Beyond UPOV

Examples of developing countries preparing non-UPOV sui generis

plant variety protection schemes for compliance with TRIPs

July 1999

BACKGROUND

The World Trade Organisation's agreement on intellectual property, known as TRIPS, sets out minimal standards for patent and other forms of intellectual property protection in the 134 WTO member states. If countries do not provide these standards, they can be punished through trade sanctions. TRIPS Article 27.3(b) requires all countries to protect intellectual property over plant varieties, the basis of food security. According to the agreement, this can be done by patent law or by "effective sui generis system". Developing countries must implement this rule by 1 January 2000 and least developed countries by 1 January 2006. However, the article is being formally reviewed by the WTO members right now and could possibly be changed before the implementation deadline.

The review of Article 27.3(b), which has been going on in Geneva over the 1999 series of TRIPS Council meetings, has revealed that the WTO membership is unclear as to what an "effective sui generis system" is or should be. Sui generis simply means special or unique, leaving the matter completely open to interpretation.

Industrialised nations argue that the model provided by the Union for the Protection of New Varieties of Plants (UPOV), to which 44 mainly industrialised countries subscribe, is the best sui generis system for now. Most developing countries do not agree, because that model is highly biased toward the commercial interests of industrial breeders in the North and it helps promote genetic uniformity in agriculture.

In the longer term, however, industrialised nations would like TRIPS to be strengthened so that it either names UPOV as the only sui generis system recognised by WTO or deletes the sui generis option altogether (meaning full-fledged patents must be provided). Yet developing countries increasingly question whether the patenting of life forms is ethical and should be permitted, as a matter of WTO policy, at all.

At stake in this debate is control over the world's food supply, among other things. North America, Europe and Japan host the global $30 billion seed industry which aims to conquer markets in the developing world once intellectual property, which guarantees royalty and licensing payments to exclusive owners, over plant genetic research is secured through implementation of TRIPS. Developing countries, on the other hand, want to promote their own plant breeding and protect not only their plant genetic diversity but the rights and interests of local communities who nurture that diversity and who contest its privatisation by the North.

At the last meeting of the WTO TRIPS Council, on 7-8 July, governments discussed the substance of these issues and what to do about them. Governments are also starting to officially advocate amendments to TRIPS as part of the preparatory process for the WTO Ministerial Conference in Seattle, 29 November - 4 December 1999.

Kenya's position is that the differences of interpretation of Article 27.3(b), plus the controversy surrounding the sui generis option itself, merit a five-year extension of the implementation deadline for developing countries. The group of least developed countries at WTO has called for an extension of the deadline for their groups, plus maximum flexibility in the interpretation of sui generis regimes for both developing and least developed countries. Malaysia has formally summoned the WTO to clarify exactly what are the sui generis options available to the member states beyond the oft mentioned UPOV system. India argues, in the meantime, that the TRIPS agreement conflicts with the Convention on Biological Diversity (CBD) and that the two must be reconciled before they can be properly implemented at the national level. India's position is widely supported by governments across the South. The Africa Group, for its part, is also finalising a common position on the TRIPS Review of Article 27.3(b).

While the policy issues get thrashed about in Geneva, many governments back home in the developing world are well into drafting sui generis laws on protection of plant varieties which clearly move away from UPOV and towards the protection and implementation of Farmers' Rights, community rights and other provisions stemming from or related to the internationally binding Convention on Biological Diversity. In most countries, these laws are not yet adopted – they are under debate, increasingly involving more and more stakeholders at the local and national levels.

To give a picture of the situation, GRAIN has compiled a set of examples of some of these "non-UPOV sui generis initiatives" in the South. We merely point out those provisions where national sui generis bills are deviating from the restrictive UPOV regime. Any errors of interpretation are our own.

Of the 40 or so countries in the region, 11 are members of UPOV (all bound to the 1978 Convention): Argentina, Bolivia, Brazil, Chile, Colombia, Ecuador, Mexico, Panama, Paraguay, Trinidad & Tobago and Uruguay.

The Nicaraguan government sent a draft plant variety protection (PVP) bill marked "urgent" to Parliament in May 1999. It basically followed UPOV 1991. A modified draft was subsequently developed in the Parliament's Environment Committee containing a number of substantial demarcations from the UPOV model, which we highlight below. By mid-July, a form of compromise draft had been adopted in general, but not specific, terms. Parliament will reconvene in August and continue its deliberations.

