The Need to Address Disclosure of Origin Requirements in Patent Law Harmonization Initiatives Joshua D. Sarnoff Washington College of Law American University Washington, DC, USA 1 March 2006 WIPO Open Forum on the Draft Substantive Patent Law Treaty

Overview Background and Thanks The IP System Should Address Mandatory Disclosure Requirements in Patent Law Harmonization Initiatives To avoid rewarding and perpetuating unjust conduct To share some of the burden of deterring and remedying unjust conduct To help clarify and potentially harmonize legal and equitable principles of ownership and equity Other Patent Law Harmonization Issues

Background Convention on Biological Diversity and subsequent development of national access and benefit sharing laws 2002 Bonn Guidelines invitation to Parties to encourage the “disclosure of the country of origin of genetic resources in applications … where the subject matter of the application concerns or makes use of genetic resources in its development” 2003 WIPO Technical Study of disclosure of origin requirements in relation to international patent law treaties and national laws; 2005 WIPO Examination 2004 PIIPA analysis of consistency of national requirements with patent treaties

Background WTO proposals to mandate disclosure of origin requirements in patent applications 2005 European Union Proposal for mandatory disclosure requirements 2005 UNCTAD Analysis (with Carlos Correa) identifying issues to for negotiation of an international instrument addressing mandatory disclosure of origin requirements 2006 CBD ABSWG-4 “recommendation” for an “international regime” with [bracketed text] regarding disclosure of origin and certificate of origin obligations.

Reasons to Address Disclosure Requirements To avoid rewarding and perpetuating unjust conduct To share some of the burden of deterring and remedying unjust conduct To help clarify and harmonize legal and equitable principles of ownership and equity

Rewarding and perpetuating unjust conduct 1 Material benefits of the patent system reward illegal or otherwise unjust conduct and are not recovered by invalidating patents based on substantive patentability criteria Venture capital and other benefits of mere application for patents Compensation and employment derived from transferred ownership of rights Licensing revenue and competitive advantage Substantive patentability criteria may not render patents invalid when inventions are derived illegally or when derived legally but patent benefits are not equitably shared Patent system should deter illegal and unjust conduct, rather than provide incentives for, reward, and perpetuate it

Rewarding and perpetuating unjust conduct 2 Laws of ownership and equitable principles may help to redress illegal and unjust conduct, but disclosure requirements for such information may not exist or may not be mandatory (unlike duties to disclose known information material to substantive patentability criteria) Mandatory disclosure of origin requirements are most important where patents are valid under substantive patentability criteria Mandatory disclosure of origin requirements make ownership and equity disputes transparent, facilitating legal efforts of individuals, indigenous peoples, governments, and patent offices and courts to prevent or redress unjust rewards obtained through the patent system

Sharing the burden of deterring and remedying unjust conduct 1 Common objections to mandatory disclosure of origin requirements fail to address the patent system’s own role in rewarding and perpetuating unjust conduct: 1.Lack of authority and capacity for patent offices to evaluate legality of access, ownership, and fairness of benefit sharing 2.Inability to address ABS violations, where no patent is sought 3.Substantial burdens of investigation and evaluation for businesses and government agencies, particularly for historic collections 4.Potential deterrent effect on scientific research 5.High cost of administering a mandatory disclosure system, particularly without an empirical demonstration of the scope of the problem

Sharing the burden of deterring and remedying unjust conduct 2 Inventors and patent system should shoulder some of the burden of prevention and remediation Systematic bias of underlying disputes without the transparency of mandatory disclosures Greater knowledge of inventors regarding facts to be discovered; helps patent system evaluators Precedents for requiring investigations and evaluations of potentially illegally owned property from which collectors and governments benefit – U.S. Native American Grave Protection and Repatriation Act indigenous cultural artifact requirements to determine rights of possession

Sharing the burden of deterring and remedying unjust conduct 3 The patent system should take moral and legal responsibility to deter illegal and unjust conduct Patent system is not an innocent bystander, but rather rewards (and may even benefit) from illegal or inequitable conduct Precedents for requiring institutions to take responsibility to deter and prevent themselves from rewarding illegally acquired property – Financial Action Task Force on Money Laundering recommendations and laws Need to consider burdens and benefits of burden shifting through harmonization initiatives

Clarifying legal and equitable principles By facilitating challenges to illegal ownership and unjust benefit sharing, mandatory disclosure of origin requirements will help to clarify applicable legal and equitable principles Precedents exist for mandatory investigations and evaluations leading to clarification of applicable principles – U.S. NAGPRA does not impose new laws of ownership but helps resolve underlying disputes regarding complex historical facts, treaties, and laws of ownership and alienation of property Additional clarification may lead to greater harmonization of relevant principles – ownership of and use rights in existing collections of GR/TK; ownership and ABS violations; recognition and enforcement of other governments’ and indigenous peoples’ legal and equitable principles; etc.

Additional Harmonization Issues 1 Increasing recognition of the worldwide social and innovation harms from high levels of protection Need to revise existing patent law treaties to harmonize protection downward (considering reasons for differentiation) Patentable subject matter Scope of claiming Experimental use/academic use/product regulatory approval use/fair use

Additional Harmonization Issues 2 Need to harmonize protection downward Relationship of patent laws to other laws (e.g., price regulation and competition) Compulsory licensing, government use, and injunctive remedies Patent misuse and contractual license restrictions Patent term and extensions

Conclusion I call on distinguished delegates to include mandatory disclosure of origin requirements in any initiative to harmonize patent laws Thanks to WIPO and questions