US Patent Office to Reject Based on Traditional Knowledge

By Gene Quinn
November 30, 2009

Last week on Monday, November 23, 2009, while so many of us were winding down, clearing off our desks and getting ready for the Thanksgiving Holiday, the United States Patent and Trademark Office announced that the Government of India has granted the agency’s patent examiners access to a new digital database containing a compilation of traditional Indian knowledge. This was heralded as tremendously important because by gaining access to the Traditional Knowledge Digital Library (TKDL) the United States Patent Office will be able to prevent misappropriation (i.e., patenting) of traditional knowledge. What a great day! The United States government is taking steps to prevent evil pharmaceutical companies (among others) from misappropriating traditional knowledge of indigenous peoples, who obviously deserve not to have their traditional knowledge patented in the US! What a great day this is! Lions and lambs will no doubt lay down in peace and harmony. The United States is taking steps to honor the United Nations Declaration on the Rights of Indigenous Peoples even though it is not binding through International Law, and even though it directly contradicts US patent law. Hurray, hurray! Of course, please don’t read the patent laws and realize that under US law traditional knowledge of peoples outside the US is in fact patentable. Please also don’t notice that implementing the new “reject based on knowledge existing outside the US” initiative directly contradicts 35 U.S.C. 102. And for goodness sakes, whatever you do don’t tell others that this will further harm a weak US economy!

Before going any further, allow me to be clear. Being liked in international circles means absolutely nothing to me and it shouldn’t mean anything to anyone in the US government. What should matter is following US law and not giving in on US principles and harmonizing US law in order to be liked, have hundreds of thousands chant at the sight of a US leader or out of some desire to turn US sovereignty over to the most useless debating society the world has ever seen. Really! There is simply no way to see as legitimate any organization that has the audacity to have a body purporting to monitor and support human rights and then proceeds to have as human rights group members China, Zimbabwe, Saudi Arabia, Pakistan, Syria and Libya. For crying out loud in 2004 the UN allowed Sudan to become a member of its human rights group despite genocide in Dafur. Can’t we all agree that genocide is bad?

According to Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Sharon Barner: “The USPTO has long been concerned about attempts to patent traditional knowledge, not only because it may result in an incorrectly granted patent, but also because it removes knowledge from the public domain.” If only that were true. It sounds good no doubt, but it is simply not true. Granting a US patent on traditional knowledge doesn’t mean that indigenous peoples have to stop using the knowledge, it just means they couldn’t use that knowledge in the US to make, use, sell, offer for sale or import products that would violate the issued patent. And, after all, they are indigenous peoples. I know that the UN Declaration doesn’t define indigenous peoples, which makes it almost laughable that any country would agree to it not knowing who or what it applies to, but doesn’t it sort of have to imply peoples who likely are not in a position to make, use, sell, offer for sale or import into the US?

But what is “traditional knowledge”? According to TraditionalKnowledge.info, which appears to be a part of the Franklin Pierce IP Mall, “traditional knowledge” is defined as:

Traditional Knowledge (TK) is a broad term referring to knowledge systems, encompassing a wide variety of areas, held by traditional groups or communities or to knowledge acquired in a non-systemic way. These knowledge systems have significance and relevance not only to its holders but to the rest of the humanity.

Doing a Google search trying to find further meaning of “traditional knowledge” I came across a number of academic publications that not surprisingly seem to think it is evil to grant intellectual property rights to traditional knowledge, US law to the contrary notwithstanding. The Abstract for Triangulating Culture’s Value: Traditional Knowledge, Intellectual Property, and the Digital Archive, which seems a representative illustration and says:

The dilemmas posed by intellectual property claims to valuable traditional medical knowledge are increasingly debated in the commercialized global arena. Developing countries, indigenous communities, and special-interest groups are concerned that legal and market actions in dominant states will unethically and inequitably impact cultural practices they claim as their own. Thus, social movements linking the preservation of indigenous knowledge with human and cultural rights have become increasingly coherent and are coalescing, to some degree, to develop effective strategies to protect cultural practices from private proprietary claims.

