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In the debate over genetic resources, the term 'sui generis
system' has no uniform meaning. It is used in the TRIPS agreement's Article
27.3 dealing with intellectual property protection for plants. In other
contexts, the term is also used to denote alternative rights regimes for
the protection of community innovations that are not protectable under
conventional intellectual property laws, and, in an even broader perspective,
for systems embodying Farmers' or indigenous peoples' rights. This paper
aims to explore options for sui generis systems not in this wider sense,
but strictly in accordance with its meaning within the TRIPS Agreement's
Art. 27.3 (b). Yet it should be stated clearly right at the beginning
of this paper, that WTO member states are free to establish protection
systems which go beyond the intellectual property rights covered by the
TRIPS Agreement provided that such protection does not contravene the
provisions of the TRIPS Agreement. [1]
Pursuant to TRIPS Article 27.3(b), Member states which
do not provide for the protection of plant varieties by patents have to
provide for their protection by an "effective sui generis system."
Although the TRIPS Agreement does not define what is
meant by the term "effective sui generis system", certain minimum
requirements such a system would have to fulfil can be drawn from the
context of Article 27.3(b), the context of TRIPS as an integral part of
the WTO Agreement and, finally, from the objectives of the TRIPS Agreement
itself. The sui generis system has to provide for the protection of plant
varieties of all species and genera by an IPR to which the obligations
under TRIPS Art. 3 (national treatment) and Art. 4 (most-favoured nation
treatment) fully apply. In order to be effective, the sui generis system
needs to permit effective action against any act of infringement of the
right available under the sui generis system.
There is, nonetheless, a wide range of possible sui generis
systems as required by Art. 27.3 (b) TRIPS and there is wide agreement
that countries have considerable room to develop their own systems. Such
alternative systems should be explored and discussed before ready-made
protection systems currently being used in many industrialised countries
are adopted. On the basis of the legal requirements laid down in the TRIPS
Agreement we suggest to consider possible combinations of elements for
the design of protection systems, appropriate for the different economic
and social conditions in developing countries, and the requirements and
consequences from the economic, ecological, legal, technical and administrative
points of view. For this purpose possible goals policy makers may pursue
with a protection system for plant varieties need to be identified and
elements to be assessed in relation to their impact on these goals.
4.1 THE TIME FRAME
The Agreement establishing the World Trade Organisation
came into effect on 1 January 1995. Member states are obliged to apply
the provisions of the Agreement on Trade-Related aspects of Intellectual
Property Rights (TRIPS) from 1 January 1996 (TRIPS Art. 65.1). However,
developing country members and, under certain conditions, also members
in the process of transformation from a centrally-planned to a free-enterprise
market economy may delay the date of application of the TRIPS Agreement
to 1 January 2000 (TRIPS Art. 65.2). Least-developed countries are not
required to apply the provisions of the TRIPS Agreement before 1 January
2006. However, insofar as they provide for intellectual property protection,
developing and least-developed countries have to treat nationals of other
WTO members no less favourably than their own nationals ("national
treatment"). They also have to accord any advantage, privilege or
immunity granted to the nationals of any other country to the nationals
of all other WTO members (TRIPS Art. 65.1 and Art. 66.1).
It is important to bear in mind that, in 1999, just one
year before developing countries will have to apply the TRIPS Agreement
and thus grant sui generis if not patent protection for plant varieties,
Art. 27.3(b) -- the provision which requires the protection of plant varieties
-- is to be reviewed. The outcome of this review is not predictable. Whatever
the outcome, however, the elaboration of possible elements of a sui generis
rights regime does not seem premature. If this provision passes the review
in 1999 unchanged, there would be less than a year for the development
and thorough discussion of a "sui generis system". Furthermore,
and perhaps more importantly, the outcome of the review may very much
depend on the existence of different sui generis systems already in place
if not in advanced stages of development.
