A Further Reason to Look Back Before Moving Forward

Toni Polson Ashton and David Bowden
Published July 24th, 2015

In the present hi-tech world of rapid change/advancement, one can be forgiven for concluding that life is now only about moving forward. However, life on earth has never been all about what lies ahead. In fact, humans frequently look back for guidance in the political arena, each time a child is born in an effort to discern recognizable family features and so forth.

Intellectual Property rights generally deal with advancement – for example, patents for innovation and trade-marks for fresh marketing initiatives. To be recognized as subject matter capable of being registered and/or enforceable, patents must be new, inventive and useful. Trade-marks must not be confusing with, inter alia, pre-existing third party marks and must be used to distinguish an owner’s goods and/or services from those of other traders.

Due to the World Intellectual Property Organization (WIPO) initiatives, entities seeking IP protection may be obliged to look wider for what developed earlier, since WIPO has proposed draft Articles for two treaties; one regarding Traditional Knowledge (TK) and one regarding Traditional Cultural Expressions (TCE).

Traditional Knowledge (TK)

Although there is as yet no accepted international definition of TK, the concept refers to technical know-how, practices, skills and innovations related to biodiversity, agriculture or health that were developed, sustained and passed to subsequent generations in the community (e.g., the irrigation practice indigenous to Iran known as “qanat”).

Traditional Cultural Expressions/Expressions of Folklore (TCE)

TCE refers to cultural manifestations such as music, art, designs, symbols and performances passed from generation to generation in a community (e.g., traditional Maori artworks in New Zealand).

WIPO efforts follow UN Treaties which provide some limited obligations for the protection of TK (e.g., the UN Declaration on the Rights of Indigenous Peoples).

What is happening is two-fold:

a) to ensure third parties do not gain illegitimate IP rights over TK and

b) to allow active exploitation of TK by originating communities.

Why should Canadians take note of these initiatives? Because, for example, the existence of TK may prevent the grant of patent and trade-mark rights.

The signing of a Memorandum of Understanding between the Canadian Intellectual Property Office (CIPO) and the State Intellectual Property Office (SIPO) of the People’s Republic of China has enhanced cooperation between the two offices. As a result of this enhanced cooperation, CIPO Examiners now have access to China’s Traditional Chinese Medicine Database. Therefore, a Canadian Examiner can check claims in patent applications against the Database to avoid granting patents for inventions lacking novelty and inventiveness over prior traditional medicines.

Canadian Trade-mark Owners need to know that signs/symbols registered as trade-marks might have been created generations ago by communities living perhaps half way around the world.

The bottom line is that prior rights could be incredibly extensive. IP owners need to be aware of them. Perhaps IP owners will be looking at a future where new benefit/sharing relationships may arise with originating cultural groups.

The presentation of information in this article does not establish a lawyer-client relationship between you and Sim IP Practice or between you and any professional of Sim IP Practice. This article is for information purposes only. It is not, and should not, be taken as legal advice. You should not rely on, or take, or fail to take, any action, based upon this information only. Never disregard or delay in seeking legal advice because of something you have read in this article. Sim IP Practice professionals will be pleased to discuss resolutions to specific legal concerns you may have.

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