Beyond TRIPs: Protecting Communities' Knowledge

By Carlos M. Correa Universidad de Buenos Aires

The need to develop some form of protection of communities' knowledge has gained growing recognition in the last ten years. The adoption of the Convention on Biological Diversity gave impetus to this idea, by establishing the obligation to "respect, preserve and maintain knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity..." (article 8 j).

Many approaches and proposals have been developed to deal with communities' knowledge, ranging from the creation of new types of intellectual property rights (IPRs) to the simple option of legally excluding all forms of appropriation, be it under patents, breeders rights or other modalities of IPRs.

Despite the variety of existing suggestions, little has been actually done to stop the appropriation by means of IPRs of outcomes of communities' knowledge, as illustrated by the patents granted with respect to the neem tree, the Bolivian quinoa, the Amazonian "ayahuasca" and many other materials useful for agriculture or medicine.

The purpose of this contribution is to examine the compatibility of an eventual regime for the protection (or against the misapropriation) of communities' knowledge with existing IPRs regimes and, particularly, with the set of standards adopted, in 1994, under the Agreement on Trade Related Aspects of Intellectual Property Rights (the "TRIPs Agreement").

Recognizing Communities Rights

Only a few countries have so far started to address the complex conceptual and operational problems involved in the recognition of communities' rights on their knowledge. One step forward has been given by some countries that require communities' consent to provide access to genetic resources found in their territories.

Philippines approved Executive Order No. 247 (18.5.95) "Prescribing Guidelines and Establishing a Regulatory Framework for the Prospecting of Biological and Genetic Resources, their By-products and Derivatives, for Scientific and Commercial Purposes, and for Other Purposes". The Order is based on the Philippine Constitution principle which vests in the State the ultimate responsibility to preserve and protect the environment. The Constitution provides that wildlife, flora and fauna, among others, are owned by the State and the disposition, development and utilization thereof are under its full control and supervision.

The Order establishes a framework to regulate biodiversity prospecting on the basis of a system of Research Agreements between collectors and the government containing terms concerning provision of information and samples, technology cooperation and benefit-sharing and, among other conditions, the requirement that collectors obtain prior informed consent from local and indigenous communities.

The Order distinguishes the rights in accordance to the type of community. In the case of local communities, prospecting of biological and genetic resources shall be allowed only with their prior informed consent. In the case of indigenous communities, the Order specifies that prospecting shall be allowed "within the ancestral lands and domains of indigenous cultural communities only with the prior informed consent of such communities; obtained in accordance with the customary laws of the concerned community".

In the Andean Group a "common regime" on "access to genetic resources" has been recently adopted (Decision 391 (17.7.96). The regime applies to all genetic resources for which one of the Andean Group countries is country of origin, excluding human genetic resources and resources exchanged by local, Afroamerican and indigenous communities among themseleves, in accordance to their own practices (article 4).

Member countries recognize communities' rights and the faculty to decide with respect to their knowledge, innovations and traditional practices associated to genetic resources and derivative products (article 7).

An interesting provision states that Member countries shall not recognize intellectual property rights over genetic resources, or their derivatives or associated intangible components, when access took place in contravention to the common regime. The affected Member country can request the cancellation of granted titles (Supplementary provisions, No. 2). In addition, national offices competent in the area of intellectual property rights, shall require proof of the approval and registration of an an access contract, if they have reasons to beleive that the products or processes for which protection is sought, have been obtained or developed on the basis of genetic resources under the jurisdiction of Member States.

In Ecuador, a law has been approved by the Congress in September 1996 which declares that the State holds "property rights over all species" that constitute the country's biodiversity. Such species shall be deemed as "national goods of public use", and shall be subject to "special regulations to be decreed by the President of the Republic, guaranteeing ancestral rights of indigenous communities over intangible knowledge and components of biodiversity and of genetic resources and control over them" (article 1).

These regimes do empower the communities to participate in the process of admission of access requests, but do not intend to create any type of rights in the knowledge or materials under the communities' control. There is no inconsistency, hence, with existing IPRs, or with the TRIPs Agreement. The Philippines Executive Order provides for the granting of compulsory licenses in case the knowledge or materials which are obtained are patented. Such licenses are explicitly permitted under the TRIPs Agreement, article 31 (Correa, 1994a).