4.2 MINIMUM REQUIREMENTS
FOR A SUI GENERIS SYSTEM FOR THE PROTECTION OF PLANT VARIETIES UNDER TRIPS
[2]
The TRIPS Agreement goes no further towards defining
the words "effective sui generis system" and there is no drafting
history which can be invoked to explain these terms. While the main sui
generis systems existing at the time of the conclusion of the TRIPS negotiations
relating to plant varieties were embodied in the various UPOV Acts and
reflected in the national laws of UPOV member states, the TRIPS Agreement
does not refer to UPOV. Thus, TRIPS Art. 27.3(b) neither includes an obligation
to become a member of UPOV, nor does it oblige member states to adopt
legislation identical to, or consistent with, any of the UPOV Acts.
On the other hand, WTO member states that exclude plants
from patentability do not satisfy TRIPS Art. 27.3(b) by having implemented
the UPOV minimum standards. It is true, the former Director General of
GATT, Peter Sutherland, explained in 1993, that "while the TRIPS
provisions on plant variety protection do not refer to any international
convention, it is clear that, if the standards of protection of UPOV 1978
were to be followed, it would be reasonable to claim that an effective
sui generis protection had been provided." [3]
However, this statement is misunderstood to mean that if a country's legislation
conforms to the minimum standards as required by UPOV 1978, it would be
unlikely to be successfully challenged. Sutherland limited his statement
on the compatibility of the TRIPS to the standard of protection as foreseen
by the UPOV Convention of 1978 and did not address the required coverage
or scope of a sui generis system. Nor did he address the question of whether
member states are required to apply the basic principles of the TRIPS
Agreement to the sui generis system.
4.2.1 Plant Varieties
The statement quoted above by the former Director General
of GATT, Peter Sutherland, is sometimes understood to mean that as under
the UPOV Act of 1978 [4] member states do not have to provide for the protection of
plant varieties of all botanical genera and species under the TRIPS Agreement.
However, as has been stated already, Sutherland limited his statement
to the standard of protection as foreseen by the UPOV Convention of 1978
and did not address the required coverage or scope of a sui generis system.
Since the TRIPS Agreement neither defines the term 'plant variety' nor
specifies any species or genera the varieties of which have to be protected,
it seems clear that member states have to provide for the protection of
plant varieties of all species and botanical genera. Any other interpretation
of Art. 27.3(b) TRIPS would have to indicate for how many species or for
which type of species member states have to grant sui generis protection
and there is no such provision in the TRIPS Agreement.
4.2.2 Intellectual Property
Right
According to Art. 1.2 of the TRIPS Agreement the term
'intellectual property' refers for the purposes of this Agreement "to
all categories of intellectual property that are the subject of Sections
1 through 7 of Part II" . These sections deal with copyrights and
related rights, trademarks, geographical indications, industrial designs,
layout designs of integrated circuits, patents, and the protection of
undisclosed information (trade secret). The requirement to provide for
the protection of plant varieties by patents or by an effective sui generis
system or by any combination thereof is the subject of Section 5 of the
TRIPS Agreement. It follows that, like patents and all the other rights
mentioned in sections 1 through 7, the sui generis system as foreseen
in the TRIPS Agreement also has to be an IPR.
It has been suggested that the TRIPS Agreement considers
the protection of plant varieties only casually as an exception to patentability,
defining neither the requirements nor the scope of protection a sui generis
system would have to foresee, and that therefore the sui generis system
does not fall under the category of "intellectual property rights"
within the meaning of TRIPS Art. 1.2. However, the purpose of TRIPS as
a whole does not seem to allow such interpretation. Since the national
treatment principle and the principle of most-favoured nation treatment
only have to be applied to IPR (cf. TRIPS Art. 3.1 and Art. 4), neither
principle would apply, if the sui generis system were not to be considered
as an IPR within the meaning of Art. 1.2. This would, however, mean that
member states would be allowed to refuse nationals of other member states
any plant variety protection. The TRIPS requirement to provide for the
protection of plant varieties would therefore be of no use to (the nationals
of) other member states. However, the very purpose of the TRIPS Agreement
is without doubt to make the property rights covered by it available to
the nationals of all the member states. It is inconceivable that the mutual
obligation to establish a protection system for plant varieties should
not result in any mutual rights.
Furthermore, Art.
68 of TRIPS indicates that the sui generis system needs to be an IPR.
