Traditional Medicine in Asia

Protection of traditional systems of medicine, patenting and promotion of medicinal plants
has otherwise been made available to the
public, for instance, through public use, in
any country before the date of filing of a
patent.
“Prior art” generally includes any
publication of the invention prior to the date
of the patent application. This concept may
be defined so as to also include precedents
that have not been divulged before that
date, but which demonstrate that a third
party had previously reached the same
invention. This approach has been followed
in some US decisions, based on Corona
Cord Tire Co. vs. Dovan Chem. Corp. (US
Supreme Court, 1928), where a prior
invention of another party, not publicly
known, was deemed as destructive of
novelty for a second invention. Likewise,
novelty may be destroyed in certain cases
by the information contained in previous
patent applications.
x 14
The novelty requirement will generally
impede the patentability of TM knowledge
that has been openly used for many years,
and, in some cases, published in different
forms. This is likely to apply to a large part
of TM.
In order to destroy novelty, however, the
prior use must generally be such that access
to the information would have allowed a
third party to execute the invention, without
significant further research. There may be
situations in which novelty may not have
been lost despite the fact that the relevant
TM knowledge has been previously used,
even for long periods. One example would
be the case of a traditional knowledge used
in a small community, when the information
has not been diffused beyond the
community’s members. There are also cases
in which the traditional healers have kept
confidential xi certain aspects of their
treatment and associated medicines, a
practice that may be more frequent than
often believed.
An important issue is whether the
identification of the chemical srtucture of
an active substance which is responsible
for the therapeutic effect of a known
product, may lead to the granting of a
patent or whether it should be deemed that
no novelty exists. In the case Merrill Dow
Pharmaceuticals v. Norton & Co. (1996)
the court held that it was not necessary for
an active substance to be identifiable or
reproducible for it to have been made
available to the public. xii
The novelty requirement may not be an
obstacle to obtaining patents on TM in
countries where a relative novelty standard
is applied. In the United States, for instance,
according to article 102 of the Patent Law,
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
x In Europe, however, the information contained in a prior, non-published, patent application is not considered for
the purposes of considering the existence of “inventive step”.
xi In the Mobil case, for instance, the Enlarged Board of Appeal of the European Patent Office decided that the word
“available” carries with it the idea that, for lack of novelty to be found, all the technical features of the claimed
invention in combination must have been communicated to the public, or laid open for inspection. Under the
European Patent Convention, a hidden or secret use, because it has not been made available to the public, is not
a ground for objection to validity of a European patent (Mobil/Friction-Reducing Additive (1990) O.J. E.P.O. 93;
(1991)(see 9, p. 166).
xii Lord Hoffmann exemplified this situation with the case of Amazonian Indians, who believed that the effect of the
cinchona bark on malaria was due to “the spirit of the bark”. The Indians, however, should be said to have known
about quinine even though they did not know its chemical structure (9, p. 166).
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