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SEE ALSO:
> More on geographical indications
> More on TRIPS and biodiversity
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Mr Lamy reported on four rounds of consultations he has held since March with a
smaller group: Argentina, Australia, Brazil, Canada, Chile, India, Egypt (for
the African Group), the EU, Japan, Mauritius (for the African Caribbean Pacific
or ACP group), New Zealand, Norway, Peru, South Africa, Switzerland, Tanzania
(for the least-developed countries or LDC group), and the US.
The Director-General was speaking in an informal meeting of the full membership
called to brief delegations on the consultations, which are separate from the
work of the Council on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Council).
The two issues are:
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whether or not to extend the higher level of protection for geographical indications currently only required for wines and spirits (“GI extension”, explained here)
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how the TRIPS Agreement’s provisions can and should promote the objectives of the UN Convention on Biological Diversity (CBD). Some countries want to amend the intellectual property (TRIPS) agreement so that patent applicants have to disclose the origin of genetic material and traditional knowledge (TK) used in the invention, to show that they have received permission to use the materials and knowledge, and to show that they are sharing the benefits with the original owners (“disclosure”). Others say these objectives are better served by other methods. These are explained here)
Geographical indications are place names (in some
countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products. The proposal to amend
the TRIPS Agreement comes under the heading of the relationship between the
TRIPS Agreement and the Convention on Biological Diversity (CBD).
The two subjects are “implementation” issues under the 2001 Doha Declaration,
but members differ over whether they are actually mandated negotiations. See
explanation
The 2005 Hong Kong Ministerial Conference
asked the Director-General
to intensify consultations on these issues.
In 2008, some members proposed these two issues be specifically made part of the
Doha Round negotiations in a package that includes a third subject, a
multilateral register for geographical indications for wines and spirits. But
others oppose some or both of the proposals and say they should not be part of
the Doha Round and should not be linked.
The discussion
Members’ positions remain apart both on the substance
and on whether there is a mandate to tackle the issues within the Doha Round.
On the TRIPS and CBD issue, they clearly agree that misappropriation of genetic
material and traditional knowledge is a problem to be tackled. But they remain
divided on whether the solution lies in amending the TRIPS Agreement to require
“disclosure” or in some other method such as research contracts.
On extending the higher level of geographical indications protection beyond
wines and spirits, they remain divided on whether the standard level of
protection is a problem, and therefore whether there is any need for
“extension”.
Speakers, many of them ambassadors, represented: Chinese Taipei, Argentina,
Australia, EU, US, India, Canada, Peru, Switzerland, Brazil, Chile, Kenya, El
Salvador, China, New Zealand, Japan, Pakistan, Tanzania, Colombia, Ecuador,
Costa Rica, Nigeria, Jamaica, Thailand, Nicaragua.
Concluding, Mr Lamy said that at least there is consensus that he should
continue his consultations. He noted that some members wanted the discussions to
be more political and less technical, while others wanted them to be the
reverse. Therefore, the present set-up of one ambassador and one expert for each
delegation strikes the right balance, he said.
His next consultation with the smaller group will be on 8 October.
Caveat on the report
Some delegates asked for his report in writing. Mr Lamy said he was happy to share the report provided he can preserve its informality. What he said was nothing more than an unofficial snapshot that must not be seen as an official text, the Director-General stressed. In that spirit, his opening speaking notes are reproduced here:
Open-ended informal consultations
on GI extension and on TRIPS/CBD
as outstanding implementation issues
Monday, 27 July 2009 — 15:00
Speaking points for the Director-General
I have convened this open-ended session to bring you all up to speed on my consultations on two issues:
-
the extension of the protection of geographical indications provided for in Article 23 of the TRIPS Agreement to products other than wines and spirits, or the so-called “GI extension”; and
-
the relationship between the TRIPS Agreement and the Convention on Biological Diversity — for short, “TRIPS-CBD”.
This work dates back to the Doha Declaration, which identified these two issues
as among the “implementation-related issues and concerns raised by Members”.
Ministers expressed their “determination” to find appropriate solutions. The
TRIPS Council initially took up this work, but failed to progress towards
substantive convergence among Members. My predecessor initiated informal
consultations on these issues in 2003 to explore ways of moving forward. The
General Council endorsed this process as part of the July 2004 package,
underscoring that consultations were “without prejudice to the positions of
Members” on these issues. At Hong Kong, your Ministers mandated me to intensify
the existing consultative process and to report to TNC [Trade Negotiations
Committee] and the General Council, which I have done since.
From March 2009, I have undertaken the consultations personally, and will focus
today on the work undertaken in the four sessions convened since then. The
consultations are strictly informal and technical in character, and are
consciously focussed on assisting Members to understand more fully each other’s
interests and concerns, and to try to shed light on the technical issues at
stake. They have not addressed broader questions such as whether, and if so how,
these issues should be linked to the broader negotiating agenda. We have also
tried to ensure that these consultations remain distinct from the negotiations
on the GI Register conducted by [Ambassador] Trevor Clarke in the Special
Session of TRIPS Council.
