I am pleased to bring to you our next guest post by Aashna Sheth. Aashna Sheth is an LLM graduate in IPR from the University of Pennsylvania Law School. Aashna had earlier written a post for us here on the Roger Federer vs Nike case and use of names in sponsorship and other agreements. In this post, Aashna analyses the extent to which trade secret regime can protect traditional knowledge.
The San people, otherwise known as the ‘Bushmen’, have since the beginning of time known about a bitter tasting plant that can prevent hunger and thirst[i]. They often use this plant, a succulent belonging to the cactus family known as the ‘Hoodia’ during long hunts[ii]. The South African Government tested the appetite suppressing quality of this plant and the results showed that the weight loss caused by it was not detrimental to individuals’ overall health[iii]. Upon successfully conducting trials on human beings, the Government then patented this extract and licensed it to a large British pharmaceutical company[iv]. Furthermore, in the patent application filed by the Government, the ‘inventor’ i.e., the San people were declared to have become extinct (which in reality, was far from the truth)[v].
This is just one of several scenarios in which Traditional Knowledge, that has belonged to tribes such as the San people for generations has been misappropriated and commercialized. The term Traditional Knowledge lacks a clear definition and consists of a large body of information. Broadly, it refers to the “agricultural, environmental and medicinal knowledge” of indigenous and local communities, developed communally over generations[vi].
This kind of knowledge requires a higher level of recognition, adequate attention and increased protection. While the existing Intellectual Property framework at the international level does not directly address this issue (for instance Article 39 of TRIPS) other solutions (such as WIPO Guidelines) are hopelessly overbroad. Till date, a large amount of literature suggests that the protection of Traditional Knowledge is incompatible with the intellectual property doctrines that are currently in place[vii]. A Trade Secrets approach therefore seems to be a viable solution when it comes to protecting Traditional Knowledge that has not already been disclosed/is already in the public domain.
Explored and analyzed in this post is the extent to which a Trade Secret Regime can protect Traditional Knowledge. I begin by explaining what Traditional Knowledge constitutes and how it is being misappropriated. I then propose a Trade Secret Regime in the context of Traditional Knowledge protection. Subsequently, I analyze Article 39 of TRIPS while recommending minute revisions to its language that might change the way in which it could apply to Traditional Knowledge. Lastly, I look into the short falls and practical difficulties of implementing such a regime.
The Misappropriation of Traditional Knowledge
The definition of Traditional Knowledge is not as precise or succinct as one might have hoped for it to be. It is often divided into two parts; one, which deals with agricultural, medicinal or environmental knowledge, and another, which focuses on cultural practices. My primary focus in this paper is on the first prong thereof.
The misappropriation of Traditional Knowledge usually takes place through a mode popularly known as patent theft and the case of the Ayahuasca plant explains this phenomenon. For several generations, indigenous tribes in the Western Amazon have used the Ayahuasca plant to diagnose illnesses, meet with spirits and divine the future[viii]. An American scientist, by the name of Loren Miller through interactions with this Amazonian tribe and observing their practices, prepared chemical extractions, isolated a particularly useful chemical compound and made an application to patent it[ix]. This patent application provoked protests by the Government of Ecuador and the Coordinating Body of Indigenous Organizations of the Amazon Basin, and eventually the patent was revoked. The people of Ecuador considered this patent to be a clear violation of their cultural practices – especially since the extract that was patented was from a plant they considered to be ‘sacred’ or divine[x].
This case explains the fragile nature of Traditional Knowledge and the repercussions that follow if it is not adequately protected. What we require therefore is an understanding on an international scale, that such information is valuable and therefore deserves to be protected as a ‘Trade Secret’.
Using Trade Secrets to Protect Traditional Knowledge
Under the Uniform Trade Secrets Act of the laws of the United States, Trade Secrets have been defined as:
“Information, including a formula, pattern, compilation, program, device, method, technique or process that:
- Derives independent economic value, actual or potential from not being generally known to and being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
- Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy”[xi]
If this definition is looked at as a model definition, Traditional Knowledge falls within its realm. The information that is held by such indigenous tribes and local communities is untapped and the economic value that they can gain out of it is often unknown to them. This clearly falls under part (a), i.e., independent economic value that is actual or potential. Furthermore, such information/knowledge is only held by the members of such tribes, i.e., it is not ‘generally known’ or ‘ascertainable by proper means’ by others since most of these indigenous persons have derived such knowledge from their elders/ancestors over generations and it is not shared with any member/person outside of their community.
However, the last prong of this definition, i.e., the maintenance of secrecy is a standard that needs to be adaptable in the context of the ‘circumstances’. Efforts that are considered to be ‘reasonable’ to protect Trade Secrets in the modern world include means that are highly technical; for instance firewalls, password protections, and thumb printing to access documents/resources to name a few. However, when it comes to the knowledge possessed by such indigenous tribes, these efforts can never be taken; they lack the means, the resources as well as the mere knowledge to do so. Therefore, the standard of reasonableness in maintaining secrecy when it comes to Traditional Knowledge should be a lot more flexible and vary from one context to another.
Patent law has often been looked at as a means of protecting Traditional Knowledge; however the lack of its success in this area is simply because Traditional Knowledge does not fall directly within the definition of what is patentable, i.e., the elements novelty and non-obviousness cannot easily be met. Furthermore, identifying the inventor and the high costs filing a patent makes it all the more difficult to protect such information in this manner. Therefore, a Trade Secret regime, which is broader, and that has often been utilized to protect information that is old (for e.g., the Coca Cola formula) incrementally or communally developed, lacks novelty or when its inventor is unknown, seems like a more workable solution[xii].
