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Intellectual Property, Bioprospecting and Traditional Knowledge: Who Benefits?

[ Last Updated 16 December 2005 ]
Status:Archived

PowerPoint Presentation Slides
to the
Bioprospecting in New Zealand Seminar, 21 February 2003

Kim Connolly-Stone
Senior Advisor, Intellectual Property Policy Group
Ministry of Economic Development

This presentation is also available in
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See also: ยป Paper

Contents

Slide 1: Introduction

  • Intellectual Property as a potential benefit
  • How rights are obtained and for what
  • Wider policy issues in an international context (intellectual property debates):
    • private rights and access and benefit sharing
    • protection of traditional knowledge associated with genetic resources
  • Intellectual property as context for the bioprospecting review - separate reform exercises

Slide 2: Outline - 1

  • Introduction to New Zealand's intellectual property rights framework
    • Patents Act 1953
    • Plant Variety Rights Act 1987
  • Acquisition of intellectual property rights as part of a bioprospecting project
    • what is patentable?
    • benefit sharing and IP clauses in access contracts

Slide 3: Outline - 2

  • International dimensions (WIPO and others)
    • intellectual property and genetic resources - access and benefit-sharing - sovereignty and private rights
    • intellectual property and the protection of traditional knowledge associated with genetic resources
    • concerns about patenting of life-forms and inventions based on traditional knowledge
    • suggested approaches

Slide 4: What is Intellectual Property?

  • A range of property rights accorded to "creations of the mind" - resulting from intellectual activity in the industrial, scientific, literary or artistic fields

(Convention Establishing the World Intellectual Property Organisation)

Slide 5: New Zealand's Intellectual Property Framework - 1

  • Patents Act 1953 (under review)
  • Plant Variety Rights Act 1987 (under limited review)
  • Trade Marks Act 2002 (soon to come into force)
  • Designs Act 1953
  • Copyright Act 1994
  • Layout Designs Act 1994 (semi-conductors and integrated circuits)

Slide 6: New Zealand's Intellectual Property Framework - 2

  • Geographical Indications Act 1994
  • Minimum standards in international agreements (e.g. WTO TRIPS)

Slide 7: Patent Protection

  • Exclusive rights granted to control the production/marketing of inventions
  • Requirements for the grant of a patent (int.):
    • new (novelty)
    • not obvious (inventive step)
    • useful (capable of industrial application)
  • New Zealand - "new" plus "manner of new manufacture". Lack of usefulness and inventive step are grounds for revocation

Slide 8: What Can't Be Patented? - 1

  • Products of nature/new substances when found in nature (s10)
  • Where use contrary to morality
  • Human beings do not come within the definition of invention
  • Bare principles, schemes, plans, methods of medical treatment of human beings etc
  • Boundaries of patentability currently under review

Slide 9: What Can't Be Patented? - 2

  • Article 27(3)(b) TRIPS - members may exclude plants and animals (other than micro-organisms) and biological processes for their production (but not non-biological processes or microbiological processes)
  • Must have some form of protection for plant varieties (patents and/or sui generis)

Slide 10: What Can Be Patented? - 1

  • New products and manufacturing processes
  • Improvements to existing products and processes
  • New methods or processes relating to the testing or control of existing manufacturing processes
  • Electrical devices and circuits
  • Computer technology and software

Slide 11: What Can Be Patented? - 2

  • New chemical compounds or compositions
  • Biotechnological matter
  • A second pharmaceutical use for a known chemical compound or composition

Slide 12: Rights of Patent Owners

  • Exclude others from making, using or selling the patented invention for 20 years
  • In return for full public disclosure of invention and contribution to public domain at expiry of patent term
  • Protection only in New Zealand unless applications made to other national patent offices (note PCT)

Slide 13: Plant Variety Rights

  • Plant Variety Rights Act 1987
  • Protection for varieties that are "new, distinct, homogenous, and stable"
  • Can include new varieties found in nature cultivated with above characteristics
  • Exclusive rights to produce for sale and to sell reproductive material of the variety
  • Patents also available for plants (if meet criteria)

