Vanderbilt University Law School Scholarship@Vanderbilt Law Vanderbilt Law School Faculty Publications Faculty Scholarship 2005 Traditional Knowledge & Intellectual Property: A TRIPS-Compatible Approach Daniel J. Gervais Follow this and additional works at: https://scholarship.law.vanderbilt.edu/faculty-publications Part of the Contracts Commons, and the Intellectual Property Law Commons Recommended Citation Daniel J. Gervais, Traditional Knowledge & Intellectual Property: A TRIPS-Compatible Approach, 2005 Michigan State Law Review. 137 (2005) Available at: https://scholarship.law.vanderbilt.edu/faculty-publications/830 This Article is brought to you for free and open access by the Faculty Scholarship at Scholarship@Vanderbilt Law. It has been accepted for inclusion in Vanderbilt Law School Faculty Publications by an authorized administrator of Scholarship@Vanderbilt Law. For more information, please contact [email protected]. +(,1 2 1/,1( Citation: 2005 Mich. St. L. Rev. 137 2005 Content downloaded/printed from HeinOnline (http://heinonline.org) Mon Jun 4 15:16:16 2012 -- Your use of this HeinOnline PDF indicates your acceptance of HeinOnline's Terms and Conditions of the license agreement available at http://heinonline.org/HOL/License -- The search text of this PDF is generated from uncorrected OCR text. Retrieved from DiscoverArchive, Vanderbilt University’s Institutional Repository This work was originally published in 2005 Mich. St. L. Rev. 137 2005 TRADITIONAL KNOWLEDGE & INTELLECTUAL PROPERTY: A TRIPS-COMPATIBLE APPROACH Daniel Gervais" 2005 MICH. ST. L. REV. 137 TABLE OF CONTENTS INTRODUCTION ............................................ 137 I. TRADITIONAL KNOWLEDGE & INTELLECTUAL PROPERTY ...... 140 II. COMPATIBILITY ANALYSIS ................................ 149 A. Nature of the Owner ................................ 149 B. Nature of the Object ................................ 151 C. Nature of the Right(s) ............................... 155 D. Term of Protection Issues ............................ 157 I. POSSIBLE WAYS FORWARD IN THE DOHA CONTEXT ........... 160 A. Towards a Declaration on Traditional Knowledge and Trade 160 B. (Draft) Ministerial Declaration on Traditional Knowledge and Trade ............................... 162 1. Text of the Proposed Declaration ................... 162 2. Com m ent ...................................... 163 C. Documentation Issues ............................... 164 D. The Role of Dispute Resolution ....................... 165 CONCLUSION ............................................. 166 INTRODUCTION This paper begins where the latest study commissioned by the World Intellectual Property Organization (WIPO)' ends: * Vice-Dean, Research and Professor of Technology Law, Faculty of Law (Common Law), University of Ottawa. Visiting Scholar, Stanford Law School (Spring '04). Former Head of Section, World Intellectual Property Organization (WIPO); and Legal Officer, GATT/WTO. Professor Gervais is the author of THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS (2d ed. 2003). The author wishes to thank the editors of the Michigan State Law Review and in particular Joseph J. Gavin for their diligent editing work. The author was the 2004 Trilateral Distinguished Scholar at Michigan State University College of Law. Financial assistance from the Social Sciences and Humanities Research Council of Canada (SSHRC), Bell University Labs and the Law Foundation of Ontario is gratefully acknowledged. I. Anil K. Gupta, WIPO-UNEPStudy on the Role ofIntellectual PropertyRights in the Sharing of Benefits Arising from the Use of Biological Resources and Traditional Knowledge (2004), available at http://www.wipo.int/tk/en/publications/769euneptk.pdf(last HeinOnline -- 2005 Mich. St. L. Rev. 137 2005 Michigan State Law Review [Vol. 2005:137 IP [should] provide an important means for strengthening the range of incentives that local communities need for conserving genetic resources and associate TK. In fact, IP can also provide incentives for augmenting this knowledge and resource base .... In the absence of adequate mechanisms to provide protection for such efforts, proper incentives are not yet available to encourage more people to pursue such innovations. The ultimate test of any incentive system is whether it can nurture and augment the spirit of experimentation, exploration and sharing, so evident in traditional communities over the years. We need to find ways of ensuring that the value system of many of these communities does not become a reason for their remaining poor, and thus, ultimately, eroding their vitally important knowledge and 2 resource base. The challenges facing us are multiple: First, we need to continue to build, and then cross, a cultural bridge to explain