DATE: March 29, 2002
WORLD INTELLECTUAL PROPERTY ORGANIZATION
intergovernmental committee on
intellectual property and genetic resources,
traditional knowledge and folklore
Geneva, June 13 to 21, 2002
ELEMENTS OF A SUI GENERIS SYSTEM FOR THE PROTECTION OF TRADITIONAL KNOWLEDGE
Prepared by the Secretariat
1. This paper seeks to contribute to the work of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (hereinafter “the Committee”), by discussing the elements that might form part of a distinct sui generis legal system defined specifically to protect traditional knowledge (“TK”). A parallel and complementary paper, WIPO/GRTKF/IC/3/9, discusses possible approaches to the definition of ‘traditional knowledge.’
2. At the second session of the Committee, held in Geneva from December 10 to 14, 2001, a number of delegations emphasized the relevance of examining possible modalities of intellectual property (“IP”) sui generis systems for the protection of traditional knowledge. For example, the Delegation of Algeria, speaking on behalf of the African Group, said that “[…] WIPO should determine which categories of traditional knowledge could be protected under existing legislation. For the other categories, WIPO should develop new sui generis mechanisms in order to ensure adequate protection.”1 The Delegation of South Africa recommended that the work of the Committee “should also take into account possible sui generis systems in respect of genetic resources, traditional knowledge and folklore.”2 The Delegation of New Zealand noted that it “considered that the examination of sui generis modes for the protection of traditional knowledge was both necessary and important.”3 The Delegation of Peru emphasized that discussions in the Committee “should not distract the Committee from its main work which was to propose a sui generis system of protection for traditional knowledge of international scope.”4 Similar views were voiced by the delegations of Thailand5 and India.6
3. At that same meeting, and under agenda item 8 (“future work”)7, the Delegation of Venezuela requested the Secretariat of WIPO to prepare a document for the third session of the Committee “with elements for a possible sui generis system.”8 That proposal was supported by the Delegations of Brazil, Egypt and Ecuador.9 The present document is the response to that request.
4. There are several reasons why it may yet be premature to identify in a definitive way the precise characteristics of a legal framework especially adapted to the characteristics of traditional knowledge, especially if this is to be capable of broad application internationally. Firstly, although the international debate on the need for the development of mechanisms for the protection of traditional knowledge started more than two decades ago,10 not enough experience has yet been acquired, both at the national and the international levels, to ensure that the full scope of options for a workable and effective system are available. In practice, a ‘top-down’ or a pre-emptive approach to defining sui generis protection at an international level is less likely to succeed if it is shaped without reference to the experience gained from operational national systems that provide practical models for functioning TK protection, whether through sui generis protection or application of existing IP systems to TK subject matter. Secondly, a number of Committee Members have called for the consideration of how existing mechanisms of intellectual property can be more effectively used to protect traditional knowledge.11 For at least those Members, therefore, there seems to be a need for a fuller articulation of how existing systems can be properly applied to TK subject matter. This may also be a useful guide to defining the specific area of need for any new, sui generis system. It may also be useful in determining how a sui generis system interacts with those elements of other IP systems which are relevant to TK protection. And thirdly, Members must still decide whether, if a future sui generis system were to be developed, such a system would cover all manifestations and expressions of traditional knowledge in a broad sense,12 or whether they should pursue two different legal tracks: on one track, the efforts would be aimed at developing a system duly adapted to the characteristics of expressions of folklore (eventually through the review of the WIPO/UNESCO Model provisions); on the other track, Members would look into a sui generis system compatible with the particular features of technical traditional knowledge, in particular of biodiversity-associated traditional knowledge. Finally, and related to the preceding point, is the definitional question, discussed in the separate paper WIPO/GRTKF/IC/3/9: even if no conclusive or exhaustive definition is settled on, some general working consensus on the operational scope of the term ‘traditional knowledge’ would facilitate discussions on appropriate ways of protecting this subject matter.