Patent applicants are obliged to describe their inventions and to specify why they are deemed not to be included in the "state of the art". Similarly, applicants of breeders' rights need to demostrate that what they claim as a "new" variety is distinct from pre-existing materials. These requirements are also compatible with internatinal rules (TRIPs Agreement and UPOV Convention), since these obligations do not limit the right to obtain patents or breeders' rights or to enforce them. In accordance to one study, patent applications involving plants normally include an indication of the country of origin of the plant (CBD Secretariat, 1996).

The obligation to inform what is the origin of the germplasm used and improved, may the basis of a right to a compensation in the benefit of the concerned communities. This is, in fact, one of the options opened to national legislation to deal with this issue (Correa, 1994b).

Will such a compensation be incompatible with patents or breeders' rights? Both types of IPRs confer negative rights (i.e. the right to exclude third parties from using the invention/plant variety) and, in this sense, the inventor/breeder is not the "owner" of his/her creation but just the holder of the right to prevent--for a limited period--the use of that creation by others, without his/her consent.

The granting of such exclusive rights is not inconsistent with an obligation to provide a compensation to those that contributed to the development of an invention or new variety. A parallel can be made with the case of employees' inventions. In many countries, despite that an invention made under a labor relationship belongs to the employer, employees that participated in the development of the invention, are entitled to a compensation. One of the best known and perhaps most effective systems of rewarding employee's inventiveness, has been established in Germany (Orkin and Strohfeldt, 1992).

Some proposals to deal with communities' rights have gone further than a right to a compensation, and imply the creation of a new, sui generis, form of protection. Such is the case of a draft bill by the government of Thailand which would recognize rights to traditional healers and medicinal genetic resources. The draft is based on the concept of "collective rights" which is gaining growing support among non-governmental organizations and researchers working on communities issues. The Thai proposal seems to include the registration of traditional medicines and some form of benefit-sharing in case medical or scientific researchers make commercial use of the protect knowledge.

The Thai Proposal Challenged

This proposal has encountered an early and unexpected challenge by the USA government, which officially requested in April the Thai government to explain what is the relationship of the proposed rights to the granting of patent and plant variety protection in Thailand (Biotalk, 1997). The US government asked wether registration of practices that may have been integrated into Western commercial ventures will be applied retroactively, and whether the Thai government has determined who would be permitted to register a traditional medicine, i.e.the leader of a group, a practitioner, or other individual. The US also required clarification on whether the registration of the same traditional medicine by two unrelated and possibly competing Thai applicants--who may not be filing at the same time, but would be in posession of the same compound--would be allowed.

In the communication to the Thai government, the U.S. government has also suggested that to the extent that only Thai nationals will be able to take advantage of the registration process under the proposal, the latter could violate the WTO's national treatment provisions.

The main concern of the U.S. government relates to whether the proposed legislation would i) restrict access to traditional knowledge; ii)imply costs for U.S. researchers and companies; and iii) jeopardize existing pharmaceutical patents based on compounds or knowledge derived from traditional medicine.

The paradox is that U.S. has pioneered the extension of IPRs in a whole range of new areas, paying little attention to the interests of the users of the newly protected matter or to the interests of other parties. Thus, the U.S. introduced for the first time a sui generis protection for the design of integrated circuits, and was also in the front line to recognize patents on DNA constructs, genes, cells of any living being (including humans) as well as on plants and animals as such.

The USA--following in this case a move initated by Europe--has also advocated the limitation of the fair use exception for copyrighted digital works and the protection of non-original databases, thus expanding the scope of protection in jeopardy of the interests of scientists and simple users of digitized information (Reichman and Samuelson, 1997).

In order to expand IPRs protection, the national treatment principle has been ignored. When the Semiconductor Chips Protection Act was adopted by the U.S. in 1984, it included a stringent reciprocity clause: no foreigner would be able to obtain protection of a chip design in the USA if his country of origin did not grant a protection equivalent to the one conferred in the U.S. (Correa, 1990).

An important derogation to the national treatment principle can be also found in Europe. Foreign authors and artists cannot participate on the same footing as nationals in the distribution of revenues from video and audio levies. A similar system has been developed recently in Canada, in order to support its "cultural" industry.

