Multinational Matters #4
University of Capetown Intellectual Property Unit (Link)

Key points

It’s under national laws that intellectual property (IP) rights are defined, held, exercised and enforced.

International IP instruments mainly provide for, among other things, the protection of foreign subject matter: for instance and put simply, if country A and country B are parties to the same international IP instrument, this means that IP subject matter from country A that is protected in country A under that country’s national IP laws can also be protected in country B under country B’s IP laws, and vice versa.

International IP instruments are usually developed “bottom up”, which is to say that they build upon and harmonize those existing national regimes that are regarded as successful and representative of widespread practice.

At least when they are first adopted, international IP instruments are often not too detailed and prescriptive, leaving policy space for national implementation.

The negotiations so far in the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (the WIPO IGC), are more “top down” than “bottom up”, at least on traditional knowledge (TK) and traditional cultural expressions (TCEs). This is because national regimes are relatively recent and few in number, and experiences with them so far are inconclusive.

The “top down” nature of the IGC may be one of the reasons that its progress has been slow so far.

While this would be contrary to the way in which most international IP instruments have been developed in the past, perhaps the unique policy, legal and operational challenges associated with TK and TCEs protection requires a dual and coordinated approach that is both “top down” and “bottom up”.

In some respects, the IGC’s draft instruments on TK and TCEs are detailed and prescriptive, not leaving much leeway for national implementation. This may also partially explain the IGC’s slow progress.

However, while leaving policy space for national implementation may be desirable, an international legal instrument should establish standards which mandate effective and consequential protection at the national level. In the absence, so far, of many exemplary national regimes to draw from, this may be the very guidance that national policy-makers seek.

Introduction

Multilateral negotiations are often aimed at the reaching of an agreement on the contents of an international legal instrument.

International legal instruments can take several forms: they may, for instance, be binding or non-binding. An instrument can, however, never be binding as such, it can only become binding on those countries that either accede to or ratify it.

Non-binding instruments include guidelines, recommendations, protocols, model provisions, declarations and the like. Some of the best known international legal instruments are, in fact, non-binding, such as the Universal Declaration of Human Rights, the United Nations Guiding Principles on Business and Human Rights and the United Nations Declaration on the Rights of Indigenous Peoples. In the IP area, member countries of the World Intellectual Property Organization (WIPO) have adopted several joint recommendations related to trademarks1 and standards, in the form of recommendations, on industrial property information and documentation.2

As these and many other examples show, even non-binding instruments can exert considerable influence.

The purpose of this blog post is to offer some reflections on the respective roles of and interaction between national and international legal instruments in the IP field.

The post is inspired by a side-event organized in the margins of the 40th session of the WIPO IGC, which met in June 2019. The side-event was organized by the Centre for International Governance Innovation (CIGI), and I was invited to address the topic “What do national experiences mean for the development of effective international norms within the WIPO IGC?”

This post is a slightly updated summary of the presentation I made in response to that intriguing question.

The international dimension of IP protection: general comments

IP protection is usually achieved at the national level, in the sense that the substance of IP protection and the means for its enforcement are provided by national laws (in some cases, such as within regional blocs, regional laws may perform the same function but for the sake of simplicity, this post refers to national laws only).

For their part, international instruments generally provide for:

  • protection of foreign rights holders (as illustrated in the country A/country B example above, and according to principles such as “national treatment”, “reciprocity”, “mutual recognition”, and, “most-favoured-nation”);
  • independence of rights granted under different national laws (this means that rights granted under national laws subsist independently and do not depend on other national laws for their validity);
  • national discretion to implement international standards through a variety of legal doctrines and mechanisms (ranging over diverse forms of IP rights, such as economic and moral rights and exclusive rights and rights to remuneration; the general law of unfair competition (including for example consumer protection, trade practices and labeling laws); and, the provision of criminal sanctions); and,
  • lowering practical hurdles faced by foreign right holders (such as a “right of priority” for industrial property filings, which provides that a filing date in one country counts as the filing date in another country if it is made within a certain period of time).3

As has been written:

“It is under national law that IP rights are defined, held and exercised, that legal remedies are available, and that exceptions and limitations to rights are defined and exercised . . .The international dimension of protection may be conceived as a means of focusing, coordinating, interlinking, facilitating and harmonizing essentially national approaches.”4

One may observe from the history of the development of international law in the IP field that international legal instruments, or at least substantial elements of them, were mostly developed “bottom-up”, building on national regimes regarded as successful and as reflecting widespread practice. For example, current international provisions for the protection of geographical indications and appellations of origin5 were developed on the basis of national regimes experiences and country-driven textual proposals, as were the two “Internet Treaties”6and the Beijing Treaty.7 Similarly, at least some elements of the Marrakesh Treaty8 draw directly from existing national regimes.

