Transcript Disclosure of Origin – towards equity or another exercise in futility? Brendan Tobin UNU-IAS COP 8 Side event Disclosure Requirements in Patent Applications ICTSAD, UNU-IAS, IDDRI, CPDR,

Disclosure of Origin – towards
equity or another exercise in
futility?
Brendan Tobin
UNU-IAS
COP 8 Side event
Disclosure Requirements in Patent Applications
ICTSAD, UNU-IAS, IDDRI, CPDR, Chatham House.
Outline
• Arguments for disclosure
• Form of disclosure requirements
• Are disclosure requirements compatible
with international law
• Resistance to Disclosure
• Potential Role of Certificates
• Devil in the detail
Arguments for Disclosure
• Policing use of genetic resources and TK
is beyond the capacity of developing
countries and communities
• Need for incentives to promote compliance
with ABS laws and rights over TK
• Disclosure supports transparency
• Disclosure would shift the burden of proof
regarding rights to use genetic resources
and TK from the provider to the user
• Use a market tool to control market use
Disclosure and International law
• Disclosure is at the heart of IP law
• Requirement of disclosure of use of
genetic resources or TK in patent
applications is ok.
• Obligation to include evidence of a legal
right to use resources in patent application
may be ok.
Disclosure
• Requirements:
– Declaration regarding use of genetic
resources and/or TK
– If yes - provide evidence of PIC
• Potential checkpoints
– Patents
– Product approvals
– Publications
Resistance to disclosure
• Disincentive to invest in R & D
• Majority of patents don’t involve use of
genetic resources
• Difficult to identify the origin of resources
• Patent offices don’t have capacity to
identify whether national ABS laws have
been complied with.
• Determining equity of benefit sharing is
beyond the remit of patent offices.
Defining a way out of disclosure
• Direct use
• Exclude all indirect use?
e.g for identification of
valuable proteins
• Immediate use
• Excludes all uses in the
future - technologies
allow for storage for 50 +
years
• Access to genetic
material
• Excludes use of
derivatives bioinformatics
Some ideas on disclosure
• Origin/ source/ source legal provenance
• Prior informed consent – may be
evidenced by compliance with ABS law
• Fair and equitable benefit sharing –is
evidence of MAT enough?
• If not will this requirement undermine legal
certainty and serve as a disincentive to
use?
Role of Certificates of origin
• Need for simplified mechanism to
demonstrate the origin of resources
• Means for tracing genetic resource flows.
• Act as evidence of prior informed consent.
• Proposals now exist for alternatives such
as certificates of source and legal
provenance.
Certificate schemes
• Origin
• provided by country of
origin – evidence PIC
• Legal provenance
• Provided by resource
collection or other
intermediary with legal
title to resources
• Source
• Evidence of provider but
does not evidence a legal
right for commercial use.
Trade offs
• What will countries be required to give up to get
disclosure requirements
• If WTO is not likely to adopt adequate DR - bring
the issue back to CBD. Decision 6/24C
• Danger of a disclosure system which would
establish limits on what can be done,
• Better no agreement than a weak one.
• May require revision of advanced legislation
such as Decision 486 of the Andean Community