IP back to the future

  • Subtitle: Special Report: Intellectual Property
Written by  Posted Date: June 6, 2016
Illustration: Carl Wiens, 121 Art
Illustration: Carl Wiens, 121 Art
In the realm of traditional or cultural knowledge, is there an argument to be made that current intellectual property conventions don’t go far enough? Is there also an argument to be made that economically there is a need to reframe the way we view protection of knowledge from the past?

It’s a topic Merle Alexander has been thinking and talking about since he was a law student 17 years ago.
Alexander is a member of the Kitasoo Xai’xais First Nation and a partner at Gowling WLG in Vancouver practising aboriginal resource law. He has a personal and professional interest in the protection of aboriginal intellectual property rights, particularly traditional knowledge. He has negotiated treaty chapters on cultural heritage resources, drafted traditional knowledge protocols, and represented national aboriginal organizations in various international forums.

Alexander was a student when he was asked by a client to do research into Canada’s legal position on intellectual property jurisdiction. The issue has bothered him ever since. “The Canadian government takes the position that aboriginal people don’t have legal jurisdiction over intellectual property rights,” says Alexander. “The World Intellectual Property Organization is trying to look at ways of reforming IP law to allow for the protection of traditional knowledge and traditional cultural expression.” Today, Alexander is part of the research team known as IPinCH — Intellectual Property Issues in Cultural Heritage — at Simon Fraser University. He says the subject comes up whenever there are amendments to the Indian Act and the issue over whether First Nations have jurisdiction to protect their own heritage.

Intellectual property law is mostly about commercializing patents and fostering ingenuity for commercial purposes, so the idea of opening up a body of law to make changes to deal with cultural issues has been met with a “significant body of resistance in Canada,” says Alexander. He thinks there should be amendments made to a variety of laws including IP law. “Some of the most powerful changes would be to the IP jurisdiction,” he says. “New Zealand took the responsibility very seriously in the late ’90s with the Maori culture in which a variety of amendments were made to the IP regime in that country that served to empower the Maori to be the protector of their cultural heritage, and prohibit offensive incidents from occurring.”

When cultural heritage is in the news, it’s usually when someone is using an aboriginal symbol in an offensive way, notes Alexander. “The ability to trademark a culturally offensive name is an area that needs to be reformed in Canada. In New Zealand, it was. They amended their trademark legislation so a trademark could not be registered if potentially offensive to Maori.” New Zealand now has an expert body for review of matters or issues that could be considered offensive. “Canada hasn’t been very receptive to opening up its intellectual property laws — I think they think it’s a floodgate argument — that if you open it for any specific review, all the issues that exist with IP law people would want changed.”

Meanwhile, cultural heritage continues to be endangered by the lack of legal protection, says Alexander.
“In every single area of IP law, there is an area it could be reformed — on the copyright front, it is intended to mostly recognize natural or legal persons and is limited to their natural life. With aboriginal cultural heritage, the difference is most aboriginal cultural heritage is passed from one generation to the next with no specific owner.”

Aman Gebru is researching traditional knowledge and is also part of the IPinCH project and a SJD candidate at the University of Toronto’s Faculty of Law. Last fall, he wrote a paper called “Intellectual Property Law and the Protection of Traditional Knowledge: From Cultural Conservation to Knowledge Codification.” His paper states the legal protection of traditional knowledge — the knowhow, skills, and practices of indigenous and local communities — has become a focus on the national and international stage. He argues it’s a growing area of concern in the world of IP and says he can see potential for legal challenges to emerge in the future. “There are two different ways people are looking at this — in the literature it’s called defensive protection and positive protection,” he says.

The defensive protection is less controversial, where advocates of traditional knowledge protection are trying to stop people from acquiring IP rights over traditional knowledge — for example, if a pharmaceutical company goes into an indigenous community, learns about the use of a certain plant for treatment of disease, does a little more research, and then patents the knowledge. “The defence protection is less controversial and it is where advocates are trying to stop people from acquiring intellectual property rights over traditional knowledge. The defensive protection would say it’s not innovative enough so getting private rights over this knowledge is not useful to society at large,” he says.

The flipside to that, which is more controversial, is positive protection, which is about granting rights to these communities — empowering them to promote their knowledge and control use by outsiders and benefit from the resulting innovation. “So a pharmaceutical company would develop a drug and a share of the profits would have to go to the communities,” he says. “In the past, the sharing of benefits has not happened. My research is saying that, in addition to the fairness arguments, there is an economic efficiency argument — it’s economically rational to protect this knowledge because there’s huge value to come out of it.”