According to Art. 68, the TRIPS Council has to monitor
the operation of this agreement and, in particular, Members' compliance
with their obligations under TRIPS. If the sui generis system was not
an IPR within the meaning of TRIPS, members would not have to notify their
sui generis laws since Art. 63.2 only requires them to notify those laws
and regulations, final judicial decisions and administrative rulings which
are of relevance for IPRs. Thus, if the sui generis system were not a
form of IPR, the TRIPS Council would be obliged to monitor the member
states' sui generis provisions but would not have the right to be informed
by the member states about these provisions. It should be noted, that
by asking member states to notify their sui generis laws for the protection
of plant varieties under Art. 63.2, the TRIPS Council itself has actuallly
indicated that it regards the sui generis system as an IPR.
Thus, from the wording and context of Art. 27.3(b) and
the aim of the TRIPS Agreement as a whole, it seems obvious that the sui
generis system for the protection of plant varieties has to be an IPR
within the meaning of TRIPS Art. 1.2.
Intellectual property
rights covered by the TRIPS Agreement
The TRIPS Agreement does not define in detail the term
"intellectual property right". Intellectual property rights
are usually defined as rights granted by a state authority for certain
products of intellectual effort and ingenuity. Most often the term IPR
is used as a collective name for rights such as those dealt with by the
TRIPS Agreement. From an analysis of the other IPR covered by TRIPS one
can further draw the conclusion that IPR are rights either to exclude
others from certain commercially interesting acts in relation to the described
subject matter and/or rights to obtain a remuneration in respect of those
acts.
The sui generis
system as an additional IPR
In many cases a product of intellectual effort or ingenuity
may be protected by several IPRs. The inventor of a new can opener may,
for example, apply for a patent and at the same time register a certain
name for this opener as a trademark. The question may therefore arise
whether a member state would fulfil the requirement to provide for the
protection of plant varieties by referring, for example, to the possibility
of registering the name of a plant variety as a trademark.
The sui generis system certainly needs to confer
on the holders an additional right which WTO members do not have to make
available in relation to plant varieties according to other obligations
posed by the TRIPS Agreement. A WTO member could not satisfy Art. 27.3(b)
TRIPS by allowing variety denominations to be registered as trademarks
since, under Art. 15 TRIPS, member states already have to register variety
names as trademarks. If the negotiators of the TRIPS Agreement had felt
that such trademark protection was sufficient, they would certainly not
have included the requirement to establish an additional system for the
protection of plant varieties.
Thus, the sui generis system has to be an IPR
conferring on the right holders an additional right, i.e. a right which
is not yet foreseen by the TRIPS Agreement.
Sui generis
legislation and Farmers' Rights
It has been suggested that the sui generis system
provided for in Art. 27.3(b) TRIPS could be implemented by Farmers' Rights.
Given that the sui generis system has to provide for an IPR this approach
might not conform with the TRIPS Agreement if one accepts that Farmers'
Rights are a concept rather aiming at counterbalancing IPR than creating
any additional intellectual property right.
This does not, however, prevent the inclusion of provisions
that implement Farmers' Rights and/or traditional resource rights into
a sui generis system. Such an incorporation of Farmers' Rights
based, for example, on the Indian proposals for Community Intellectual
Property Rights and the Plant Variety Recognition and Rights Model Act,
could complement the sui generis system by compensating those who have
been conserving plant genetic resources (PGR) for the past centuries and
thereby have contributed until now to the development of plant varieties
protectable under the sui generis system foreseen in the TRIPS Agreement.
4.2.3 National treatment
As an IPR any sui generis system needs to comply with
the basic principle of national treatment.
The national treatment principle as laid down in the
Paris Convention only relates to specific rights. [5]
But as defined in Article 3.1 of TRIPS, the principle applies to "all
categories of intellectual property that are the subject of Sections 1
through 7 of Part II" of the TRIPS Agreement and this includes the
sui generis system for the protection of plant varieties. Thus, as an
IPR, any sui generis system needs to comply with the basic principle of
national treatment. This means that members have to accord to the nationals
of other members treatment no less favourable than they accord to their
own nationals with regard to the protection of plant varieties.
