Plant Variety Protection in a Developing and Demanding World

7/31/2019 Plant Variety Protection in a Developing and Demanding World

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Plant Variety Protection in a Developing and Demanding World

The Convention of the International Union for the Protection of New Varieties of Plants

(UPOV) is one of the options forsui generis systems forPlant Variety Protection (PVP). This

article explores the possibilities of UPOV to accommodate the various demands derivedfrom the Convention on Biological Diversity (CBD), Farmers Rights and equitable

remuneration mechanisms. It also discusses the potential of UPOV to encourage the

informal seed systems and local breeders, besides the established seed companies. According to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),

countries have to "provide for the protection of plant varieties either by patents or by an effective

sui generis system or by any combination thereof". To date, only UPOV provides a workable

example of a sui generis system. The UPOV system emerged in Western Europe between 1930

and 1960, when agriculture was dominated by small farmers who became interested in new and

improved varieties. UPOV was based on several national European PVP systems. The foundingcountries Italy, Germany, France, Belgium and the Netherlands did not follow the Paris

Convention for the Protection of Industrial Property of 1883. It was felt that, due to theConventions scope of protection and the exclusive rights of its patent system, patents would

impede the common practice of using protected plant varieties for further commercial breeding.In the UPOV Conventions of 1961 and 1978 this phenomenon was acknowledged by the

breeders exemption

Exemptions from PVP

The breeders exemption allows plant breeders to freely use protected varieties for the

development of new varieties. However, this has been limited in the latest UPOV Convention of

1991 by the provision ofessential derivation. This provision extends the scope of protection for

a variety over the material of a newly developed cultivar which is derived from the originalvariety. So far the breeders exemption plays a key role in the UPOV - PVP system, as it

prevents the monopolization of a particular breeding aim. Only the specific variety as such is

protected and not the breeding method, nor crops ingredients or particular traits like disease

resistance. Therefore any breeder can follow new developments, without infringing the rights ofthe previous breeder. This freedom of operation does not exist under a utility patent system.

Thefarmers privilege allows farmers to save and re-use harvested material such as seeds for the

next season. Under the UPOV 78 Act the scope of plant variety protection does not cover farmsaved seeds and therefore technically there is no need for an institutionalized farmers privilege.Some UPOV members allow farmers to plant back seeds and to exchange limited amounts "over

the fence" on a strictly non-commercial basis. In other member countries, especially the USA,

under the UPOV Act of 1978 farmers were even allowed to sell certain amounts for reproductivepurposes, so-called "brown bagging".

In contrast to UPOV 78, under UPOV 91 the scope of PVP includes the farm saved seed. Thenational law may therefore provide for a farmers privilege as an exception on the exclusiveproperty rights. It allows farmers to save and re-use the seed of a protected variety without the

consent of the owner of that variety but with the safeguard of the legitimate interest of thebreeder. This means that the farmer is officially permitted to re-use the saved seed exclusively on


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her/his own holdings and that she/he should pay a royalty for that use.

The EU has implemented this provision under its PVP regulation whereby the small-scale farmerdoes not pay a royalty. Bigger-scale farmer pay a reasonable royalty, for the re-use of the seed,

which is in practice about 50 per cent of the normal royalty. The USA has implemented the 1991

Act of the UPOV Convention in a way that the trade of seed is no longer permitted but the

farmer still does not pay any royalty for the re-use of the seed of protected varieties.

Analysing the key issues

In discussing PVP, it is useful to categorize the crops into three groups:

(1) open pollinated food crops,

(2) inbred lines and horticultural crops, and

(3) medicinal plants.

For each group specific characteristics have to be taken into account with regards to the application of

PVP.

1.Open pollinated food crops:-

such as cereals and tubers, represent the most complicated cases, fuelling most discussions onthe PVP issue.

Millions of farmers re-use the grains or tubers that they harvest for next seasons production.Moreover, within the context of informal seed systems in which farmers freely exchange, trade

and save seeds, landraces and indigenous knowledge often contribute to the adaptation of

varieties to specific farming systems. This approach fosters a quick dissemination of newly

developed varieties.

In developing countries it seems appropriate to have a Plant Breeders Right(PBR) which allowsfor free seed saving and flow of seeds between farmers for open pollinated food crops.

However, to offer an effective sui generis system, care must also be taken for the remuneration

of the breeder. This could be done by means of a public or private central fund from which the

breeder gets paid on the basis of the acreage of the breeders protected variety that is grown by

the farmers. The endowment for the fund could be raised by the government, the farmers or

both, depending on the national situation.

