Objective

The Treaty aims to establish an international disclosure requirement, ensuring Patent Offices have access to appropriate information to prevent erroneous grants for inventions lacking novelty or inventiveness regarding genetic resources and traditional knowledge associated with genetic resources.

This requirement is also crucial for enhancing the patent system’s efficacy and providing benefits to both providers and users of genetic resources and associated traditional knowledge.

Salient features

• Enforcement

As per Article 17, the new Treaty will come into force three months after the 15 eligible contracting parties deposit their instruments of ratification or accession. Once it comes into force, the contracting parties will have to lay down the disclosure requirements specified therein.

• Definition of genetic resources

Under Article 2 of the Treaty, genetic resources are defined as material of plant, animal, microbial or other origin containing functional units of heredity of actual or potential value.

• Disclosure requirement

Article 3 of the Treaty contains the disclosure requirements to be adhered to by patent applicants.

1. As per the said Article, if the claimed invention is based on genetic resources, the patent applicant would have to disclose the country of origin of the genetic resources. If such provision does not apply or the applicant does not know the country of origin, the source of the genetic resources must be disclosed instead. Here, the source can be a research centre, gene bank, etc.
2. If the claimed invention is based on traditional knowledge associated with genetic resources, the patent applicant must disclose the indigenous people or local community who provided the traditional knowledge associated with genetic resources. In case such provision does not apply or if the same is not known to the applicant, the source of the traditional knowledge associated with genetic resources must be disclosed. The source in this context includes scientific literature, publicly accessible databases, patent applications and patent publications.

• Declaration to be provided if information is not known

As per Article 3.3, the applicant must make a declaration in situations where no such information is known.

• Opportunity to rectify mistakes

Article 3.4 requires contracting parties to provide guidance to patent applicants on how to meet the disclosure requirement. Further, patent applicants must be granted an opportunity to rectify a failure to include the minimum information mentioned above or correct any erroneous or incorrect disclosures.

• Patent offices are not to be burdened with disclosure verification

It is specified, under Article 3.5, that the patent office should not be under an obligation to verify the authenticity of the disclosures made in accordance with Article 3.

• Applicability does not extend to prior applications

Article 4 stipulates that a contracting party shall not impose obligations under this Treaty on patent applications filed prior to its entry into force for that party. This is subject to existing national laws on disclosure applicable to such patent applications.

• Non-compliance with disclosure requirement

The contracting parties would have to put in place a mechanism to deal with instances of non-compliance with disclosure requirements, as per Article 5.1 of the Treaty.

• Revocation of patent rights

On a joint reading of Articles 5.3 and 5.4, it is clear that patent rights can only be revoked, invalidated, or rendered unenforceable solely on account of the patent applicant’s failure to disclose information under Article 3 if there is fraudulent intent regarding the disclosure requirements.

• Possibility of extension to other IP domains 

The possibility of extending the disclosure requirement to other areas of intellectual property can be considered by the contracting parties in the review to be held after four years of the Treaty coming into force.

• Assembly of contracting parties

Article 10 deals with the Assembly of contracting parties. In the Assembly, the contracting parties will be represented by their delegations. This Assembly is tasked with dealing with matters concerning the maintenance and development of the Treaty and so on.

Hailing this Treaty, the Ministry of Commerce and Industry, in a press release dated May 26, 2024, highlighted that the new disclosure obligations will provide added protection to Indian genetic resources and traditional knowledge. The press release also pointed out that disclosure requirements are currently in place in 35 countries, and most of these are not binding; the Treaty will ensure compliance with disclosure obligations.

Comments

This is yet another remarkable achievement by WIPO in bringing this Treaty, which is to safeguard the genetic resources and traditional knowledge associated with genetic resources worldwide from being erroneously patented. The primary objective of the Treaty is to safeguard the rights of Indigenous people and local communities and protect genetic resources from unauthorised exploitation by third parties.

While the Treaty provides a clear legal framework for the protection of genetic resources, it also fosters international cooperation among member countries to protect each other’s biodiversity by preventing its exploitation by unauthorised parties. This is undoubtedly a significant step.

We hope India and all other eligible member countries will provide accession to the Treaty and make the necessary changes in their respective Patent Laws to ensure the smooth implementation of the Treaty and safeguard our genetic resources.