SIGNPOSTS TO SUI GENERIS RIGHTS: 5 TRIPS AND THE PROTECTION OF COMMUNITY RIGHTS by Carlos M. Correa The purpose of this paper is to discuss whether the establishment of sui generis regimes, for instance, to recognise the rights of indigenous and local communities, would be inconsistent with the main international conventions in force in intellectual property rights (IPR) and, particularly with the TRIPS Agreement. Our argument is that any regime that creates new rights or expands the existing ones, shall not conflict, in principle, with said conventions since the latter only provide for minimum standards, are not exhaustive in their coverage, and do not prevent the development of new rules and institutions. The issue of communities' rights relating to traditional knowledge and associated biological materials has given rise to a wide range of approaches and proposals. Such knowledge and materials currently belong to the public domain, except where they can be protected under the existing modalities of IPR. This is often done not by the communities or their representatives, but by multinational companies that have acceded to and obtain IPR on that knowledge or materials or their derivatives. It should be noted, for the purposes of the following discussion, that the Convention on Biological Diversity (article 8 j), an internationally binding instrument, provides a legal basis for the recognition of communities' rights. The contents of such rights must be determined by national laws in accordance to the applicable legal systems and practices. When reference is made to a "sui generis" regime in the TRIPS Agreement (article 27.3.b), the expression is used in relation to the protection of plant varieties only, i.e. to some form of protection (such as breeders' rights) relating to that specific subject matter. "Sui generis" is, however, widely used in the literature and in many proposals, in a much broader sense so as to include different manifestations of indigenous/local communities knowledge, relating to, for instance, medicinal uses of plants, cultivation practices, etc. This broad concept may include, but is not limited to, plant varieties. This paper considers, first, the scope of patent protection with regard to biological materials existing in nature, and whether it would be legitimate to exclude the patentability of such materials under the WTO rules. Second, it examines the nature of the obligations under the TRIPS Agreement, and the possibility of creating new IPR regimes for subject matter not presently covered by existing IPR. Third, it considers whether any new regime, if created, would have to be subject the national treatment principle, and necessarily confer exclusive rights. Finally, the paper briefly reviews the different types of proposals made to deal with communities' knowledge and the associated biological materials. 5.1 Patentability of biological materials The TRIPS Agreement specifies the requirements that an invention must meet in order to be patentable, but it does not provide a definition of what an invention is. This leaves WTO Member countries freedom to determine what should be deemed an invention. This is an important issue with regard, inter alia, to biotechnology-related inventions, computer programs and new uses of known products. Patent law has traditionally distinguished between "inventions", which are patentable, and "discoveries", which are not. This distinction has been blurred, however, with the advent of biotechnology in some countries. The use of genetic engineering and other techniques allows the reproduction and use of substances which exist in nature and numerous patents have been granted relating to materials taken from humans, animals and plants. For instance, in countries that are members of the European Patent Convention a patent can be granted when a substance found in nature can be characterised by its structure, by its process of obtention or by other criteria, if it is new in the sense that it was not previously available to the public. In the United States, an isolated and purified form of a natural product can be patented if it is found in nature only in a non-purified form. As a result, a very thin line separates invention from discovery in those countries. Under these principles the patenting of natural genes has become possible. Claims in this case normally refer to an isolated DNA sequence, DNA constructs and new transformed plants derived from it, though claims often include natural DNA sequences without limitations. There is nothing in the TRIPS Agreement or in other international conventions on IPR, however, that obliges Member countries to follow this expansive approach towards patenting of substances existing in nature. In fact, many laws in developing countries (e.g. Argentina, Brazil, Andean Group) exclude such a possibility, in a manner that is fully consistent with the Agreement. In sum, any legislation relating to communities' knowledge and/or biological materials based on the non- patentability of such materials, can not be contested on the basis of existing international agreements. 