A rather astonishing consequence of the applicability
of the principle of national treatment to the sui generis system is, that
by implementing the minimum standards of the UPOV Acts of 1978 and 1991,
WTO member states would not fully comply with their obligation laid down
by the TRIPS Agreement. According to the UPOV Acts, UPOV member states
only have to afford the nationals and residents of all the other UPOV
member states and legal persons having their headquarters there the same
treatment as their laws provide for their own nationals. Under the UPOV
Act of 1978 member states may even limit the right to apply for protection
of a variety to nationals or residents of those member states which also
apply that Act to the genus or species to which the variety belongs. This
reciprocity rule, as well as the limitation of national treatment to nationals
and residents of other UPOV member states, would clearly fall foul of
the national treatment requirement as laid down in Article 3 of the TRIPS
Agreement. With regard to the protection of plant varieties, UPOV member
states have to accord treatment no less favourable than they accord to
their own nationals to the nationals of all WTO member states, whether
these are UPOV members or not.
It is clear that the applicability of the national treatment
principle to the sui generis system makes it far less attractive for WTO
members to join UPOV. Since UPOV members have to apply their plant variety
protection laws in compliance with the TRIPS national treatment principle,
there is no need for WTO member states to join UPOV just because they
want to benefit from the legal protection available for plant varieties
in UPOV member states. This may be why some UPOV member states argue that
the TRIPS national treatment principle is not applicable to the sui generis
system. [6]
4.2.4 Most-favoured-nation
treatment
Any advantage, favour, privilege or immunity granted
by a member to the nationals of any other country with regard to the protection
of plant varieties has to be accorded immediately and unconditionally
to the nationals of all the other member states. It should be noted, however,
that in the field of intellectual property the most-favoured-nation principle
is of rather minor practical relevance, since only in exceptional cases
would countries be likely to grant more protection to foreigners than
to their own nationals.
4.2.5 Effective enforcement
Art. 27.3(b) requires explicitly that the sui generis
system be "effective". However, the TRIPS Agreement does not
specify any criteria for effectiveness. It has been suggested that effectiveness
relates to the level of protection of the sui generis system and therefore
requires certain substantial minimum rights to be conferred by the sui
generis right. Such interpretation, however, causes enormous difficulties
as soon as one attempts to define those minimum rights. The UPOV Acts
do not qualify as a measuring stick since, while there are many references
to relevant international IPR treaties in the TRIPS Agreement, references
to the UPOV Acts are conspicuous by their absence. Furthermore, and more
important, it might be impossible to define effectiveness on a global
scale. The same protection system may be of different effectiveness in
different countries whatever specific criteria are being used for evaluating
the effectiveness.
It is, finally, the TRIPS Agreement itself which points
at a different interpretation of the term "effective". The TRIPS
Agreement employs the term "effective" in particular in the
context of the national enforcement of rights and the procedures for the
multilateral prevention and settlement of disputes between governments
(cf. Preamble and Art. 41.1), while the rights to be conferred by an IPR
are either defined in detail or as "equitable remuneration"
(Art. 14.4 and Art. 70.4). Against this background an "effective"
sui generis system needs to allow effective action against any act of
infringement as required by TRIPS Art. 42-49. Its effectiveness does not,
however, depend on its requirements for, or on the level of, protection.
It should be noted that the civil and administrative
procedures as required by Art. 42-49 of TRIPS are based on the presumption,
also emphasised in the preamble to the TRIPS Agreement, that IPR are private
rights for the enforcement of which members only have to provide the judicial
procedures. The right holders are responsible for uncovering infringements
of their rights and, subsequently, taking the appropriate action in court,
if they so wish. Apart from its enormous transaction costs, a sui generis
system providing for a form of distribution of revenues obtained from
a seed tax levied by the government, does not seem to fit the concept
of the civil and administrative procedures and remedies as required by
the TRIPS Agreement. Such a system would require the state to control
compliance with the sui generis system, which means the state would have
to ensure that consumers actually pay tax when they buy or plant back
seed of a protected variety. The right holder, however, would certainly
not be in a position to take action against any act of infringement, i.e.
tax evasion, which would mean that the civil and administrative procedures
and remedies as foreseen by the TRIPS Agreement could not be made use
of. A remuneration system based on a seed tax system does not therefore
seem to comply with the TRIPS Agreement.
