Waitangi Tribunal says introduce a disclosure requirement

One of the recommendations of the Waitangi Tribunal in the WAI 262 report is to introduce a legal requirement for patent applicants to disclose the source and the country of origin of any genetic or biological material contributing to the invention.

The Tribunal believes that early notification during the patent process is justified.  It suggests that every patent applicant should therefore disclose whether Maori traditional knowledge (matauranga Maori) or the genetic and biological resources of taonga species have contributed to the inventive activity that led to the patent application.

“Taonga species” are flora and fauna that are significant to the culture or identity of Maori tribes.

What needs to be disclosed

The disclosure requirement seems to go beyond the New Zealand context.

An applicant for a patent related to biological materials or Maori traditional knowledge will be required to disclose:

• the source and country of origin of any genetic or biological resource that contributed in any material way to the invention;
• Maori traditional knowledge that was used in the course of research.  This includes traditional knowledge that is not integral to the invention but that prompted the inventor to take the course of research that led to the relevant patent application.

In my experience there are many cases where the source and country of origin of genetic or biological resources are not clear.  This is particularly evident where the invention relates to an isolated derivative.  In some cases the applicant will have no idea whether or not the invention is based (however remotely) on genetic or biological resources.

This situation is perhaps reflected in the consequences for non-compliance.

Failure to comply with disclosure requirement

Although the requirement to disclose is mandatory, the suggested consequences for not doing so are unclear.  The Tribunal makes a distinction between formal (or formalities) requirements and substantive requirements.

Treating the disclosure requirement as a formalities matter is not, in the view of the Tribunal, a viable option.  There would not be the necessary incentive for patent applicants to disclose the use of traditional knowledge and taonga species.

On the other hand, the strict consequences of a substantive disclosure requirement are too draconian.  Refusal or revocation of a patent, in the view of the Tribunal, is too harsh a penalty.

The Tribunal settled on the view that the consequences of non-disclosure should be a matter of discretion for the commissioner.  In some cases there will be no sanction at all.  In other cases, a patent will be revoked or refused – but only when the merits of the case justify it.