5.2 Minimum standards The international conventions on intellectual property, including the TRIPS Agreement, only provide for minimum standards of protection. They do not contain uniform rules, but just a set of obligations that determine, for each area of IPR, the level of protection below which Member countries are not permitted to legislate. In accordance with Article 1.1 of the TRIPS Agreement, Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their domestic law more extensive protection that is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice. This provision stresses that the provisions contained in the Agreement constitute minimum standards. Hence, Members may — but cannot be obliged to — provide a "more extensive" protection in any field of IPR. The provision of a more extensive protection may be based on the recognition of broader rights with regard to subject matter specifically protected under the Agreement (e.g. providing a term of protection longer than required for patents, trademarks, etc), or on the protection of subject matter that is not covered by the Agreement. In other words, there is no limitation preventing the establishment of protection relating to areas outside the TRIPS Agreement. The only limit for legal action beyond the TRIPS Agreement is that the expanded or additional rights should not diminish or nullify the rights as protected under the Agreement. The areas that, for the purposes of the TRIPS Agreement, constitute "intellectual property rights" include copyright and "related rights", trademarks, geographical indications, industrial designs, patents, layout-designs (topographies) of integrated circuits and "undisclosed information". This definition excludes from the scope of the Agreement two modalities of IPR protection existing in many countries: utility models and breeders' rights. The utility models or "petty patents" protect minor innovations, mainly in the mechanical field. They have been recognised in many developed countries (e.g. Spain, Germany, Japan) and in a growing number of developing countries (e.g. Brazil, Mexico, Argentina, Andean Group countries). Nevertheless, there is no international convention specifically dealing with utility models, though they are subject to the general principles and provisions of the Paris Convention. With regard to breeders' rights, though the TRIPS Agreement obliges to protect plant varieties, it leaves freedom to determine the nature and extent of protection. The absence of rules in the TRIPS Agreement on breeders' rights leaves the UPOV Convention as the single international instrument to provide for minimum standards of protection for plant varieties. But, unlike the cases of the Paris, Berne and Washington treaties, the WTO Members are not obliged to comply with the obligations set forth by the UPOV convention, except if they have voluntarily adhered to it. The exclusion of utility models and breeders' rights from negotiations in the Uruguay Round, suggests that the countries and industrial lobbies that promoted GATT negotiations on IPR, were not interested in defining universal minimum standards for those modalities. It does not mean that breeders' rights and utility models cannot be considered specific kinds of IPR (more precisely, of industrial property) since they convey all the characteristics of such rights. It is clear, therefore, that there currently exist modalities of IPR not covered by the TRIPS Agreement. Similarly, nothing in the international conventions, including said Agreement, prevents the development of new IPR regimes either in completely new areas or to supplement (in a cumulative way) the protection of subject matter already covered by other forms of IPR. [ ] In fact, less than two years after the adoption of the TRIPS Agreement, the European Union approved a new, sui generis, right with regard to data bases (Directive 96/9/EC on the Legal Protection of Data Bases). Shortly after the European decision, in August 1996, WIPO convened a diplomatic conference to consider a possible new treaty that would internationalise such sui generis regime. Although the Conference, held in December 1996, could not agree on the new instrument, in part due to the opposition by librarians and the scientific community (even within the United States), negotiations are scheduled to continue in 1997. It should be noted, finally, that article 8 of the TRIPS Agreement states that: 1. Members may, in formulating or amending their national laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. Thus, any country that determines that protecting communities' knowledge and the associated biological material is required to enhance its socio-economic and technological development, may enact specific legislation for that purpose, within or outside the model provided by IPR, and within or outside the framework of the TRIPS Agreement. 5.3 National treatment In line with other conventions on the matter, the TRIPS Agreement provides for the principle of "national treatment" (Article 3). Each Member shall, with regard to the protection of IPR, accord to the nationals of other Members treatment no less favourable than it accords to its own nationals . The application of said principle, however, is subject to the exceptions provided under the Paris Convention, the Berne Convention, the Rome Convention and the Washington Treaty on integrated circuits, Moreover, with respect to the so-called "neighbouring rights" (i.e., rights of performers, producers of phonograms and broadcasting organisations) the national treatment principle is only binding with respect of the "rights provided under this Agreement". The purpose of this clarification is to leave outside the Agreement the very controversial issues between United States and Europe regarding the distribution of revenues from audio and video levies in Europe. These issues remained unresolved notwithstanding