1. Discoveries may not be protected.

2. A plant variety shall be eligible for protection if it differs from another variety in several characteristics (not just one).

3. Transgenic material shall be subject to separate biosafety legislation.

4. The definition of breeder and breeding is wider in scope: it covers anyone making use of techniques of crop improvement.

5. It recognises that priority rights based on reciprocity under UPOV conflict with the WTO-TRIPS regime of national treatment and it therefore does not include them.

6. It sets PVP apart from industrial property and therefore seeks to comply with UPOV 1978 which expressly prohibits double protection.

7. Protection extends to the following acts: direct sowing, preparation for reproduction or multiplication as certified seed, repetitive use for the production of another variety. It does not offer protection for marketing, import or export.

8. The provision regarding essential derivation shall be applied in cases whether the "new" variety is at least 20% dependent on an earlier variety.

9. Plant breeders' rights shall not extend to the variety when it is used for consumption or sowing directly by farmers or when it is used by tenants, cooperatives or other non landholding entities.

10. Criteria for protection are: novelty, distinction, uniformity or variability, stability or evolutionary capacity, plus the variety must carry a denomination.

11. A variety shall be deemed distinct if it bears at least ten characteristics that set it apart from commonly known varieties.

12. A variety shall be deemed variable if its characteristics are adapted to different climatic and soil conditions of the country.

13. A variety shall be deemed to have evolutionary capacity if it contains genes or genetic complexes which are expressed under environmental change.

14. Registration requires: proof of compliance with CBD Art 8j and 15 (especially compensation to countries and communities of origin) and scientific proof of the variety's superiority to cultivars grown in the country through at least two production cycles of comparative tests.

15. Wider compulsory licensing.

16. This law is subordinate to the rights and obligations acquired through the Convention on Biological Diversity.

Costa Rica does not have a PVP law yet but plans to adopt one by the end of the year for the purpose of compliance with TRIPS. It is established that Costa Rica's PVP law will be subordinate to the country's compliance with the CBD, which was formalised through the enactment of Law No. 7788 entitled "Biodiversity Law" in May 1998. The Biodiversity Law decrees (Article 82) that communities are the holders of sui generis community intellectual rights which exist and are henceforth recognised and protected by the State owing to the mere existence of cultural practices or knowledge related to genetic resources and biochemicals. These rights, which cover "the knowledge, practices and innovations of the indigenous peoples and the local communities, related to the use of the components of biodiversity and associated knowledge," shall not be affected by Plant Breeders' Rights, patents or any other form of intellectual property applied to biodiversity and associated knowledge. Any application for PBR in Costa Rica must receive clearance from the Technical Office of the Commission administering the Biodiversity Law to ensure that the application does not contravene community intellectual rights, even though these need not be formally registered. The recognition of community intellectual rights in Costa Rica "oblige[s] the Technical Office to answer negatively any consultation related to the recognition of intellectual or industrial rights over the same component [of biodiversity] or knowledge" (Article 84).

South Africa are members of UPOV (the 1978 Convention in both cases). However, in February 1999, the 15 francophone member states of the Organisation Africaine de la Propriété Intellectuelle (African Organisation of Intellectual Property) revised he Bangui Agreement which governs their common intellectual property regime. The new Agreement establishes, in Annex X, a common PVP system and foresees that the OAPI member states will join UPOV by depositing an instrument of accession to the 1991 Act. The Bangui Agreement must be ratified at the national level for it to come into effect for the individual countries. Cameroon, Gabon, Ivory Coast and Senegal are allegedly expected to ratify by the end of this year.

The Southern African Development Community, with the support of the International Plant Genetic Resources Institute, has examined whether alignment with UPOV would be appropriate for compliance with the sui generis principle of TRIPS. The conclusion was that UPOV is mainly appropriate to protect the interests of exporters of horticultural and ornamental varieties, but not for southern Africa. As a result, SADC is currently drafting a common legislative framework for sui generis rights that protects the gamut of plant biodiversity as well as traditional knowledge of the local communities, in cooperation with the OAU (see below).

