It has been exactly one month since IP History was made. Early in the morning of 24 May 2024, and after 25 years of discussion, the 193 member states of WIPO adopted a Treaty that would require patent applicants to disclose the country of origin or source of genetic resources and/or the Indigenous Peoples or local communities involved in providing traditional knowledge associated with an invention. Marion Heathcote, Chair of the MARQUES IP Emerging Issues Team, examines its significance.

The culmination of an intense two-week Diplomatic Conference, the negotiated Treaty on Intellectual Property Genetic Resources and Associated Traditional Knowledge (GRATK/DC/7 Prov) is significant for the rareness of a multilateral agreement, the collective acknowledgement of the importance of retaining biodiversity integrity and that it recognises the existence of genetic resources and traditional knowledge as being associated with Indigenous Peoples and local communities within the construct of the IP protection system.

Important stepping stone

Heralded as ‘historic’ and labelled ‘landmark’, this Treaty does not present an ultimate solution, but is an important stepping stone on the path to more fully recognising the existence of Indigenous Cultural and Intellectual Property (ICIP) and the rights of Indigenous Peoples and local communities in it.

While previous international instruments, most notably the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity, have recognised the need for permissions from their holders to ‘use’ genetic resources and traditional knowledge, the lack of any uniform disclosure requirements within the patent system has meant that while genetic resources themselves cannot be patented the information/knowledge derived from such ‘use’ can form the basis for the patentable subject matter of others.

Given that much information/knowledge on ‘use’ by its very nature is passed on in non-written form, the options for challenge have been limited. Seen as a collective response to curbing ‘bio piracy’ and improving transparency within the patent system, the Treaty is directed at a uniform patent disclosure requirement as well as the creation of information systems around genetic resources and traditional knowledge.

Treaty provisions

Under the Treaty, patent applicants will be required to provide the country of origin or, if not known, the source of any genetic resources upon which the claimed invention is based.

Where an invention is based on traditional knowledge associated with genetic resources, the patent applicant will be required to disclose the Indigenous peoples or local community, as applicable, who provided the traditional knowledge associated with genetic resources or, if not known, the source of the traditional knowledge associated with genetic resources. The applicant provides this information by way of a declaration based on their best knowledge.

The consequences of non-disclosure anticipated by the Treaty are limited and do not extend to patent invalidation nor inability to enforce. Remedial measures for failure to disclose are otherwise at the discretion of the contracting countries although it is anticipated there will be legal and administrative sanctions.

There is no requirement on the applicant to validate information sources. Failure to disclose can be rectified although there is no retroactivity: the disclosure requirement will not apply to patent applications filed before the Treaty enters into force.

Information systems

In an effort to facilitate patent examination and ensure patents are not granted erroneously for inventions that are not novel or inventive, the Treaty allows for the establishment of ‘information systems’ in consultation with Indigenous Peoples, local communities and other stakeholders.

Superficially logical and notwithstanding referencing ‘appropriate safeguards’, the practical implementation and potentially unprecedented access to traditional knowledge and indigenous cultural IP, some of which is secret and sacred, that such a system could enable means that this as an ideal will require much more consideration and will be influenced by the previous experiences of Indigenous Peoples and local communities.

The creation of any ‘information system’ also needs to be considered in the context of Article 31.1 of the UN Declaration on the Rights of Indigenous Peoples (UNDRIP) which gives indigenous peoples ‘the right to maintain, control, protect and develop their intellectual property over such cultural heritage , traditional knowledge and traditional cultural expressions’.

Role of Indigenous Peoples and local communities

That the Treaty anticipates Indigenous Peoples and local communities will have a role within its implementation and ongoing operation is of itself significant. Article 31.2 of the UNDRIP does require that the effective measures of States to protect and recognise the exercise of indigenous IP be done in conjunction with indigenous peoples.

In this regard it is important to recall that, while an Indigenous Caucus has been present throughout the years of deliberations and at the diplomatic conference, the Treaty negotiations were conducted among the WIPO Member states who within their own corps may have included Indigenous Peoples and representatives of local communities.

All representations by members of the WIPO Indigenous Caucus to the conversation were as an NGO (supported by the WIPO Voluntary Fund) and not with independent capacity.

It is anticipated that member states will utilise the opportunities afforded by this Treaty to increase Indigenous Peoples’ engagement where not already begun. For some countries already on the journey and/or who have already enhanced national disclosure requirements, the new Treaty may not lead to major changes.

The noteworthiness of the Treaty is in that it represents a collective move towards the recognition within the traditional IP systems of ICIP and that adaptations to accommodate might be possible. As WIPO Director General Daren Tang observed: “Through this, we are showing that the IP system can continue to incentivize innovation while evolving in a more inclusive way, responding to the needs of all countries and their communities.”

Whether this ultimately is appropriate or possible requires engagement with Indigenous Peoples and local communities as the ultimate custodians of that property. The Treaty provides a significant discussion step.

Next steps

The Treaty will enter into force three months after 15 WIPO member states have deposited their instruments of ratification or accession. The contracting parties also need to commit to a review of the Treaty four years after it enters into force.

In the meantime, WIPO has already diarised that the IGC will meet again on 29 November 2024 to take stock of the progress made on Genetic Resources and Traditional Knowledge associated with Genetic Resources and to discuss any issues arising from the Diplomatic Conference.

Negotiations will continue shortly thereafter (2 to 6 December 2024) on Traditional Knowledge and/or Traditional Cultural Expressions with a focus on addressing unresolved and cross-cutting issues and considering options for further draft legal instruments.

Marion Heathcote is a partner of Davies Collison Cave in Australia and Chair of the MARQUES IP Emerging Issues Team

Photo: Emmanuel Berrod/WIPO