the strong demands from the United States on the subject during the Uruguay Round. While the TRIPS Agreement does not allow for reservations, it respects those that can be made in accordance with article 6 of the Berne Convention (1971) [ ] and with article 16.1(b) of the Rome Convention [ ]. This reservations, however, now need to be notified to the Council of TRIPS. Exceptions to the "national treatment" principle are acceptable in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member (article 3.2 of the TRIPS Agreement). If, as stated, the TRIPS Agreement permits limited exceptions to the national treatment principle, the latter does not apply to modalities of IPR not covered by the TRIPS Agreement or by other conventions entered into by a country. Thus, countries recognising breeders' rights that are not members of UPOV need not to apply that principle; even UPOV members are only bound to apply national treatment to nationals of other UPOV members. [ ] Likewise, if a new sui generis regime were established by a country for communities' knowledge, it would not be obliged to confer national treatment to foreigners. The country in question could, voluntarily, provide national treatment or rather require reciprocity. In fact, the latter is what United States did when it introduced, for the first time in the world, a sui generis protection for integrated circuits. In order to expand IPR protection to that new area and to force other countries to create similar rights, the national treatment principle was ignored by the Semiconductor Chips Protection Act, adopted by US Congress in 1984. Moreover, the law included a stringent material reciprocity clause: no foreigner was able to obtain protection of a chip design in the USA if his country of origin did not grant a protection equivalent to that conferred in USA (Correa, 1990). As mentioned above, an important derogation to the national treatment principle can be also found in Europe. Foreign authors and artists cannot participate on the same footing than nationals in the distribution of revenues from video and audio levies. A similar system has been adopted in April 1997 in Canada, in order to support its "cultural" industry. Bill C-32 recognised neighbouring rights on sound recordings and imposed a fee on blank recording materials. Based on a reciprocity principle, these rights would not apply to nationals of countries where similar rights are not conferred, notably the United States. [ ] A derogation to national treatment is also provided for under the new sui generis right relating to databases created by the European Union (Directive 96/9/EC). Beneficiaries of the special protection are only nationals of an EU Member State or those that have habitual residence in the territory of the Community, including companies having their registered office, central administration or principal place of business in the Community. Databases made in other countries may be protected on the basis of "agreements" to be concluded by the Council acting on proposal from the EU Commission (article 11.3). 5.4 Exclusive rights Many of the proposals — summarised below — with respect to the intangible content of biological materials and/or communities' knowledge, would entail the establishment of IPR or IPR-like rights Such proposals share with IPR the fact that they are intended to provide protection with regard to certain types of information. Many of such proposals do not convey the granting of exclusive rights, i.e. of a ius prohibendi. The recognition of IPR is usually associated to the granting of exclusive rights, but this is not a sine qua non condition. Some modalities of IPR do not entail exclusivity, but other types of rights. Thus, the TRIPS Agreement does not require the granting of exclusive rights in a number of instances, such as: In the area of copyright and related rights, performers "shall have the possibility of preventing" certain acts without their authorisation (article 14.1). Members are only obliged to provide "legal means" to prevent certain uses of geographical indications (article 22.2); Undisclosed information is only protected against acts "contrary to honest commercial practices" in the framework of the discipline relating to unfair competition (article 39). In sum, IPR do not necessarily involve exclusive rights. The development of a IPR sui generis regime that does not confer exclusivity would not be incompatible either with the notion of IPR or with the international conventions on the matter, namely the TRIPS Agreement. 5.5 The proposals The proposals to deal with communities' rights in general, and specifically with traditional plant varieties ("landraces"), considerably diverge in their scope, objectives, legal grounds and possible forms of implementation. At least four different approaches may be identified. 