• A/Prof Daniel Robinson (UNSW Australia; ABS Initiative Pacific Regional Manager)

• Dr Margaret Raven (UNSW Scientia Fellow)

The Nagoya Protocol, Access and Benefit-Sharing

and T. ferdinandiana/gubinge/Kakadu plum

Gubinge or billygoat plum

Contents

• Patents and ‘Kakadu Plum/Terminalia’

• The Nagoya Protocol

• Prior informed consent

• Benefit-sharing

• Intellectual Property

• Indigenous knowledge futures – the ARC Discovery project

• Biocultural community protocols

• Collaborations

Brief discussion:

• If a researcher comes to your land and asks to collect some plants,

what would be your response?

• If the researcher asks what the traditional uses of that plant are,

what would you say or do?

• ‘Kakadu plum’: 78 patents (of 25

patent families) – majority Mary

Kay Inc.

• ‘Terminalia ferdinandiana’: 49

patents (of 26 patent families)

– Mary Kay patents

– Rising Phoenix applications

(Australian/world).

• Trademark filings for the name

‘Kakadu plum’

Patent hits for ‘Kakadu plum’:

‘Kakadu Plum’ in Abstract, Title, Claims

Patent Lens, accessed 14/3/2019

19 January 2007: International patent filed by

Mary Kay Inc.

2009: National Phase in Australia under

Australian patent number 2007205838.

2009: Preliminary bush food/medicine patent

mapping identifies patent.

2010: Filed a S27 submission of evidence after

discussing with IP Australia and Indigenous orgs.

8 December 2010: IP Australia rejects the patent

application.

2011: Mary Kay Inc withdrew/let it lapse.

Kakadu Plum/Gubinge/Mi Marrarl Patent Timeline:

Nagoya Protocol to the Convention on Biological Diversity (CBD)

• Focuses on ‘access to genetic resources and benefit-sharing’ (ABS).

• Access (prior informed consent and permit) and benefit-sharing requirements.

• Adopted October 2010, in force 2014.

• 110 countries ratified.

• Australia has only signed. The CBD COP 10 logo,

www.cbd.int ,

14/3/2011

ABS Simply Explained:

http://www.abs-initiative.info/media-

publications/multimedia/

Scope

• Genetic resources (e.g. plants, animals and

microbes) and the benefits arising from the

utilization (through R&D) of these resources

(including biochemicals)

• Traditional knowledge associated with

genetic resources and the benefits arising

from the utilization of such knowledge

Nagoya Protocol on Access and Benefit Sharing (ABS):

Art. 6 – Access to genetic resources (GRs)

• based on Prior informed consent (PIC), including PIC of

Indigenous and local communities where they have

‘established rights to grant access’

• Competent national authority to issue for access a

permit as evidence of PIC and Mutually Agreed Terms

(MAT) and notify the ‘Access and Benefit-Sharing’ (ABS)

Clearing-House

The Nagoya Protocol: Access to GR

Art. 7 – Access to Traditional Knowledge associated with GR

In accordance with domestic law based on PIC of and

mutually agreed terms (MAT – means negotiated

agreement) with Indigenous peoples and local communities

(IPLCs) .

The Nagoya Protocol: Access to aTK

Art. 12.3 – TK associated with GR

• In accordance with domestic law take into consideration

Indigenous peoples customary laws, community protocols and

procedures with respect to aTK

• Parties shall support the development of

• Community protocols for access/PIC to aTK

• Model MAT – contracts/clauses

• Not restrict customary use

The Nagoya Protocol: Access to aTK

• BS from the utilization of GR

(R&D) and subsequent

applications and

commercialization based on

MAT

• Includes monetary and non-

monetary benefits

• BS from the utilization of TK

associated with GR with IPLCs

based on MAT.

The Nagoya Protocol: Benefit-sharing

Art. 5 - Fair and equitable benefit-sharing (BS)

Mutual Agreed Terms (MAT)

13

Access & Benefit Sharing (ABS)

Conceptual model currently being discussed with NAAKPA stakeholders

Prior informed Consent (PIC)

Traditional Owners

Lands Trust

Parks & wildlife

Non-R&D

R&D Biological resource

Aboriginal Enterprise

Horticulture Code

MAT/ABS Agreement

ABS Agreement

• Retailers• Processors• Manufacturers• Wholesalers• Researchers• Product Dev.• Consumers

Commonwealth: Environmental Protection and Biodiversity Conservation

Regs (2006) Part 8A.

