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“Overall, I would not say that the gaps are narrower,
but that they certainly are better illuminated. I think we now have a better
practical sense of what it could mean to bridge those gaps, if and when the
decision comes to try to construct that bridge,” he said.
> Full text below
Mr Lamy said he had held three consultations since he
last briefed members on 27 July 2009.
The participating delegations were: Argentina, Australia, Brazil, Canada, Chile,
China, Egypt and then Gabon for the African Group, the EU, Japan, Mauritius for
the ACP Group, New Zealand, Norway, Peru, South Africa, Switzerland, Tanzania
and then Zambia for the LDC Group, and the United States.
Geographical indications: ‘extension’
On geographical indications, he said the consultations
the differences between the two levels of protection: the standard level of
TRIPS Article 22, and the higher level of TRIPS Article 23, which currently only
applies to wines and spirits
the possible effects of extending the higher protection to other products
the experience of protecting geographical indications under present standards
how protecting geographical indications compares to protecting other types of
how exceptions and limitations would apply under “extension”.
One way of distinguishing between the two levels of protection is how a term
would be tested to see if it violated a protected geographical indication. For
the standard (Art.22) level, a term would fail the test if it misled or confused
consumers about the origin of the good. For the higher (Art.23) level if would
fail if it was just incorrect (even if the true origin is inicated), ie, it did
not come from the geographical location and have the required characteristics.
Mr Lamy described in some detail how all these issues were discussed. Members
still disagree on whether “extension” could be useful but some issues are
clearer, he said.
“Essentially, the differences concern whether it is desirable and beneficial to
broaden the scope of enforceable rights that surround a GI once it is protected,
whether through the trademark system or otherwise, and how to deal with the
implications for third country markets, including continued access for current
products considered as legitimate generics,” he concluded.
TRIPS and biodiversity
On proposals related to biodiversity and traditional knowledge, Mr Lamy said
members agree on the objectives but differ on how to achieve it.
They clearly want to avoid patents being granted in error, to ensure inventors
using genetic resources and any associated traditional knowledge comply with
conditions for use (“prior informed consent” or PIC) and for sharing benefits
(sometimes “access and [equitable] benefit sharing” or ABS), and to enable
patent offices to have enough information to decide whether a patent can be
granted correctly, he reported. (Together, these are sometimes described as
avoiding “misappropriation” or “biopiracy”.)
Members disagree on whether the solution lies in amending the TRIPS Agreement to
require patent applicants to disclose the origins of genetic material and any
associated traditional knowledge used in their inventions (“disclosure”).
Mr Lamy said his consultations focused on the following topics:
the legal character of misappropriation
measures to avoid it
the legal scope of an approach based on national systems
costs, burdens and legal certainty of the proposal to require inventors to
Mr Lamy concluded that members understand that reforming the patent system alone
would not be enough to ensure proper access and benefit sharing.
“In sum, there is general agreement on the public policy objectives, including
ensuring equitable benefit sharing, but differences clearly remain on how to
arrive at those goals in practice,” he concluded.
In their comments, members continued to differ on the substance of the issues
and whether these two issues and a third (the multilateral register for
geographical indications for wines and spirits) should be linked (see “What’s
this about” box).
Several delegations favouring the link also asked Mr Lamy to report to
forthcoming meetings aimed at taking stock of the Doha Round negotiations. Some
others said the stock taking should keep to the mandate of the Trade
Negotiations Committee, the umbrella body overseeing the negotiations.
Speakers were: Argentina, the EU, India, Chinese Taipei, Cuba, Turkey,
Australia, Switzerland, China, Japan, Brazil, the African-Caribbean-Pacific
group (Mauritius speaking), the least developed countries (Angola speaking),
Chile, Thailand, Peru, Canada, US, Pakistan, El Salvador, Sri Lanka, Indonesia,
Venezuela, New Zealand, Barbados.
Open-ended informal consultations
on GI extension and on TRIPS/CBD
as outstanding implementation issues
Friday, 12 March 2010 — 10:00
Speaking points for the director-general
I have convened this open-ended meeting on GI Extension and TRIPS/CBD as a part
of the process which started in Hong Kong when Ministers requested me to conduct
consultations on two TRIPS issues:
first, the extension of the protection of geographical indications (GIs)
provided for in Article 23 of the TRIPS Agreement to GIs for products other than
wines and spirits, and
second, the relationship between the TRIPS Agreement and the Convention on
Biological Diversity (CBD).