At the same time farmers may save, exchange and trade non-commercially the seed of theprotected variety. Such an approach could be more effective than a system in which breeders

collect their royalties from each farmer individually.

There are alternative avenues to pursue a balance between breeders remuneration for andfarmers access to newly developed varieties. For instance, national PVP legislation could include

a provision for the compulsory licensing of varieties of open pollinated food crops. This would

provide a right for any interested party to save and trade the seed of protected varieties, with or

without the obligation to pay a royalty. Another possibility would be to extend the farmers


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privilege (see box 1) to seed exchange and small, non-commercial seed trade. For both

alternatives it has to be guaranteed that, if no royalties are paid, the breeder will get a

remuneration from, for instance, the central fund.

For inbred lines and horticultural crops,

such as ornamentals, fruits, vegetables and plantation crops, there has been limited discussionabout farmers privilege.

The biological features of the protected material make its re-use unattractive for farmers. Forhorticultural crops, the harvested product generally cannot be used as propagating material for

the next generation as it is the case with grains from cereals. Due to their low yield inbred lines,

used to produce seed of hybrid varieties commercially, they are not interesting for the

farmer/consumer but only for the competing breeders. PVP for ornamentals can create an

incentive to disseminate newly developed varieties. Breeders from industrialized countries will

export their best and most recent varieties more easily to countries in which an effective PVP

system has been implemented. For these crops the extension of the protection to the harvested

product and the concept ofessential derivation (see box 2) are important provisions to

safeguard breeders inventions against plagiarism.

The property status ofmedicinal plants is the object of a political debate. It is felt to be an

injustice that these valuable plants can be protected by an Intellectual Property Right(IPR),

because they are considered as a heritage of humanity and should not be monopolized by a few.

For medicinal plants, the risk of monopolization and unfair appropriation could be minimized by

requiring a certificate of novelty as part of the application for protection under a PVP system.

This certificate could be provided by an authorized organization, representing the regional

community. Some varieties of valuable species may only be known locally, therefore the place of

origin should also be stated in the application. By this provision, valuable plants would remain in

the public domain. However, it still leaves an open possibility to use them for the development

of new distinct varieties.

Another possibility is applied by Ecuador in its PVP legislation under UPOV 1978. PBR cannot be

claimed for wild species that have not been planted or improved by human invention.

Overview of some key provisions of the UPOVcts of 1978 and 1991

Key provisions UPOV 1978 UPOV 1991

Breeders exemption included included

Principle of essential derivation not included included

Scope of protection only traded material all materials+ harvested product+ end product

(optional)

Farmers privilege Farm Saved Seed not

under scope of PBR

included

Number of species to be protected minimal 24 all
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Duration of protection 15-18 years 20-25 years

Double protection (e.g. PBR and patent) not possible possible

Suggested modalities for PVP

The proposed central funding system which should combine remuneration and stimulation forplant breeders with the interest of farmers freely to re-use and exchange seed material does not

address all the outstanding problems of PVP. However, the UPOV system has proven to

motivate not only large companies but also small breeders to engage in breeding work. The keyelement is the simplicity and efficiency of the system. In most UPOV member states, plant

varieties are centrally tested. The breeder can suffice for registration by completing a simple

application form, sending a sample, and paying a modest fee. The formulation of an extensive

and complicated variety description is not necessary.In order to keep the system simple, relatively cheap, and within the reach of small-scale farmer-

breeders, any additional requirement should be assessed very critically. So far, the discussions

about additional provisions for Farmers Rights, the use of landraces as a genetic source, and the

protection of biodiversity raise the concern that the system may become too expensive andcomplicated. The outcome of such a system might be the opposite of the initial aim: The

tendency of monopolizing living material could be enforced because only large companies could

afford PVP.PVP grants landraces the position of "varieties of common knowledge". This means that a new

variety must be identifiable as being clearly distinct from the existing landraces. It prevents the

monopolization and possible unfair appropriation of these old varieties. Another possibility is the

extension of the provision of essential derivation to non-protected varieties in the sense thatvarieties derived from a non-protected variety could be excluded from PVP. It is, however,

neither possible nor sensible to exclude landraces from being freely used as a crossing parent in

breeding programmes.Genebank collections can have the same position as landraces if they are regarded as a variety

rather than a population, provided that they are described and the information is published.

Genebanks may oppose the granting of PVP for their collections, or the national legislation mayexclude genebank accessions from PVP. Genebanks of the Consultative Group on International

Agricultural Research (CGIAR), as well as some national genebanks, have introduced MaterialTransfer Agreements (MTA) for this purpose (see also Monitor No. 24).

