How to Protect Traditional Chinese Medicine?

Recently I have been corresponding about Traditional Chinese Medicine (TCM) and which intellectual property rights (IPR) can protect them. I just read Mr or Ms Jia's interesting paper on TCM (Jia Q., The World Health Organization, 'Traditional Chinese Medicine Could Make "Health for One" [Come] True', 2006) which includes a very interesting chapter on intellectual property rights:

4.3. No good methods have been developed to protect traditional knowledge starting at page 64. Jia gives a discription of 10 different methods to protect TCM (I have numbered the list and wrote the IPR in bold):

1. "Trade secret: It has a long history of thousands of years in China and it is one of the important protective methods.

2. National secret: It is one of the most effective methods of all protections now that only finite TCM products enjoy such protection like Yunnan Baiyao capsule.

3. Trademark protection: It is the weak link which TCM industry is liable to be trespassed on. For example, trademark of the Beijing Tongrentang Co. Ltd, which is one of the oldest and well-known corporations of TCM, was even enrolled by a Japanese company in 1983.

4. Geographical indication: It is a kind of protection aimed mainly at trueborn medicinal herbs or the products made from them.

5. Patent protection: It is the strongest methods to protect inventions. But patent system isn’t considered suitable for traditional medicine except those innovative products.

6. Protection and inspection of new medicine: In 2002, administrative protection of new medicine was abolished and inspective duration for new medicine of 5 years, in which the same produces can’t be manufactured as well as imported by other corporations was set up.

7. Protection of Chinese medicines: There novelty is not required and the protective limit is from 30 to 7 years. The protective species have reached to 1668 in which 12 kinds of species belong to the first class of protection.

8. Copyright system: It contains books, articles, prescriptions and instructions.

9. New herb species: It is often developed by cultivation or domesticated from wild species which are newly found.

10. Frontier protection of the intellectual property: It could be applied to the customhouse through which the tortious products export or import."

Ad 5. As Jia already points out, TCM are not well suited to the patent system. A patent needs to be novel, innovative and have practical applicability. By definition TCM are traditional, and not novel. Therefore only innovative use of TCM can be patented. But the special characteristics of TCM make it even more difficult to patent them. TCM are not just curative, but have a preventive part as well. And they are focused on syndromes not diseases (separate diseases can be prognosed as the same syndrome). TCM is catered to the individual and can by definition not be standardised. Its philosophy is holistic, which means no body/mind dichotomy, therefore mind cultivating methods, such as acupuncture, moxibustion, massage, taiji, qigong, next to herbal medicine, are part of TCM. It is also very hard to pinpoint the effective substance of a TCM, since many substances are used in one TCM which supposedly all contribute to the end result.

Ad 7. Protection of Chinese Medicines. This is a sui generis, which might be promising. The idea is to avoid the situation that Chinese people infringe some foreign patent by using or selling a TCM. "Meanwhile, our own TCM is frequently applied for patents by other countries, which reminds us of the serious situation that Chinese traditional medicine knowledge is encountering,"see here. Regulations on the Protection of Types of Traditional Chinese Medicine, effective 1993, see here.

Thanks Ron Yu (Novacourses) and Laurent Gaberell.

Picture by Jonas in China (some rights reserved)

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Pinggu Peaches Only From China: China's Position on GI

On June 21, IP Dragon mentioned that there would be an international symposium on geographical indications (GI) organised by the World Intellectual Property Organisation (WIPO) and China's State Administration for Industry and Commerce (SAIC) in Beijing, June 26 to 28, see here. So it is the highest time to find out what China's position is.

Let us first take a look at the terminology of geographical indications.

What is GI's relation to the concepts indication of source and appellation of origin?

Mr Marcus Höpperger, acting director WIPO's Law and International Classifications Division explains the differences and similarities:

Indication of source

Indication of source is used in articles 1 (2) and 10 of the Paris Convention for the protection of industrial property of 1883 (the original text of the Paris Convention did not provide for the prevention of the use of false indications per se, but only where such use occurred in connection with the use of a false trade name. This is not needed under the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods) and throughout the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 1891.

Article 1 (1) Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods: "[A]n indication of source can be defined as an indication referring to a country, or to a place in that country, as being the country or place of origin of a product."

Appellation of origin

Appellation of origin is defined in article 2 (1) Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958:

“Appellation of origin” means the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.”

Geographical indication

Article 22 (1) TRIPs Agreement defines geographical indications:

"Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member [of the World Trade Organization], or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”

When comparing these definitions, Mr Höpperger observes: "Indications of source only require that the product on which the indication of source is used originate in a certain geographical area. Thus, there are indications of source, which seem not to be covered by the definition of geographical indication under the TRIPS Agreement, namely indications of source whose use on products does not imply a particular quality, reputation or characteristic of those products. Geographical indications are more broadly defined than appellations of origin. In other words, all appellations of origin are geographical indications, but some geographical indications are not appellations of origin." Read the WIPO document ( WIPO/GEO/BEI/07/7) here.