At Hong Kong, I was mandated to intensify the existing consultative process on
these issues and to report to the TNC and to the General Council. From March
last year, I have undertaken these consultations personally, and I have
regularly reported to the TNC and to the General Council.
These two issues are obviously of interest to the broad Membership of this
Organization and I have been asked, understandably, to ensure transparency in
the consultative process, beyond the regular reports to the General Council. We
had such a session last July, where I briefed the full Membership on the
consultations I had undertaken in 2009 until that time. At that time I gave you
an overview of the questions that were raised and the answers that different
sides had given. Today’s briefing is intended to provide you with a further
update on what has been done since July 2009, in particular in the three further
sessions of consultations we have held since then.
Apologies for being a bit long, but I think I need to ensure that my report of
today is comprehensive for the benefit of all Members.
These consultations are informal, and they are technical in character. They
concentrate on helping Members to understand the interests and concerns that
drive each other’s substantive positions, and they are intended to shed light on
the technical, legal and policy issues which are at stake. They do not take up
broader, systemic issues such as the question of how the Doha mandate is to be
read or implemented, and in particular whether, and if so how, these issues
should be linked to the broader negotiating agenda.
These consultations also remain distinct from the negotiations on the system for
registration of GIs for wines and spirits, which are conducted in the Special
Session of the TRIPS Council.
The meetings have been held at the level of heads of delegations plus one
expert. The delegations I have invited for these consultations are from across
the spectrum of views and interests, and represent all formal positions
currently on the table. They comprise Argentina, Australia, Brazil, Canada,
Chile, China, Egypt and then Gabon for the African Group, the EU, Japan,
Mauritius for the ACP Group, New Zealand, Norway, Peru, South Africa,
Switzerland, Tanzania and then Zambia for the LDC Group, and the United States.
For this latest round of consultations, we have adopted a revised working
method. Participating Members submitted their questions on the two issues, first
coordinating questions among like-minded delegations and we then organised these
questions in several clusters according to their themes. Members worked through
all these clusters of questions in the course of the three sessions I mentioned.
Time was divided equally between the two issues and the sequence of work was
reversed each time to ensure equal treatment. The approach taken was to use the
questions as a springboard for a structured, but free-flowing general discussion
about these issues, allowing Members to engage with one another on these issues
in a way that is not possible in the more formal settings we are familiar with
such as the one this morning. For the same reason, these consultations are
entirely informal, to try to promote open discussion.
Overall, I saw very serious engagement by delegations, a willingness and
capacity to enter into the details on these issues, mutual respect — which I
feel goes beyond diplomatic politeness — for the perspectives of the two sides,
even if clear divergences of interest are still apparent.
As I said, I focused these consultations on substance, on content, trying not to
have a rehearsal of well-known and long-established formal positions. I do think
that further to these working sessions, we know the landscape of issues much
better now. I cannot report convergence, but certainly much clearer light on
divergences. Overall, I would not say that the gaps are narrower, but that they
certainly are better illuminated. I think we now have a better practical sense
of what it could mean to bridge those gaps, if and when the decision comes to try
to construct that bridge.
Going now to the substantive part of this report, I will give you my sense of
what we have done and where we are on each of the two issues, without presenting
or characterizing the views or the positions of any delegation or group of
delegations, as that is not the purpose of my reporting, since you can do that
Geographical indications (GIs)
Starting with GI extension, discussions covered a number of general themes
grouped into 5 clusters:
Cluster 1: Differences between Article 22 and Article 23 protection
Cluster 2: Effects of extending higher protection to additional products
Cluster 3: Experience of GI protection under existing standards
Cluster 4: GI protection compared with other forms of IP
Cluster 5: Exceptions and limitations under extended GI protection
Under Cluster 1, delegations reviewed the differences between protection under
Article 22 and Article 23. They dealt with the question of whether and how a GI
could be prevented from becoming generic in third markets without Article 23
protection. They also sought to clarify the scope of the proposal to extend GI
protection, in terms of the scope of products covered, their link with their
geographical origin, and the role of a GI identifying a product.