Gebru is focused on the medicinal aspect of traditional knowledge, which can include bioprospecting. Instead of blindly searching for plants with viable characteristics, researchers go to communities and ask what they use and what is an interesting plant and are guided by this traditional knowledge.

The idea is to combat incidents of biopiracy. “If you look at biopiracy cases, communities have been very shy, as a result of those bad experiences, to say, ‘OK, we’re not going to share our knowledge because our knowledge is used against our will, and sometimes no recognition is given.’ So the attribution is important to say they got the knowledge from this community, which may be sufficient because it’s not only about money.”

When companies make millions and the community doesn’t get anything out of it, the community becomes more restrictive in giving access. “I look at that and say the win-win solution is to go ahead and encourage communities to document their knowledge and then disclose to outsiders, but the intellectual property law rule is to say your knowledge is protected even if outside the community.”

Gebru’s research also looks at free trade agreements like the Trans-Pacific Partnership that mentions traditional knowledge. “In the next five to 10 years, trade agreements will be the more interesting area of IP,” he says. “This is going to be the side story that could take over — if you look at the dynamics that call for traditional knowledge to be protected as IP in response to this pressure from conventional IP advocates to say we need more intellectual property protections. Communities are going to say if you need stronger protections maybe we should require protection for our type of knowledge — it’s a clash between world views taking place internationally.”

David Schwartz, past president of the Intellectual Property Institute of Canada and a partner at Smart & Biggar/Fetherstonhaugh in Ottawa, says the appropriate Latin term for this may be sui generis — in a class or group of its own. “It’s all rather amorphous right now,” says Schwartz. “Biopiracy suggests to me that someone in a dominant position — whether it be resources or sophistication like a drug company — would go and obtain from a weaker party — such as an indigenous population — materials or information that are then utilized to make a proprietary and profitable drug product. By and large, you could not patent traditional knowledge because it is already in the public domain,” says Schwartz. “If people are treating themselves using leaves of a particular plant to treat a headache, you couldn’t patent that. “

However, he notes, there are treaties that address this kind of thing. The Convention on Biological Diversity and, as part of that, the Nagoya Protocol, which is part of the convention, addresses access to genetic resources and fair and equitable sharing of benefits arising from their utilization. It came into force in 2014, but Canada is not a signatory although it is a party to the convention. India and Switzerland are signatories, but China and the United States are not.

The Nagoya Protocol relates to the use of genetic resources and traditional knowledge. If you are going to access genetic resources prior, informed consent is required from the holder of those resources, which could be an indigenous community. Then there is a requirement for agreement on access and benefit sharing for a fair and equitable part of the benefits. It must also be done on mutually agreed terms. “We’re not a party to that,” says Schwartz, who has been part of the consultations with the Canadian government on it through his work through the Intellectual Property Institute. “From an IP practitioner’s perspective, the provisions do look very complex and amorphous. Who do you negotiate with and who is authorized to do this?”

A patent right is much more concrete: You invent something, you describe it, you file your application.
Could there be a dispute over inventorship? Perhaps, but it could be sorted out.

This is where the new and unique right of sui generis — in a class of its own — comes in. “In IP law, the fact you found your working materials in a particular jurisdiction doesn’t give those people rights. This is giving rights to those where the plant was found on their land,” says Schwartz. “Despite the challenges, there is the possibility it will make sense for Canada to join this. There is concern in my profession the requirements are very uncertain and difficult to analyze, but there are people who will come at it from a very different perspective who work with those in the traditional knowledge field.”

So far, the battleground in this area has been marked by the developing world versus developed world dichotomy, says Andrew Skodyn of Lenczner Slaght Royce Griffin LLP. “That’s the idea that patenting of Western medicine and small molecules, synthetic drugs has been thus far well documented and developed and a standard protocol by which one ensures that one protects one’s own innovation,” he says. “Whereas the greatest concern of biopiracy has been, to this point, that companies are allegedly going and trying to patent something that has been public domain for a long time and no one has written it down. That issue in Canada has come up mostly in the context of the policy aspects of the battle between first to patent and first to invent.”

Skodyn says he wouldn’t be surprised “to discover there are traditional remedies or other medicines that North American or Canadian First Nations have used over the years that some day some enterprising pharmaceutical company might find and the issue is going to be are they really developing it such that it is a new thing? There is knowledge that is fundamental to people, and whether that’s traditional medicine known for years or the genes that are inside ourselves that we’re just not comfortable with someone owning a patent over, and so we want to draw distinctions.”

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Jennifer Brown

Jennifer Brown is the editor of Canadian Lawyer InHouse.

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