Approaches to protection

WTO members have to comply to the TRIPs Agreement, which is an intrinsical part of the WTO Agreement (Annex 1C). China is a WTO member since 2001. According to TRIPs, member states such as China have to protect geographical indications. But there is a wide variety of different approaches to choose from:

• Unfair competition laws (passing off);
• Consumer protection acts;
• Agricultural quality control regimes;
• Trademark laws (collective and certification marks);
• Registration under specific sui generis GI laws.

Which approach or approaches did China choose to protect GI nationally?

In 2006 the US Patent and Trademark Office reported that: "[ ..] China protects geographical indications through a trademark system, administered by the CTMO. However, China has a second system for protecting geographical indications, administered through a separate government agency, which has led to confusion over protection of geographical indications and trademarks." Read more here.

The second government agency can be identified as the General Administration of Quality and Security Inspection and Quarantine (AQSIQ). Article 26 Provisions for the Protection of Products of Geographical Indications:

"The AQSIQ shall accept the applications for registration of foreign geographical indications in the People’s Republic of China, and accord the protection thereto. Specific provisions to this effect shall be separately formulated." See the Provisions for the Protection of Products of Geographical Indications here.

Contentious issues

The contentious issues under discussion in WTO are:

Negotiations on the establishment of a multilateral system of notification and registration of GIs for wines, as foreseen by article 23 (4) TRIPs.

There are three proposals towards notification and registration in order to be able to protect GIs internationally:

• The Joint Proposal in TN/IP/W/10 sponsored by: Argentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan, Mexico, New Zealand, Nicaragua, Paraguay, Chinese Taipei and the United States. These Members propose a purely voluntary system. Members wishing to participate would notify a list of GIs, which would then be recorded on a database administered by the WTO Secretariat. Participating Members would commit to ensure that their procedures include the provision to consult the database when making decisions regarding registration and protection of trademarks and GIs for wines and spirits in accordance with its domestic law. Non-participating Members would be encouraged, but would not be obliged, to consult the database.
  
• The EC proposal in TN/IP/W/11: it proposes a system whereby Members electing to participate would notify GIs into the system. Upon publication, other Members would have a 18-month period to lodge a reservation (i.e. to challenge) the notified GI on certain grounds, such as non-compliance with Article 22.1 definition or genericness. In the absence of challenges or if the challenges are withdrawn, the GI would be registered. Differences regarding challenges would be resolved through direct negotiations between the notifying and challenging Members. Once registered, the GI would produce an irrebuttable (i.e. no longer challengeable) presumption of eligibility for protection in the Members who have not challenged the GI or have withdrawn the challenges. This presumption also applies to non-participating Members that have not lodged reservations within the 18 months. The registered GI can be challenged at any time in participating Members on other grounds such as prior trademarks or grandfathered uses.
  
• The Hong Kong, China proposal in TN/IP/W/8: it proposes a voluntary system whereby a registered GI would create a rebuttable presumption or “prima facie evidence” in participating Members with regard to the ownership of the GI, compliance with Article 22.1 definition and protection in the country of origin. While Hong Kong, China is not a producer of wines and spirits, it has made the proposal for systemic reasons. Its concern is that failure in this negotiating group might endanger the whole Round.

Source is the presentation by Ms Thu-Lang Tran Wasescha, counsellor Intellectual Property Division, WTO here.

The other contentious issue is the extension to other products of the higher level of protection, besides wines and spirits, which article 23 TRIPs affords to GIs. There is no requirement for these products that the non-authorised use of the GI is misleading. My guess is that China's position on this issue is pro, because of China's evident interest in this area.

Naturally, China wants to be able to enforce against international unauthorised users of the GIs Zhangqui Scallion, Xianju Waxberries, Dalian Jinzhou Big Cherries, Qianxi Chestnuts, Ningxia Red Lycium, Pinggu Peach.

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Can Copyright Save Chinese Folklore?

Deming Liu wrote an interesting 14 page essay about the idea to use copyright or a sui generis to salvage Chinese folklore. Liu explains that copyright traditionally is concerned with the creations of individuals rather the cumulative creations of an ethnic group or region. And the danger that a sui generis is susceptible in practice to the abuses of private monopolies or state arbitrariness.

Read Deming Liu, Can Copyright Lend Its Cinderellaic Magic to Chinese Folklore?, 5 John Marshall Review Intellectual Property Law 203, 2006, here (pdf).

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