'Trend on the protection of traditional knowledge associated with genetic resources within intellectual property chapters of Free Trade Agreements: the Peruvian experience' by
Diego Francoise Ortega Sanabria in (2019) 14(9)
Journal of Intellectual Property Law and Practice 728–738 comments
During negotiations of Free Trade Agreements, the bargaining power of developed countries has pushed developing countries to yield to higher standards of intellectual property protection in exchange of commercial benefits. However, there is evidence that developing countries can also seek and ensure the adoption of measures aimed at safeguarding their legitimate interests as a result of these negotiations. An example is Peru, which has sought to ensure the inclusion of provisions to require patent applicants to disclose the origin of the genetic resources and the associated traditional knowledge when they are used in the development of an invention, as well as the presentation of the evidence as to the prior informed consent from their legitimate owners and the corresponding equitable benefit-sharing. This article seeks to analyze whether the terms finally adopted have had a real impact on the protection of the Peruvian traditional knowledge associated with genetic resources.
The author states
Towards the second half of the 1990s, the Andean Community of Nations (CAN), then integrated by Bolivia, Colombia, Ecuador, Peru and Venezuela, adopted a set of rules specifically designed to safeguard the correct access to their genetic resources (GRs) and the traditional knowledge of their indigenous, Afro-American and local communities (TKs), done within the framework of integration under which that regional block regulates its policies. These rules included some sections that link the aforementioned resources and knowledge to the common intellectual property regime, aiming to avoid their misappropriation through the non-consented acquisition of exclusivity rights.
Thus, in 1996, Decision 391 was issued, establishing a common regime on access to GRs that conditions the legality of any right (including intellectual property rights) to the fulfilment of the access provisions that were set forth in such a legal instrument. Later, in 2000, Decision 486 was adopted, setting up a new common regime on industrial property, which establishes that whenever a patent application or a granted patent covers an invention developed through the use of GRs or/and TKs, its granting or validity, respectively, will depend on the filing of evidence on the prior informed consent of their legitimate holders.3 It should be noted that Decision 486 is recognized as the first regional instrument that includes binding obligations regarding the disclosure of origin and demonstration of legal access to GRs and TKs in patent applications.
In order to complement the referred regional norms, the Peruvian government has undertaken a series of local actions meant to strengthen and make operational the regional regulations mentioned above. Thus, in 2002, Law No 27811 was enacted (Regime for the Protection of TKs of Indigenous Peoples related to Biological Resources), establishing a sui generis regulation. In particular, this law provides for special registration mechanisms for TKs, as well as for the protection against the disclosure, acquisition or non-consensual use of this knowledge. Additionally, this local law establishes enforcement proceedings before the Peruvian Patent Office (INDECOPI). Furthermore, it was regulated that whoever applies for a patent related to a product or a process obtained from confidential TKs, has the obligation to present a copy of the licensing agreement with the respective Indigenous Peoples as a requisite to the granting of the exclusivity right.
Likewise, with the purpose of strengthening a defensive protection scheme, in 2004 the Peruvian government created the National Commission for the Protection of Access to Peruvian Biological Diversity and Collective Knowledge of Indigenous Peoples, known as the National Commission Against Biopiracy, whose functions are aimed to prevent acts of misappropriation on a global scale, by monitoring patent applications filed all over the world, related to inventions based on GRs and/or TKs from Peru, for the purpose of taking further steps to object the patentability of those inventions.
Notwithstanding the above, the Peruvian government recognizes that, in order to prevent acts of misappropriation of GRs and/or TKs, these solutions must be also adopted by other countries, reason why the Peruvian national policies are also addressed to develop a binding international legal framework. In this sense, taking into account the relevance of having an international set of strategic actions to the effect of defending its interests, Peru manages an agenda in the diplomatic forum, which comprises i) the development of negotiations in the forum held by the World Trade Organization (WTO) as a result of the Doha Ministerial Declaration of November 2001, which instructed the Council on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) to examine, inter alia, the relationship between TRIPS and the Convention on Biological Diversity (CBD); and ii) negotiations undertaken to subscribe bilateral and multilateral free trade agreements (FTAs), incorporating GRs and TKs aspects into the corresponding intellectual property chapters.
In this regard, it is worth mentioning that, within the WTO forum, Peru and countries such as Brazil and India have sought to amend of the TRIPS Agreement, with the objective of inserting a mandatory formal requirement within the patent chapter, in relation to inventions dealing with the use of GRs and/or TKs. In fact, it has been proposed to amend Art. 29 of the TRIPS Agreement, so as to include a provision whereby Members shall require patent applicants to disclose the origin of GRs and the associated TKs when the subject of the application is derived or developed from these resources, as well as the presentation of the evidence of prior informed consent and the equitable benefit-sharing resulting from its commercial exploitation. This proposal provides for the adoption of national legal mechanisms to reject or invalidate a patent whenever these conditions are not met.
However, certain developed economies are very reluctant to adopt these measures. Thus, countries such as USA, Japan, Korea and Australia have expressed their opposition, while others, such as those belonging to the European Union promote the search of alternative solutions to tackle the problem of misappropriation. As a corollary, to date these negotiations have not reached any concrete result. In this context, it seems that the signing of bilateral and multilateral trade agreements remains the only path to achieve the objectives that are not being achieved in the WTO forum, due to the better fluency that negotiations carried out by fewer parties involve. As a matter of fact, for almost ten years Peru has been subscribing agreements with several countries, which include provisions on GRs and TKs. Taking this into account, it is important to assess whether the bilateral forum, in which Peru has deployed significant efforts, has produced effective results.
In order to carry out the present analysis, first it will be identified what was the corresponding position of the developed countries with which Peru has signed trade agreements and what terms have been finally adopted, to then determine if the Peruvian government has achieved concrete results. For this purpose, the analysis will be focused on the agreements signed with the USA, which turns out to be the most reticent country in terms of linking the protection of GRs and TKs with the intellectual property system. The agreements with the European Union and the States of the European Free Trade Association will also be part of this analysis, taking into account that, as seen above, these economies promote some alternative approaches.
