WORLD TRADE  
ORGANIZATION  IP/C/W/504 
17 October 2007 
 
 (07-4475) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:  English 
 
 
 
THE PATENT SYSTEM AND GENETIC RESOURCES 
 
Communication from Japan  
 
 
 The following communication, dated 11 October 2007, is being circulated at the request of 
the Delegation of Japan.  
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 The present communication from Japan contains in its annex the document
1 submitted to the 
eleventh session of the Intergovernmental Committe e on Intellectual Property and Genetic Resources, 
Traditional Knowledge and Folklore (IG C) of WIPO held in July 2007.  Japan thinks that the work of 
the TRIPS Council should take into account the relevant work being ca rried out by WIPO to avoid the 
duplication of efforts and, in this sense, believes that submitting and introducing the document to the 
TRIPS Council is useful.  The document WIPO /GRTKF/IC/9/13 referred to in the Annex was 
submitted to the TRIPS Council as documen t IP/C/W/472, dated 13 June 2006. 
 
                                                      
1 See WIPO document WIPO/GRTKF/IC/11/11. IP/C/W/504 
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ANNEX 
 
ADDITIONAL EXPLANATION FROM JAPAN REGARDING  
DOCUMENT WIPO/GRTKF/IC/9/13 ON  
THE PATENT SYSTEM AND GENETIC RESOURCES 
  
I. INTRODUCTION 
1. The relationship between the TRIPS Agreement and the CBD encompasses two issues:  
(i) the erroneous granting of patents;  and (ii)  CBD compliance (in other words, prior informed 
consent (PIC) and benefit sharing, as set out in the CBD).  When discussing the relationship between 
the TRIPS Agreement and the CBD at the WTO, it is important to distinguish the two issues. 
2. Firstly, with regards the issue of erroneous gr anting of patents, this can be effectively 
addressed by improving databases for storing genetic resources and related traditional knowledge that 
are used for prior art searches, as well as through utiliz ing certain existing institutional systems, such 
as information provision systems and the invalidation trial system more efficiently. 
3. In the document WIPO/GRTKF/IC/9/13, Japan pr oposed a one-click database search system 
that will help examiners conduct searches more e fficiently for prior art concerned with genetic 
resources and related traditional knowledge.  We ha ve prepared this paper to encourage further 
discussion on this proposal.  This paper explains the structure of the proposed one-click database 
search system as well as how the system prevents ina ppropriate access to its contents by third parties.  
It should be noted that budgetary implications of  this proposed system would also need to be 
considered where appropriate. 
II. STRUCTURE OF THE ONE-CLICK DATABASE SEARCH SYSTEM 
4. As described in Figure 1 below, searchable da tabases under the proposed system should be in 
the possession of, and maintained by, each participat ing WIPO member state.  The database will be 
composed of a WIPO portal site as well as databases of WIPO member states, which are linked to the 
portal site. 
5. Each participating WIPO member state will firs t assume the role of collecting information on 
genetic resources and related traditiona l knowledge within its territory a nd store this information in its 
database/databases (either adapted from an existi ng database or newly created).  Assigning the 
responsibility of the development of databases to each WIPO member state will allow such member 
state adequately take into account various sensitive i ssues, such as considerations for customary law, 
the identification of interested parties concer ned and their willingness and condition for providing 
information, and coordination amongst multiple inte rested parties who clai m entitlement to common 
genetic resources.  With regards to the format of a database, at least some kind of a basic format for 
registering data to the database should be develo ped by the WIPO.  For example, entries to the 
database would have to include the name and a br ief description of the genetic resource, as well as a 
code number to identify the said gene tic resource.  For genetic resources that have been referenced in 
a publication, such as a book or journal, the bibliogr aphic data of the said publication should also be 
included in the database. 
6. A simple text search function should be provide d in the databases of each participating WIPO 
member state.  For countries that are not able to develop such search programs, technical assistance 
can be provided.  For example, technical assistan ce in the form of a common program for conducting 
searches can be provided by the WIPO.  IP/C/W/504 
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7. The WIPO portal site will be e quipped with two basic functions:  (i) a function which enables 
an examiner to directly access the databases of the participating WIPO member states;  and (ii) a 
function which enables an examiner to retrieve  data from the accessed databases.  "Surf-IP" 
developed by the Intellectual Property Office of Sing apore is a well-known portal site with functions 
similar to those described above. 
8. Simply by accessing the WIPO portal site and entering a search formula, an examiner can 
instantaneously obtain search results derived from the databases of all participating WIPO member 
states. (see Figure 2)  This search result can be used as prior art or reference material2 for a patent 
application, enabling an examiner to determine more  easily whether the subject matter of a patent 
application lacks novelty.  As an examiner n eed only point to the necessary information in the 
database when rejecting an application under examina tion, the danger of information leakages would 
be minimal. 
9. While the languages used in databases differ, there are some possible solutions to the 
language barrier problem.  For instance, the name a nd a brief description of each genetic resource in a 
database could (and should) be translated into Engl ish and registered in the database as keywords.  
The development of a multi-language glossary of techni cal terms is another possible solution.  With a 
multi-language glossary of technical terms, an examiner  is able to have a search keyword entered in 
certain language translated automatically into mu ltiple languages and, then, using the translated 
keywords, can conduct a one-click multilingual search of the databases of the participating WIPO 
member states. 
III. PREVENTION OF THIRD PARTY ACCESS 
10. To prevent third party access, the WIPO porta l site will be made accessible only from 
registered IP (Internet Protocol) addresses. 
11. Specifically, an IP (Internet Protocol) A ddress Authentication System (IPAAS) will be 
incorporated into the WIPO portal site.  Then, acce ss will be provided only to registered IP (Internet 
Protocol) addresses.  (See Figure 1) 
12. IP Offices that conduct examinations have a specific IP (Internet Protocol) addresses.  
Therefore, by restricting access to the WIPO portal site to specific IP (Internet Protocol) addresses, we can limit users of the site to those IP Offices that have registered their unique IP (Internet Protocol) 
addresses with the WIPO.  For example, the Adva nced Industrial Property Network (AIPN) is a 
database search system developed by the Japan Pate nt Office (JPO) and equipped with an IP (Internet 
Protocol) address authentication system.  The IP (I nternet Protocol) address authentication system 
only allows IP Offices with an IP (Internet Protoc ol) address registered with the JPO to access file 
wrapper information. 
IV. REGISTRATION OF CITED/REFERENCE INFORMATION 
13. When an examiner accesses the WIPO portal site, he might come across a relevant piece of 
information on  genetic resources that would serve as prior art or reference information for a patent 
application under examination.  In such a case, it w ould be valuable for the WI PO portal site to have a 
function enabling an examiner to add any data concerned with such an application (e.g. the 
application number) under the code number of a rele vant genetic resource.  In this way, a code 
number attached to a genetic resour ce and a relevant patent applica tion number can be linked.  Such 
data on patent applications linked wi th genetic resources could be used by interested parties to explore 
where patent applications relate d to the genetic resources are filed with specific IP Offices.  The 
                                                     