Proponents of extension consider that Article 22-level of protection is costly
and burdensome because of the difficulty in establishing the evidence necessary
to prove that use of a GI is misleading or confusing to the consumer — which is
the Article 22 test — as against the more objective test of “correctness” under
Article 23, where the use of a geographical term must be prevented if it simply
corresponds to a protected GI, without the additional test of proving deception
or confusion. Other Members put the view that Article 22 protection is
sufficient for policy reasons, and that the current status of the TRIPS text was
the result of a deal in the Uruguay Round.
Under Cluster 2, which relates to the effects of extending higher protection to
additional products, the participants discussed the effects of higher protection
being extended to GIs for different products, including in third country
markets, and whether increased market access had resulted from higher
protection. Here, some of the concerns related to impact on existing trade with
third country markets, and the possibility that higher protection might in some
circumstances reduce market access for products with generic descriptions.
Members put forward several concrete examples, touching especially on questions
of generic uses and the territorial character of the recognition of GIs.
Cluster 3 was about Members’ experience so far with GI protection under the
existing standards, including the implications of Article 23 protection in third
country markets for trade in wines and spirits, and the nature of claimed
problems arising from the current level of protection. Some participants
considered the experience with the application of Article 23 to GIs for wines
and spirits was positive, and augured well for other sectors; others disagreed
and pointed to potential difficulties, and questioned the value of drawing an
analogy between wines and spirits and other products.
Cluster 4 contrasted GI protection with other forms of IP. Questions concerned
whether GIs were different from other forms of IP, and whether any possible
trade benefits following GI extension could be equally available through
alternative branding and marketing strategies. Members discussed the relative
costs of achieving GI protection in third markets compared with the cost of
using alternative branding and marketing strategies. This discussion highlighted
that marketing and GI protection were complementary rather than alternative
means of achieving commercial success of a product. In other words, legal
protection was of limited value without effective promotion, and investing in
promotion without legal backing was also ineffective. Once again, delegations
discussed the potential uses of the trademark system in relation to GI
protection. Continuing market access for products legitimately presented with
generic terms or other TRIPS exceptions to GI protection was a particular issue,
and Members discussed the implications of extension in relation to such
Finally, on Cluster 5 the last question was: How would exceptions under Article
24 apply under an extension system? For instance, there is a specific exception
for the names of grape varieties. How could such a sector-specific exception be
adapted and applied for other products, such as cheese and other processed
foods? On this point, Members explored some ideas, but at this stage reached no
So, overall, on GIs, delegations continued to voice the divergent views that
have long characterised this debate. But even so, there were clarifications that
trademark systems were legitimate forms of protecting GIs, in line with the
general principle that Members are entitled to choose their own means of
implementing their TRIPS obligations. Extension proponents sought guarantees
that the trademark system could and would protect their GIs at the higher level
for all goods. And discussions clarified that GI extension did not mean that
existing TRIPS exceptions for generic terms and other exceptions would cease to
apply. However, the full practical implications of this “mutatis mutandis”
application of exceptions have not yet been fully explored.
TRIPS and CBD
On the second issue covered by our mandate, TRIPS/CBD, the discussions built
further on the strong foundation of understanding that I identified in my report
last July, resulting from the earlier round of consultations — i.e. agreement on
the avoidance of erroneous patents, securing compliance with national agreements
on benefit-sharing regimes and ensuring that patent offices have the available
information needed to make proper decisions on patent grant.
On this issue, the following clusters were covered:
Cluster 1: Legal character of misappropriation.
Cluster 2: Measures, other than the disclosure requirement, to address
misappropriation and benefit sharing
Cluster 3: Legal scope of the national-based approach
Cluster 4: Administrative costs and burdens, and legal certainty, of a
mandatory disclosure requirement
On Cluster 1, delegations discussed the character of misappropriation, and
whether access to genetic resources through channels that are consistent with
national laws be considered misappropriation in particular cases. They
considered whether access to a genetic resource or biological resource can give
rise to a claim of misappropriation based on the laws of the country of origin
if the resource was obtained from another country.