Incentives for plant breeding

A PVP system can prevent the piracy of landraces, but their in situ maintenance and the

sharing of benefits by farmers or communities should be regulated outside the main PVP system,

namely to avoid complicated regulations.

Farmers Rights as well as provisions for Prior Informed Consent(PIC) in the CBD have a

tendency to limit the access to germplasm. This may have an adverse effect on plant breeding as

a whole and create the opposite result of their original aims. It may favour the biggerorganizations, which can easily, with the help of local communities, prevent competitors from
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collecting valuable germplasm.

The best way for the local communities to obtain remuneration for their work done in the presentand the future is the breeding of improved varieties by local farmer-breeders. This also

minimizes the chance that farmers have to buy seeds of foreign varieties that have been

improved from farmers original landraces. The sui generis PVP system as represented by UPOV

has a limited scope of protection and offers two very important exceptions on its exclusiveproperty right: the farmers privilege and the breeders exemption. These guarantee farmers aneasy and cheap access to new varieties and keep the door wide open for breeders freely to use

any protected variety for further plant breeding.The UPOV system could be recommended for all countries for the protection of new plant

varieties, as the most experience has been acquired within this legal framework. Furthermore,

UPOV contains important exemptions. It is to be hoped and expected that the issue of seedexchange of open pollinated food crops between farmers can be solved within the UPOV Act of

1991.

SALIENT FEATURES OF THE PROTECTION OF PLANTARIETIES & FARMERS RIGHTS BILL, 2000

1. PVP Authority :

Protection of Plant Varieties & Farmers Rights (PVP) authority will be vested withnecessary powers to perform all functions relating to the protection of plant varieties.

The Authority will consist of Chairperson and 15 Members, Chairperson to beappointed by the Central Government.

A Standing Committee will advise the Authority on all issues including FarmersRights. Registrar General will be the Ex-officio Member Secretary of the Authority.

2. Registration of Plant Varieties :

Registration of new varieties, as notified by the Central Government. Registration of extant varieties include varieties available in India which are notified

under Section 5 of the Seeds Act, 1966/farmers variety/varieties about which thereare common knowledge/variety which is in public domain.

3. Criteria for Registration :

For new varieties - new, distinctiveness, uniformity and stability. For Extant Varieties - distinctiveness, uniformity, stability as specified/relaxed by the

Authority.

4. Registration and period of Protection :


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Breeder to furnish information on geographical location from where plant geneticmaterial has been taken for development of the new variety.

Certificate of registration issues by the Registrar will prescribe the conditions ofentitlement.

For new plant varieties - 15 years for annual crops and 18 years for trees and vines.

For extant varieties - 15 years from the date of registration/date of notification in caseof varieties notified under Seeds Act.

One time renewal at the end of six years in case of annual crops and 9 years in case oftrees and vines, on payment of prescribed fee.

Registration will be forfeited if the annual fee is not paid.5. Exclusion of certain varieties :

Plant Varieties can be excluded from registration in case where prevention of commercialexploitation of such varieties is necessary to protect public order or public modality orhuman, animal and plant life and health or to avoid serious prejudice to the environment.

Registration of plant varieties will not be allowed if the variety in question involves anytechnology such as genetic Use Restriction Technology and Terminator Technology,which is injurious to the life or health of human beings, animals or plants.

6. Researchers Rights :

use of any variety registered under this Act will be allowed for conducting experiment orresearch and using it as an initial source for creating other varieties.

7. Farmers Rights :

Farmer who has bred or developed a new variety to be entitled for protection as a breederof a variety.

Farmers variety as part of the extant variety will be entitled for registration/protection. Farmer, who is engaged in conservation of genetic resources of land races, wild-relatives

etc., entitled for recognition and reward from the National Gene Fund.

Farmers will be entitled to save, use, sow, re-sow, exchange, share or sell his farmproduce including seed or a variety, protected under this Act, with the exception that hewill not be entitled to sell branded seed of a protected variety.

Rights of communities in the evolution of any variety for the purpose of staking a claimwill be accepted.

Protection extended to farmers for innocent infringement of provisions of this Act. Compensation to be given to farmers if the registered variety does not meet the promised

level of performance under given conditions.


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National Gene Fund to be utilised for making payment for benefit sharing,

compensation to communities etc. and supporting the activities relating to conservationand sustainable use of genetic resources.

8. Compulsory License :

PVP Authority will have power to make order for compulsory license in certain

circumstances when sufficient quantity of seeds of protected variety, at reasonable price,not available.

9. Tribunal :

Plant varieties Protection Appellate Tribunal to be constituted to examine appeals fromPVP Authority and Registrar.

Tribunal shall consist of a Chairman and Judicial and Technical members.