Meetings have been held at the level of heads of delegation, assisted by one
technical expert. Delegations are invited from across the spectrum of views and
interests, and represent all formal positions currently on the table. They
comprise Argentina, Australia, Brazil, Canada, Chile, India, Egypt (for the
African Group), the EC, Japan, Mauritius (for the ACP group), New Zealand,
Norway, Peru, South Africa, Switzerland, Tanzania (for the LDC group), and the
US.
The working method has been to circulate lists of questions in advance of each
session and to use delegations’ oral answers to these questions as the basis for
open discussions. Time is divided equally between the two issues, and the
sequence of work is reversed each time to ensure equal treatment. Consultations
are entirely informal, to promote open discussion, so no written record is
issued.
Both these issues have a reputation for being difficult. Certainly, it is no
trivial task to find common ground among Members. The two issues raise
challenging questions at the technical and international levels, and touch on
key national interests, both commercial interests and socio-cultural concerns.
At a technical legal level, the consultations have raised issues such as what is
the exact scope of protection of GIs through the trademark system, and how does
this interact with descriptive and other uses of these terms? How to define what
patents are erroneous in the field of genetic resources; how to determine the
status of traditional knowledge (TK) as prior art in the patent system?
These issues concern the interplay between TRIPS and other areas of
international law and policy — for instance, whether and if so how the patent
system should recognize or give effect to the objectives of a multilateral
environmental agreement, the CBD. In the debate over extended GI protection, we
hear references to questions of equity and impact on trade in agricultural and
other goods.
And these issues go to the heart of certain national policy interests — many
developing countries seek greater recognition and respect for their heritage of
genetic resources and traditional knowledge systems; many countries seek to
ensure the sound functioning of the patent system as a key element of their
economic infrastructure; traditional agricultural producers and artisans seek
recognition of the local and traditional characteristics of their products;
agricultural traders seek access to export markets and freedom to use terms they
regard as legitimate trademarks or descriptive terms. These are substantive and
sensitive interests that delegations understandably guard with great care.
So we do have quite a solid menu in front of us. This requires, firstly, much
effort just to work systematically through the issues and to explore the
implications of different approaches to resolving them. It also means that we
all still have a degree of learning to do, including understanding the concerns
of opposing positions — these are unavoidably complex issues, and we have to
make sure that we fully understand the implications of each other’s positions,
so that whatever outcome we reach is one you are all comfortable with.
I have been impressed by the seriousness of delegations, by their willingness to
expend time and diplomatic bandwidth on this process, and by the respect shown
for the perspectives of the two sides, even as clear divergences continue, and
those differences are firmly expressed. I am convinced that a continuing focus
on technical issues is essential for a better understanding of all Members’
concerns. But this is not to fetishize the technical dimension, nor to pursue a
kind of academic enquiry. We must focus on what Members believe is practically
achievable. These consultations should illuminate the landscape more clearly,
and thus help delegations identify pathways through this difficult terrain.
I would not do justice to the very good work that delegations have undertaken if
I left you with a bare procedural account and ignored the substance. Hence I
will offer a brief overview of the ground covered in recent discussions. But it
would dramatically alter the nature of the consultations if participants felt
that every contribution would be reported on. So in giving you a general sense
of the content discussed, I am not presenting or characterizing the views or
positions of any delegation or group of delegations. Still less am I trying at
this stage to identify negotiating ideas for the resolution of these issues.
On GI extension, the first issue mentioned in my mandate, discussions covered a number of general themes:
-
Factors for and against expanding the protection of Article 23 to goods other than wines and spirits: this included a discussion of the comparative merits of the “misleading-the-consumer” test under Article 22 and the Article 23 “correctness” test.
-
How the costs and burdens of GI protection and its enforcement should be managed, with a particular focus on the needs of SMEs, and the best way of managing the trade-off between greater legal certainty and predictability (which proponents claim for Article 23 protection, describing it as “objective”), and the case-by-case application of the consumer deception and unfair competition rule (as applies under Article 22, described as “subjective”).
-
The rationale for the current higher level protection for wines and spirits — the idea of creating a level playing field for all products and to avoid discrimination between sectors is contrasted with the view that this was the outcome of a balanced package in the Uruguay Round.
-
Broader questions with bearing on trade interests, such as the impact of higher protection on continuing market access for food exports to third country markets and the importance of GI protection in the context of the overall package on agriculture.
-
The development dimension was stressed, including the view that higher protection for wine and spirit GIs principally benefited industrialized countries, but not those developing countries whose GI interests concerned textiles, handicrafts, agricultural products or foodstuffs, as against the contrasting view that higher GI protection may impede certain valuable exports of developing countries.