Slide 14: IP Rights and Bioprospecting - 1

  • IP a potential benefit in a bioprospecting research project (low hit rate)
  • Stage one - discovery and collection of biological materials/substances
    • no intellectual property, no invention, no patents for micro-organisms which occur in nature found in their natural state

Slide 15: IP Rights and Bioprospecting - 2

  • Stage two - screen for useful properties, isolate, purify and describe new chemical structures (e.g. antibiotic, insecticidal or anti-tumour properties of biological materials collected)
  • Stage three - apply for patent re biological material which has useful properties
  • Product development, manufacturing and marketing of final product may follow (assuming investment and uptake)

Slide 16: Sharing the Benefits - IP Clauses in Access Contracts - 1

  • Contractual agreements a common tool to regulate access
  • Can determine how benefits will be shared including how down-stream IP rights will be dealt with
  • To recognise contributions of land-owners, indigenous peoples and other holders of traditional knowledge

Slide 17: Sharing the Benefits - IP Clauses in Access Contracts - 2

  • e.g. material transfer agreements (MTAs)
  • IP clauses can reflect a range of policy objectives (conservation, food security, stakeholder interests)
  • May be at the discretion of the parties or a requirement of national bioprospecting/ABS frameworks

Slide 18: Common IP-Related Clauses

  • Utilisation of material for research purposes only (no commercialisation)
  • Obligation not to file for patent
  • IP rights to be shared by the parties
  • Royalty sharing where successful commercialisation occurs
  • IP rights in derivative material
  • Grant-back licences
  • Defer publication of discoveries

Slide 19: Non-IP Benefits (e.g.)

  • Up-front monetary payments
  • Research funding
  • Salaries or infrastructure funding
  • Participation in research activities
  • Support for conservation projects
  • Capacity building
  • Assistance with preservation/recording of traditional knowledge

Slide 20: International Context - IP, Genetic Resources and Traditional Knowledge - 1

  • Concerns about the grant of IPRs over genetic material, the impact on access and the lack of benefit sharing
    • protection of biological and genetic heritage
    • potential inconsistency with ABS requirements of CBD
    • declaration of origin of source country, prior informed consent
    • calls to ban the patenting of all life-forms
    • grant of patents without novelty or inventive step

Slide 21: International Context - IP, Genetic Resources and Traditional Knowledge - 2

  • Concerns about the exploitation of bio-diversity related traditional knowledge and the grant of IPRs to third parties for biotech inventions based on traditional knowledge
    • lack of novelty and inventive step
    • prior informed consent
    • no recognition of contribution or benefit sharing

Slide 22: Intergovernmental Organisations and IP

  • World Intellectual Property Organisation (WIPO) Intergovernmental Committee
  • Convention on Biological Diversity (ABS, Bonn Guidelines and Article 8(j))
  • World Trade Organisation (WTO) TRIPS Council
  • UNESCO, UNCTAD, WSSD, UNCHR, ILO, WHO, UNEP, FAO, APEC, CW and others

Slide 23: WIPO - 1

  • Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore
    • access to genetic resources and benefit sharing
    • the protection of traditional knowledge, whether or not associated with genetic resources
    • the protection of expressions of "folklore"

Slide 24: WIPO - 2

  • Genetic resources:
    • contractual agreements for access to genetic resources and benefit sharing
    • on-line database of actual IP-related clauses and practices
    • development of guide contractual practices, guidelines and model IP clauses
    • draft study re technical disclosure requirements in patent law (origin, prior informed consent)

Slide 25: WIPO - 3

  • Traditional knowledge (bio-diversity related):
    • examination of availability of IP protection for TK-holders (existing and sui generis);
    • defensive measures to prevent grant of IPRs to third parties over TK-based creations and innovations e.g. TK as prior art, inventories of periodicals and databases, documentation toolkit

Slide 26: Conclusion

  • Bioprospectors may be able to acquire IPRs for inventions based on biological substances
  • As a condition of an access contract, agreements may be reached about sharing the benefits resulting from obtaining a patent or any eventual commercialisation
  • A bioprospecting framework may require ABS contracts of this kind
  • There have been calls internationally to link ABS regulations to patent laws (e.g. origin of source, prior informed consent)
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