10. Penalties :

Provisions for penalties against offences/infringement of plant breeders rights.

11. Miscellaneous :

Provisions authorising the Government of India to issue directions to PVP Authority in

the public interest.

12. Present Status :

The Protection of Plant Varieties and Farmers Right Bill, 2000 is under considerationof Parliament.

About Farmers' Rights

Farmers' Rights are a precondition for the maintenance of crop genetic diversity,

which is the basis of all food and agriculture production in the world. Basically,

realizing Farmers' Rights means enabling farmers to maintain and develop crop

genetic resources as they have done since the dawn of agriculture, and recognizing

and rewarding them for this indispensable contribution to the global pool of geneticresources.

Plant genetic diversity is probably more important for farming than any other

environmental factor, simply because it is the factor that enables adaptation to changing

environmental conditions such as plant diseases and climate change. Thus, as aprecondition for the maintenance of this diversity, Farmers' Rights are crucial for ensuring

present and future food security in general, and in the fight against rural poverty in


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particular.

This website is about Farmers' Rights as they are addressed in the International Treaty on

Plant Genetic Resources for Food and Agriculture. The Treaty recognizes the enormous

contributions made by farmers worldwide in conserving and developing crop genetic

resources, and it provides for measures to protect and promote these rights.

Definition ofFarmers' Rights

The International Treaty does, however, not define Farmers' Rights. The following is aworking definition developed on the basis of the research of the Farmers' Rights Project

and can be seen as a lowest common denominator of all stakeholders consulted and all

documents and literature surveyed:

Farmers' Rights consist of the customary rights of farmers to save, use, exchange and sell

farm-saved seed and propagating material, their rights to be recognized, rewarded and

supported for their contribution to the global pool of genetic resources as well as to thedevelopment of commercial varieties of plants, and to participate in decision making on

issues related to crop genetic resources.

Plant Breeders Rights: An Introduction

Based on the averages, there is a good chance that your country has decided to fulfill its TRIPS(Trade-Related Aspects of Intellectual Property Rights) Agreement commitments by selecting an

effective sui generis system over patents for plants, something more commonly known as plant

breeders rights. This chapter attempts to explain what plant breeders rights are by describing

the organization and function of the plant breeders rights system. Covering the objectives,scope, protection requirements, and examination provisions, the chapter compares the plant

breeders rights system with the patent system and attempts to clarify specific puzzling issues.These include concerns that the latest UPOV Act does not address farmer seed savings (the

choice is left to individual countries, with virtually all countries choosing to allow seed saving).

Plant breeders rights are less puzzling once the intent and structure of the system are

understood. The system is, in fact, one with very specific, if narrow, objectives.

1. Introduction

Guild members in mid-15th century Venice, averse to direct competition from former

apprentices, passed a law prohibiting the apprentice from entering the trade until about 18 years

had lapsed. That edict, according to intellectual property (IP) historians, marked the origins of

patents. Indeed, the duration of a patent (20 years from date of filing the application) is said to bemodeled after that apprenticeship period in long-ago Venice. Yet some easily copied creations

were not granted similar IP protection, in Venice or anywhere else, until many centuries had

passed. Plants are one example of this. Food, fiber, and ornamental crops (F1 hybrids excepted)carry in themselves the ability to regenerate true to form, whether sexually or asexually. Anyone

holding a seed or a cutting immediately possesses all the skills of the master to recreate the

variety of plant from which the seed or cutting came. Yet not until 1930 (the U.S. Plant PatentAct) did legal restrictions apply to the use of plant materials for regenerative purposes, and even
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then protection only applied to asexually propagated plants (excluding tubers). An additional 30

years passed before a harmonized format for legislation covering IP protection for all plantvarieties emerged. That is the International Convention for the Protection of New Varieties of

Plants, or UPOV in its French acronym, an international treaty first adopted in 1961 and revised

several times, the latest in 1991. The form of intellectual property created by UPOV is known

widely, if informally, as plants breeders rights (PBR). This chapter describes the acts and modesof operation of PBR under UPOV-compatible national legislation. While every effort is made

here to be complete and accurate, it would be impossible discuss all of the considerations needed

to appreciate every possible contingency. Persons wanting to learn more should refer to the textof UPOV and other official documents, such as at the UPOV Web site.1TheHandbookchapter

PBR in the Developing World, discusses the effects of PBR laws and the available alternatives at

the national level.

2. What are Plant Breeders Rights?

PBR is a patent-like system that allows the plant variety owner to prohibit specific unauthorized

uses of the variety. PBR laws apply only to plants, and hence are among the class of sui generissystems, that is, special purpose systems. Laws applying to computer chips (that is, mask works

the set of templates used to manufacture chips) form another sui generis system. In fact, suigeneris systems have been applied to everything from aeronautics to Xerox machines. These

systems differ significantly from patent laws. The differences between the two systemsand the

similaritiesare explained below.

