traditional knowledge, traditional creativity and cultural expressions: what role for ip? world bank...

Traditional Knowledge, Traditional Creativity and

Cultural Expressions: What Role for IP?

World Bank

Distance Learning Course on Indigenous Knowledge

March 31, 2005

Antony Taubman,

Traditional Knowledge Division, WIPO

• What is the problem? – protection vs. preservation

• Background to WIPO’s activities• Snapshot of the WIPO Intergovernmental

Committee: – current issues and possible outcomes

Overview

The Call for Protection: the ‘Deep Forest’ case

This is an illustrative example for educational purposes only: no views are expressed, and no conclusions should be drawn, on any legal question on the basis of this presentation

sung by Afunakwa

The rorogwela lullabies are often sung not by the mother but by the child’s elder sister. The words refer to such a situation: the elder sister asks the baby not to cry because its parents are dead and there is no one else there to hear it.

Baegu Music: Rorogwela Lullaby

The call for protection: the ‘deep forest’ case

• 1973 UNESCO recording: “Fateleka and Baegu Music from Malaita”

• Baegu lullaby from Northern Malaita, “Rorogwela” sung by Afunakwa

• Some elements (substantial?) of (i) the melody of the lullaby and (ii) the recording (‘fixation’) of the vocal performance used in ‘Sweet Lullaby’ by Deep Forest– Attributed to African cultures

– CD a huge commercial success, ‘Sweet Lullaby’ widely used in commercials

– 1996, Norwegian saxophonist Jan Garbarek records an adaptation of "Rorogwela,” credited as "a traditional African melody, arranged by Jan Garbarek"


• Immediate legal issues: musical work, performance, moral rights, economic rights

• Broader issues: preservation vs. protection; enforcement of legal rights; recognition of traditional works, communal ownership, customary law

• Policy choices: what is needed here:– sui generis (stand alone) protection?– adapted or extended use of existing intellectual

property system?– better, more equitable use of existing

intellectual property system?


• Sui generis protection under existing treaties:

– WIPO Performers and Phonograms Treaty protects performances of expressions of folklore

– Moral rights

– Economic rights [even if recordings are not for commercial gain]

– Berne Convention protects “certain unpublished works of unknown authorship”

• including traditional musical works

• fifty years after the work has been lawfully made available to the public.

Overview

• What is the problem? – protection vs preservation


Committee: – current issues and possible outcomes

Overlapping areas of concern

• Definitions are needed to focus work, but need not create firm boundaries:– Cultural heritage - expressions of folklore or

traditional cultural expressions (TCEs)– Traditional knowledge (TK) - ‘technical’

knowhow - e.g. medical knowledge

– Genetic resources Traditional knowledge

Cultural expressions

Genetic resources

Overlapping areas of activity• Folklore - TCEs:

– UNESCO (intangible cultural heritage)– WIPO (folklore, Berne Convention, WPPT)– WTO (folklore and TRIPS)– ITC (capacity building on crafts)

• Traditional knowledge– CBD (Article 8(j), 10(c), 17.2)– FAO (Farmers’ rights)– UNCTAD (TK in trade and development)– WHO (Traditional medical knowledge)– WTO (TRIPS)– WIPO (TK and patent issues: PCT, IPC)

Overlapping areas of activity

• Genetic resources:– CBD: conservation, sustainable use, equitable benefit-

sharing– FAO International Treaty on Plant Genetic Resources for

Food and Agriculture– WTO (TRIPS)– WIPO (IGC)

• Indigenous rights– ILO Indigenous and Tribal Peoples Convention, 1989 (No.

169)– Office of the High Commissioner for Human Rights (OHCHR)

Working Group on Indigenous Populations (WGIP) Draft Declaration on the Rights of Indigenous Peoples.

Background to WIPO’s work

• International cooperation on folklore since 1970s– Berne Convention protection of ‘folklore’– Article 15.4 [In the case of certain unpublished works of unknown

authorship]– (a) In the case of unpublished works where the identity of the

author is unknown, but where there is every ground to presume that he is a national of a country of the Union, it shall be a matter for legislation in that country to designate the competent authority which shall represent the author and shall be entitled to protect and enforce his rights in the countries of the Union.

– (b) Countries of the Union which make such designation under the terms of this provision shall notify the Director General by means of a written declaration giving full information concerning the authority thus designated. The Director General shall at once communicate this declaration to all other countries of the Union.


