The international debate on traditional knowledge as prior art in the patent system: issues and options for developing countries

This paper examines some aspects of the debate on whether and how traditional knowledge could formally be considered as prior art during the examination of patent applications. It discusses the role of databases in making traditional knowledge accessible for purposes of prior art searches and makes recommendations on how best to ensure the patent system does not undermine efforts to protect traditional knowledge. It aims to highlight some salient features of the on-going debate on recognizing traditional knowledge as prior art in the patent system and the issues arising with regard to systemizing traditional knowledge in databases as a defensive measure to protect traditional knowledge.

The paper first looks at definitional issues regarding prior art and the importance of the concept within the patent system. Secondly, the paper examines the relevance of traditional knowledge as prior art in the patent system. Thirdly, the paper reviews the general problems related to traditional knowledge as prior art under the patent system. The paper then examines the definitions of prior art in Japan, the US and under the European Patent Convention, as well as current trends and practices in these systems and under the Patent Cooperation Treaty system. Sixth, the paper looks at progress in the discussions on traditional knowledge as prior art within WIPO and in the other fora in which the issue is being discussed. Finally, the paper presents some specific recommendations on how to improve operational aspects of prior art searches to cover traditional knowledge

The author stresses the need to ensure that the International Searching Authorities under the Patent Cooperation Treaty system and national patent offices, fully take into account relevant traditional knowledge when such knowledge constitutes prior art in relation to a claimed invention. At present, the International Search Guidelines under the Patent Cooperation Treaty and the practices of designated searching authorities do not include a specific requirement for the review of traditional knowledge during patent searches. In this context, the paper considers issues and suggests options regarding:

• how information relating to traditional knowledge which is in the public domain can be made available to patent offices through, for example, databases
• developing appropriate information systems on traditional knowledge
• formally recognizing traditional knowledge as prior art for purposes of examination of patent applications.

The paper also emphasizes the importance of taking into account the impact the codification of traditional knowledge might have on measures being put in place to positively protect traditional knowledge.

Apart from making recommendations for the improvement of the search procedures through mechanisms such as databases and traditional knowledge registers, another option explored by the author is requiring patent applicants to disclose if any traditional knowledge forms part of the claimed invention. In cases where traditional knowledge forms part of the claimed invention, the paper recommends that patent applicants disclose the source of such traditional knowledge and provide evidence of prior informed consent and equitable benefit sharing with the source communities and/or countries.