Modifying Article 39 of TRIPS
TRIPS is the one international treaty that governs Intellectual Property Rights on a global scale. Article 39 of this treaty indirectly refers to the protection of Trade Secrets[xiii], but the language used therein is extremely narrow if looked at in the context of Traditional Knowledge.
While the provision clearly states that ‘Natural and Legal persons have the possibility of preventing information lawfully within their control from being disclosed’, proviso (b) thereto states that such protection is granted as long as there is some commercial value to it. Therefore, while TRIPS does protect Trade Secrets, it might not apply to Traditional Knowledge even if we bring it under a Trade Secret regime simply because a lot of the Traditional Knowledge that these tribes possess, unless commercialized (which is often done in the cases of misappropriation by large entities) does not, by itself hold any commercial value.
Thus, a trade secret approach to Traditional Knowledge on an international level would require broadening proviso (b) of this Article[xiv]. Therefore if this definition is expanded, in accordance with the Uniform Trade Secrets Act, that protects the disclosure of information that has ‘actual or potential’ economic value, it could be read into the context of Traditional Knowledge.
Even if broadening this definition includes Traditional Knowledge within its realm, this solution is not one without deficiencies. Several times, indigenous tribes who possess this kind of knowledge consider it to be of spiritual or non-economic importance, thereby making the question of ‘potential economic value’ obsolete. Therefore, while this solution might be workable on paper, implementing it in the real world will be difficult.
The Difficulties of Implementing a Trade Secret Regime
While a Trade Secret Regime might seem like feasible a solution when it comes to protecting Traditional Knowledge, its shortcomings, just like any other solution are numerous and prevalent.
Even if this solution is accepted on an international scale (say for instance through a modification of Article 39 of TRIPS), the real difficulty is getting such indigenous tribes to understand the importance of this regime. While they can be educated about the quality and value of the information they possess, explaining to them how to enter into Non-Disclosure Agreements with large corporations who might utilize their information, or Profit Sharing Agreements in order to gain royalties out of the exploitation of their information, might be difficult. This problem can be bridged by NGOs who work closely with such tribes to draft such NDAs and Agreements while giving them a helping hand at the negotiating table.
Furthermore, under the UTSA, only if such information is misappropriated or wrongfully acquired (or if there is a threat thereof) can matters be even considered for litigation purposes. In these cases however, if companies/corporations manage to show that they have independently developed or reverse engineered certain products (which in all likelihood will seem like the most utilized defenses), trade secret protection might not as successful a regime as we would want it to be. Therefore, this solution might not be successful when it comes to publicly available; reverse engineered or independently developed information[xv].
Another problem that persists is the publication of Traditional Knowledge through national databases. Countries such as India and Peru have published National Data bases, which consist of the Traditional Knowledge that such indigenous tribes possess along with the uses thereof. The main reason this is done is to prevent cases of patent theft. However, it is these freely available databases that hinder the success of Trade Secret protection of knowledge that has been disclosed. In such cases, applying the Trade Secret Regime to Traditional Knowledge becomes all the more difficult as the most crucial element for its protection, i.e., the element of secrecy, does not exist.
The body of Traditional Knowledge is diverse and complex. While the definition of such information is not always as succinct as we might want it to be; it is this very breadth that allows us to bring it within the realm of a Trade Secret Regime.
On an international level what we require is a shift from looking at this issue through the lens of Patent Law to that of Trade Secrets. Trade Secret law can be useful for traditional knowledge holders when dealing with improper acquisition from outsiders and the disclosure and use of relatively secret information[xvi]. However, this solution will not be successful when it comes to publicly available, reverse engineered or independently developed information[xvii].
While no solution is one without its own faults, the current regimes seem to be a lot more idealistic, and this approach is more pragmatic when it comes to the protection of Traditional Knowledge. This regime will show these communities that what they possess is important, has economic value and can be utilized to gain employment and profits through well-drafted NDAs and Income Sharing Agreements. It will reduce distrust, and encourage the disclosure of such information to those who can make the productive use of it, while also keeping the interests of such indigenous communities in mind.
[i] See Tom Nevin, San to get fat on Slimness, AFRICAN BUSINESS (January 2004) at pg. 20
[vi] World Intellectual Property Organization [WIPO] Intergovernmental Comm. On Intellectual Property and Genetic Res., Traditional Knowledge & Folklore, The Protection of Traditional Knowledge: Revised Objectives and Principles at 27 16th Sess., WIPO Doc. WIPO/GRTKF/IC/16/5 (January 22, 2010)
[vii] Deepa Varadarajan, A Trade Secret Approach to Protecting Traditional Knowledge, 36 YALE J. INT’L L. (2011)
[viii] The Ayahuasca Case, at https://www.amazonlink.org/biopiracy/ayahuasca.htm (Date Accessed: March 21, 2019)
[xi] Definition of Trade Secrets under the UTSA
[xii] Supra at 7
[xiii] The wording of Article 39 is as follows: Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by or used by others without their consent in a manner contrary to honest commercial practice so long as such information:
- is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within circles that normally deal with the kind of information in question;
- has commercial value because it is secret
- has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information to keep it secret.
[xiv] Deepa Varadarajan, A Trade Secret Approach to Protecting Traditional Knowledge, 36 YALE J. INT’L L. (2011)
[xvi] Supra at 7