• International cooperation on folklore since 1970s

– Berne Convention protection of ‘folklore’

– UNESCO-WIPO work in early 1980s:

– UNESCO-WIPO Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation & Other Prejudicial Actions

– Expressions of folklore developed and maintained in [country] shall be protected by this [law] against illicit exploitation and other prejudicial actions as defined in this [law].

– "expressions of folklore" productions consisting of characteristic elements of the traditional artistic heritage developed and maintained by a community of [country] or by individuals reflecting the traditional artistic expectations of such a community ...


• International cooperation on folklore since 1970s

– Berne Convention protection of ‘folklore’

– UNESCO-WIPO work in early 1980s:

– UNESCO-WIPO Model Provisions

– 1985: treaty ‘premature’

– 1996: WIPO Performances & Phonograms Treaty:

• protection of expressions of folklore

• “performers” include those who perform expressions of folklore

• rights include moral rights, rights of fixation, rights over communication and dissemination, economic rights

– even if recording was not made for commercial gain


• International cooperation on folklore since 1970s– Berne Convention protection of ‘folklore’– UNESCO-WIPO work in early 1980s:– UNESCO-WIPO Model Provisions– 1985: treaty ‘premature’– 1996: WIPO Performances & Phonograms Treaty:

• protection of expressions of folklore– 1997: Phuket plan of action

• 1998-99 Fact-finding missions on TK• 2001- : Intergovernmental Committee on GR, TK, F

Overview

• What is the problem? – protection vs preservation


Committee (IGC): – current issues and possible outcomes

Traditional Values and IP at Odds?

• What does WIPO have to do with traditional knowledge and cultural expressions?

• Disquiet on the part of proponents and opponents of the received IP system; concerns raised about:– imposing an IP straitjacket on traditional cultures,

overriding collective values of indigenous and other traditional communities

– IP concerns ‘mainstream’ technology; commercialises & commodifies knowledge & culture; facilitates misappropriation of TK and cultural expressions

– IP rights are atomistic, private, individual - at odds with values of traditional communities

– IP concerns creativity and innovation, not tradition

Where did the IGC come from, where is it going?

• From 1998-99, WIPO visited some 60 locations for dialogue with around 3,000 representatives of TK holder communities– idea was to base the new program on direct

learning of the needs & expectations of TK holders themselves

– these insights still central to WIPO’s work • IGC established in 2001 - building on practical

experience worldwide– clarifies that this is an existing area of IP law and

practice; many laws and practical cases worldwide, within and beyond the conventional IP system

– but what is the international dimension?

Towards resolution: back to basics

• The IP system criticized for misappropriating TK/TCEs, neglecting the interests of Indigenous & local communities.

• But these very concerns often expressed in terms that echo core principles of the IP system:

– promoting equity and balance,

– reconciling private and collective interests,

– recognizing distinctive origins and the legitimate source of innovation and creativity,

– suppressing free-riding and unjust enrichment,

– defending distinctive reputations from illegitimate exploitation,

– providing for rights of attribution and integrity• This observation is the essence of an emerging consensus

What kind of challenge to the IP system?

• Indigenous and local communities continue to innovate and create within their traditions

– seek recognition for their past & continuing contribution to humanity’s cultural & intellectual heritage

– and appropriate respect for customary laws• IGC a process of reviewing the core principles of IP law,

assessing how to apply those principles for equitable protection of TK and TCEs

– analysing validity, equity, effectiveness of IP system from the distinct vantage point of indigenous and local communities

• Responding to critical concerns about the relevance and legitimacy of IP system, the IGC has seen deep reflection on the nature of IP, its objectives, its assumptions, its limitations and its boundaries.

Some key substantive issues:

– misappropriation - what is it to misappropriate TK/TCEs, what is the cause of action and the nature of the damage?

– retroactivity - is the existing public domain legitimate & inviolable?

– localisation - how to recognize and defer to a community’s customary law?

– collectivity - what legal status or legal personality for traditional communities?

– ownership - what is the nature of custodianship? Who benefits?

– subject matter - what makes knowledge and cultural expressions ‘traditional’ ?

Some key process issues:

– coordination - already an active area of national and regional legislation - what is the international layer?

– interface with IP law - what is the sui generis element of protection of TK and TCEs?

– interface with other law - access regimes for genetic resources, cultural policy, etc.; what is the (adapted, expanded or sui generis) IP element?