PBRs, like patents and other forms of IP law, are forms of national legislation. That is, protection

applies only in countries where protection has been sought and granted. Thus, the owner of a

sunflower variety protected in the United States would have no legal control over how thatvariety was used inside Canada. Critically, however, the variety owner could prevent the

importation into the United States of the variety, including (in most cases but depending on thespecific countrys sui generis laws with regard to plant varieties) grain, plants, plant parts, and, insome countries, even manufactured products produced using the protected variety. In the case of

a U.S. PVP-protected sunflower variety, the variety owner could not prevent it from being

planted, grown, harvested, or sold inside Canada, but U.S. PVP-protected sunflower seed,sunflower meal, sunflower oil, and similar products could be prevented from entering the U.S.

stream of commerce.

PBR under the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property

Rights) is a component of the World Trade Organization (WTO). Signatories of WTO (currently

about 150) are committed to comply with the TRIPS requirements of a harmonized minimum

level of IP rights protection. Although the TRIPS text is quite exhaustive in most regards, only asingle sentence refers to PBR. Article 27.3(b) reads, in part, that WTO members must provide

plant variety patents, an effective sui generis system, or both. Most countries new to protecting

plants are opting for PBR over patents. PBR is clearly a sui generis system, but what constitutes

effective is less clear.

3. What Role does UPOV Play?
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If PBR is based on national law, what role does UPOV, an international convention, play?

Essentially, UPOV establishes a framework law that may be adopted by countries into their ownnational laws. After having done so, a country could submit its national law to the governing

body of UPOV for evaluation and, if the law was found to have similar critical elements, the

country could become a UPOV-signatory nation. In practice, there is usually an informal

assessment done by UPOV prior to final diplomatic submission. UPOV does provide amechanism for harmonizing national laws and providing standardized definitions/interpretations

of terms. UPOV also requires nondiscrimination against foreign applicants of other Union

members (National Treatment, Article 4 of 1991 Act). However, that Article has largely beensupplanted by the geographically broader national treatment requirements of TRIPS (Article 3).

UPOV member states have training and other technical support available to them, although an

annual membership fee based on national income is imposed. Countries can and do have PBRsystems without joining UPOV, but little is known about their operation and few countries have

implemented them. Since its inception, UPOV has adopted four acts (1961, 1972, 1978, and

1991). Members may at their discretion adopt a more recent Act, but older acts are closed.

Presently, the 1991 Act is the only one now open to new members. There are some important

differences between the 1978 and 1991 acts, to which essentially all current members belong.These differences are discussed below. All terms and references here refer to these acts. There

are some national-level differences, but for the most part identifying them involves a greaterlevel of detail than is possible here.

4. How do PBRS Work?

PBR systems, like other IP systems, have three major components:

1. Definition/identification of protectable subject matter2. Requirements that must be met to receive protection3. Rights of the variety owner

4.1Identifying what can be protected

As a sui generis system, protection is limited to plant varieties, but this term lacks a standarddefinition. The definition in the 1991 Act (Article 1(vi)) reads in part:

a plant grouping

defined by the expression of the characteristics distinguished by the expression of at least one of the said characteristics and [having] suitability for being propagated unchanged

Beyond its technical relevance, this definition is significant since it departs from the language of

earlier acts. The 1978 Act lacked any such definition, while the 1961 Act (Article 2.2) refers to a

variety as any cultivar, clone, line, stock, or hybrid which is capable of cultivation. Certainly, one purpose for defining variety is to distinguish what is protectable under UPOV

from those plant genetic resources that fall under the Convention on Biological Diversity

(CBD). As a general matter, a plant variety under UPOV would also be a plant genetic resource


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as defined by the CBD. Furthermore, the international convention typically (but not universally)

allows the more recent convention to supercede the prior one. The CBD was ratified in 1992 and

went into effect in 1993. However, the CBD (Article 16.2) does provide for the adequate and

effective protection of intellectual property rights, so PBRs would seem to operate

independently of national laws enacted under the CBD, although exceptions could arise. There

might be conflict, for example, over traditional farmer-bred varieties, often referred to aslandraces. Landraces are certainly genetic resources and, arguably, plant varieties. However, as a

practical matter, heterogeneous landraces rarely satisfy the uniformity and stability requirements

for PBR protection, so a conflict in practice seldom arises. This does not mean that a landrace isspecifically excluded from PBR protection, or that one could not be protected. Rather, the UPOV

protection requirements demand more specific attention to a landrace (such as backcrossing), so

the issue of whether, or not, landraces qualify for PBR protection actually seldom arises. As toUPOV, it is quite evident that the system is intended for planting materials, whether they are

food crops or horticultural varieties, that will be sold on a commercial basis.