current forms of intellectual property to holders of traditional knowledge. This will achieve a dual objective: we could all benefit from their insights to allow us to work towards improving the intellectual property system to better respond to their needs; it would also allow traditional knowledge holders to reap available benefits from extant forms of protection, including collective and certification marks' and, where possible, patent and copyright protection.4 Tort and contract law may also offer some useful remedies.5 Second, we need to re-examine in depth the current forms of intellectual property. This is an indispensable first step before any new or "sui generis" form of protection is enshrined into a new international instrument.6 Then, if current intellectual property norms are visited Oct. 28, 2004). 2. Id. at 163, Part III. 3. See Daniel J. Gervais, The Internationalization of Intellectual Property: New Challenges from the Very Old and the Very New, 12 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 929, 967-70 (2002); Gupta, supra note 1, at 158-59. 4. See Gupta, supra note 1, at 4-5. 5. See Gervais, supra note 3, at 973-75; Nuno Pires de Carvalho, RequiringDisclosure ofthe Origin of Genetic Resources and PriorInformed Consent in Patent Applications Without Infringing the TRIPSAgreement: The Problem and The Solution, 2 WASH. U. J.L. & POL'Y 37 1, 399 (2000) (suggesting that patent enforcement (rather than grant) be made subject to the disclosure of the origin of genetic material and evidence of informed consent of traditional knowledge holders concerned). With respect to contract law, traditional knowledge holders could negotiate with laboratories and/or pharmaceutical companies to obtain a share of the benefits generated by a product or process developed on the basis of traditional knowledge (about e.g., the medicinal properties of certain plants) without a preexisting intellectual or other statutory right in that knowledge. 6. See WIPO Intergovernmental Commission on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (Revised Version of Traditional Knowledge: Policy and Legal Options), WIPO/GRTKF/IC/6/4 (Feb. 19, 2004) [hereinafter WIPO Traditional Knowledge], at 2 1, stating In the judgment of some communities and countries, however, the above-mentioned adaptations of existing IP rights systems may not be fully sufficient to cater to the HeinOnline -- 2005 Mich. St. L. Rev. 138 2005 Spring] TraditionalKnowledge found to be inappropriate, we may need to consider new international norms, including a sui generis right7 and norms related to environmental protection.Y Against that backdrop, this paper addresses one of the issues in that list, namely to what extent traditional knowledge is commensurate with intellectual property. The Article begins by situating the notion of "traditional knowledge" for the purposes of the paper. It then examines briefly the concept of "intellectual property" to determine the extent to which it can accommodate traditional knowledge protection. In a third part, the Article offers possible avenues to explore how to better protect traditional knowledge holders within the parameters of the Trade-Related Aspects of Intellectual Property Rights ("TRIPS") Agreement.' This choice seems reasonable for a number of reasons. First, while one is perfectly free to criticize TRIPS or suggest that it be amended,' ° the prospect and extent of any such modifications are unknown and difficult to predict. In addition, if amendments do happen, they are likely to require several years to negotiate and enter into force. Third, one would have to be an extreme optimist to think that TRIPS will be amended in ways that respond to every need and concern of holders of traditional knowledge. For all these reasons, finding solutions within the confines of the current TRIPS text seems a rational way to proceed-which does not mean that work on rewriting TRIPS is ill-conceived. Both approaches are complementary. One should also bear in mind that traditional holistic and unique character of TK subject matter. The call for sui generis measures generally arises from such perceived shortcomings of conventional IP rights. Id. See Paul J. Heald, Mowing the Playing Field: Addressing Information Distortion and Asymmetry in the TRIPS Game, 88 MINN. L. REv. 249, 271-72 (2003). But see Dan Rosen, A Common Law for the Ages of IntellectualProperty, 38 U. MIAMI L. REV. 769,772 (1984) ("The continuing challenge of intellectual property law is not deciding how to treat new creations that are sui generis. Rather, it is determining whether a new thing is like an old. Put another way, it is the classic problem of the common law: treating like cases alike."). See also Gervais, supra note 3, at 970-73. 7. See