Further, international IP instruments most often establish minimum substantive standards and they often leave room for national implementation – in other words, flexibility to tailor international standards to the national social, cultural and economic context.

As Graeme Dinwoodie has written, “International norms were derivative of national positions, frequently embodying only the lowest common denominator from which member states would deviate upwards in differing ways and degrees.”9

An example of a provision in an international IP instrument that explicitly and broadly preserves national policy space is Article 1.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), which reads: “[WTO] Members shall be free to determine the appropriate method of implementing the provisions of [TRIPS] within their own legal systems”.

In some cases, international instruments may even identify with greater precision the range of options for how contracting parties may implement them, such as the 1971 Phonograms Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms, Article 3 of which provides that the means of its implementation “shall be a matter for domestic law . . . and shall include one or more of the following: protection by grant of copyright or other specific right, protection by means of the law relating to unfair competition or protection by means of penal sanctions”.

These few observations could be analyzed further in relation to several ongoing normative negotiations in the IP arena, such as those related to the rights of broadcasting organizations10and industrial design rights11. As the CIGI side-event was organized in the context of the WIPO IGC’s negotiations, my presentation and this post relate to this specific negotiation only.

Implications for the WIPO IGC

The core objective of the IGC, according to its current mandate, is the reaching of an agreement “on an international legal instrument(s), without prejudging the nature of outcome(s), relating to intellectual property which will ensure the balanced and effective protection of genetic resources (GRs), traditional knowledge (TK) and traditional cultural expressions (TCEs).”

Countries are free to enact national laws and many have done so, but it is clear that the focus of the IGC, as a multilateral intergovernmental committee, is on the “international dimension” of the relationship between IP and GRs, and the protection of TK and TCEs.

The experience so far with the development of international IP instruments, as briefly described above, leads to at least two questions related to the IGC’s efforts so far to reach agreement on an international legal instrument/s.

Multilateral Matters portal

Did you know that all Multilateral Matters blogs are now accessible through our dedicated Multilateral Matters portal, which also includes additional readings and updates.

Is the IGC “top down” or “bottom up”?

The primary normative question related to GRs is whether or not patent law should include a new mandatory disclosure of origin requirement. In brief, such a requirement would oblige the disclosure of certain information in applications where the subject matter/claimed invention uses or is based on GRs and associated TK. The information that would need to be disclosed would include information about the country of origin or source of the GRs and associated TK and evidence that that country’s access and benefit-sharing regime has been complied with.12Some countries argue that such a requirement might also be necessary in other branches of IP law.13

There are around 30 countries14 that already have disclosure regimes related to GRs and associated TK in their patent laws or other laws. The scope of such an additional disclosure requirement is relatively narrow, the policy, legal and operational issues around them are by now relatively well known, and there is a growing body of national experience around its implementation.

The current negotiating text of the IGC on GRs15, as well as the recent text of the IGC Chair (Ian Goss, Australia) of an “International Legal Instrument Relating to Intellectual Property, Genetic Resources and Associated Traditional Knowledge with Genetic Resources”16, draw directly from these existing national regimes.

The IGC’s work on IP and GRs, especially on a possible new disclosure requirement, could therefore be described as “bottom up”.

By contrast, and while there are some national and regional regimes addressing TK and TCEs protection17, policy and technical uncertainties still persist around core policy issues related to the protection of TK and TCEs. Experiences at the national level so far are inconclusive and it seems that there are few, if any, successful national (or, for that matter, regional) regimes that could serve as a model for international norm-building.

While there are examples of national and regional instruments which have drawn directly from the IGC’s draft texts18, it’s harder to identify examples of national or regional instruments which have directly shaped the IGC’s work.

In other words, the IGC has exported many more ideas to regional and national processes than it has imported from them.

The inescapable conclusion is that the IGC’s negotiations on TK and TCEs are considerably more “top down” than “bottom up”.

The experience with previous international norm-setting in the IP field would suggest that the current “top down” approach of the IGC on TK/TCEs may be one of the contributors to its slow progress.

More experience at the national level may therefore be useful.

Equally, the IGC might benefit from a thorough examination of actual national experiences so far with the protection of TK and TCEs. But, an “evidence-based approach” and the conducting of “studies” are controversial within the IGC (see text box “An evidence-based approach in the WIPO IGC”).