5.5.1 Public domain In accordance with one approach, legislation and international conventions should ensure that communities' knowledge, biological materials and their derivatives are not subjected to any kind of property rights, given the difficulties inherent in establishing intellectual property rights for indigenous/traditional knowledge and the essential incompatibility between any appropriation regime and the cultures and practices of said communities (Montecinos, 1996; Nijar, 1996). Hence, communities' knowledge and associated materials should remain a part of "public domain" everywhere. For this purpose, patenting should be prevented. In order to destroy the "novelty" requirement and the eventual granting of patents, it has been proposed to systematically publish knowledge on plants and their uses. [ ] As indicated by many authors and NGOs, a growing number of patents is being granted in industrialised countries with respect to knowledge and materials developed and used by local and indigenous communities. Paradigmatic cases of such appropriations are patents relating to the neem tree, quinoa, ayahuasca, barbasco, kava, endod and turmeric. In the context of a growing clamour in many developing countries against "biopiracy", on 14 August 1997, the US Patent and Trademark Office declared invalid a patent on turmeric issued to the University of Mississippi Medical Centre in December 1993, which had been challenged by the India's Council for Scientific and Industrial Research (SUNS No. 4050, 8.9.97) One of the reasons explaining the relative ease with which communities' knowledge may be patented in the USA, is that US patent law, unlike the law in force in most countries, does not consider that the "novelty" requirement has been lost when an invention has been divulged outside the USA by means of public use and sale. Only publications made abroad are deemed to destroy novelty under US law. In Europe and most countries in the world, novelty is lost by any divulgation — by oral, written or other means — made in a foreign country. This is a point that may be brought to the discussion on the revision of article 27.3(b) of the TRIPS Agreement scheduled for 1999, in order to suppress the asymmetry created by US law in this respect. 5.5.2 Application of existing IPR A second approach relevant to communities' rights are the attempts to accommodate existing IPR in order to protect some elements of their knowledge, and/or provide protection for traditional plant varieties. Proposals along the lines of this approach have included the possible application of geographical indications, trade secrets law, as well as certain amendments to patents and breeders' rights legislation. [ ] Geographical indications apply when the typical features or special characteristics of a product can be attributed to the geographical area or region from which it comes. The rights associated to geographical indications may be claimed by any undertaking residing in the place designated by the indication. This modality of protection might be applied to centres of diversity of certain crops (CPGR, 1992) in a way similar to their application to other products, such as wines and spirits. However, said indications are of limited utility to protect communities' knowledge and associated materials, since they do not protect knowledge as such, but only prevent the false use of the name of a region or locality. They are protected just as a distinctive sign, like trademarks. Another option is trade secrets. Some valuable knowledge may be preserved secret, particularly in cases of applications of plants for therapeutical purposes. Holders of this knowledge may well be protected under unfair competition rules, which do not require previous registration or other formalities. Trade secrets protection has been applied in some interesting cases relating to plant materials. In Franklin vs. Giddins (1978) an Australian court found that stealing cuttings from a genetically unique nectarine tree was an improper means of acquiring confidential information. The judge stated: The parent tree may be likened to a safe within which there are locked up a number of copies of a formula for making a nectarine tree with special characteristics...when a twig of budwood is taken from the tree, it is as though a copy of the formula is taken out of the safe. However, the application of trade secrets protection to communities' knowledge is problematic, among other things, because secrecy is contrary to the open exchange which prevails in communities' culture as a means to ensure advances within agriculture (Lesser, 1997, p. 14). Another suggested possibility is the application of copyright. [ ] In the Milpurrurru case, an Australian court awarded damages for breach of copyright to a number of Aboriginal artists whose designs were wrongfully reproduced on carpets. The court ruled that this was a particularly egregious breach of copyright, involving a culturally demeaning use of infringed works. In computing the damages payable by defendants to the individual artists whose works were infringed, the court was prepared to recognise the cultural harm suffered by the individual artists. However, the court considered itself unable to compensate the communities of those artists who were no longer alive. (Blakeney, 1997, p. 299-300) The possible application of the UNESCO/WIPO "Model Provisions for National Laws for the Protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions" — which have been adopted by a few countries — has also been advocated (Posey, 1993; The Crucible Group, 1994). The Model Provisions attribute rights not only to individuals, but also to communities, and allows the protection of an ongoing or evolutionary creations. [ ] This are two important features of the Model Law, since "traditional" knowledge includes usages collectively developed that evolve over time (Bérard and Marchenay, 1993). In the area of patents, one suggested approach is to oblige patent applicants to declare the country of origin of biological materials related to the invention, which in practice many applicants normally do (UNEP, 1996, p. 13). This requirement may help to identify