India is rich of biodiversity and the Indian culture and traditional knowledge acknowledge the medicinal value of the biodiversity and its best use. The case is with regard to the patenting of XYZ plant by the US Patent

CS Professional · Intellectual Property Rights - Law and Practice · PYQS · December 2019
India is rich of biodiversity and the Indian culture and traditional knowledge acknowledge the medicinal value of the biodiversity and its best use. The case is with regard to the patenting of XYZ plant by the US Patent and Trademark Office by awarding at least four broad patents for use of XYZ plant, the good old sine qua non of Indian food and medicine. The patents, one of which has been awarded to an NRI scientist duo, Abhiskek and Shayam, of the University of New York confer on the applicant's exclusive rights to specific formulations of powder as the wound-healer, the anti-inflammatory agent. These scientists on their visit to India to their native place have taken the samples of plant XYZ without information and permission of the appropriate State or National biodiversity board regarding their intention of research and development of the XYZ plant. Indian activists protested to that as blatant example of biopiracy. They rightly raise the concern that how can anybody patent something that has been the collective wisdom of a people for centuries ? Indian scientists, too, for a change, have woken up from their complacency. The head of the Council for Scientific and Industrial Research's Intellectual Property Management Division, says the Council will immediately challenge the patents as XYZ's medical uses have been well-documented in India's medical literature. Meanwhile, the Chandigarh-based Central Drug Research Institute, which has been working on XYZ for over a decade, has promptly applied for a patent on XYZ's wound-healing property. The US patent office, defends the patents arguing that while XYZ as a wound-healing ointment has been in public use, its application in the powder form is not known. This argument was not well received by the Indian counterpart and they retorts that the above patent do not satisfy the two most important requisites of a patent claim in US i.e., novelty and non-obviousness. As per them under the US law, a new medicinal property of a known compound could be patented, but not the known property. To secure patent protection even for the new property, the applicant has to submit substantial medical evidence which is not very easy. Questions: Is there violation of TRIPs provisions by granting patents in USA?

Answer & Explanation:

Trade Related aspects to Intellectual Property Rights (TRIPs) is the part of World Trade Organisation. The TRIPs deals with various aspects of Intellectual Property Rights. It recognised new Intellectual Property Rights subjects as Plant Varieties and Geographical indications. For the grant of patent rights on any invention, the specification has to be provided to the patent office with regards to the novelty, inventiveness and non-obviousness of the invention. If the information about the invention is already in public domain then it cannot be a invention. Therefore, every invention has to pass the test of prior art or knowledge. In this case the prior knowledge about the use of the product is already with the public as traditional knowledge and therefore any attempt to create any Intellectual Property right over it is in violation with the WTO rules. The TRIPS Agreement requires Member countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability. It is also required that patents be available and patent rights enjoyable without discrimination as to the place of invention and whether products are imported or locally produced (Article 27.1). There are three permissible exceptions to the basic rule on patentability. One is for inventions contrary to order public or morality; this explicitly includes inventions dangerous to human, animal or plant life or health or seriously prejudicial to the environment. The use of this exception is subject to the condition that the commercial exploitation of the invention must also be prevented and this prevention must be necessary for the protection of public order or morality (Article 27.2). The second exception is that Members may exclude from patentability diagnostic, therapeutic and surgical methods for the treatment of humans or animals (Article 27.3(a)). The third is that Members may exclude plants and animals other than micro-organisms and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, any country excluding plant varieties from patent protection must provide an effective sui generis system of protection. Moreover, the whole provision is subject to review four years after entry into force of the Agreement (Article 27.3(b)). Therefore, member States have adopted the sui generis system to enact national legislation to protect the new plant varieties or patent system.

Topics: Patent Law

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