The Zambian government has made it clear that in order to fulfill its rights and obligations under CBD, its sui generis PVP system must recognise and reward the innovation of indigenous peoples and local communities. For this, their law, which is being drawn up with full stakeholder participation, defines innovation to include "any inventive input done collectively, accretionally, inter-generationally and over a period of time, in relation to genetic resources." UPOV has already commented extensively on Zambia's draft.

Public consultation on the draft law in Zambia has resulted in a number of observations:

1. that the Act did not comprehensively protect farmers varieties and other plants of various uses

2. that the Act was biased toward cultivated plants

3. that the Act placed too much emphasis on protecting the rights of individuals, mainly breeders and seed companies, and remained silent on collective community knowledge and intellect

4. that the Act is disconnected from the government's policy to promote the informal seed system and achieve its integration with the formal seed system

Therefore, the draft was recently put on hold so that the government can pursue wider stakeholder consultations to address these concerns. The government remains intent on protecting community intellectual rights appropriately under this Act.

Zimbabwe has a plant breeders' rights system in place since 1975 but it is partial and non-compliant with UPOV. Zimbabwe has been revising its law to comply with UPOV 1978 but missed the deadline for joining (24 April 1999). Zimbabwe also fears, like Zambia and the whole of the SADC community, that the UPOV model compromises the country's need to fulfil its rights and obligations towards Convention on Biodiversity.

The Organisation of African Unity is currently developing an "African Model Legislation for the Recognition and Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Genetic Resources", which expands on the 1998 model law. A draft-in-progress, the document is not yet public. A final version is expected to be available in October or November 1999.

As regards the Plant Breeders' Rights component, the current version of the model legislation demarcates itself from UPOV in various ways:

1. Protection shall be available to any variety that is distinct, stable, sufficiently homogenous or a well-defined multiline.

2. PBR is subject to the law's provisions on Farmers' Rights.

3. Broad compulsory licensing provisions are included.

4. The plant breeder's right is limited to the production and sale of the propagating material of the variety and does not impinge on the rights of farmers to reproduce seed or on the rights of innovators to conduct research.

Of the developing countries in Asia, only China is member of UPOV (1978 Act).

The final version of India's draft PVP Act, now before Parliament, demarcates itself from UPOV in several ways:

1. It formalises Farmers' Rights in the following terms: "Nothing contained in this Act shall affect a farmer's traditional right to save, use, exchange, share or sell his farm produce of a variety protected under this Act except where a sale is for the purpose of reproduction under a commercial marketing arrangement."

2. It makes specific and detailed provision for communities to register collective rights.

Thailand's draft PVP Act, also before Parliament at this moment, distances itself even more from UPOV:

1. It define various classes of plant varieties with specific rights and responsibilities attached to each: local domestic plant varieties, new plant varieties, general domestic plant varieties and wild plant varieties.

2. Transgenic varieties are subject to special biosafety reviews.

3. Duration of protection is 12, 17 or 27 years depending on the type of plant.

4. Exhaustion of the plant breeders' right in terms of farmers' cultivation practices is more ample (farmers get broad rights to use protected material).

5. It creates a Plant Variety Protection Fund aimed at supporting research or conservation and development of plant varieties.

6. It requires profit-sharing agreements in the case of general domestic and wild plant varieties, the revenue from which shall accrue to the Fund.

The Plant Varieties Act of Bangladesh, drawn up and approved by the National Committee on Plant Genetic Resources, is now under public debate. It takes substantial distance from UPOV:

1. To be eligible for protection a variety must be new, have consistent specific traits, be stable and have distinctive specific traits.

2. Breeding alone is not sufficient to justify commercial privileges. The variety must have "immediate, direct and substantial benefit to the people of Bangladesh."

3. Hybrids may only be protected if the parents are available as community varieties in the public domain.

4. Any variety which made lead to genetic or cultural erosion shall not be protected

5. Transgenics are subject to further legislation.

6. All varieties which are developed in any national public research institute (universities, national agricultural research centres, etc) shall be considered the property of the people of Bangladesh, i.e. common property. The same holds for farmer- or NGO-developed varieties which were created through the use of public funding (development cooperation funds). In these cases, Citation of Award shall replace a PVP certificate.

