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China Engages in International Regulation of Disclosure Obligation

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China in Global Governance of Intellectual Property

Part of the book series: Palgrave Socio-Legal Studies ((PSLS))

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Abstract

This chapter explores how China has engaged in international regulation concerning the disclosure obligation in patent applications. “Disclosure obligation” refers to the mandatory requirement to disclose the origins/sources of genetic resources in patent applications. This chapter first analyses polarised positions in post-TRIPS multilateral negotiations on this issue. Despite that no international consensus has been reached, China actively learned from international proposals submitted to the WTO TRIPS Council and the WIPO IGC, engaged in international negotiation, and created a disclosure mechanism in its Patent Law (2008) with its own characteristics. Generally, China took a pro-development position to support the disclosure obligation in multilateral negotiations after its patent law and incorporated provisions on the protection of genetic resources in its FTAs. By supporting negotiations towards a binding disclosure obligation in the TRIPS Agreement, China’s activities contribute to enhancing global distributive justice from a cosmopolitan perspective.

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Notes

  1. 1.

    WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore [hereinafter IGC], Consolidated Document Relating to Intellectual Property and Genetic Resources, WIPO/GRTKF/IC/29/4, 30 November 2015. The CBD tends to interpret the concept of genetic resources more broadly: the genetic structure per se can be utilised or the information encapsulated in the nucleotide sequence of the genetic material can be read and digitalised and easily acquired.

  2. 2.

    CBD: Para. 5, Preamble, and Article 3.

  3. 3.

    Access and benefit-sharing refer to the way genetic resources may be accessed and how benefits resulting from their use are shared between the people or countries using the resources (users) and the people or countries providing them (providers). ABS is based on prior informed consent (PIC) being granted by a provider to a user and negotiations between both parties. ABS is one of the three objectives of the CBD and is stipulated in detail in the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity (Nagoya Protocol).

  4. 4.

    Ministry of Environment Protection, Notice Concerning Issuing the National Biodiversity Conservation Strategy and Action Plan of China (2011–2030) 关于印发 《中国生物多样性保护战略与行动计划》 (2011–2030年) 的通知, No. 106 (2010).

  5. 5.

    The LMMC was set up in 2002 by 17 countries: Bolivia, Brazil, China, Colombia, Costa Rica, Democratic Republic of Congo, Ecuador, India, Indonesia, Kenya, Madagascar, Malaysia, Mexico, Peru, Philippines, South Africa, and Venezuela. These countries are home to about 70% of the Earth’s species. The LMMC was established to promote consultation and cooperation on the preservation and sustainable use of biological diversity.

  6. 6.

    SPLT, Articles 11, Alternative A. See WIPO Standing Committee on the Law of Patents [hereinafter SCP], Fifth Session, Draft Substantive Patent Law Treaty, SCP/5/2, 4 April 2001.

  7. 7.

    WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention on Biological Diversity: Summary of Issues Raised and Points Made, Note by the Secretariat, IP/CIW/368/Rev.1, 8 February 2006.

  8. 8.

    WTO TRIPS Council, IP/CIW/368/Rev.1.

  9. 9.

    Andean Community, Decision No. 391 Establishing the Common Regime on Access to Genetic Resources, Decision No. 391, was issued in Caracas, Venezuela, by the Commission of the Cartagena Agreement (the Commission of the Andean Community) on 2 July 1996. It was published in the Official Gazette of the Cartagena Agreement, No. 213 of 17 July 1996, in Lima, Peru.

  10. 10.

    In addition to genetic resources, megadiverse countries also promoted the disclosure of origin of traditional knowledge and traditional knowledge associated with genetic resources.

  11. 11.

    CBD, Article 16.5.

  12. 12.

    WTO Doha Ministerial Declaration, Paras 12 and 19.

  13. 13.

    WTO General Council, Trade Negotiations Committee, TRIPS Council, Doha Work Programme—The Outstanding Implementation Issue on the Relationship between the TRIPS Agreement and the Convention on Biological Diversity, Communication from Brazil, China, Colombia, Cuba, Pakistan, Peru, Thailand, and Tanzania, IP/C/W/474 [also circulated as WT/GC/W/564/Rev.2 and TN/C/W/41/Rev.2], 5 July 2006.

  14. 14.

