Bio-Prospecting and the South African Patents Act: Amendments Now in Place to Protect Indigenous Biological and Genetic Resources and Traditional Knowledge
As a signatory to the Convention on Biological Diversity (CBD), South Africa introduced the South African Biodiversity Act in 2004 in order to comply with its international obligations. The process did not, however, end there as further legislative protection was required in order to assure full compliance with the CBD and the Bonn Guidelines on access to genetic resources and the fair and equitable sharing of benefits arising from their use. To this end the South African Patents Act has been amended to link it to the South African Biodiversity Act.
The Biodiversity Act includes provisions to ensure that if a patent is sought in South Africa for an invention which is derived from an indigenous biological or genetic resource, adequate compensation will be given to any person or community giving access to the indigenous biological resource. Furthermore, it also ensures that indigenous communities are compensated when the invention is also based on, or derived from traditional knowledge, and where the indigenous community is the owner of the traditional knowledge.
The Patents Amendment Act No. 20 of 2005 is linked to the Biodiversity Act in that it requires that every applicant who lodges an application for a patent accompanied by a complete specification, must state whether or not the claimed invention is:
- based on or derived from an indigenous biological resource or an indigenous genetic resource; or
- based on or derived from an indigenous biological resource or an indigenous genetic resource and also based on or derived from traditional knowledge or use; and
- if the invention is based on or derived from traditional knowledge or use, whether it is co-owned by the owners of the traditional knowledge or use.
“Indigenous biological or genetic resource” means a South African biological or genetic resource. Similarly, “traditional knowledge or use” means the knowledge or way in which an indigenous community has used the indigenous biological or genetic resource.
These amendments to the Patents Act came into force on 14 December 2007.
As a result, every applicant for a patent (with the exception of provisional patent applications) filed in South Africa on or after 14 December 2007 is required to lodge a declaration or statement on Form P26, irrespective of the nature of the invention sought to be protected. It will not be possible to obtain a patent if the required statement is not lodged at the Patent Office. It is important to note that if the statement on the P26 contains a false statement or representation which is material and which the applicant knew, or ought reasonably to have known, to be false at the time when the statement or representation was made, the patent can be revoked. Furthermore, it is likely that in a case where a false statement is made, it will not be possible to take any corrective action, which could result in the patent being revoked.
The Form P26 should be filed within six months (extensions can be obtained) of filing the patent application in South Africa.
As mentioned above, it should be noted that the required statement relates only to indigenous (i.e. South African) biological or genetic resources and traditional knowledge. In other words, the required statement does not refer to biological or genetic resources or traditional knowledge from countries other than South Africa. It should also be noted that the genetic resources to which the amendments to the Patents Act relate are broader than the indigenous biological resources defined in the South African Biodiversity Act.More specifically, the amendments to the Patents Act do not have the exceptions that are included in the Biodiversity Act.
If an applicant acknowledges that the invention is based on, or derived from, an indigenous biological or genetic resource or traditional knowledge, the applicant must submit proof of their title or authority to make use of the resource or traditional knowledge by lodging one of the following:
i) a copy of the permit issued in terms of Chapter 7 of the South African Biodiversity Act of 2004;
ii) if applicable, proof that prior consent has been obtained as contemplated in Section 82(2)(a) or 82(3)(a) of the South African Biodiversity Act of 2004;
iii) if applicable, proof of a material transfer agreement as contemplated in Section 82(2)(b)(i) of the South African Biodiversity Act of 2004;
iv) if applicable, proof of a benefit-sharing agreement as contemplated in Section 82(2)(b)(ii) or 82(3)(b) of the South African Biodiversity Act of 2004;
v) if applicable, proof of co-ownership of the invention for which protection is claimed; or
vi) any other proof to the satisfaction of the Registrar.
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Dave Cochrane at firstname.lastname@example.org or
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