7. PVP is not available to nationals or juristic persons of countries which are not party to CBD.

8. County of origin of the material used to develop the variety shall be disclosed.

9. Where a community variety, indigenous plant variety or wild plant variety has been used in the development of a protected variety, 25% of the revenue accruing from its commercialisation shall be shared.

10. Periods of protection are 7 years for annuals, 10 years for bi-annuals, 15 years for perennials and 25 years for woody species.

11. There is a Citation of Recognition system to award innovators who wish to register their innovations without claiming commercial privilege or protection for personal gain.

12. Community rights are substantively provided for.

13. Farmers rights are substantively provided for.

14. A Plant Variety Development Fund shall be established to support communities in the conservation and development of plant varieties.

In April 1999, the Government of Pakistan confirmed its intention of joining UPOV as compliance with TRIPS Art 27.3(b) on the basis of draft national legislation modelled tightly from UPOV 1991. National civil society organisations protested against both the lack of consultation with prime stakeholders and the biases ingrained in the draft bill. Following several months of open debate, the Government announced in July that it will no longer seek accession to UPOV and invited NGOs to participate in redrafting the bill "in line with national interests".

* "Plant Varieties Act of Bangladesh", text proposed by the National Committee on Plant Genetic Resources, Dhaka, 29 September 1998

* Ministry of Agriculture & Cooperation, Government of India, "The Plant Varieties and Farmers' Rights Protection Bill, 1998", No. 18-136/97/SD-IV, New Delhi, circa November 1998

* "(Draft) Plant Varieties Protection Act, Thailand", translation by Dr Pinai Nanakorn for the Department of Agriculture, Ministry of Agriculture and Cooperatives, for its presentation to UPOV.

* Papers presented at the UPOV-WIPO-WTO Joint Regional Workshops on "The Protection of Plant Varieties under Article 27.3(b) of the TRIPS Agreement" held in Bangkok on 18-19 March 1999 and in Nairobi on 6-7 May 1999.

* African Model Legislation for the Recognition and Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Genetic Resources", draft of June 1999 for OAU, Addis Ababa.

* "Ley de Protección para la Obtenciones Vegetales", working document of 21 May 1999, Managua.

* "Press Statement on the Regional Workshop in Southern Africa on the Implementation of Article 27.3(b) of WTO/TRIPS", co-organised by the Biotechnology Research Institute, Community Technology Development Trust and the International Plant Genetic Resources Institute in Harare on 22-24 March 1999. (See BIO-IPR of 12 April 1999.)

* Edward D. Zulu, Rosemary M. Makano and Anessie Banda, "National Experiences and Plans to Implement a Sui generis System of Protection in Zambia", paper presented at the UPOV-WIPO-WTO Joint Regional Workshop on "The Protection of Plant Varieties under Article 27.3(b) of the TRIPS Agreement", Nairobi, 6-7 May 1999. (See BIO-IPR of 25 May 1999.)

* "The Africa Group Position on TRIPS Agreement, IPRs and CBD", Intervention delivered by H.E. Ambassador Pilemon Yang of Cameroon on the behalf of the African States during the Inter-Sessional Meeting on the Operations of the Convention on Biological Diversity, Montreal, 28-30 June 1999.

* UPOV, "Aide Mémoire pour la Ratification du Nouvel Accord de Bangui et l'Adhésion à l'Union Internationale pour la Protection des Obtentions Végétales (UPOV)", Genève, Juin 1999.

* Permanent Mission of Kenya to the United Nations, "Preparations for the 1999 Ministerial Conference, Contribution to the Preparatory Process, Communication from Kenya", World Trade Organisation, WT/GC/W/23, Geneva, 5 July 1999. Accessible through http://www.wto.org/wto/ddf/ep/public.html

* Peter Ungphakorn, Information and Media Services, World Trade Organisation, Geneva, 13 July 1999, personal communication.

* Dr Shahid Zia, Research Fellow, Sustainable Development Policy Institute, Islamabad, 16 July 1999, personal communication.

* "The Challenge of Integrating LDCs into the Multilateral Trading System", Coordinating Workshop for Senior Advisers to Ministers of Trade in LDCs in Preparation for the Third WTO Ministerial Conference, Sun City, South Africa, 21-25 June 1999, Communication from Bangladesh, World Trade Organization, WT/GC/W/251, 13 July 1999. Accessible through http://www.wto.org/wto/ddf/ep/public.html