By one view, “misappropriation” refers to illegal or illegitimate acts with
respect to the acquisition and use of genetic resources and traditional
knowledge. But it was argued that the definition of the term “misappropriation”
should not be a precondition for establishing a disclosure obligation. The
disclosure obligation, as one element of the solution, would only cover
disclosure of “the country providing genetic resources” and “source of genetic
resource”, and the national law of the country of source would apply.
Another view was that national access and benefit sharing (ABS) legislation
would enable Members to exercise their sovereign rights over genetic resources
and authorize access and benefit-sharing, including through the use of
contracts. Since most genetic resources could be accessed from a number of
countries, a disclosure obligation in patent law may be ineffective in
addressing this misappropriation problem.
On Cluster 2, delegations weighed the costs and benefits of measures, other than
the disclosure requirement, to address misappropriation and benefit sharing. One
question concerned what provisions, other than disclosure requirements, could
ensure that patents are not issued in cases where inventions are based on
genetic resources or associated traditional knowledge which have been obtained
without proper and legitimate authorization and without equitable benefit
sharing. They considered whether mechanisms to prevent misappropriation of
genetic resources should differ for commercialized products that are patented as
against commercialized products that are not patented. And they debated whether
and how databases of traditional knowledge and genetic resources would achieve
the shared objective of authorized and legitimate access to genetic resources
and associated traditional knowledge, prevent misappropriation and ensure
equitable sharing of benefits.
There was a degree of common ground, in that all seemed to agree that none of
the proposals — whether disclosure requirements, databases, or the use of
contracts — was a stand-alone response or solution, that they were complementary
to other mechanisms in a composite package that would overall guard against
misappropriation and ensure prior informed consent and equitable benefit
sharing. For instance, the database approach principally addresses erroneously
granted patents and does not directly ensure compliance with CBD objectives.
There were also continuing significant differences on whether or not the
disclosure approach, the use of databases or the use of contracts would be
sufficient or appropriate or not essential to address this problem of
On Cluster 3, delegations probed the legal character and enforcement
possibilities of national-based approaches, including a contract-based system,
especially when multiple jurisdictions may be involved. They considered how to
address trans-boundary aspects of access, benefit sharing, and prior informed
consent. While it was acknowledged that a contract-based approach may not be
sufficient in itself, it was argued to be the single best way to address the ABS
and prior inform consent, along with appropriate domestic legislation.
Proponents of the disclosure approach accepted that contracts had a role, but
were insufficient to deal with misappropriation, and pointed to difficulties in
trans-boundary enforcement of contracts.
Cluster 4 covered a host of issues concerning administrative costs and burdens,
and the legal certainty and predictability, of a mandatory disclosure
requirement within the patent system. Questions concerned the relative
additional costs and burden of incorporating the mandatory disclosure
requirement as compared to existing obligations under Article 29.1 of TRIPS, and
how these costs would be offset against benefits of improving patent
examination, facilitating prior art search, promoting transparency, contributing
to preventing misappropriation of genetic resources and traditional knowledge,
and ensuring equitable benefit sharing and prior informed consent. Further
questions considered whether, in the light of continuing technical discussions
in the WIPO and the CBD, a disclosure requirement could be implemented in a
consistent manner which would provide legal certainty.
One concern voiced was that, without details on the design of a new disclosure
system, there was legal uncertainty and difficulty in weighing costs or burdens,
and it would not necessarily bring the intended benefits: one outcome may be
litigation between commercial competitors; if this resulted in a cancellation of
patents, it may actually lead to wider commercial exploitation of genetic
resources and traditional knowledge, still without any benefit sharing. In
response to this point, proponents of the disclosure mechanism said that the
subject of penalties for failure to disclose would have to be addressed at this
stage of negotiations; they said there would hardly be any additional costs to
implementing the proposed disclosure requirement and the benefit was more
transparency about the invention, more harmonized disclosure requirements, more
information on prior art for patent examiners and more legal certainty for
applicants. Proponents argued that there would be no difficulty in maintaining
coherence between the different forums dealing with this issue, as each was
working within its mandate. One particular issue concerned how key terms, such
as genetic resources and traditional knowledge, would be defined and
interpreted, in the light of existing legal definitions and ongoing work in the
So, that’s about the four clusters on CBD-related discussions. Let me now try
and conclude by summarising a few key lessons that I believe we have learnt in
this process, on the substantive issues, in areas that might help us understand
what it means to bridge the gaps that divide delegations, again on the
assumption that there will be willingness to bridge these gaps:
on GI extension, there seemed to be no expectations that trademark systems
must be replaced or supplemented by sui generis protection of GIs. Proponents
did not suggest that existing TRIPS exceptions on GI protection, such as for
generic use, be eliminated. Potential technical issues concerned how the
existing safeguards in the form of both permissible and mandatory exceptions
under Article 24 can or should be applied under an “extension” scenario.
