Australia: Proposed new treaties for Designs, Genetic Resources and Associated Traditional Knowledge

Following many years of negotiations, the WIPO General Assembly on 21 July 20221 approved the convening of diplomatic conferences for two proposed international agreements: one pertaining to the protection of designs to ease cross border trade and an accord related to intellectual property (IP), genetic resources and traditional knowledge associated with genetic resources. Both sets of negotiations are set to be concluded no later than 2024.

These diplomatic conferences are convened for the purpose of negotiating and concluding international multilateral treaties.

Proposed Design Law Treaty

In Australia and most WIPO Member States, each respective Designs regime is aimed at preserving to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have that design to that of those which do not have it.

At the international level, work on the simplification of procedures for the protection of industrial designs has been ongoing since 2006 through the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. The stated aim of the proposed new Design Law Treaty (DLT) is to "streamline the global system for protecting designs, which are an integral part of many brands, by eliminating red tape and accelerating protection procedures. If approved, these changes would benefit the community of designers, with particular impact for smaller-scale designers with less access to legal support for registering their designs. In particular, the DLT would make it significantly easier for SME's in low and medium income countries to obtain design protection overseas".²

Through draft Articles and Regulations, an early draft text of the treaty sets forth maximum formalities requirements that contracting parties can impose on design applicants and owners. Examples of its provisions include:

• Limits on the requirements that contracting parties can impose as a condition for granting design application filing dates to applicants
• Requirements that contracting parties provide design applicants with certain flexibilities, including flexibilities for applicants who miss a time limit during the application process or who unintentionally allow the registration to lapse
• Requirements that contracting parties must allow design applicants to correct or add a priority claim to an application in certain circumstances
• Requirements that contracting parties provide for a grace period during which public disclosure would not affect novelty or originality requirements for obtaining the right
• Limits on the requirements that contracting parties may impose as to when applicants can be required to obtain local representation to take an action before the local office

Interestingly, Australia's Productivity Commission Inquiry Report into Intellectual Property Arrangements dated 23 September 2016 recommended that the Australian Government promote efforts to harmonise and streamline procedures for acquiring international registered design rights and work actively through the Designs Law Treaty process to promote harmonisation of filing requirements. The Australian Government has accepted that recommendation and also to commence an investigation into the implications of joining the Hague Agreement and monitor usage of the Hague system.

Many of the other recommendations from that Productivity Commission Inquiry Report were adopted by the Australian Government and were implemented when the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent on 10 September 2021.

It will be interesting to see the outcome of the concluded agreement on the DLT and the extent to which Australia's recent reforms align with Australia's international treaty obligations, should Australia become a party to any new DLT.

Proposed Accord on Intellectual Property, Genetic Resources and Associated Traditional Knowledge

Like designs, negotiations on an accord relating to intellectual property, genetic resources and associated traditional knowledge (TK), as well as on the protection of TK as such and traditional cultural expressions/expressions of folklore, have been ongoing since 2010 in the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC).

Given the recognised scientific, economic and cultural importance of genetic resources (plants, animals and micro-organisms) and it's associated TK, WIPO through the diplomatic conference aims to negotiate a new international legal instrument to address certain intellectual property questions related to access to, use of and benefit-sharing in these resources and knowledge systems. This includes for example, a proposed new "patent disclosure requirement" in which applicants for patents whose inventions use genetic resources and associated TK should disclose that fact and other related information in their patent applications.

WIPO have reported that "Proponents for a new international legal instrument argue that it would harmonize diverse national systems, foster the sustainable development of indigenous and local communities, provide legal certainty and predictability for businesses, and improve the quality, effectiveness and transparency of the patent system".³

Given Australia has not yet acceded to the Nagoya Protocol⁴ but it's existing domestic measures are largely consistent with the protocol⁵ it remains to be seen if the proposed new accord on genetic resources and associated traditional knowledge will impact those measures, and indeed if Australia was to become a party to any proposed new accord.

Footnotes

¹At it's Sixty-Third Series of Meetings of the Assemblies of the Member States of WIPO.
² https://www.wipo.int/pressroom/en/articles/2022/article_0009.html
³ Ibid 2.
⁴ Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization (ABS) to the Convention on Biological Diversity is a supplementary agreement to the Convention on Biological Diversity.
⁵ The State of Queensland for example was the first jurisdiction in Australia to introduce best practice biodiscovery legislation for those undertaking biodiscovery activities as regulated under the Biodiscovery Act 2004 (Qld).

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