 
2 Reference material includes information not available to the public which can be used only by an 
examiner as references fo r determining patentability. IP/C/W/504 
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interested parties, (e.g., indigenous people) w ho provided information on  the genetic resources 
concerned might be allowed through the examining au thority or other competent authority to have 
access to such data on the relevant patent applications. 
14. It should be noted, however, that the data  in a certain patent application being 
cross-referenced with certain genetic resources in a database has no relevance to whether the 
invention in the application was made  in compliance with the CBD or not.  IP/C/W/504 
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FIGURE 1 
 
OVERVIEW OF ONE-CLICK DATABASE SEARCH SYSTEM FOR  
INDIVIDUAL DATABASES OF WIPO MEMBER STATES 
  
   
   
 
① ③ 
② ④WIPO  WIPO  IP Office  
①Enter search formula  
②②Transmission of search formula   
③Return of search results  
④Display results from all availableDDaattaabbaassee  
DDaattaabbaassee  
DDaattaabbaassee  
DDaattaabbaassee  PPoorrttaall  SSiittee  IIPP  
AAuutthheennttiiccaattiioonn
Third Party 
to databases of the relevant 
member states
from the member states  
databasesAAddddrreessss  
SSyysstteemm((IIPPAAAASS))IP/C/W/504 
Page 6  
 
 
FIGURE 2 
 
IMAGE OF A RETRIEVAL SCREEN 
  
 
2 India ●● 1-000006 3
0 Peru ●● for △△ 2-000002 4
・・・ ・・・ ・・・ ・・・ ・・・
0 Peru ●● for □□ 2-000013 80 India ●● for ■■ 1-000005 20 India ●● for ▲▲ 1-000001 1Reference Source Name Title Code Number No.
2 India ●● 1-000006 3
0 Peru ●● for △△ 2-000002 4
・・・ ・・・ ・・・ ・・・ ・・・
0 Peru ●● for □□ 2-000013 80 India ●● for ■■ 1-000005 20 India ●● for ▲▲ 1-000001 1Reference Source Name Title Code Number No.REFERENCE INFORMATION
Code Number : 1-000006
Application Number : PCT/08/000015
JP2010-012345Your searched for : ●●
Search results : 8
 
 
 
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