    WTO TRIPS Council, Proposals on Intellectual Property Rights Issues, Communication from India, IP/C/W/195, 12 July 2000, Para 16.

  15. 15.

    WTO TRIPS Council, Review of Article 27.3 (b), Communication from Brazil, IP/C/W/228, 24 November 2000. See Para. 25 of this communication.

  16. 16.

    WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention on Biological Diversity and the Protection of Traditional Knowledge, Communication from Brazil, China, Cuba, Dominican Republic, Ecuador, India, Pakistan, Thailand, Venezuela, Zambia, and Zimbabwe, IP/C/W/356, 24 June 2002. See Para. 10 of this communication.

  17. 17.

    The EC submitted proposals to the TRIPS Council and the WIPO IGC contemporaneously. See TRIPS Council, IP/C/W/383, 17 October 2002, and WIPO IGC, WIPO/GRTKF/IC/8/11, 17 May 2005. Switzerland first proposed to WIPO to reform the PCT regulations to incorporate disclosure requirement (PCT/R/WG/5/11), then proposed to the TRIPS Council to gain support for this WIPO proposal (IP/C/W/446).

  18. 18.

    WTO Trade Negotiations Committee, Draft Modalities for TRIPS Related Issues, Communication from Albania, Brazil, China, Colombia, Ecuador, the European Communities, Iceland, India, Indonesia, Kyrgyz Republic, Liechtenstein, Former Yugoslav Republic of Macedonia, Pakistan, Peru, Sri Lanka, Switzerland, Thailand, Turkey, the ACP [African, Caribbean and Pacific] Group, and African Group, TN/C/W/52, 19 July 2008.

  19. 19.

    WTO TRIPS Council, Views of the United States on the Relationship between the Convention on Biological Diversity and the TRIPS Agreement, Communications from the United States, IP/C/W/257, 13 June 2001, pp. 5–6.

  20. 20.

    WTO TRIPS Council, Article 27.3 (B), Relationship between the TRIPS Agreement and the CBD, and the Protection of Traditional Knowledge and Folklore, Communication from the United States, IP/C/W/434, 25 November 2004, pp. 2–5.

  21. 21.

    WTO TRIPS Council, Minutes of the Meeting Held in the Centre William Rappard on June 5, 2007, IP/C/M/54, 26 July 2007, Para. 58.

  22. 22.

    WTO TRIPS Council, Minutes of the Meeting Held in the Centre William Rappard on June 8–9, IP/C/M/60, 28 September 2009, Para. 37.

  23. 23.

    Ibid., Para. 55.

  24. 24.

    See, for instance, proposals from the African Group, Like-Minded Countries, European Communities and its Member States, Switzerland, and Japan, WIPO/GRTKF/IC/20/INF/11.

  25. 25.

    WIPO IGC, Twenty-Third Session, Consolidated Document Relating to Intellectual Property and Genetic Resources, document prepared by the Secretariat, WIPO/GRTKF/IC/23/4, 2 November 2012.

  26. 26.

    See ibid., WIPO/GRTKF/IC/25/5, Article 3.

  27. 27.

    See WIPO/GRTKF/IC/30/4, Footnote 1.

  28. 28.

    WIPO General Assembly, Forty-Seventh (22nd Ordinary) Session, Conversion of WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) into a Standing Committee: Proposal by the African Group to the 2015 General Assembly, document prepared by the Secretariat, WO/GA/47/16, 28 July 2015.

  29. 29.

    WIPO General Assembly, Forty-Seventh (22nd Ordinary) Session, Matters Concerning the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC): Proposal of the United States of America to the WIPO General Assembly, document prepared by the Secretariat, WO/GA/47/17, 4 September 2015.

  30. 30.

    WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention on Biological Diversity, Brazil on behalf of the delegations of Brazil, China, Cuba, Dominican Republic, Ecuador, India, Pakistan, Thailand, Venezuela, Zambia, and Zimbabwe, IP/C/W/356, 24 June 2002.

  31. 31.

    For instance, Bolivia proposed amending Article 27.3(B), which gained support from many megadiverse countries. See WTO TRIPS Council, Article 27.3(B) and the Legalization of Biopiracy: Trends, Impacts and Why it Needs to be Amended, Communication from the Plurinational State of Bolivia, IP/C/W/554, 28 March 2011.

