.11
The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore ("the IGC") has developed, as a pilot project, an on-line database of contractual practices and clauses relating to intellectual property, access to genetic resources and benefit-sharing. The object of the database is to provide a practical resource to assist those involved in negotiations about the access to and the use of genetic resources, through the provision of a range of options for dealing with intellectual property issues in access and benefit-sharing contracts.
The IGC has signalled its intention to use the database for the development of guide contractual practices, guidelines and model intellectual property clauses. The object of this exercise is to provide a practical contribution to the other international processes considering access and benefit-sharing issues, including, for example, the CBD and the Food and Agriculture Organisation ("FAO").
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