Northern Territory Biological Resources Act (2006)

Queensland Biodiscovery Act (2004)

Western Australia Biodiversity Conservation Act (2016) and Regulations.

Australian ABS Laws:

• Permit application made prior to collection of the resource, to the CEO of

appropriate authority.

• Resource access provider provides access to a biological resource, PIC

required of the provider and negotiation of BS: Section 6.

• Providers can be:

– the Territory (Crown land, Territory Waters;

– pastoral leases etc);

– owner of the fee simple (freehold);

– Aboriginal land the owner of the fee simple (Aboriginal Land Trust);

– native title exclusive possession (native title body corporate).

• Weak on TK, except if explicitly part of ‘access’.

Northern Territory Biological Resources Act (2006)

• Applies to access to biological resources in C’th

lands.

• Commercial and non-comm permits must be applied

for with Dept of Environment.

• A statutory declaration is made (prevents change of

intent).

• Access provider is usually the C’th, but requires

native title holder permission to a BS agreement (Art

8A10(1)).

• Detailed section on use of TK, indication of its

source, and requires BS (Article 8A 08).

Commonwealth: Environmental Protection and Biodiversity

Conservation Regs (2006) Part 8A.

• Several products on the market – food

& cosmetics. Uninhibited to date by

the US patent. Mostly local market.

• How to support and promote the local

enterprises?

– Better ABS laws

– Biocultural community protocols

– Fair trade/labelling

– Intellectual property (?)

Gubinge:

Intellectual property options:

• ABS provides a non-IP ‘compensatory framework’ solution.

• Patents with joint-ownership (e.g. Chuulangun Aboriginal Corporation,

CIMTECH).

• ‘Biopiracy’ concern: domestic patent re-examinations – can be free or cheap

• Trade secrets?

• Geographical indications – maybe in the long term.

• Pressure IP Australia about a ‘disclosure of origin’ patent requirement for

plants/animals.

• Develop unique ‘Indigenous knowledge laws’?

Species name Indigenous or Australian common

name

Number of

Patents

No. of patents that

mention ‘Australia’

Approx. Known

distribution

Morinda citrifolia Ko-on-je-rung, Morinda, Indian

Mulberry

314 50 N. Australia, Asia,

Pacific

Portulaca oleracea Munyeroo, Purslane, Pigweed 253 55 Widespread

worldwide, weedy

Nelumbo nucifera Muwulngini, Red lily, Lotus lily,

Sacred lotus

200 18 Northern Australia, E.

Asia

Nicotiana

benthamiana

Tjuntiwari, Muntju 80 25 NW and central

Australia

Melia azedarach Dygal, Dtheerah, Kilvain, White

cedar, Cape lilac , Chinaberry

76 8 N. Australia, Asia,

Pacific

Centipeda minima Gukwonderuk, kandjirkalara,

kankirralaa Spreading sneezewood

61 2 Africa, Asia, Australia,

Pacific

Ocimum sanctum Sacred basil, Mooda, Bulla-bulla 57 23 N. Australia, Asia,

Malesia

Brucea javanica Brucea fruit, Macassar Kernels 43 4 N. Australia, Asia,

Malesia

Asparagus

racemosus

Asparagus Fern, Native Asparagus 30 13 N. Australia, Asia,

Malesia

Pongamia pinnata Napum-napum, Karum, Indian

beech

30 23 N. Australia, Asia,

Malesia

Wikstroemia

indica

Bootlace Plant, Settler's Bootlace,

Tie Bark, Tie Bush

28 0 N. Australia, Asia,

Malesia, Pacific

Boerhavia diffusa Common Spiderling, Giotcho,

Hogweed, Tah Vine, Tar Vine

27 5 Worldwide tropics

Euphorbia hirta Queensland asthma plant, Snake

weed

24 59 Worldwide tropical

and subtropical

Nicotiana

excelsior

Giant Tobacco, Shiny-leaved Native

Tobacco

20 26 Central Australia

Calophyllum

inophyllum

Alexandrian Laurel, Beach

Callophyllum, Indian Doomba Oil

tree

17 10 N. Aust, widely in

tropics, West Africa,

Pacific.

Table 1: Top 15 ‘Patent Hit’ Counts by Species Name with known Indigenous Australian Uses.

Source: WIPO Patentscope (http://patentscope.wipo.int/search/en/result.jsf) analysis of ‘front page’ and ‘full text’ conducted

by the author and colleagues. Names from Atlas of Living Australia, CABI, TRIN.