But what about this UN Declaration on the Rights of Indigenous Peoples? Article 31 is the operative part insofar as intellectual property and patent rights specifically are concerned. Article 31 states:

1. Indigenous peoples have the right to maintain, control, protect and develop their cultural heritage, traditional knowledge and traditional cultural expressions, as well as the manifestations of their sciences, technologies and cultures, including human and genetic resources, seeds, medicines, knowledge of the properties of fauna and flora, oral traditions, literatures, designs, sports and traditional games and visual and performing arts. They also have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions. 2. In conjunction with indigenous peoples, States shall take effective measures to recognize and protect the exercise of these rights.

The only trouble with this is that 35 U.S.C. 102, which relates to determining when an invention is novel or “new enough” to warrant patenting in the US does not prevent the patenting of inventions that are known or used outside of the United States. The two main sections being 102(a) and 102(b), which state:

A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…

As you can see under 102(a) knowledge or use must be in the US to create a problem, and public use under 102(b) is only a problem if it happens in the US more than one year prior to filing a US patent application. So, while the Patent Office and Department of Commerce can think it is wonderful to deny US patents to applicants using traditional knowledge that was neither known in the US nor used in the US, to do so they have to ignore the law. The government should never be allowed to ignore the law, period! Many will think I am making much ado about nothing here, but that is simply not the case. It is true that the TKDL will have information that would qualify as prior art under existing US law (i.e., Section 102), but the continued use of the term “traditional knowledge” strikes me as hardly happenstance, particularly given it has what appears to be a pretty well defined and accepted meaning. Take a look at this from the USPTO press release:

This database will be an important addition to the growing array of search tools on traditional knowledge from around the world that is already available to USPTO examiners. These tools include dictionaries, formularies, handbooks, and historical or classical works, as well as databases such as the TKDL. USPTO examiners use these tools to help prevent the patenting, and thereby misappropriation, of existing traditional knowledge… ******* The misappropriation of traditional knowledge through the mistaken issuance of patents has been a growing concern with the rise of the global economy and the increasing importance of intellectual property. A few high profile cases brought significant attention to this matter, prompting efforts by a number of countries to create digital traditional knowledge databases accessible to patent examiners around the world. If a patent application attempts to claim an invention within the existing traditional knowledge, a patent examiner will reject the application provided they can find evidence proving the prior existence of that knowledge.

US patent examiners can prevent patenting based on the existence of traditional knowledge if there is evidence of prior existence of that knowledge. This makes me sick to my stomach! Sounds to me like we are heading back to the Dudas years when examiners issued rejections not based on law, but based on policy and self preservation. This is arguably worse though. Examiners will apparently be instructed to reject patent claims despite US law clearly and unambiguously saying traditional knowledge of indigenous peoples cannot prevent the issuance of patent claims. I think we need to JUST SAY NO to any patent reforms that in any way seek to harmonize US patent laws, and I think we need to demand the Patent Office follow US law and not some non-binding UN Declaration!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments.

  1. Just visiting November 30, 2009 1:22 pm

    Gene,

    Really … does your political commentary constantly have to pervade your patent posts?

    “Being liked in international circles means absolutely nothing to me and it shouldn’t mean anything to anyone in the US government.”

    Although the prior administration practiced “we don’t care what the international community thinks,” there are those of us who thinks it matters. For example, if we want to fly our B-2 stealth bombers in another country’s airspace to make it easier to hit a target in the Middle East, it makes it a whole lot easier for their governments to say “OK, you can do it” where the US has good international relations with that country, and our leader (who happens to be the face of the country) is well-liked.

    This isn’t some novel concept. Most kids eventually learn that when they are nice to the adults, the adults cut them some slack. This same principal applies in all walks of life. The U.S. is in a position to ask for lots of favors/help from the international community because the U.S. is very active in the international community — what is the old expression … “you can catch more flies with honey than vinegar.”

    Mind you, the present administration is made up of politicians (like the administration before it, and the administration before it, and so on and so forth). Since they are politicians, you can expect them to do at least a couple things: (I) lie and (II) over-promise. In this case, I don’t think that whomever came up with the idea that we were going to honor “traditional knowledge” realized that this was incompatible with 35 USC 102. As such, they were promising on something that they will ultimately not be able to deliver — unless they want to amend 35 USC 102.