Another area of potential overlap is with the offering of patents and PBR for a plant. The TRIPS

Agreement specifically allows patents for plants, and, in the United States, both forms ofprotection have been available for some time. The matter has, however, not been so

straightforward in E.U. countries, due to the adoption of the European Patent Convention (EPC).The EPC (Article 53(b)) excludes protection for plant or animal varieties, raising the questionof just what the appropriate definition ofvariety is. Rulings on this question have seesawed back

and forth for decades, but the current (and likely sustainable) rule is that a plant variety is in afixed form regarding all of its characteristics. An invention that is applicable to a number of

varieties is not a plant variety and is thus patentable. This interpretation, while not binding in

other countries, is of relevance since Article 53(b) wording has been adopted into the patent laws

of a number of other countries.

4.1Protection requirements

To be eligible for protection under UPOV-based laws, a variety must be (Article 5, 1991 Act,

Article 6, 1978 Act):

new distinct uniform stable

These requirements are often abbreviated as DUS. Newness (or novelty) requires that the

applicant variety has not been sold or otherwise disposed of to others for more than one year

in the country of application or for four years (six for trees or vines) elsewhere. This requirementassures that the public is not giving away exclusivity rights to something already available, while

recognizing that some limited use or testing will typically be required prior to application.

Uniformity and stability necessitate a certain amount of backcrossing, so that the variety

reproduces true to form across individual plants (uniformity) and across generations (stability).

Stability and uniformity serve the important function of making a variety identifiable after


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propagation. The two also serve important commercial needs. UPOV has sometimes been

criticized for promoting genetic uniformity through the stability and uniformity requirements.

The text reads sufficiently uniform in its relevant characteristics (Article 8, 1991 Act) andstable [in] its relevant characteristics (Article 9, 1991 Act). That is, stability and uniformity

are required only to a degree, and only in certain characteristics. The requirements are variable

and limited, beyond which a protectable variety can be as heterogeneous as is feasible from theprospective of UPOV. Commercial requirements may necessitate broader uniformity, but this is

not relevant to UPOV. Rather, distinctness is the driving characteristic: A variety shall be

deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a

matter of common knowledge at the time of the filing of the application (Article 87, 1991 Act).The wording in the 1978 Act (Article 6.1(a)) is nearly identical, except for the inclusion of by

one or more important characteristics. That is, the variety must be distinguishable by one ormore characteristics, such as flavor, color, or virus resistance. What characteristics are

considered to be distinguishing ones is a matter of national interpretation.

4.3Rights of variety owner

Under the 1978 Act (Article 5.1), the permission of the owner is required for:

production, for purposes of commercial marketing offering for sale or offering marketing rights to reproductive or vegetative propagating

material

To those activities, the 1991 Act (Article 14.1) added the following activities for whichpermission of the owner must be given:

production or reproduction (multiplication)

conditioning for the purposes of propagation exporting importing stocking for any of [these] purposes

The specificity of these rights enhances the ability of the rights owner to exclude access, the only

right granted by PBR and other IP rights systems. For example, under the 1991 Act, it is

sufficient to show unauthorized reproduction, while the 1978 Act required proof of intent to

commercial[ly] market the material. Similarly, under the 1991 Act (Article 14.2) protection isextended to harvested materials, including entire plants or parts of plants. This means, forexample, that the blooms from an unauthorized propagation of a rose variety overseas can be

barred access. Under the 1978 Act (Article 5.4), such an extension of protection was optional.

Finally, under Article 14.3 in the 1991 Act, a signatory country may choose (but is not required)

to extend protection to products made directly from harvested material of the protected variety.

Two important exceptions to these rights exist. First, protected varieties may be used for

breeding and experimental purposes (Article 15.1, 1991 Act and Article 5.3, 1978 Act). This is a

right mandated by UPOV, and typically referred to as breeders rights. The freedom to use the


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variety resulting from the breeders effort, however, differs between the two acts. It is an

important and arcane enough issue to warrant separate treatment.

