A Legal Analysis on the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge: Implications on the ABS Mechanism of the Nagoya Protocol
Authors: Lee Seon , Chang Young-Hyo ,   Korea International Law Review
Published: July 2024

After 25 years of negotiations at the Intergovernmental Committee of World International Property Organization (WIPO), the WIPO treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge (hereinafter referred to as “WIPO Treaty”) was adopted. Since the WIPO treaty primarily aims at preventing biopiracy through promoting benefit-sharing with genetic resource-providing countries (hereinafter referred to as “provider countries”) by requiring the disclosure of the origins of genetic resources in patent applications, it is crucial to evaluate whether the treaty would actually contribute to reduction of biopiracy without hindering efficient operation of the existing ABS mechanism. In this regard, this study argues that the Treaty may not effectively ensure ABS compliance for the following reasons.
First, the WIPO treaty does not consider the designation of patent offices as checkpoints under the Nagoya Protocol. If patent offices are designated as such, they would be responsible for receiving not only documents on disclosure of origin but also evidence of Prior Informed Consent (PIC) and Mutually Agreed Terms (MAT). This could impose a significant burden on patent offices in provider countries, especially developing ones, which often lack the trained personnel and resources to assess compliance on the ABS requirements such as PIC and MAT. This additional responsibility could delay patent examination processes and increase costs, contradicting the treaty's goal of maintaining an efficient patent system.
Second, the treaty's requirement to disclose the origins of genetic resources extends to inventions based on resources accessed before the CBD or Nagoya Protocol came into effect. This could complicate patent applications, as current international patent systems established under TRIPS do not mandate such disclosures. Countries utilizing genetic resources (hereinafter referred to as “user countries”) may have little incentive to voluntarily adopt these requirements through national legislation. Additionally, genetic resources used for commercial purposes are often sourced from ex-situ private institutions or intermediaries, typically collected before the CBD or Nagoya Protocol, making it difficult to determine their origins. This places the burden of proof on patent applicants, who are unable to identify the origin of genetic resource, adding inefficiency to the patent office's review process.
Third, Article 8 of the WIPO treaty potentially extends the disclosure requirement to derivatives and Digital Sequence Information (DSI), which could create confusion in the ABS regime and the establishment of a benefit-sharing system for DSI. Tracking the origin of derivatives is challenging, and including them in disclosure requirements would complicate the system and burden both applicants and patent offices. If DSI is also subjected to disclosure requirements, even more significant implications could arise. User countries have advocated for a multilateral approach to sharing of benefits arising from use of DSI due to issues with tracking origins and ensuring open access. If disclosure of origin is required for DSI-based inventions, provider countries might demand bilateral benefit-sharing agreements, complicating the administrative process and reducing efficiency. Obligations on disclosure of origin for DSI in relation to patent applications could hinder research and innovation, as tracking the origins and use of DSI is notoriously difficult.
In conclusion, while the WIPO treaty aims to prevent biopiracy through the disclosure of genetic resource origins, it has clear limitations in achieving this goal.