Tufty the Cat, who is qualified as a U.K. and European patent attorney and who maintains a blog by the same name, accessible over here has written for us this interesting guest post on the veracity of the several claims made by TKDL. Tufty had earlier left a comment on one of my posts questioning the veracity of TKDL's claim of foiling an European patent application for certain properties pertaining to milk. Subsequent to that comment, I invited Tufty to write us a guest post on the several claims made by TKDL with regard to the several EP applications that it had claimed were either withdrawn or modified as a result of TKDL evidence. Image from here.
The Traditional Knowledge Digital Library and the EPO
Tufty the Cat
Traditional knowledge (TK) is often cited as being relevant to intellectual property, and it is sometimes even argued that TK justifies some kind of sui generis IP right. Whether TK could in any sense be considered to be an IP right is contentious, and is not the subject of this post. It is less contentious that TK would at least be considered to be prior art.
Under European law, the state of the art is "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application" (Article 54 EPC). This would certainly cover traditional knowledge, which is often communicated by use and by word of mouth. A problem with such disclosures is that of proof. The EPO is typically reluctant to accept oral disclosures as prior art unless backed up with sufficiently persuasive evidence. This is where the Traditional Knowledge Digital Library supposedly comes in. The TKDL, a collaborative project between the Council of Scientific and Industrial Research and the Department of Ayurveda, Yoga and Naturopathy, Unani, Siddha and Homeopathy, was set up in 2001 to document traditional knowledge that was claimed to be already known in India, sometimes for hundreds of years.
As claimed on the TKDL website, "TKDL gives legitimacy to the existing traditional knowledge and enables protection of such information from getting patented by the fly-by-night inventors acquiring patents on India’s traditional knowledge systems. It will prevent misappropriation of Indian traditional knowledge, mainly by breaking the format and language barrier and making it accessible to patent examiners at International Patent Offices for the purpose of carrying out search and examination". Apart perhaps from the claim about "fly by night inventors", this all seems quite sensible and generally a good thing. After all, patents should not be granted for inventions that are already known.
The TKDL website has a list of European patent applications in which "citation of TKDL references as prior art have led to significant strides towards achieving the goal of preventing misappropriation of Indian Traditional Knowledge". At the time of writing the list refers to 79 European applications that have been either withdrawn, refused or amended, allegedly as a result of TKDL cited references. One of these, EP2251029, was recently the subject of an article in the Times of India, which was noted by Spicy IP. The TofI stated that "India has successfully foiled a bio-piracy bid by a Swiss multi-national firm to patent an age-old Indian home remedy - milk as a laxative". Was this true? Had the TKDL been used in this way, and had a patent application really been made for milk as a laxative?
As expected, the truth is a little less dramatic. The application in question, filed by Nestec S.A. (the Nestlé Research Center in Lausanne, Switzerland) in 2009, was published in November 2010 after having been thoroughly searched by the EPO. The search report cited 17 documents as being relevant to the claimed invention, all of which were relevant to at least claim 1 of the application, which read "Ingestible composition enriched in lactoferrin to be administered to adults and/or the elderly". The European examiner stated in the search opinion dated 23 October 2009, that the application had several problems under European patent law, one of which was that the claimed invention was not new in light of ten of the cited documents. Following an examination report issued in June 2011 confirming this finding, third party observations under Article 115 EPC were filed by CSIR on 13 September 2011. An extract from the TKDL was provided, citing various compositions including cow's milk for use in the treatment of constipation among other ailments. The applicant then failed to file a response to the examination report in due time, with the result that the application was deemed withdrawn on 24 January 2012. (Incidentally, this is not yet necessarily the end of the line for the application, as a response can still be filed by 3 April 2012 if the applicant uses further processing.)
From only a quick review of the prosecution file, it is clear that the TKDL references would be far less relevant than any of the ten documents already cited by the examiner. It is hard to see how the references would make any difference at all to the outcome of the application, which would most likely be refused, or at least substantially limited, as a result of the far more detailed references already cited by the examiner. To claim that the TKDL had "successfully foiled a bio-piracy bid" seems therefore to be plain wrong.
This was, however, only one case where the TKDL has been used against a European application. Surely there would be other cases where the TKDL has been effective in stopping a "bio-pirate" from appropriating Indian traditional knowledge? Looking at several of the other applications cited by TKDL, it is not clear that it has been effective in any cases. There is, as far as I can see, only one instance where an application was refused in light of TKDL documents (EP1747786), and in that case the grounds for refusal also related to documents already cited by the examiner. In another case claimed by TKDL to have had a decision to grant set aside, the application in fact proceeded to grant and remains in force after no opposition was filed. In the many other examples cited by TKDL, I have been unable to find any where a TKDL reference has been decisive in preventing an application from proceeding.
From this brief review, it appears on the face of it that the TKDL, although possibly useful in some limited circumstances involving over-broad applications, is of fairly limited use. Although it has been claimed (in the above mentioned TofI article) that thousands of applications had previously been wrongfully granted as a result of a lack of information on traditional knowledge, this seems to be far fetched given that TKDL is unable to provide any convincing examples of applications being refused on grounds of a TKDL reference. Can anyone else find one?