New IGC mandate for 2004-05

• continue work on questions included in previous mandate

• new work to focus on consideration of international dimension, without prejudice to work in other fora,

• no outcome is excluded, including possible development of an international instrument(s)

• the ICG urged to accelerate its work and to present a progress report

• International Bureau to continue to assist by providing necessary expertise and documentation.

Folklore/Traditional Cultural Expressions (TCEs)

• IGC agrees in March 2004 to focus and accelerate substantive work on TCEs, including preparing: – an overview of policy objectives and core principles for

protection of TCEs (‘draft provisions’)– document WIPO/GRTKF/IC/7/3

• If Member States so choose, this could form the basis of a new international instrument to protect TCEs– the draft provisions could provide the substance or

content of an international instrument – political decision remains as to what legal status and

future process is needed to carry this forward

Traditional Knowledge (TK)

• IGC agrees in March 2004 to focus and accelerate substantive work on TK, including preparing: – an overview of policy objectives and core principles for

protection of TK (‘draft provisions’)– document WIPO/GRTKF/IC/7/5

• If Member States so choose, this could form the basis of a new international instrument to protect TK– the draft provisions could provide the substance or

content of an international instrument – political decision remains as to what legal status and

future process is needed to carry this forward

What principles for TCEs/folklore?

• Responsiveness to aspirations and expectations of relevant communities

• Balance and proportionality• Respect for and cooperation with other international

and regional instruments and processes• Flexibility and comprehensiveness• Recognition of the specific nature, characteristics

and traditional forms of cultural expression• Respect for customary use and transmission of

TCEs/EoF • Effectiveness and accessibility of protection

Specific substantive principles for TCEs/folklore

• Scope of subject matter

• Criteria for protection• Beneficiaries• Management of

rights

• Scope of protection• Exceptions and

limitations

• Term of protection• Formalities• Sanctions, remedies

and enforcement• Application in time• Relationship with

intellectual property protection

• International and regional protection

What forms of protection?

• culturally significant/sacred TCEs/EOF:

– prevent reproduction, adaptation, public communication and other such forms of exploitation of; any distortion, mutilation or other modification of, or other derogatory action in relation to; and the acquisition by third parties of IP rights;

• secret TCEs/EoF

– prevent unauthorized disclosure and subsequent use of and acquisition by third parties of IP rights;

• performances of TCEs/EoF

– protect moral and economic rights as per WPPT• other TCEs/EoF:

– identify source; prevent offensive use, prevent misleading indications, and equitable remuneration

What forms of protection?

• culturally significant/sacred TCEs/EOF:– prevent reproduction, adaptation, public communication and

other such forms of exploitation of; any distortion, mutilation or other modification of, or other derogatory action in relation to; and the acquisition by third parties of IP rights;

• secret TCEs/EoF– prevent unauthorized disclosure and subsequent use of and

acquisition by third parties of IP rights; • performances of TCEs/EoF

– protect moral and economic rights as per WPPT• other TCEs/EoF:

– identify source; prevent offensive use, prevent misleading indications, and equitable remuneration

What objectives for protection of TK? • Recognise value

• Promote respect

• Meet the actual needs of holders of traditional knowledge

• Empower holders of TK

• Support traditional knowledge systems

• Contribute to safeguarding traditional knowledge

• Repress unfair and inequitable uses

• Concord with relevant international agreements and processes

• Promote innovation and creativity

• Promote intellectual and technological exchange

• Promote equitable benefit sharing

• Promote community development and legitimate trading activities

• Preclude the grant of invalid IP rights

• Enhance transparency and mutual confidence

• Complement protection of traditional cultural expressions

What guiding principles for TK protection?

• Responsiveness to the needs and expectations of TK holders

• Recognition of rights• Effectiveness and accessibility

• Flexibility &comprehensiveness

• Equity and benefit-sharing• Consistency with existing legal systems• Respect for and cooperation with other international and

regional instruments and processes• Respect for customary use and transmission of TK

• Recognition of the specific characteristics of TK

• Protection against misappropriation:- suppression of misappropriation- general nature of misappropriation- acts of misappropriation- unfair competition

• Recognition of the customary context• Legal form of protection• General scope of subject matter• Eligibility for protection• Beneficiaries of protection• Equitable compensation and

recognition of knowledge holders

What substantive principles for TK protection?