    Regardless, this is a making a mountain out of a molehill. If the traditional knowledge is found in an electronic database, then I can assume it was published — at which case it can apply as prior art. However, if the traditional knowledge was used by the USPTO improperly under 35 USC 102, I would simply appeal it. The Federal Circuit doesn’t care what was promised to whom on the international stage. It only cares about enacted US law.

  2. Gene Quinn November 30, 2009 2:00 pm

    Just visiting-

    You say: “does your political commentary constantly have to pervade your patent posts?”

    Answer: Yes. By way of further answer, do you ask other op-ed authors whether they can keep their opinions to themselves? Just wondering.

    You say: “you can catch more flies with honey than vinegar.”

    Reply: There is no evidence of this whatsoever on the international stage. We give away things left and right without getting anything in return, and a kinder, gentler approach to our enemies has created increased hostility, which was of course predictable.

    You say: “I don’t think that whomever came up with the idea that we were going to honor “traditional knowledge” realized that this was incompatible with 35 USC 102.”

    Reply: The person quoted in the press release is Sharon Barner, who by all accounts is a very well respect patent litigator. I think she knows and understands 102 pretty well.

    You say: “If the traditional knowledge is found in an electronic database, then I can assume it was published — at which case it can apply as prior art.”

    Reply: That is, of course, true. But then why refer to it as “traditional knowledge” given that the term “traditional knowledge” has a particular meaning? Why not refer to it as publications or electronic publications? Because the electronic databases are all but certainly going to explain what historically in the past has occurred without publication of any kind. That is, after all, exactly what traditional knowledge is. The fact that you after the fact publish it, or explain the folklore without explaining the science or technology doesn’t mean that it is a publication under 102.

    We will see what happens, but while this Administration and every other Administration tells lies to forward their agenda, one thing that makes this Administration unique is that they don’t lie very much at all. They are out front, open and honest about their intentions. They also follow through to the letter. What they lie about is cost and stuff like that, not about what they will do. So believe if you want that the use of the term “traditional knowledge” was accidental and unknown. It was on purpose and is a clear indication. It fits perfectly within the world view of those in charge in DC now, and continues to forward the all out assault on the pharmaceutical industry started by the PTO under Dudas.

    -Gene

  3. EG November 30, 2009 2:32 pm

    Gene,

    “Tradtional knowledge” (if i understand the term correctly) might also run afoul of 35 USC 102(f).

  4. OldTimer November 30, 2009 5:53 pm

    Follow the money, Gene. Patents raise prices, and in a nationalized health care system the government foots the bill. Medical and pharma patents are going to be in the crosshairs of any Government-based health care system.

    This is just the beginning of Arti Rai’s plan to turn the USPTO into an “Innovation Regulator” agency. Because, you know, what kind of a country would want its citizens out there innovating all willy-nilly, constantly coming up with a diverse array of new products and services to improve the lives of its citizens? Government has to tamp that down a bit with some well-intentioned regulation, thereby allocating capital in a more efficient manner as only Government knows how to do–just look at all the wonders accomplished with the $787 Billion stimulus plan! Good things come from the Government, you know, not the private sector.

    And please, spare me the citations to your boring old statute. If KSR and Bilsky stand for anything, it is that the courts are no longer going to provide a check and balance to the USPTO.

  5. Gene Quinn November 30, 2009 6:41 pm

    Old Timer-

    If only regular folks knew how the Patent Office and incoherent patent and innovation policy were causing this recession to drag out and be deeper than it ever had to be.

    I agree 100% with you on health care. What is interesting is that they are not even trying to hide what waits for us. As we are worried about rationing they say that women don’t need mammograms until they reach 50? Medical innovation on all levels is really in jeopardy, and that is not a good thing for us individually or for the US economy.

    In terms of the old statute, it is increasingly silly citing the law, isn’t it? How discouraging.

    -Gene

  6. Michael Risch November 30, 2009 6:48 pm

    I’m not a fan of stealing traditional knowledge. Of course, that’s already unpatentable under 102(f) as EG points out.

    It is also interesting that in an effort to protect traditional knowledge (a worthy effort, I think), that traditional knowledge is now elevated to a status not granted to 200 years of “non-traditional knowledge,” whatever that means. The “in this country” requirement has been in the statute since 1790 (I think, but maybe 1793), because the drafters of the original patent act understood that people in other countries might know stuff, but that the U.S. might benefit by patenting the same stuff they know in other countries.