ARC Project:

Indigenous Knowledge Futures

Timeline

• 5 years (2018-2022)

Locations

3 countries

• Australia (Northern)

• Vanuatu

• Cook Islands

Indigenous Knowledge Futures

Futures

• Knowledge is not static, the political/legal space

is moving, promotion as important as protection.

Bio-cultural approach

• Recognises links between culture and country,

Dreamings and nature/plants/animals.

• Aim to control incoming researcher/

company/ third party behaviour and

practices

• For engagement, research/work with

community

• ‘Bridging tools’ between custom and state

law

• Biocultural statement of values, intent and

action from Indigenous peoples and local

communities

What are biocultural community protocols?

Big Bay, Santo, Vanuatu

What are biocultural community protocols?

• Enables legal recognition as

attachments to contracts or sui

generis laws (ABS laws?).

• Examples mostly from Africa and

Asia. (e.g. Gunis)

• Usual process for development –

– Data collection,

– Workshopping/forum,

– Community comment,

– Publish

– Adopt

BCP of the Guni Traditional

medicine farmers of Mewar

includes: bio-spirituality,

FPIC, sustainable use, ref to

their rights under Indian

laws, etc.

Open to collaboration

&

supporting local initiatives

Funders/Partners – Direct and Indirect

Core Agencies/PartnersIndirect Partners

Funded by:

Sources for Further information

• ABS Initiative http://www.abs-

initiative.info/

• IUCN ABS books, manuals etc:

https://www.iucn.org/theme/environment

al-law/our-work/access-and-benefit-

sharing

Patents on Emu Oil:

• To identify ‘biopiracy’ (see Robinson,

2010) and commercial/research uses

of a species, we conduct patent

landscaping or patent mapping.

• We search species names as

keyword in Patent Lens, a multi-

jurisdictional free patent search tool.

• We then plot the data and identify

case studies of patents ‘of concern’

relating typically to endemic species.

Patent Publications by Year Citing “emu oil” in Patent

Title, Abstract or Claims.

Source: Patent Lens, https://www.lens.org/ (12/10/18) using

structured search and analysis tools for “emu oil.”

Method flow chart

List plants from texts

Search patent records

(title abstract or claims)

Filter records further and ID

patents of interest

Record country, applicant name,

field etc.

1. Patent Lens ‘structured’ search, by analysing “emu oil” in patent title,

abstract or claims, we get: 531 patent results from 260 patent

families. used texts to ID species endemic or near endemic to NZ2. Data is still under review

• Narrower search of patent title,

abstract and claims for “emu oil.”

• We identified 46 Patent Results from

19 patent families.

• Because “emu oil” is mentioned in all

categories, there is little doubt that

these patent holders or applicants are

claiming or seeking monopolies over a

product based on “emu oil” in some

substantive sense.

Refined search:

Patent Lens. Used with Permission, https://www.lens.org/ (12/10/18)

References:

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 (2010): https://www.cbd.int/abs/text/

Robinson, D.F. (2015) Biodiversity, Access and Benefit-Sharing: Global Case

Studies, Routledge, Oxon.

Robinson, D.F. and Raven, M. (2017) ‘Identifying and Preventing Biopiracy in

Australia: Patent trends for plants with Aboriginal uses’, Australian

Geographer, 48:3, 311-331 Version of the paper available as Public

Submission through IP Australia: http://www.ipaustralia.gov.au/about-

us/public-consultations/Indigenous_Knowledge_Consultation/

Robinson D; Raven M; Hunter J, (2018), 'The limits of ABS laws: Why gumbi

gumbi and other bush foods and medicines need specific indigenous

knowledge protections', in Lawson, C. and Adhikari, K. (eds) Biodiversity,

Genetic Resources and Intellectual Property: Developments in Access and

Benefit Sharing, pp. 185 – 207.

References:

Lai, J. Robinson, D.F., Stirrup, T, Tualima, H-Y. (forth 2018) ‘Māori Knowledge

under the Microscope: Appropriation and Patenting of Mātauranga Māori

and Related Resources’ under review.

Oldham, P., S. Hall, and O. Forero. (2013). “Biological Diversity in the Patent

System.” PLoS ONE 8 (11): e78737.

Oldham, P. (2006). “Biodiversity and the Patent System: Towards International

Indicators.” Global Status and Trends in Intellectual Property Claims’ 3: 1–

88.