5. Accordingly, any efforts to define a new, sui generis system at the international level prior to clarifying these issues may prove premature and thus ineffectual, or may actually serve to delay the establishment of practically effective systems of TK protection with an international character. Nonetheless, the need for exploration of the possible elements of such a system has been clearly identified during the work of the Committee, and this may help elucidate the issues and define the operational environment for TK protection. The present document accordingly does not seek to pre-empt the debate over the need for a sui generis system for the protection of traditional knowledge, but rather identifies some elements that might be taken into account should there be consensus on the need for work on the development of a sui generis system.
6. A related question is the manner in which this issue would be dealt with by the Committee, should that consensus be reached. For the present, the Committee can continue to exchange views and practical experience on the relationship between intellectual property and access to genetic resources, traditional knowledge and expressions of folklore, with a particular focus on tasks that do not require the development of new concepts or legal mechanisms — such as discussions on traditional knowledge as prior art and the means to make it available for patent examiners; contractual clauses on access to genetic resources; and national experiences and views on the protection of traditional knowledge and expressions of folklore.
7. But, should a consensus be reached that work should proceed towards the development of a mechanism for the protection of traditional knowledge, the question remains what form that outcome would take. The Committee could engage in this work with a view to developing soft law, that is, non-binding guidelines and/or recommendations to be adopted or applied at the national level, leading to a de facto development of minimum harmonized standards for protection of TK. Suggestions could also be developed with a view to the adoption of international standards that, by undertaking a harmonized approach, could enhance international protection, avoid free riding and misappropriation, and reduce distortions and impediments to international trade of products and services incorporating traditional knowledge. Equally, development of, and experience with, non-binding guidelines or recommendations to guide national systems may lead to a greater sharpening of understanding of the essential elements of a successful, workable and effective national system, that may in turn feed into the identification of international standards.
8. Even seeking to identify elements of possible sui generis systems raises the question of whether the system is to be characterized predominantly at the national or international level. The Committee could focus on systems of protection at the national level, with a view subsequently to distilling out more general principles that could be expressed in an international framework; or it could seek directly to express what basic elements or principles would be sought in an international framework, whether indicative, illustrative or more formal in character.
9. In addition, there is not necessarily a firm division between the elements of existing IP systems that are relevant to TK protection, and distinct sui generis TK systems. To illustrate this point by taking the example of sui generis database protection, a compilation of data is partly recognized as a distinct object of protection under copyright law; yet it can also partly be viewed as an object of sui generis database protection in some countries’ legal systems13 – and indeed both legal mechanisms have been canvassed as possibly applying to collections of traditional knowledge and thus affording a measure of TK protection. Alongside any distinct sui generis IP systems specifically created for traditional knowledge as such, there can be sui generis elements of general IP law that may be relevant to traditional knowledge subject matter. Specific sui generis mechanisms have been developed within general IP law to deal with particular practical needs or policy objectives relating to specific subject matter: these include specific legal provisions and practical or administrative measures. For example, sui generis disclosure obligations, in the form of requirements for the deposit of samples, can apply to patent procedures relating to new microorganisms.14 Proposals have been made for specific disclosure obligations in relation to patents for inventions derived from genetic resources and associated traditional knowledge.15 In relation to TK as such, the development of distinct classes or sub-classes for traditional knowledge in the International Patent Classification could be characterized as a sui generis element of an existing system to facilitate defensive protection of traditional knowledge.16 The extension of performers’ rights to those who perform ‘expressions of folklore’17 captures sui generis TK-related subject matter within a broad IP system. To some extent, therefore, the Committee may need to explore or define the boundary or interaction between relevant sui generis elements of existing IP systems that have the effect of protecting TK to some extent, on the one hand; and the elements of distinct sui generis systems specifically for TK protection on the other hand.
II. TRADITIONAL KNOWLEDGE: A WORKING CONCEPT
10. In previous work, the Secretariat of WIPO has used the term “traditional knowledge” in an open-ended way to refer to tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields. “Tradition-based” refers to knowledge systems, creations, innovations and cultural expressions which: have generally been transmitted from generation to generation; are generally regarded as pertaining to a particular people or its territory; and are constantly evolving in response to a changing environment.”18 This is not a formal definition, but a working concept of traditional knowledge, which may not be as precise as a scientific or restrictive legal definition, but it provides nonetheless the essential elements for the understanding of the nature and scope of traditional knowledge as legal subject-matter, and is consonant with the general approach to the definition of subject matter that is taken in the international IP framework.