On the other hand, it can be argued that TK/TCEs are so novel a subject for IP policy makers and that the intended beneficiaries of their IP-like protection so uniquely vulnerable, that international guidance is exactly what national legislatures need.

Perhaps, therefore, in this bracingly unique IP negotiation, in which innovative sui generis approaches are being forged from scratch, a dual and coordinated “top down” and “bottom up” approach is needed.

This would entail coordination between continued efforts to develop national policies, strategies, action plans and legislation, and creation of a mechanism for information about experiences with such initiatives to be available to and actively utilized by IGC negotiators.

An evidence-based approach in the WIPO IGC

The current mandate of the IGC refers inter alia to an “evidence-based approach” and invites “contributions of member states, such as conducting/updating studies covering, inter alia, examples of national experiences, including domestic legislation, impact assessments . . .”19. In addition, some member countries have proposed the conducting of studies to gather more empirical information on, and in some proposals evaluate the costs and benefits of, national and regional experiences with the sui generis protection of TK and TCEs 20. The IGC has not been able to agree on whether or not to conduct such studies, however. The mandate also clarifies that such studies “are not to delay progress or establish any preconditions for the negotiations”. Most recently, the IGC has agreed, by consensus, to recommend to the WIPO General Assembly, which will meet in October 2019, to renew the mandate of the IGC for 2020 and 2021. The proposed new mandate includes a request to the WIPO Secretariat to “continue to collect, compile and make available online information on national and regional sui generis regimes for the intellectual property protection of TK and TCEs”.

As prospective international legal instruments, are the IGC’s texts on TK and TCEs too detailed and prescriptive?

A second question that may be asked of the IGC process so far regarding TK and TCES is whether the draft negotiating texts are “high level” enough and not too detailed and prescriptive.

In this respect, the texts are mixed: some alternatives within certain articles are very detailed and prescriptive, whereas others are more open-ended and permissive.

A good example is the articles addressing exceptions and limitations. In the current TK text21, for example, there are two alternatives. The relevant article is Article 9: Alt 1 is relatively brief and broadly cast as it is inspired to some degree by the “three step test” in copyright law, while Alt 2 is lengthy and detailed. The corresponding article on exceptions and limitations in the TCEs text, Article 722, has a similar set of options although in that case there are not only two but three alternatives.

At the risk of generalizing, it appears that those countries seeking IP-similar protection for TK and TCEs prefer a more open and permissive article on exceptions and limitations, whereas the proponents of a more detailed, specific and prescriptive article are mainly non-demandeurs (those countries skeptical of or opposed to new sui generis protection at international level).

As has often been said, given the staggering diversity of TK and TCEs around the world, and of the communities who maintain and develop them, “no one size fits all”. Particularly TK and TCEs – as new forms of IP – seem to call for an international legal instrument/s that respects their very diversity and the wide range of national approaches to their protection, in other words, international instruments that provide broad guidance on core issues but otherwise leave detail and implementation to the national level.

However, allowing too much flexibility for national implementation should not imply an absence of core obligations for all contracting countries to protect TK and TCEs in a balanced yet purposeful and consequential manner.

Striking this balance – between allowing flexibility at the national level and ensuring minimum levels of protection – is not unfamiliar to international IP policy makers.

Concluding thoughts

To recall, the question I was asked to address was “What do national experiences mean for the development of effective international norms within the WIPO IGC?”

In my presentation, I concluded with these tentative reflections (which I update here based on reactions to my presentation (gratefully received) and the outcomes of IGC 40):

  • international legal instruments are usually developed “bottom up”: the IGC is, however, distinctly more “top down”, at least on TK and TCEs. This might be a reflection of the uniquely complex challenges facing TK/TCEs protection, and perhaps a dual and coordinated approach is best;
  • generally, international IP instruments are, initially at least, not too detailed and leave policy space for national implementation – “no one size fits all”. In several places, the IGC’s draft instruments on TK and TCEs are dense, detailed and prescriptive. This might be another reason that progress in the IGC has been slow so far;
  • however, a balance is needed between leaving policy space for national implementation, on the one hand, and establishing international standards for effective  and consequential protection, on the other;
  • the recent decision of IGC 40 that the WIPO Secretariat collect, compile and make available information on national and regional sui generis regimes for the protection of TK and TCEs may provide useful information for negotiators while not delaying or setting preconditions for the negotiations.

References

Dinwoodie, G. (2001), The Development and Incorporation of International Norms on the Formation of Copyright Law, Ohio St. LJ, 62, 733.