4.3 OPTIONS FOR AN IPR FOR
THE PROTECTION OF PLANT VARIETIES
There are various options for an IPR for the protection
of plant varieties. The TRIPS Agreement itself mentions three different
possible options: members shall provide for the protection of plant varieties
either by patents, or by an effective sui generis system or by any combination
thereof.
1. One option certainly is not to exclude plant varieties
from patentability. Given that depending on their interpretation the patent
requirements as such may pose significant hurdles to plant varietiesvii
this option may even seem attractive for members which wish to avoid strong
intellectual property protection in the field of plant breeding. However
these hurdles may be overcome with increasing progress in plant biotechnology.
2. The second option is the establishment of a sui generis
system. Yet there are various options for a sui generis system as required
by Art. 27.3 (b). There are several ways to define the term plant variety.
Furthermore, the TRIPS Agreement leaves the option to protect additional
subject matter.
i. The 'traditional' requirements for the protection
of plant varieties -- that they be novel, distinct, uniform and stable
-- can be altered substantially. But the plant grouping to be protected
still has to be distinct from other plant groupings and it must be possible
to clearly identify it with reasonable effort. Moreover, additional
requirements for protection may be set up, such as Value for Cultivation
and Use (VCU) or declaration of origin. While the former may allow member
states to provide for incentives to fit their specific priorities in
plant breeding, the latter may for example be helpful in verifying whether
the prior informed consent of the providers of breeding material has
been obtained.
ii. In relation to the physical elements (representing
a plant variety) to be covered by the right, member states have several
options: the sui generis right may be limited to vegetative or reproductive
propagating material, or extend even to harvested material.
iii. In relation to the acts which shall require the
authorisation of the right holder, member states may follow the models
provided by current patent law or by the different UPOV Acts. They may
also define a different scope of protection subject to the minimum requirements
as set out above. In our opinion, this includes for example the option
to grant the exclusive right to use a PVP seal for material of a specified,
registered variety in combination with its registered denomination.
Such a seal would not relate to the material as such.
iv. The TRIPS Agreement does not specify the period
of duration of the sui generis right. Thus, member states are free in
taking a decision on this important factor.
v. There are different ways to design the interface
of the sui generis system with other IPRs.
vi. There is a package of elements that may be introduced
to balance the privilege conferred to the right holder under the sui
generis system, such as community gene funds, registers to facilitate
benefit-sharing mechanisms and the institute of a public defender. Each
single element must be carefully designed, but the main focus should
be directed at balancing the different interests in the overall package
of elements establishing the sui generis system.
vii. In relation to patents the TRIPS Agreement does
not allow any discrimination as to the place of invention, the field
of technology and whether products are imported or locally produced.
However, this principle is not applicable to the sui generis system
for the protection of plant varieties. Therefore, member states may,
for example, discriminate plant varieties which have not been bred or
propagated domestically.
3. The third option is the protection of plant varieties
by a combination of a sui generis system and patents. While this option
is reflected by the European Patent Convention, it raises the difficult
issue of the relationship between both systems. [8]
4.4 SHAPING SUI GENERIS
SYSTEMS
4.4.1 Aims of IPR protection
in the field of plant breeding
The historical aim of IPR protection for plant varieties
is to provide private breeders with an opportunity to receive a reasonable
return on past investments and thereby to provide an incentive for continued
private investment in plant breeding.
IPR protection aims at facilitating trade and the transfer
of technology. By providing for the protection of plant varieties countries
may attract foreign investment in domestic plant breeding and may thereby
also benefit from an increased transfer of related technology. It is,
however, widely acknowledged that the level of protection may have a positive
impact on the international transfer of technology only if certain preconditions
(such as scientific infrastructure, attractive economic environment and
a skilled work force) are fulfilled. Countries which lack these conditions
will hardly be able to benefit from a high level of IPR protection at
least in the short term. They run the risk that the protection system
instead of attracting foreign investment and technology is being used
only to secure imports.