the country of origin of a given material and the implementation of the obligation to share benefits imposed by the CBD, but would imply no direct benefits for the communities. With regard to breeders' rights, the application of a "uniformity" requirement less stringent than under standard breeders' rights, or its substitution by a criterion of "identifiability" has also been suggested (Leskien and Flitner, 1997, p. 54-55). The relaxation of one or more of the criteria to judge the protectability of a variety, may permit the protection of landraces, to the extent that the other legal requirements are met. Communities may also benefit in some cases from provisions in breeders' rights laws authorising the protection of discovered varieties, which is allowed in many domestic legislations as well as under UPOV. Legislation on breeders' rights proposed for India includes the recognition of a compensation for the communities that provided the resources, if identifiable (Balakrishnan, 1996, p. 39). The proposals based on an extension of existing IPR to communities knowledge, if implemented, would only provide a partial and indirect protection of such knowledge. They pretend to expand the conception underlying the IPR system, ignoring the limitations of that system and without a clear theory about the objectives that are pursued and the instrumental value of the proposed changes. 5.5.3 Sui generis within the IPR model Some alternatives for establishing sui generis regimes have been elaborated, that include elements derived from existing IPR, but which differ from the latter either in terms of the subject matter or the forms of implementation. One example of this approach is the proposal of recognition of "community intellectual property rights", with public defenders, gene-tracking databases and review mechanisms (The Crucible Group, 1994, p. 67). Other suggestions have included the establishment of a new type of rights on unmodified genetic resources as such (Walden, 1995, p. 191), or on a "resource derivate" (Environmental Resource Management, 1995, p. 30) though it is unclear who would be the title-holders and the scope contents of the rights to be conferred. [ ] Despite the apparent popularity of the sui generis approach within the IPR model, there are very few concrete proposals to effectively develop a new system of protection for communities' knowledge and associated materials. 5.5.4 Sui generis outside the IPR model Finally, a number of proposals have been made outside the IPR model. One suggested option would be to create "community intellectual rights" based on a rights regime that reflects the culture and value system of the communities, rather than bringing communities and their resources into the fold of the market economy (Nijar 1996, p.24; Berhan and Egziabher, 1996: 38). Such rights would be based on the custodianship and stewardship of local innovations, in perpetuity, by local communities, the free exchange of knowledge among communities, and the obligation to pay a royalty by any other person, organisation or corporation that commercially utilise said knowledge (Nijar, 1996, p. 56-58). Other proposals include the protection of: traditional knowledge as a cultural property under the terms of the Convention on the Means of Prohibiting the Illicit Import, Export and Transfer of Ownership of Cultural Property, administered by UNESCO. Property to be protected may have been created by individuals or collectively [ ] "traditional resource rights", understood as "bundles of rights" that protect knowledge relating to biological resources and assert rights of peoples to self-determination and to safeguard their culture (Posey and Dutfield, 1996, p. 95) "Farmers Rights" as a means of compensating traditional farmers for their contribution to the in situ conservation of plant genetic resources, in accordance to the FAO International Undertaking on Plant Genetic Resources (Resolution 5/89) (Esquinas- Alcázar, 1996, p. 2) "discoverer's rights" to be awarded to any individual or community that completed a taxonomic description of a species or variety not already in the public domain (Gollin, 1993, p. 180-181) traditional medicinal knowledge, based on a registry of traditional medicine practitioners, the establishment of an authority institution and rules on access and use of said knowledge (Sukin and Eamwiwatkit, 1997, p, 15) landraces on the basis of "seal model", in accordance to which a specific seal or certificate would be granted to market a variety under a specific denomination. The right to use the seal would not imply exclusivity on the material, which would remain free, except where the seal is used in combination with the registered denomination of the variety (Leskien and Flitner, 1997, p. 63) 5.6. Conclusions The establishment of a new regime, whether framed or not on the basis of the IPR model, to protect knowledge in possession of local/indigenous communities and associated materials (including landraces) would not violate any international convention, except if such new regime contains provisions that derogate rights recognised under a particular convention. A new regime, if established, need not comply with the principle of national treatment, which only applies to the IPR explicitly covered by the TRIPS Agreement and other international conventions. Rights not covered by the TRIPS Agreement (or other conventions) are not subject to the Agreement's principles and rules. 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