The discussions went some way to clarifying some technical issues:
-
The distinction between scope of protection under Article 23, recognition of a term as a protectable GI under Article 22.1, and the Article 24.6 exception permitting some generic use.
-
How GIs are protected as trademarks, especially as certification and collective marks, and the extent to which trademark protection can or should meet the expectations of the proponents of GI extension.
-
The related question of whether it was possible to implement GI extension under the trademark system or whether it would require some sui generis type of legislation.
-
Difficulties arising when GIs are used in translation, and whether GI significance in one country can or should influence the level of protection in another country.
The discussions looked at a range of practical examples that both illustrated
how GIs were protected as trademarks in some countries, and the perceived
shortcomings of trademark protection for some GIs.
Delegations continued to voice the divergent views that have long characterised
this debate. Even so, there were clarifications that trademark systems were
legitimate forms of protecting GIs, in line with the general TRIPS principle
that Members are entitled to choose their own means of implementing their
obligations. Extension proponents sought guarantees that trademark systems could
and would protect their GIs at the higher level for all goods. And discussions
clarified that GI extension did not mean existing TRIPS exceptions for generic
terms would cease to apply.
Turning now to TRIPS-CBD, discussions built on the common ground that I had
already reported in June 2008, resulting from the earlier round of consultations
— agreement on the avoidance of erroneous patents, securing compliance with
national agreements on benefit-sharing regimes and ensuring patent offices have
available the information needed to make proper decisions on patent grant.
Discussions reviewed the practical implications and comparative merits of
current proposals — a disclosure requirement, a database system,
nationally-based approaches to enforcing prior informed consent and equitable
benefit sharing. The discussions turned around how each of these options could
help achieve the widely shared objectives, and what form they could take to be
effective in meeting those objectives while not creating undue burdens.
We started on the avoidance of erroneous patents and explored how databases and
disclosure requirements would operate in practice to reduce the risk of patents
being incorrectly granted over genetic resources and related traditional
knowledge. Discussions covered how a mandatory disclosure requirement and how
databases would help prevent erroneous patents. However, proponents of
disclosure mechanisms stressed that their overall goal was to ensure that TRIPS
provisions positively supported compliance with the essential objectives of the CBD, including prior informed consent and equitable sharing of benefits. While
there has been general acceptance of these CBD goals, it is fair to say Members
remain divided as to the best means to attain this end.
Participants debated whether a disclosure requirement would:
-
be the most effective or desirable way of supporting compliance with access and benefit sharing obligations in the source country of genetic resources and associated TK, and the prevention of trans-boundary misappropriation of genetic resources and TK;
-
avoid the issuance of erroneous patents if patent applicants identified only the source country;
-
be burdensome for patent applicants and the concerned information readily available in patent offices; and
-
result in uncertainty and deter investment in innovation, thus undermining the role of the patent system.
Discussions also considered whether more precise definitions are needed on
genetic resources and TK and if so, whether or not to wait for these to be
worked out in other forums such as WIPO or the CBD.
While the general utility of databases was not disputed, participants discussed:
-
whether or not databases could serve as the primary way to prevent erroneous patents on genetic resources and TK;
-
the difficulty of having fully exhaustive databases of TK, especially since much TK is oral in character and there are concerns that recording TK in a database can itself lead to misappropriation;
-
the difficulty of fully mapping out all the genetic resources potentially available in a mega-diverse country; and
-
whether or not a mandatory disclosure requirement would be useful in helping point patent examiners towards the relevant databases.
I have tried to give a general sense of these very rich and often complex
discussions, but stress again that this is not in any sense a comprehensive or
authoritative account of the discussions. These processes thrive on their
informality, the freedom of debate and open exchange of views, and I very much
hope this can continue in the coming months with our next meeting planned for 8
October and for which on last Friday I sent out a fax asking participants for
their suggested questions. That said, we do owe the full membership a high
degree of transparency so that you can all maintain confidence in this process.
I now open the floor for your observations and questions.
• CBD: Convention on Biological Diversity.
• geographical indications (GIs): Place names (or words associated with a place) used to identify products (for example, “Champagne”, “Tequila” or “Roquefort”) which have a particular quality, reputation or other characteristic because they come from that place.
• modalities: The way or method of doing something — in the Doha Development Agenda negotiations these are blueprints for the final deal, eg, how to cut tariffs, and reduce agricultural subsidies and support, along with flexibilities to deal with various sensitivities. Once the modalities have been agreed, countries can apply the formulas to tariffs on thousands of products and to various support programmes.
?open-ended: (in the WTO) open to all members
• special sessions: meetings of WTO councils and committees focusing only on the Doha Development Agenda negotiations.
• TRIPS: Trade-related aspects of intellectual property rights.
> More jargon: glossary
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