  32. 32.

    State Council, Decision on Accelerating the Development of Strategic Emerging Industries 国务院关于加快培育和发展战略性新兴产业的决定 No. 32 (2010).

  33. 33.

    State Council, Notice of the State Council on Issuing Made in China 2025 国务院关于印发《中国制造2025》的通知, No 28 (2015), 8 May 2015.

  34. 34.

    WIPO, Intellectual Property Statistics, available at: http://www.wipo.int/ipstats/en/. This figure is reproduced under the Attribution 4.0 International CC license (CC BY 4.0).

  35. 35.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on March 5–7, 2002, IP/C/M/35, 22 March 2002.

  36. 36.

    Ibid., Para. 248.

  37. 37.

    For instance, the Chinese representative to the TRIPS Council posed questions to the European Commission on details of the disclosure obligation regarding the legal consequence of violation, and whether a civil or criminal remedy would be appropriate. See WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on February 18–19, 2003, IP/C/M/39, 21 March 2003, Para. 135.

  38. 38.

    See WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 8–9 and 31 March 2005, IP/C/M/47, 3 June 2005, Para. 57. In this speech, the Chinese representative showed China’s support for proposals IP/C/W/442 and IP/C/W/443—specifically: WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention of Biological Diversity (CBD) and the Protection of Traditional Knowledge—Elements of the Obligation to Disclose Evidence of Benefit-Sharing under the Relevant National Regime, Submission from Bolivia, Brazil, Colombia, Cuba, Dominican Republic, Ecuador, India, Peru, and Thailand, IP/C/W/442, 18 March 2005; and WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) and the Protection of Traditional Knowledge—Technical Observation on Issues Raised in a Communication by the United States (IP/C/W/434), Submission from Brazil and India, IP/C/W/443, 18 March 2005.

  39. 39.

    The Chinese Patent law was promulgated in 1984, and amended in 1992, 2000, 2008, and 2020, respectively. Patent Law (2008) introduced provisions on genetic resources for the first time. Relevant provisions remain unchanged in the 2020 amendment.

  40. 40.

    See the Chinese Constitution 宪法, Article 9; Forest Law 森林法, Article 3; Grassland Law 草原法, Article 9; Law on Protection of Wild Animals 野生动物保护法, Article 3; Law on Animal Husbandry 畜牧法, Chapter 2; Seeds Law 种子法, Article 11.

  41. 41.

    State Council, Implementation Rules of the Patent Law 专利法实施细则, 2010.

  42. 42.

    See WTO General Council, Trade Negotiation Council, and TRIPS Council, The Relationship between the TRIPS Agreement, the Convention on Biological Diversity and the Protection of Traditional Knowledge—Amending the TRIPS Agreement to Introduce an Obligation to Disclose the Origin of Genetic Resources and Traditional Knowledge in Patent Applications, Communication from Norway, IP/C/W/473 [also circulated as WT/GC/W/566 and TN/C/W/42], 14 June 2006; see details for the megadiverse-country proposal (IP/C/W/474) and the EU proposal to the IGC (WIPO/GRTKF/IC/8/11).

  43. 43.

    Ibid., IP/C/W/473.

  44. 44.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 14–15 June 2006, IP/C/M/51, 20 September 2006, Para. 85: ‘He welcomed Norway’s support of the amendment of the TRIPS Agreement to introduce a mandatory disclosure obligation in patent applications, although he had reservations on the effectiveness of sanctions outside the patent system.’ WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 5 June 2007, IP/C/M/54, 26 July 2007, Para. 51: ‘While welcoming the constructive attitude of Norway, he took note of the substantial difference between Norway’s proposal and the joint proposal, particularly with regard to the nature of the disclosure requirements.’

  45. 45.

    The page for the protection of genetic resources and traditional knowledge on the SIPO website was at: http://www.sipo.gov.cn/ztzl/ywzt/yczyhctzsbh/zlk/ggty/ [this address was not valid when last searched on 6 May 2018]. That section was updated during March 2005 and April 2007—the period of preparation of the Patent Law (2008) amendment. The Norwegian proposal was the only one submitted to the TRIPS Council that has been translated.

  46. 46.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 27–28 October and 6 November 2009, IP/C/M/61, 12 February 2010, Para. 80.