A TRIPs Consistent Proposal

A proposal--like the Thai draft legislation--to create a new modality of protection in favour of indigenous/local communities, does not violate any international convention and particularly, is not inconsistent with the TRIPs Agreement. Several arguments ground this assertion.

First, as mentioned before, communities' rights have been recognized by the CBD, an internationally binding instrument. They can be implemented by national laws in accordance to the applicable legal systems and practices.

Second, at least some aspects of communities knowledge may be protected as "works of folklore", in accordance with the UNESCO/WIPO "Model Provisions for National Laws for the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions". This type of protection has been implemented in several countries, and so far no questionning about its legitimacy has been reported.

Third, the TRIPs Agreement sets forth the minimum standards of protection in most, but not all, areas today recognized as components of the field of "intellectual property". For instance, the TRIPs Agreement does not prevent any WTO Member to protect utility models, though they are not dealt with by the Agreements. Such models are currently protected in Japan, Germany, Spain, Mexico, Brazil, Argentina, just to mention a few countries. They apply to the functional aspect of the form given to an industrial product.

Fourth, nothing in the Agreement prevents to create new types of IPRs, or to provide a more extensive protection to existing IPRs (article 1).

The Agreement is not the last word on IPRs. A good illustration is that the European Union has recently approved a Directive (Directive 96/9/EC on the Legal Protection of Data Bases) creating a new sui generis right for data bases, and the U.S. is pushing for the adoption of a treaty on the same matter, currently under negotiation within the World Intellectual Property Organization (WIPO).

Fifth, the national treatment only applies to the IPRs explicitly covered by the Agreement, with the exceptions allowed by the applicable international conventions. Rights not covered by the TRIPs Agreement are not subject to the Agreement's principles and rules.

In sum, any WTO Member may provide protection beyond the TRIPs Agreements standards, and is fully empowered to create new titles of IPRs, or new forms of protection, to the extent that this does not diminish or neutralize the protection to be granted in the areas covered by the Agreement.

If such a new title or form of protection were established and a WTO Member did not apply the principle of national treatment, there would be no violation of the TRIPs Agreement or of any other international instrument.

Conclusions

The development of a new regime to cover medicinal plants or other expressions of indigenous/traditional knowledge, faces significant difficulties, relating to the nature, scope and effects of the rights to be conferred, the determination of beneficiaries, and the enforcement of rights both domestically and internationally.

The design of new forms of protection for communities' knowledge is not incompatible with the TRIPs Agreement. Moreover, initiatives to create new rights or expand those granted in existing areas may be seen as an outcome of the paradigm that developed countries wished to universalize through the TRIPs Agreement, i.e. that valuable knowledge should not be misappropriated or used without the consent of those who created it.

There is, hence, sufficient ground and justification to establish a misappropriation regime with respect to communities' knowledge, not necessarily based on the concept of "property" but on a right to condemn illegal modes of acceding and using such knowledge. There is nothing in the international rules in force that may prevent a country to implement a new legal regime based on that concept.

References

Biotalk, 21 May 1977.

CBD Secretariat, (1996), The Impact of Intelectual Property Rights Systems on the Conservation and Sustainable Use of Biological Diversity and on the Equitable Sharing of Benefits from its use, UNEP/CBD/COP/3/22.

Correa, Carlos, (1990), "Intellectual Property in the Field of Integrated Circuits: Implications for Developing Countries", World Competition, Vol.14, No.2.

Correa, Carlos, (1994A), "The GATT Agreement on Trade-Related Aspects of Intellectual Property Rights: New Standars for Patent Protection", European Intellectual Propert Review, vol.16, Issue 8.

Correa, Carlos, (1994B), Sovereign and Property Rights over Plant Genetic Resources, FAO, Commission on Plant Genetic Resources, First Extraordinary Session, Rome.

Orkin, Neal and Strohfeldt, Mathias, (1992), "Arbn Erf G--the answer or the anathema?, Managing Intellectual Property, October.

Posey, Darrell A. and Dutfield, Graham, (1996), Beyond Intellectual Property. Toward Traditional Resource Rights for Indigenous Peoples and Local Communities, International Development Research Centre, Ottawa.

Reichman, J.H., (1997), "Intellectual Property Rights in Data?", Vanderbilt Law Review, vol. 50, No.1.