11. A survey of existing international standards in the field of intellectual property would illustrate that a precise definition of traditional knowledge is not necessarily a crucial requisite for identifying the legal elements of a mechanism for its protection. Most patent laws, for example, do not precisely define the concept of an ‘invention’; equally, international harmonization and standard-setting in patent law have proceeded without specific or authoritative international definitions of this fundamental concept – although what constitutes an ‘invention’ has strong elements of harmony in practice, significant differences continue to apply at the national level after some 120 years of progressive international harmonisation. Likewise, most trademark laws do not define ‘signs’19 in exhaustive terms and generally leave it to the examining authorities and the courts to decide case-by-case whether a specific sign serves as the necessary requirements for protection. The crucial element for the protection of any legal subject-matter is the identification of certain characteristics that it must meet as a condition for protection — such as novelty, inventive step and susceptibility of industrial application, for inventions, and distinctiveness, for trademarks. The same approach could be applied to traditional knowledge as well.20 A fuller discussion along these lines on the possible approach to definition of the subject matter of protection is contained in WIPO/GRTKF/IC/3/9.
12. The working concept of traditional knowledge, as adopted for the purpose of this document, puts a particular emphasis on the fact that traditional knowledge is “tradition-based.” That does not mean, however, that traditional knowledge is old or that it necessarily lacks a technical character. Traditional knowledge is “traditional” because it is created in a manner that reflects the traditions of the communities. “Traditional”, therefore, does not necessarily relate to the nature of the knowledge but to the way in which the knowledge is created, preserved and disseminated. Two other characteristics stem from that same working concept: traditional knowledge is a means of cultural identification of its holders, so that its preservation and integrity are linked to concerns about the preservation of distinct cultures per se; and, even if it contains information of a practical or technological character, traditional knowledge has a cultural dimension and a social context that can distinguish it from other forms of scientific or technological information.
13. Because its generation, preservation and transmission is based on cultural traditions, TK is essentially culturally-oriented or culturally-biased, and it is integral to the cultural identity of the social group in which it operates and is preserved. From the point of view of the culture of the community in which it has originated, every component of traditional knowledge can help to define that community's own identity. This characteristic may sound obvious as far as expressions of folklore and handicrafts are concerned, but it also applies to other areas of traditional knowledge, such as medicinal and agricultural knowledge. A piece of medicinal knowledge developed from a given combination of plants by a South American community, for example, necessarily differs from knowledge developed by an African community, based on similar plants. The reason is that the origination of medicinal knowledge by traditional communities does not only attend to a certain need, but also responds to cultural approaches and beliefs.
14. This contrasts sharply with two scientific inventions made separately by two different teams of employed inventors, with the objective of solving the same technical problem: it is not uncommon that the two inventions turn out to be very similar, which, in patent law, may give rise to interference proceedings or similar legal procedures which attribute ownership to one claimant or the other. Competing patent claims to overlapping subject matter are resolved without reference to the cultural environment which gave rise to the inventions. By contrast, the cultural identity dimension of traditional knowledge may have a dramatic impact on any future legal framework for its protection, because, being a means of cultural identification, the protection of traditional knowledge, including traditional knowledge of a technical nature, ceases to be simply a matter of economics or of exclusive rights over technology as such. It acquires a human rights dimension indeed, for it intertwines with the issues concerning the cultural identification and dignity of traditional communities. Analogues could also be drawn with the concept of ‘moral rights’ in copyright law, specifically the rights of integrity and of attribution, in that it may be considered necessary to protect against culturally offensive use of TK or other non-economic forms of perceived misuse of TK. Specific remedies, such as additional damages, may also be stipulated in case of culturally offensive misuse of protected material.