Goss (2019). Draft International Legal Instrument Relating to Intellectual Property, Genetic Resources and Traditional Knowledge Associated with Genetic Resources. Retrieved from: https://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_40/wipo_grtkf_ic_40_chair_text.pdf

WIPO (2004). Traditional knowledge, traditional cultural expressions and genetic resources: the international dimension (WIPO/GRTKF/IC/6/6). Retrieved from: https://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_6/wipo_grtkf_ic_6_6.pdf

WIPO (2017a). Key Questions on Patent Disclosure Requirements for Genetic Resources and Traditional Knowledge. Retrieved from https://www.wipo.int/edocs/pubdocs/en/wipo_pub_1047.pdf

WIPO (2017b).Table of disclosure requirements. Retrieved from: https://www.wipo.int/export/sites/www/tk/en/documents/pdf/genetic_resources_disclosure.pdf

WIPO (2017c). Matters Concerning the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Retrieved from: https://www.wipo.int/export/sites/www/tk/en/igc/pdf/igc_mandate_2018-2019.pdf

WIPO (2019a). Consolidated Document Relating to Intellectual Property and Genetic Resources (WIPO/GRTKF/IC/40/6). Retrieved from: https://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_40/wipo_grtkf_ic_40_6.pdf

WIPO (2019b). The Protection of Traditional Knowledge: Draft Articles (WIPO/GRTKF/IC/40/18). Retrieved from: https://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_40/wipo_grtkf_ic_40_18.pdf

WIPO (2019c).The Protection of Traditional Cultural Expressions: Draft Articles (WIPO/GRTKF/IC/40/19). Retrieved from: https://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_40/wipo_grtkf_ic_40_19.pdf

WIPO (n.d.A). Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). Retrieved from: https://www.wipo.int/policy/en/sct/

WIPO (n.d.B). List of WIPO Standards, Recommendations and Guidelines. Retrieved from: https://www.wipo.int/standards/en/part_03_standards.html#group-b

WIPO (n.d.C). Regional, National, Local and Community Experiences. Retrieved from https://www.wipo.int/tk/en/resources/tk_experiences.html

WIPO (n.d.D). Traditional Knowledge, Traditional Cultural Expressions & Genetic Resources Laws. Retrieved from https://www.wipo.int/tk/en/databases/tklaws

Additional readings are listed on the Multilateral Matters portal (http://ip-unit.org/multilateral-matters/)

This blog is written exclusively in the author’s capacity as Adjunct Professor, Department of Commercial Law, Faculty of Law, University of Cape Town. Any views expressed are those of the author alone and do not necessarily represent the views of any organization or institution.

Endnotes

  1. Note from the author: my thanks to Carla Bengoa for her research assistance and Daphne Zografos Johnsson for her comments on an earlier draft.
  2. WIPO, n.d.B.
  3. WIPO, 2004: 8.
  4. WIPO, 2004: 25.
  5. Such as Articles 22 and 23 of the TRIPS Agreement and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, 1979 and its Geneva Act, 2015.
  6. The WIPO Copyright Treaty, 1996 and the WIPO Performances and Phonograms Treaty, 1996.
  7. Beijing Treaty on Audiovisual Performances, 2012.
  8. Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (2013)
  9. Dinwoodie, G., 2001: 739-740.
  10. See https://www.wipo.int/copyright/en/activities/broadcast.html
  11. See https://www.wipo.int/policy/en/sct/
  12. WIPO, 2017a.
  13. For example, some African countries argue for the inclusion of a genetic resources – related disclosure requirement in the industrial designs law instrument currently under negotiation as mentioned earlier, see endnote 11.
  14. WIPO, 2017b.
  15. WIPO, 2019a.
  16. Goss, 2019.
  17. WIPO, n.d.C and WIPO, n.d.D.
  18. Such as the Pacific Model Law for the Protection of Traditional Knowledge and Expressions of Culture,2002, the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore, 2010 (ARIPO), the Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2016 (Zambia) and the Protection of Traditional Knowledge and Cultural Expressions Act, 2016 (Kenya).
  19. WIPO, 2017c.
  20. Proposal by the European Union and its Member States for a study on traditional knowledge (WIPO/GRTKF/IC/39/16), proposal by European Union and its Member States for a study on traditional cultural expressions (WIPO/GRTKF/IC/39/17), proposal by the United States of America and Japan for a study by the WIPO Secretariat on existing sui generis systems for the protection of traditional knowledge in WIPO Member States (WIPO/GRTKF/IC/40/14).
  21. WIPO, 2019b.