IPR protection may also improve the possibilities to
import from or export to countries that provide for such protection. It
should be noted, however, that the TRIPS Agreement makes sure that WTO
member states have to accord to the nationals of other member states treatment
no less favourable than they accord to their own nationals with regard
to the protection of plant varieties. A member state may therefore benefit
from high level protection in other countries, even if it does not grant
the same level of protection.
Today, while there is still a debate on the advantages
and disadvantages of IPR, new objectives are on the international agenda.
Apart from the minimum requirements laid down by the TRIPS Agreement,
any sui generis system should also take into account those objectives
of other, in particular the most recent, international treaties and/or
emerging principles of the international community, especially those dealing
with plant genetic resources and traditional resource rights. Soft law
is contained in a wide range of instruments, such as the Rio Declaration,
Agenda 21, the International Undertaking on Plant Genetic Resources, the
UNESCO/WIPO Model Provisions for National Laws on the Protection of Expression
of Folklore, and the Draft Declaration on Indigenous Rights. Relevant
multilateral treaties include the Convention on Biological Diversity and
the ILO Convention 169.
A set of obligations and widely accepted principles emerges
from these instruments that are most relevant in the shaping of a sui
generis system:
* States have the sovereign right over their own natural
resources including their genetic resources.
* Farmers' Rights arising from the past, present and
future contributions of farmers in conserving, improving and making
available plant genetic resources are recognised in order to allow farmers,
their communities, and countries in all regions of the world to participate
fully in the benefits derived at present and in the future, from the
improved use of plant genetic resources, through plant breeding or other
scientific methods.
* Biological diversity including genetic diversity
shall be conserved, enhanced and sustainably used. Patents and other
IPR shall be supportive of and not run counter to this objective.
* Access to genetic resources shall be subject to prior
informed consent. Where granted, access shall be on mutually agreed
terms.
* Benefits arising from the commercial and other utilisation
of genetic resources shall be shared in a fair and equitable way upon
mutually agreed terms, multilaterally or on a bilateral basis.
* The results of research and development arising from
the utilisation of genetic resources, as well as the technology using
such resources, shall be shared in a fair and equitable way on terms
mutually agreed upon. Access to, and transfer of technologies relevant
to the conservation of biological diversity, to the sustainable use
of its components, and to technologies that make use of genetic resources
shall be provided and/or facilitated under fair and most favourable
terms.
* Indigenous and farming communities' knowledge, innovation
and practices related to plants and plant genetic resources shall be
protected and encouraged. Special measures shall be taken to ensure
this, including mechanisms of free and informed consent.
While the question is still open whether WTO member states
may invoke the objectives of the Convention on Biological Diversity in
order to justify any measures which are contrary to the TRIPS Agreement,
member states should certainly try to avoid any such conflicts as far
as possible.
On the basis of the legal requirements laid down in the
TRIPS Agreement, we suggest to consider possible combinations of elements
for the design of protection systems, appropriate for the different economic
and social conditions in developing countries, and the requirements and
consequences from the economic, ecological, legal, technical and administrative
points of view. It is of particular importance, how the new international
principles and obligations may be taken into acount by the sui generis
system for the protection of plant varieties.
4.2.2 Taking into account
the new objectives
Strengthening conservation efforts Intellectual property
rights for the protection of plant varieties are not aimed at the conservation
of agricultural biodiversity nor are they particularly suited for that
purpose. While it is sometimes maintained that IPR have a strong negative
impact on diversity, others argue that plant variety protection may increase
diversity by inciting efforts to create new plant varieties. Due to the
fact that genetic erosion has multiple causes it is extremely difficult
to assess the impact IPR actually have on the maintenance of agricultural
biodiversity. On the other hand, the number of new plant varieties which
actually may correlate with the level of IP protection does not qualify
as a measuring stick for genetic diversity.
The need to describe plant varieties for the purpose
of their protection no doubt implies a tendency towards uniform varieties
with a rather narrow genetic basis. In order to allow for more agricultural
genetic diversity, member states may therefore consider applying the requirements
of uniformity and stability more flexibly or even to replace them by the
requirement of identifiability.