15. The fact that traditional knowledge is created in a distinctive cultural context also gives another important characteristics: in essence, to understand the full nature of the TK or simply even to record or define it, it may be necessary to understand the cultural influences that shape it. Whether or not the TK is produced within a formal or systematic tradition, or in a more informal or ad hoc context, it tends to be developed in a way that is closely related to the immediate environment in which traditional communities dwell, and to respond to the changing situation of that community. In that regard, it can have an empirical or trial-and-error basis. Yet traditional knowledge may be developed in accordance with systems of knowledge, and be incorporated into systematic concepts and beliefs. Culturally-based rules may apply to the way innovation proceeds. Yet the way TK is created may appear from an external or universal perspective to be non-systematic or unmethodical, partly because the rules or system governing its creation can be passed on in an informal or cultural manner, partly because the systematic element is not explicitly articulated, and partly because the process leading to the creation of TK may not be formally documented in the way that much scientific and technological information is recorded. The apparent non-systematic manner of creation of traditional knowledge, does not diminish its cultural value, or its value from the point of view of technical benefit, and raises the question of how to record or define its relationship with the culturally-specific knowledge system, set of rules or guidelines, or set of background beliefs which help to shape it. As with the “tradition-based” characteristic, the apparent “non-formal” characteristic leads to particular emphasis on the context in which is created, and the potential need for elements of this cultural context to be considered along with the knowledge per se. This third essential characteristic of traditional knowledge may have an impact on how it will be described and claimed, if a sui generis system of registration of traditional knowledge were to be developed.
16. The identification of additional characteristics so as to identify more precisely the scope of protectable subject matter is, of course, a question to be addressed by national laws. Limitations will apply depending on the policy objectives of the protection. For example, national laws may afford protection to knowledge that is held by certain communities only. In that vein, the law may limit the protection of traditional knowledge held by indigenous communities21 or Afro-American communities.22 Laws may also identify the technical field to which the protected subject matter pertains, because the laws are aimed at specific policy objectives associated with that particular field of knowledge. For example, protection may be restricted to traditional knowledge that is associated with genetic (or, more generally, biological) resources23 or to traditional medicines. Or protection may be linked to the susceptibility of commercial utilization of traditional knowledge24 — putting aside, therefore, knowledge of a purely religious and cultural nature, such as rituals and sacred resources. The policy objective in this instance would be limited to addressing concerns about commercialisation of TK, leaving it to other legal instruments (including customary law, as appropriate) to address knowledge in the religious and cultural framework.
17. It should be noted that any addition of characteristics, such as those three mentioned above, with the aim of better defining the scope of protection will necessarily lead to the reduction of the scope of protection in practice. Nonetheless, it is a characteristic of IP systems that the actual legal protection afforded does not extend to all possible material that may fall within a broad inclusive definition of relevant subject matter; to some extent this is an inevitable feature of internationally agreed systems or standards, which does not rule out a broader approach at the level of domestic law.
III. SUI GENERIS SYSTEMS OF INTELLECTUAL PROPERTY PROTECTION
18. Intellectual property is a set of principles and rules that discipline the acquisition, use and loss of rights and interests in intangible assets susceptible of being used in commerce. Its subject matter is inherently dynamic, and so are the principles and rules that it comprises. Consequently, intellectual property has evolved recently at a very fast pace so as to accommodate the new technologies and methods of doing business generated by the global economy. In some areas, existing legal mechanisms have been adapted to the characteristics of new subject matter: the patent system has been confronted with the challenges of biotechnological inventions and new processes of using information technology devices (so-called “business methods”); copyright and related rights have been broadened so as to meet the challenges of computer software, electronic commerce and protection of databases. But in other areas, new systems have been created, where it appeared that a mere effort of adapting existing mechanisms would not respond adequately to the characteristics of new subject matter. Plant varieties have justified the establishment of a sui generis system, whose leading regime is defined by the UPOV Convention;25 layout-designs (topographies) of integrated circuits have also been the subject matter of a special system that combines features of patent, industrial designs and copyright laws. What makes an intellectual property system a sui generis one is the modification of some of its features so as to properly accommodate the special characteristics of its subject matter, and the specific policy needs which led to the establishment of a distinct system. As the WTO Secretariat put it in connection with the explanation of the sui generis system of plant variety protection, under Article 27.3(b) of the TRIPS Agreement, “Sui generis protection gives Members more flexibility to adapt to particular circumstances arising from the technical characteristics of inventions in the field of plant varieties, such as novelty and disclosure.”26