Essentially, the differences concern whether it is desirable and beneficial to
broaden the scope of enforceable rights that surround a GI once it is protected,
whether through the trademark system or otherwise, and how to deal with the
implications for third country markets, including continued access for current
products considered as legitimate generics.
on TRIPS/CBD, my feeling is that there is a common interest in ensuring there
is no misappropriation of genetic resources and traditional knowledge, including
through the patent system, and I think that there is a common understanding that
reform of the patent system alone would not be sufficient to ensure equitable
benefit sharing — at best, a disclosure mechanism would only be one element of a
wider range of mechanisms, and for some it would still not achieve the
objectives set for it. Differences concern whether a disclosure mechanism, if
introduced more widely, would be useful and effective, whether the presumed
benefits for the system and for the holders of the genetic resources and
traditional knowledge would be experienced in practice, whether those benefits
would outweigh administrative costs, and whether the disclosure requirement
would enhance or undermine the predictability, clarity and public policy role of
the patent system. In sum, there is general agreement on the public policy
objectives, including ensuring equitable benefit sharing, but differences
clearly remain on how to arrive at those goals in practice.
Now, I repeat that in giving you a gist of some of these extensive and vigorous
discussions, I am not attempting to characterise any delegation’s position. As
should be expected, my report is limited to giving you a sense of the content,
of the substance. I think this kind of consultative process is most useful, also
to the wider Membership, if it can continue in an informal mode, with freedom of
debate, with an open exchange of views. And to maximise the value of this
process to you, I will try to continue to provide a high degree of transparency
through this kind of briefing and my reporting to the General Council, which
inevitably is in a more condensed shape. To promote transparency, you requested
us to upload my last report to you onto our website, which we did, and unless
you have any concerns or objections, we should continue this practice with the
With this report I am updating you on the most recent phase of this consultative
process. The first round of questions took us from March to June last year. The
second round of questions ran from then to our consultations earlier this month,
last week to be precise. We therefore have to work out how best to take this
work forward, at a suitable pace, responsive to the broader dynamics of this
Organization and in line with your expectations and on this, as I said at the
end of the last meeting of consultations, I will consult with Members with
different sensitivities regarding the best way forward. What we do next will be
undertaken only after I have had these consultations.
I now open the floor for your observations and questions.
The consultations deal with two issues:
• whether or not to extend the higher level of protection for
geographical indications currently only required for wines and spirits
(“GI extension”, explained
• whether the intellectual property (TRIPS) Agreement’s provisions
should promote the objectives of the UN Convention on Biological
Diversity (CBD). Some countries want to amend the TRIPS Agreement so
that patent applicants have to disclose (the “disclosure
(1) the country providing the genetic resources and related
traditional knowledge (TK) used in the invention,
(2) possibly to show that they have received permission to use these
materials and knowledge, and to show that they would share the
benefits with the original owners.
Others say that the objectives of the CBD are better achieved by other
methods. These are explained
The two subjects are “implementation” issues under the 2001 Doha
Declaration, but members differ over whether they are actually
mandated negotiations. See
The 2005 Hong Kong Ministerial Conference
asked the director-general to intensify consultations on these
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, which has a negotiating mandate. But others oppose
the proposal and say the two issues should not be part of the Doha
Round and should not be linked to the third subject.
• 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.
• special sessions: meetings of WTO councils and
committees focusing only on the Doha Development Agenda
• TRIPS: Trade-related aspects of intellectual
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