It is widely acknowledged that in order to conserve agricultural
biodiversity, on-farm conservation efforts have to be substantially increased
on a global scale. The planting back of seeds, the local exchange and
selling of farm-saved seeds and adaptive breeding by cultivation are preconditions
of large-scale on-farm conservation. The different IPR protection models
provide for a different scope of protection with the patent model being
the most restrictive.
Depending on the definition of its scope, the concept
of "essential derivation" may support conservation efforts by
requiring larger genetic distances between new varieties. However the
concept of "essential derivation" might in practice require
a high degree of uniformity and stability of varieties.
Supporting the
breeding of heterogeneous varieties
There is wide consensus today that in many situations,
especially in risk prone areas, it is an advantage to have a comparably
high degree of variability in the fields. The requirements of uniformity
and stability as currently applied by UPOV member states do not allow
for the heterogeneity required in such situations. Furthermore, the levels
of uniformity at present required by national authorities and international
guidelines seem to be far higher than justified by the need to identify
a plant variety. This is reflected by the definition of "plant variety"
employed by the UPOV Act of 1991.
To facilitate and create incentives for the breeding
of heterogeneous varieties which are better adapted to the needs of indigenous
and small-scale farmers, it may therefore be recommendable to lower the
required level of uniformity/stability. This is the background of the
proposal to switch from Distinctness, Uniformity and Stability (DUS) to
Distinctness and Identifiability (DI). [9]
On the other hand, it is clear that the broadening of
the acceptable limits of heterogeneity within a plant variety to be protected
inevitably leads to broader property claims. This has to be taken into
account when defining the acts requiring the right holders' authorisation
in relation to the protected variety. The scope of protection has to correspond
with the requirements for protection and the breadth of the claims.
Imposing minimum restrictions on the use of plant varieties
IPR are, by definition, rights to exclude others from certain commercially
interesting acts in relation to the described subject matter and/or to
obtain a remuneration in respect of those acts. However, the unrestricted
planting back and the selling of seeds is an important and common practice
in large parts of the world. The planting back of the protected variety
is allowable without authorisation of the right holder under the 1978
UPOV Act and the PVP seal model.
Under TRIPS-style patent law, the planting back of seed
requires the right holder's authorisation. According to the 1991 UPOV
Act, farm-saved seed may be exempted from the breeder's right only within
reasonable limits and subject to safeguarding the legitimate interest
of the breeder. Some UPOV states give farmers an unconditional right to
save seed from their previous harvest, while others have opted to limit
this right to certain crops and/or to small-scale farmers.
The selling of farm-saved seed requires authorisation
of the right holders under TRIPS style patent law and the UPOV Acts of
1978 and 1991. Only under the PVP seal model the selling of farm-saved
seed is not subject to the authorisation of the right holder.
The opportunity to use plant varieties freely as initial
source of variation for breeding purposes is an essential element of plant
breeding -- by whomever, whenever, wherever. This reality is reflected
in both UPOV Acts. Under the 1978 UPOV Act, protected varieties may freely
be used for breeding purposes. According to the UPOV Act of 1991, protected
varieties may also be used freely but if the new variety that results
is deemed "essentially derived" from the original protected
variety, it may only be marketed if the breeder of the initial variety
gives permission.
There is no such thing as a breeders' exemption in common
patent law and it is clear that the research exemption does not cover
the commercial use of protected subject matter, e.g. in a breeding programme.
The concept of unrestricted use of plant varieties and
the concept of a financial case-by-case sharing of benefits obtained from
the use of genetic resources may conflict with each other. If the use
of plant genetic resources requires authorisation of the country of origin,
it can hardly be expected that plant varieties which are based on such
resources can subsequently be used freely by third parties since this
would discriminate first users.
Preventing unauthorised
access to and appropriation of PGR
It has been suggested that by providing intellectual
property rights for plant genetic resources and plant varieties a country
could prevent the unauthorised access to, appropriation, and/or use of
genetic resources by foreign entities, be they public or private. However,
according to the TRIPS Agreement, member states shall accord to the nationals
of other member states treatment no less favourable than they accord to
their own nationals with regard to the availability, acquisition, scope,
maintenance and enforcement of IPR. Therefore, WTO member states are not
allowed to discriminate nationals of other WTO member states as to the
availability of the sui generis or other IPR. By providing strong IPR
protection, a country with rather low technological and breeding capacity
might therefore face a strong rise of foreign applications while the level
of domestic applications might remain low. From this point of view it
is not conceivable how an IPR system could contribute to curbing "biopiracy".