    Now, we might not like that rule, but in this global economy I worry at least as much about stuff we patent here that is well known in other countries much more as stuff that is only known in other countries because it shows up in a database.

  7. Gene Quinn November 30, 2009 6:51 pm

    EG-

    Certainly recognizing intellectual property rights in traditional knowledge for indigenous peoples as the UN apparently wants would most certainly run afoul of 102(f). But you noticing will probably get you put on some kind of a watch list or something, so tread lightly!

    -Gene

  8. Patrick Anderson December 1, 2009 1:17 am

    Gene –

    Wouldn’t you agree that the traditional knowledge becomes 102(a) or 102(b) prior art at least as of the date it was put into the database? From that perspective, what is wrong with letting examiners reject based on information in the database for newly filed applications?

  9. Stephen December 1, 2009 3:33 am

    According to this information granting an US patent on traditional knowledge doesn’t mean that peoples have to stop using the knowledge, it just means they couldn’t use that knowledge in the US to make use, and offer for sale or import products that would violate the issued patent.

  10. Tom Dickey December 1, 2009 8:09 am

    During oral arguments at the infamous case of Ritchie v. Vast Resources, Appellant’s attorney wasted two or three minutes of his limited argument time pointing out that glass dildo use in ancient Greece and Rome did not qualify as 102(a) or (b) prior art. In the interest of full disclosure (and of wasting more of his time and distracting the court) Appellant’s attorney went on to point out that there were plenty of printed publications that described (sometimes in salacious detail) the use of glass dildos in ancient Greece and Rome. In the view of this attorney, the use of ancient Greece and Roman glass dildos against his client should be restricted to the publications.

    This discussion wastes its readers’ time in a similar fashion.

  11. Michael Risch December 1, 2009 8:15 am

    Tom –

    I’m not seeing the link between your example and this discussion. One of the defining features of “traditional knowledge” is that it was known but not published. The question is what one should do about that. My view is that if it is in another country, the statute is clear, but that in an increasingly small world, that rule should be changed. I don’t think it is a wasted discussion, as I argue in an article I wrote called “Everything is Patentable.” In that article, I make the claim that determining the patentability of “natural products” should be based on 102(a) and 102(b) – the question is whether the public has ever received the benefit of the natural product. The holdup in that argument is when foreigners have benefited from the natural product but those in the U.S. have not. Where there is no publication, this can be an important question.

  12. Charles Warner December 1, 2009 9:18 am

    You did not indicate whether the database is publicly available. If the database is publicly available over the Internet then I have no problem with the USPTO citing to it, the effective date of the information being the date the information became publicly available. If, however, only the USPTO and other patent offices have access to the database, then I would consider the information as not being publicly available and, therefore, not citable as prior art as it would not fit within any of the categories mentioned in the article.

  13. Dale B. Halling December 1, 2009 10:44 am

    Gene,

    From what I have read on this debate, it usually involves a pharmaceutical company using traditional medical lore of native people to search for the active ingredient. Pharmaceutical companies are not marketing willow bark, or other indigenous plant or animal. They are using the medical folklore as a starting point to determine if there is an active ingredient that can be turned into a standard pharmaceutical product. This does not appropriate any traditional knowledge, since the native people do not know what the active ingredient is or how to refine or synthesize it. It is great marketing to suggest that Traditional Knowledge is being appropriated by large pharmaceutical companies, but it isn’t true.

  14. Gene Quinn December 1, 2009 10:55 am

    Patrick-

    Absolutely, provided however it needs to be more than just discussing the traditional knowledge. As Dale points out, much of this has to do with pharmaceutical companies going around the world, observing, using traditional knowledge as a starting point, figuring out what active ingredients matter, condensing, purifying and artificially creating a mass producible alternative. So merely explaining the traditional knowledge in many (if not most) cases should not be enough under US patent laws to prevent this type of pharmaceutical activity.

    The devil will be in the details, but as long as it is prior art only as of the time it is electronically available to the public in a database and only used to the extent it actually teaches, rather than suggests, I have no problems. But then why would the USPTO refer to it as “traditional knowledge”? That is what has me worried. It seems like it would be a publication at that point, so why continue to use the label “traditional knowledge” unless it matters or has some relevance?