The second major exception to the rights listed above is the right of a grower (farmer) to retain

the crop as a seed source for a subsequent season. This right is absolute under the 1978 Act

because, as there is no commercial marketing involved, it is not prohibited. The 1991 Act(Article 15.2) makes this right (typically known as the farmers privilege) optional. This

Article is sometimes misconstrued as the elimination of the farmers privilege, when what itreally does is allow each nation to choose. At present, almost all countries have chosen to retain

the farmers privilege. A notable distinction is the European Union, which requires farmers to

pay a royalty on saved seed. Small farmers are exempted. Note also that this right iscompletely different and separate from Farmers Rights as defined by the Food and Agriculture

Organization of the United Nations (FAO).

Under UPOV, the PBR protection period is a minimum of 15 years, which extends to 18 yearsfor woody plants under the 1978 Act (Article 8). The 1991 Act (Article 19.2) extends the periods

to 20 and 25 years respectively.

4.3.1 Testing (examination) methods

According to the 1991 Act, Any decision to grant a breeders right shall require anexamination for compliance with the [protection] requirements (Article 12, 1991 Act). Thewording of Article 7, 1978 Act, is similar. Signatory countries nonetheless have substantial

latitude in how to conduct the examination. The distinctness requirement does, however, require

a comparison with any other variety whose existence is a matter of common knowledge at the

time. Thus, at a minimum, a national examination system must maintain (or have access to) a

large database of variety descriptions, both protected and not protected, including varieties used

both inside and outside the country. Beyond that, countries exercise considerable flexibility. TheE.U. nations, for example, carry out a two-year field trial where the applicant variety is

compared to an established reference variety. Distinctness is recognized only in specified

characteristics by crop, and sometimes a quantitative basis is defined by a crop committee. Forexample, an onion variety may be distinct in resistance to sprouting if 3% fewer sproutings occur

than in the reference variety after X months of storage. As a variation of this approach, some

countries (such as Canada) require the applicant to conduct the growouts (field evaluation of thevariety) under the supervision of the plant variety office. Most PBR offices are within a ministry

of agriculture. Using the opposite approach is the United States, where growouts are rarely

undertaken. Instead, the claim of the applicant is essentially taken at face value. Moreover,

distinctness may be claimed in any characteristic, including in those of no practical value.Improper claims of distinctness are resolved in court between the parties. To date there have

been few if any court cases resulting from improper claims. From an economic perspective, the

U.S. approach is simpler and less costly, while allowing more rapid access to new varieties.Because a variety is protected, however, does not necessarily mean it has agronomic merit.

Cosmetic breeding (cosmetic traits do not contribute to the productivity of the crop, forexample, flower color for pulses) raises costs, although the proliferation of available varieties

would reduce their market prices. Choosing a single approach, or choosing to adopt acombination system, is a significant national decision. The U.S. approach does rely more on an


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efficient and transparent court system, something not available everywhere. To emphasize that

point, a study done of Argentinas PBR act (one of the first in a developing country) determinedthat such a system of PBR would not be effective until the rights could be adequately enforced.

4.3.2Initial and dependent varieties

The 1991 Act (Article 14.5) does add a significantly new component: that of essentially derivedvarieties. This component provides an exception to breeders rights: protected materials may stillbe used in a breeding program, but if the resultant variety is judged to be essentially derived, it

cannot be commercialized without the permission of the initial varietys owner. Before

considering the technical aspects of this article, it is perhaps helpful to consider severaljustifications. If the background or development breeder spends 15 years breeding disease

resistance from a wild relative into a commercial variety, then under the 1978 Act provisions, the

resultant variety could be used as a basis of subsequent breeding, and within a few years

competitive varieties would appear. The development breeder would then have difficultyrecovering the costs of the 15 years of work, meaning that, as a practical matter, background

breeding would have to be left to the public sector. The owner of a leading commercial varietywould be in a similar situation regarding the insertion of a genetically modified trait by anotherparty. Under the 1978 Act, if herbicide resistance had been produced by cross-breeding patented

genes into that leading commercial variety, then the resulting genetically modified herbicide-

resistant variety could be commercialized, with nothing owing to the original variety owner. Yetthat original variety owner would be prevented from using the patented genes in its breeding

program, thus producing a distinct asymmetry of rights. Article 14.5 is intended to correct this

imbalance by establishing two levels of protection:

Initial varieties are those on which essentially derived varieties depend. If the initial varietyis protected, these essentially derived varieties can be bred from an initial variety but not

commercialized without permission from the variety owner. Essentially derived varietiesare often referred to informally as dependent varieties. If the background-bred variety were

an initial variety, any minor derivative varieties would be dependent and, in practice, could

expect to pay royalties. UPOV (Article 14.5(b), 1991 Act) uses terms such as

predominately derived.