• Prior informed consent • Exceptions and limitations• Duration of protection• Application in time• Administration and

enforcement of protection• International and Regional

Protection

What form of protection?

Next steps

• Comment period on draft provisions for TK and TCE protection

• Revised draft provisions to be circulated approx. end March

• Further informal consultations in April - May• IGC meets on June 6 to 10 to consider

– substance of provisions – how to take the substance forward?– what recommendations to the General Assembly?

policy objectives & core principles

options for recognizing

TK/TCE protection in

foreign jurisdictions

elements of TK protection

at the national level

elements of folklore/ TCE protection

at the national level

measures on IP & genetic resources

An emergin

g framewo

rk

Link to detailed capacity building materials

Genetic Resources and Intellectual Property

Overview

• Linking equitable benefit-sharing from genetic resources and the patent system

• Issues and processes in WIPO fora• Some working materials• Cooperation with the Convention on Biological

Diversity (CBD)• Some substantive questions

Access & equitable benefit-sharing: what links to the patent system?

• Access and benefit-sharing in line with objectives of CBD and FAO International Treaty– e.g. CBD objectives:

(i) conservation of biological diversity (ii) sustainable use of its components (iii) fair and equitable sharing of the benefits arising out of the utilization of genetic resources

• Patent system - in particular treatment of inventions that arise out of the utilization of genetic resources (and associated TK)

Access & equitable benefit-sharing: what links to the patent system?• Two essential scenarios put forward:

– Direct patenting of source material• a patent (or application) directly claims as an

invention genetic resources (or associated traditional knowledge) obtained from a separate source

– Patenting inventions derived from source material• a patent (or application) claims an invention that is

somehow derived from or somehow uses genetic resources or TK - this link expressed in several ways

• Has the GR/TK been legitimately accessed?• Is the patent consistent with equitable benefit-sharing?


• Opens up some fundamental questions:• Legal: what obligations arise (or should arise) from the

circumstances of access and the nature of use of genetic resources (and associated TK)?

• How does (or should) this affect:

– the entitlement to apply for and be granted a patent (should the applicant receive a patent?)

– the patentability of the invention as such (does the invention

– other interests and entitlements (e.g. equitable or ownership interests, expectation to benefit)

– other obligations (e.g. obligation to report on patenting activity, obligation to disclose)


• ‘Disclosure requirements:’

– various existing mechanisms, national/regional legislative initiatives,and international proposals

– create or confirm a legal linkage betweenGR or TK used and the claimed invention

– beyond disclosure per se (provision of information), have variously been linked to:

• patentability of invention as such

• entitlement to apply or be granted a patent

• capacity to enforce a patent


• Supplementing basic legal issues, some practical questions:• E.g. what kinds of practical arrangements would:

– reduce the likelihood of illegitimate patents being granted that claim GR/TK directly, or non-inventive derivatives of GR/TK

• continuing work on various defensive protection and enhanced search and examination measures

– facilitate equitable sharing of benefits from legitimate patenting of derivative inventions (what kinds of agreements and partnerships promote monetary and non-monetary benefit sharing - Bonn Guidelines)

• information and capacity building work (database of benefit sharing agreements, practical guide to supplement general ABS capacity-building projects)

• UNEP-WIPO study on IP aspects of access and benefit-sharing

Overview




WIPO fora and GR/patent issues

• Intergovernmental Committee on IP and Genetic Resources, TK & Folklore– considers legal issues (technical study)– oversees capacity-building initiatives

• Standing Committee on Patent Law– proposed text for Article 2 of draft Substantive

Patent Law Treaty– reference to issue of disclosure at last meeting

• Working Group on PCT Reform– Swiss proposal for amendment of PCT

Regulations to allow for disclosure mechanisms

Overview




Technical study on disclosure mechanisms

• Prepared initially under the supervision of the IGC, responding to invitation from Sixth CBD Conference of Parties

– based on questionnaire responses from WIPO Member States

– successive drafts considered by IGC

– transmitted to CBD COP VII by the WIPO General Assembly

– triggers request for follow-up work from CBD COP, and proposed further feedback from CBD to WIPO

Technical study

• “...to contribute to international discussion and analysis of this general issue, and to help clarify some of the legal and policy matters it raises...

• “...technical input to facilitate policy discussion and analysis in the CBD and in other fora, and it should not be considered a formal paper expressing a policy position on the part of WIPO, its Secretariat or its Member States...”