    -Gene

  15. Gene Quinn December 1, 2009 11:00 am

    Charles-

    Excellent question! I don’t have an answer to that. All I know so far is what was disclosed in a press release. Normally I would not get so hot and bothered about a press release, but Deputy Director Barner was quoted in the press release liberally, and this announcement comes in the weeks leading up to a big UN conference. The Obama Administration has a lot of academics in positions of power, and academics have long been opposed to “misappropriation” of traditional knowledge, never mind that under US laws there is no misappropriation. So, I have to wonder what is going on here. With so much talk of harmonization perhaps I am overly reactive and nervous, but the use of the term “traditional knowledge” is very worrisome.

    Like you, I would have no problem with this information having an effective date the date it is made publicly available, and only to the extent it is used only in the traditional sense and not to preempt true innovation based concepts or suggestions.

    -Gene

  16. Gene Quinn December 1, 2009 11:02 am

    Dale-

    Amen! Unfortunately Old Timer raises an excellent point. This has a lot to do with health care I suspect, as did the mammograms for women over 50 policy shift. We need to keep up the fight and get the truth out there.

    By the way, how is your book proceeding? When will it be released?

    -Gene

  17. Paul F. Morgan December 1, 2009 12:12 pm

    Thanks for the above comment reminders of 102(f), one of the least understood forms of statutory prior art. 35 USC 102(f)/103. The CAFC surprised a lot of patent attorneys with its one and only case, [expressly of first impression] on that subject – OddzOn Products Inc. v. Just Toys Inc., 122 F.3d 1396, 43 USPQ2d 1641 (Fed. Cir. 1997). Note that 102(f) reads in its [chauvinist] entirety: “(f) HE did not himself invent the subject matter sought to be patented.” 35 USC 102(f) thus now CAN include “secret” prior art even in combination with public prior art, which secret prior art can be information disclosed to the inventors by any others NOT named as inventors, even information disclosed to the named inventors in implied confidence. The Court based its decision on the unfortunate choice of statutory language (in caps here) in the 1984 amendment of Section 103 intended only to overrule In re Bass type coworker “prior art”: “Subject matter developed by another person, which QUALIFIES AS PRIOR ART only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”

  18. EG December 1, 2009 3:36 pm

    ” But you noticing will probably get you put on some kind of a watch list or something, so tread lightly!”

    Gene,

    I’m not worried about being put on a “watch list.” I’ve been a “heretic” for many things I say or do (“politically correct” isn’t in my vocabulary). In other words, I remain unrepentent!

    What is important here is that we have a free debate of views, even if we don’t agree. What worries me more is that being “politically correct” becomes the norm for “white-washing” the facts. History, and especially American history, is becoming a tale of “myths” not facts for that reason. We’re already burdened by the “Jeffersonian story of patent law” because SCOTUS won’t do its historical “homework” on the Copyright and Patent Clause, as shown especially in Graham v. John Deere.

  19. hercule December 1, 2009 10:04 pm

    If you go to the TKDL website and look through it, you can easily find the following table which lists the discipline, the number of books and the “formulas” transcribed from these books. It also lists the books. The most recent published book that I found was published in 2001, and the oldest was published in 1881. Most of the books are pre-1970s. It is pretty clear that while the database itself might not be publicly available (we can’t search the entire thing, cf Lister), the underlying books are publicly available somewhere.

    Present Status (October 2009)
    Ayurveda 75 books 82,600
    Unani 10 books 1,12,500
    Siddha 50 books 12,718
    Yoga 13 books 950
    Total 148 books 2,08,768

  20. Herbert Franke December 3, 2009 5:18 am

    As long as the database is accessible to even a subset of the public, e.g. for a subscription price, this constitutes publication. And as mentioned, most of the database is a collection of prior publications, so that all this does in most cases is increase ease of access.
    The way I see it, there is nothing here that breaks the law.

    Furthermore, defining indigenous people as ‘peoples who likely are not in a position to make, use, sell, offer for sale or import into the US’ is beyond the pale. It is neither true nor an argument, since what you are saying here is that your view of things only takes a right away from people who, in your opinion, probably mainly are in no position to use it. Rights do not depend on whether people are presently in a position to exercise it or chose to exercise it. A right’s economic value depends on usage, but this cannot be confused with its legal status.