  47. 47.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 23–24 October 2007, IP/C/M/55, 21 December 2007, Para. 112. Underlines added by the author.

  48. 48.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 13 March 2008, IP/C/M/56, 21 May 2008, Para. 37. Underlines added by the author.

  49. 49.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 2 March 2010, IP/C/M/62, 1 June 2010, Para. E.27; WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 8–9 June 2010, IP/C/M/63, 4 October 2010, Para. 64.

  50. 50.

    WTO Trade Negotiations Committee, Draft Decision to Enhance Mutual Supportiveness between the TRIPS Agreement and the Convention on Biological Diversity, Communication from Brazil, China, Colombia, Ecuador, India, Indonesia, Peru, Thailand, ACP [African, Caribbean and Pacific] Group, and African Group, TN/C/W/59, 19 April 2011.

  51. 51.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 5–6 March 2013, IP/C/M/72, Para. 5.5.

  52. 52.

    WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 11–12 June 2013, Addendum, IP/C/M/73/add.1, Para. 8; WTO TRIPS Council, Minutes of the Meeting Held in the Center William Rappard on 10–11 October 2013, Addendum, IP/C/M/74/Add.1, Para. 15.

  53. 53.

    WTO TRIPS Council, Article 27.3(B), Relationship between the TRIPS Agreement and the CBD and Protection of Traditional Knowledge and Folklore, Communication from Peru, IP/C/W/441, 8 March 2005; WTO TRIPS Council, Article 27.3(B), Relationship between the TRIPS Agreement and the CBD and Protection of Traditional Knowledge and Folklore, Communication from Peru, IP/C/W/447, 8 June 2005; WTO TRIPS Council, Analysis of Potential Cases of Biopiracy, Communication from Peru, IP/C/W/458, 7 November 2005.

  54. 54.

    WTO TRIPS Council, Review of Article 27.3 (b): The View of Switzerland, Communication from Switzerland, IP/C/W/284, 15 June 2004; WTO TRIPS Council, Article 27.3(B), the Relationship between the TRIPS Agreement and the Convention on Biological Diversity, and the Protection of Traditional Knowledge, Communication from Switzerland, IP/C/W/400/Rev.1, 18 June 2003; WTO TRIPS Council, Additional Comments by Switzerland on its Proposal Submitted to WIPO Regarding the Declaration of Source of Genetic Resources and Traditional Knowledge in Patent Applications, Communication from Switzerland, IP/C/W/423, 26 June 2003; WTO TRIPS Council, Further Observations by Switzerland on its Proposals Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications, Communication from Switzerland, IP/C/W/433, 25 November 2004; WTO TRIPS Council, The Relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) and the Protection of Traditional Knowledge and Folklore and the Review of Implementation of the TRIPS Agreement under Article 71.1, Communication from Switzerland, IP/C/W/446, 30 May 2005; WIPO International Patent Cooperation Union (PCT Union) Working Group on Reform of the Patent Cooperation Treaty (PCT), Fourth Session, Proposals by Switzerland Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications, PCT/R/WG/4/13, 5 May 2003; WIPO International Patent Cooperation Union (PCT Union) Working Group on Reform of the Patent Cooperation Treaty (PCT), Fifth Session, Proposals by Switzerland Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications, PCT/R/WG/5/11, 19 November 2003; WIPO International Patent Cooperation Union Working Group on Reform of the Patent Cooperation Treaty (PCT), Sixth Session, Additional Comments by Switzerland on its Proposals Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications, PCT/R/WG/6/11, 21 April 2004; WIPO International Patent Cooperation Union Working Group on Reform of the Patent Cooperation Treaty (PCT), Further Observations by Switzerland on its Proposals Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications Seventh Session, PCT/R/WG/7/9, 5 April 2005.

  55. 55.

    Article 5.3 of the Chinese Patent Examination Guidelines 专利审查指南 stipulates that patent applicants can still submit the disclosure form during the substantive examination. If the disclosure obligation is still not fulfilled at this stage, the patent application will be rejected.

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    Wenting Cheng

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Cheng, W. (2023). China Engages in International Regulation of Disclosure Obligation. In: China in Global Governance of Intellectual Property. Palgrave Socio-Legal Studies. Palgrave Macmillan, Cham. https://doi.org/10.1007/978-3-031-24370-7_3

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