Other varieties retain the expression of the essential characteristics. Essentially derivedvarieties may be produced in a number of ways, including by selection, back-crossing, ortransformation by genetic engineering. Several UPOV-associated committees have used

words such as the preponderance of genetic material. Just how initial and derivedvarieties are distinguished can be quite critical, but this may not be clearly determined until

there are actual decisions settling disputes revolving around this issue. We do know thatmany national PBR offices are treating the matter as an infringement, that is, the self-

identified initial-variety owner is left to sue the purported dependent-variety holder, and it is

up to the courts to resolve the counterclaims. This approach relieves a national office from

having to making difficult distinctions, but could prolong the process of identifyingoperational definitions.

5. How do PBRS Compare with Patents?


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There are more similarities than differences between patent and PBR systems. Both operate by

temporarily privatizing something that would otherwise have been freely available in the publicdomain. A fee can be assessed for access as well as for any rewards derived through market

sales. In their particulars, however, critical differences exist between PBRs and patents.

5.1Protection requirements

Protection requirements for patents include novelty, inventive step (nonobviousness under U.S.law), and utility (or industrial application). The concept of novelty in the two systems is similar,

although most patent systems operate with absolute novelty, or no prior public disclosure.

Inventive step in the patent system is similar to the distinctness requirement in the PBR system.Patents have always operated with a dependency-type system similar to the initial variety

concept in the 1991 UPOV Act, except that in the patent system there are no statutory (text-

based) statements about the dependency relationship or how dependency might be achieved. A

dependent patent could, for example, be an improvement on an existing product or process or anew use for an existing product. The new product/new use could be protectable in its own right,

so that neither owner could use the other invention without permission. These details are workedout between interested parties.

The utility requirement, stated as simply as possible, means that some use for the product must

be identified. When applied to patents for genes and gene fragments, the utility requirement hasraised serious issues that generally do not exist for PBR. Protected varieties, as noted, are

intended for sale and, under many examination systems, must display some practical merit.

Uniformity and stability have no comparable requirements under patent law.

5.2Protectable subject matter

With respect to protectable subject matter, the patent and PBR systems are quite different fromeach other. Under patent acts, everything is patentable except for identified exceptions. One

common exception is for plant and animal varieties. PBRs cover all genera and species, withcertain minimums under the several acts, as follows:

1978 Act (Article 4): on adoption, three rising to at least 24 genera or species within eightyears

1991 Act (Article 3): for new members on adoption, at least 15 genera or species, rising toall genera and species within ten years

5.3 Other components

PBR systems are distinct from patents in allowing an option, under the 1991 Act, for farmers to

save seed for subsequent seasons. Under patents, such actions would constitute infringement.

The breeders right is statutory with PBR and hence is relatively clear in its scope. Nationalpatent systems do allow some research on patented inventions, but the form and extent of

research allowed is based on case law and so this is more difficult to assess. The difference in

this matter between patents and PBR is one of clarity alone; however, this makes research useunder PBR a more clear-cut process than for patented inventions. Provisions for farmers


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privilege (where allowed) and breeders rights are generally considered to give holders of PBR

certificates weaker protection than do patents. This helps explain why, where the choice isavailable, commercial breeders often prefer patents, or patents plus PBR, over PBR alone.

Patents are, however, typically far more costly to apply for and to maintain. The difference is not

in the application fees structure, which may in fact be lower for patents, but rather, a patentusually requires an attorneys assistance to prepare the application. PBR applications are

typically completed by the breeders. Adding the elaborate translation requirements under somepatent laws, and the annual maintenance fees can also make patenting a costly process, compared

with PBR.

6. Conclusions

Although some legal ambiguity does still exist within PBR legislation, the objectives of the

system are specific, and the laws and provisions, if clearly understood, are manageable. The PBRsystem shares several features with more conventional patent systems, but the two systems differ

in several crucial respects. As a sui generis system, PBR laws apply only to plants and plantmaterials. But they work, like patents, to prohibit unauthorized use of these materials.

UPOV establishes a framework to guide signatory nations in adopting PBR provisions in their

own national laws. The acts have been amended several times; currently, most nations areoperating under either the 1978 or the 1991 versions.

To be eligible for protection, a plant variety must demonstrate novelty, distinctiveness,uniformity, and stability. If protected, a potential user must seek permission from the owner

before producing, selling, importing, or exporting the variety or, in some cases, products made

from or with that variety. A few important exceptions to this apply; for example, a breeders

exemption allows researchers to use the variety for experimental purposes, and farmers aregenerally allowed to retain the variety for seed. In an important new component of the 1991 Act,

if research produces a variety judged to be essentially derived from a protected variety, it cannot

be commercialized without the permission of the initial varietys owner.

Documents

Plant Variety Protection in a Developing and Demanding World