• “...explored issues relevant to the interaction between the patent system and GR/TK used in an invention... not sought to resolve these issues but rather to illustrate and elucidate them. … may wish to consider future work in this area … including additional exchange of national experience, and the elaboration of case studies and the analysis of some of the specific disclosure scenarios described and discussed in the draft study…

Analyses options under five aspects (Section VI): • relationship between the claimed invention and the

GR/TK; or what would be a sufficient link between the two to trigger a disclosure requirement

• legal principle forming basis of requirement• nature of the obligation placed on the applicant• consequences of failure to comply with the requirement• how the requirement would be implemented, verified or

monitored

Sets out specific methods for disclosure (Section VIII)

Possible disclosure scenarios (191-199):• TK as relevant prior art • TK holder as inventor • Disclosure of origin of genetic resources

(enablement and best mode)• Disclosure of the actual genetic resources• Evidence of entitlement to apply• Registration of equitable/ownership interests• Disclosure of information in compliance with other legal

obligations (e.g. access regimes)• Specific GR/TK disclosure mechanisms

– various specific mechanisms, various legal bases for requirements

UNEP-WIPO study on ABS and IP

• Pre-launch version submitted to Ministerial Conference, CBD COP VII

• Joint UNEP-WIPO launch imminent– (inspection copies available today)

• Professor AK Gupta (Honey Bee Network) – explores three case studies of the role of patents in

access and benefit sharing– independent analysis of the practical and legal

issues that arise, limitations of current approaches

Overview


• Issues and processes in WIPO fora• Some working materials• Cooperation with the Convention on Biological Diversity

(CBD)• Some substantive questions

CBD invitation to WIPO

Convention on Biological Diversity (CBD) Conference of Parties (COP) VI:

Decision VII/19 - interrelation of access to genetic resources and disclosure requirements in IP rights applications

Invitation to WIPO to...“examine, and where appropriate address, taking into account the need to ensure that this work is supportive of and does not run counter to the objectives of the [CBD], issues regarding the interrelation of access to genetic resources and disclosure requirements in IP rights applications, including, inter alia:

Invitation to WIPO to...

“examine, and where appropriate address, taking into account the need to ensure that this work is supportive of and does not run counter to the objectives of the [CBD], issues regarding the interrelation of access to genetic resources and disclosure requirements in IP rights applications, including, inter alia:

– Options for model provisions on proposed disclosure requirements;

– Practical options for IP rights application procedures with regard to the triggers of disclosure requirements;

– Options for incentive measures for applicants;

– Identification of the implications for functioning of disclosure requirements in various WIPO-administered treaties;

– IP-related issues raised by proposed international certificate of origin/source/legal provenance;”

Possible Reporting Procedure

“… and regularly provide reports to the CBD on its work, in particular on actions or steps proposed to address the above issues, in order for the CBD to provide additional information to WIPO for its consideration in the spirit of mutual supportiveness …”

Possible future work proposed to IGC

…in the light of developments … to consider possible future work for the Committee on this issue, including the proposals in para 12(ii) of WIPO/GRTKF/IC/5/10:

including the continued exchange of national experience and case studies, and the development of guidelines and recommendations concerning the interaction between access to genetic resources and patent disclosure.

Overview


• Issues and processes in WIPO fora• Some working materials• Cooperation with the Convention on

Biological Diversity (CBD)• Some substantive questions

Some substantive questions

• Legal and policy issues concerning:– eligibility of inventions per se for protection – eligibility of applicants to gain patents– ownership, inventorship and equitable interests– capacity to exploit and benefit from patents– interplay between obligations incurred in one

jurisdiction arising from access to genetic resources, and the operation of the patent system in another jurisdiction

• Incentives to use patent system to promote ABS• Sanctions for failure to comply with ABS regulations

The various avenues proposed

• CBD invitation– model provisions – practical options for triggers of disclosure requirements– options for incentive measures for applicants;– implications for various WIPO-administered treaties;– IP-related issues from proposed international certificate

• PCT system: Swiss proposal to enable disclosure requirements• Standing Committee on Patent Law: reference to genetic

resources in draft, disclosure issue raised• Intergovernmental Committee: proposed guidelines and

recommendations, policy and legal development

traditional knowledge, traditional creativity and cultural expressions: what role for ip? world bank...

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