Case-Studies on Intellectual Property and Traditional Cultural Expressions - Terms of Reference
The studies should examine and draw conclusions on specific and actual examples in which a traditional knowledge ("TK") holder or an indigenous or local community has taken advantage of, or attempted to use, the intellectual property ("IP") system to either protect TK or to further their own interests in the commercial application and utilization of TK. The studies should deal with each example or case separately. In doing so, the Paper should as far as possible cover all of the following issues and questions in relation to each example or case:
The TK
A brief identification and description of the tradition-based innovation or creation that forms the subject matter of the study: its origin, creation, nature, use and significance within the relevant community. If necessary, a brief identification and explanation of the terminology used by the relevant person or community to describe the subject matter of the study.
A brief description of the TK holder, the relevant community, and the social, cultural and ecological context in which they live.
Decision-making and Consent
How was the decision to seek IP protection, initiate IP litigation or commercialize the TK (as the case may be) taken? Is the TK regarded as "collective"? If so, in what way(s)? Was the collective nature of the TK a problem? How was it resolved? In the case of TK held by several TK holders or a community, who acted on behalf of the TK holders or community? How was this person selected? Were other communities relevant and, if so, were they consulted?
Rights and Remedies
What rights or interests were being infringed, or for which rights or interests was protection sought? Why did the TK holder take the IP action concerned, or invoke IP protection, as the case may be? To what extent was the TK holder aware of or familiar with the IP system before he/she embarked on the action concerned? What was the understanding of the nature and scope of the IP system before the action commenced?
What is his/her familiarity and understanding now? What other remedies or options (non-legal and legal) were available? Were any other remedies or options pursued in conjunction with the IP action taken?
Customary Law and Regimes
What part did customary law, practices and regimes play at any stage of the actions taken by the TK holders?
Benefits
What benefits did the TK holder or community initially seek in taking the action? Did the action result in the benefits sought? What role, if any, did IP instruments play in the delivery of these benefits: e.g., contracts enforced in accordance with IP instruments.
Financial QuestionsWhat financial obligations did the action taken by the TK holders entail? What forms of financial outlay were involved (e.g., bonds of security, deposits, court costs, stamp duties, summons/application fees (litigation), application costs and renewal fees (industrial property registration), lawyers’ fees and disbursements, costs incurred in negotiating license agreements)? How was the money raised? Was legal aid available? Did the financial obligations affect or impede the way in which the case was handled or conducted? If so, in what ways? What are the perceptions of the TK holder on this question?
Legal Questions
What form(s) of IP protection were deemed applicable, and why? In what ways was IP protection pursued? Was the attempt to protect the TK under IP successful? If so, in what ways? If not, in what ways and why not? Were any legal problems encountered? (e.g., problems with notions of authorship/inventorship, originality/novelty, the limited duration of IPRs)?
What advantages and disadvantages of existing IP principles were encountered by the TK holder? What recommendations for change, if any, to IP principles would the TK holders and other stakeholders suggest to enhance the usefulness of the IP system in the particular examples concerned?
Operational Questions
How did the TK holder(s) obtain legal advice and assistance in bringing this action? How did the TK holder engage with the administration of IP at the national level (including the relevant Government departments). What are the experiences and perceptions of the relevant Government departments? What recommendations for change, if any, to international IP procedural rules would the TK holders and other stakeholders suggest to enhance the usefulness of the IP system in the particular examples concerned?
Third Parties
Were the rights or interests of third parties (such as a non-indigenous person or private sector entity) affected by the action taken by the TK holder?
Dissemination of TK/Promotion of Innovation and Creation
Did the IP protection of the TK contribute to the dissemination of the TK that would otherwise not have been disseminated? Has the TK protection encouraged the TK holder to innovate and create further? If the IP system was unsuccessful in protecting the TK, has this caused the TK holder not to disclose the TK, or discouraged further innovation and creation? Are disclosure, dissemination and promotion of TK relevant objectives for TK holders?
Commercialization of the TK
If one of the aims was to commercialize the TK, was this achieved, and if so, what role did IP protection play therein?
Expected Results
What were the expectations of the TK holder before taking the action? Have the expectations been met? If so, in what ways? If not, why not?
Enforcement of Rights
Where applicable, have the TK holders had to enforce IP rights in their TK? How have they done so? What were their experiences, and what are the lessons learned?
Conclusions
Generally, were difficulties and successes experienced in applying the IP system to TK, what lessons were learned and to what extent were divergences perceived between identified needs of TK holders and the protection provided by the existing IP system.
In the examples studies, what forms of the TK were not protected by IP?
What are the perspectives of the relevant Government departments on the particular examples studied? What are the consultant’s conclusions on the examples studied?
