Cross-border Protection of Traditional Knowledge and Cultural Expressions

Pedro A. De Miguel Asensio – UCM

AIPPI 2011 Hyderabad

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Legal Protection of TK and CE Traditional Knowledge and Cultural Expressions

Legal Protection: mechanisms that prevent misappropriation and make possible exercise control over TK and CE and even enforce collective or individual rights related to them

International protection / cross-border private enforcement

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Alternatives Recourse to existing IP rights may grant effective protection in

limited situations Sui generis protection. It is mainly based on the idea of building

systems that enable traditional communities to control access to genetic resources and use of traditional knowledge and cultural expressions, so that third parties interested in such access or use need to obtain the prior informed consent under the conditions determined by the traditional community. Other examples may include the creation by public authorities of specific certification stamps or hallmarks, protection of undisclosed information and other aspects of unfair competition law, including protection against certain imitations, and against the unlawful displaying of a trust mark

Existing IP rights and sui generis measures may be complementary

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Application of existing IP rights

Copyright and related rights (craft products, performances related to intangible cultural)

Industrial designs (crafts) Trademarks in the benefit of the relevant community

(names) Geographical indications (goodwill associated to

certain products) Patents (disclosure requirements)

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Limitations of the protection resulting from existing IP rights (I)

Recourse to the current IP system may produce in many situations the result of frustrating the expectations of traditional communities or groups to have proper control over their intangible property.

For instance, although patent law is relevant for the appropriation and commercialization of traditional knowledge related to the use of plants to treat diseases, the patent system normally does not benefit the community where the knowledge originates (e.g. patenting by a company of the active ingredient from the plant to which the traditional knowledge referred in situations where no sharing of the benefits with the traditional community is required)

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Limitations of the protection resulting from existing IP rights (II)

Additionally, trademarks do not protect against the exploitation of imitations on which the trademark is not used.

Geographical indications do not protect the traditional knowledge or cultural expression itself but only the reference to its territorial origin.

Furthermore, many TK and CE do not meet the necessary requirements to be protected under current IP rights and they may be regarded as part of public domain and lack adequate protection.

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Limitations of the protection resulting from existing IP rights (III)

The originality requirement as a prerequisite for copyright protection raises special difficulties in the context of TK and CE, since works are usually based upon preexisting traditional art practices and often emphasize the expressions of previous generations.

Determination of authors, beneficiaries of protection or persons who have the power to enforce the rights may be controversial

The lack of flexibility of existing IP rights may also produce inadequate results, for instance, by conferring exclusivity to the rightholder in circumstances that undermine the position of the community

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Establishing further protection at international level

Intense international debate about the adaptation of the IP system to protect TK and CE

Some International efforts: As a result of the Doha Declaration, the TRIPS Council has examined the relationship between the TRIPS Agreement, the 1992 Convention on Biological Diversity (CBD) and the protection of TK and CE, including the TRIPS/CBD/disclosure issue

Since 2000 - WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore: aimed at drafting provisions implementing sui generis protection

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International vs. national and regional developments

At regional level some instruments, especially of soft law, have been drafted mainly in fora in which the most industrialized countries have not been involved.

At national level many countries with significant indigenous populations have adopted legislation granting specific protection to intangible heritage of local communities with a special focus on biological heritage

Patent – Disclosure requirements (See the answers to the 2010 Questionnaire collected by the AIPPI Special Committees Q94 WTO/TRIPS and Q166 Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, showing that some countries, such as Brazil or South Africa, limit the disclosure requirement to the TK originating from their territories but a greater number of countries extend the disclosure requirement to non-domestic knowledge

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Need of further international cooperation

Role of international minimun standards (TRIPS, WIPO Treaties, CBD…)

Significance of international instruments in promoting international uniformity in this field

Greater uniformity at international level would contribute to a more effective protection in cases of exploitation of TK and CE with a transboundary scope

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Basic features of territoriality

IP rights as territorial rights Territoriality and application of the law of the

country for which protection is claimed Scope of the lex protectionis: existence, validity,

registration (disclosure requirements), scope, duration and all other matters concerning the IP right as such

The law of the country where the TK and CE is used is determinative under the lex protectionis criterion

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Drawbacks of territoriality for an effective cross-boder protection of TK and CE

Differences between jurisdictions concerning the scope and means of protection of TK and CE

Protection granted under the country of origin does not apply to registration and use in third countries, where different standards may prevail due to the lack of international harmonization

Infringements actions of IP rights related to TK and CE and opposition to the grant of such rights to outsiders of indigenous comunities are governed by the law of the country for which protection is claimed and it becomes necessary to bring different actions in each country where the relevant IP rights are to be affirmed or have been filed or recognised to a third party

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International Jurisdiction

Scope of exclusive jurisdiction: different approaches Implications of the trend to limit jurisdiction to disputes

concerning forum IP rights (infringement claims): US - Jan K. Voda M.D. v. Cordis Corp (patents); South Africa – Gallo (copyright)

Comparison to systems where exclusive jurisdiction is restricted to registration or validity of industrial property rights subject to registration (Brussels I Regulation)

Claims concerning infringement of foreign IP rights (AIPPI Question Q174 -2003- on Jurisdiction and applicable law in the case of cross-border infringement -infringing acts- of intellectual property rights)

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Beyond territoriality? Application of the lex originis to certain issues

instead of the law of the country for which protection is claimed?

Protection of geographical indications as a precedent

The role of the country of origin in the Nagoya Protocol on Access to Genetic Resource and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the CBD