By making prior informed consent (PIC) of the donors
of genetic resources or associated knowledge a requirement for the granting
of IPR, member states could try to avoid or make more difficult the granting
of sui generis rights in relation to material originating from their own
biodiversity. Still, they would have to apply the PIC requirement to applications
from their own nationals as well, since the modalities of and conditions
under which consent is given have to comply with the principle of national
treatment. [10]
Sharing the benefits
equitably
The sui generis system as required by the TRIPS
Agreement is certainly neither the only nor the most adequate instrument
to fulfill the obligations posed by the Convention on Biological Diversity
(CBD) in relation to access to plant genetic resources. By definition,
such as system cannot cover all plant genetic resources. Nevertheless,
a sui generis system may be used as a trigger for the sharing of benefits
gained from the use of those materials and/or knowledge which were granted
sui generis protection.
The instruments for implementing a benefit-sharing mechanism
as part of a sui generis right include PIC and declaration of origin.
[11] The inclusion of such instruments as additional
protection requirements is, however, incompatible with the UPOV Acts.
If the sui generis system shall be used for
the purpose of financial benefit-sharing it would seem to be comprehensive
to design the coverage of this system as broad as possible, the protection
requirements as soft as possible, and to grant strong exclusive rights
in order to generate maximum monetary returns that could be shared. Such
a system, however, would have tremendous shortcomings since it would allow
all plant genetic resources to be monopolised within a very short time.
Plant breeding would thus come to a standstill and would cease to create
any returns.
There are two extreme scenarios to deal with this problem.
If the protection conferred by the sui generis rights is strong, it is
necessary to set up rather strict requirements for protection in order
to avoid the pitfall of complete monopolisation of PGR. In this case the
returns raised per application could be rather high; however due to the
strict requirements rather few PGR would fall into the scope of the system.
If, on the other hand, the protection is rather weak, softer protection
requirements may be acceptable. In this case the benefits per application
would be rather low; the system would, however, cover quite a broad range
of PGR. It is difficult to predict which of these models would finally
raise more returns.
4.4.3 Balancing the sui
generis system with other IPR
Whatever form of sui generis system member states choose
to establish, the interface of this system with other IPR is of utmost
importance.
The UPOV Act of 1978 leaves each state party to the Act
free to grant protection to new varieties of plants by means of a 'special
title of protection' -- that is, a title specially created for plant varieties
-- or a patent. However, member states whose national laws admit protection
under both these forms may provide only one of them for one and the same
botanical genus or species. This ban on double protection was not included
into the 1991 Act.
The ban on double protection as foreseen in the UPOV
Act of 1978 does not, however, address the issue of overlapping IPR. The
need to regulate the interface of different forms of protection is demonstrated
by the following example. If a patented gene is inserted into a plant
which is protected under a UPOV-style breeders' right, the question arises
whether the plant may be used freely under the breeders' exemption as
an initial source for breeding a new variety, or whether such use would
infringe the patent on the inserted gene. The answer to this question
is actually far from clear. While some argue that the plant should be
freely usable for breeding purposes, others maintain that any use of the
plant would also make use of the patented gene and thus require the patent
holder's authorisation. Between these two positions, one may also argue
that the use of the plant is allowable without the patent holder's authorisation,
as long as the new variety does not contain the gene, or, if it contains
the gene, does not express it. Whatever solution is chosen, it is obvious
that the overlap of patents and weaker forms of protection tends to privilege
the patent holder and complicates the legal situation of the holder of
the weaker right considerably.
Countries establishing a sui generis system
for the protection of plant varieties should therefore consider carefully
the interface between the sui generis rights and other forms
of protection. To this end, it might not be enough just to provide that
plants are unpatentable, but also that parts of plants are excluded from
patentability and that the scope of protection of a gene patent does not
extend to plants into which this gene has been inserted. It should be
ensured that the scope of patents claiming genetic material does not extend
to subject matter which is excluded from patentability.
Footnotes:
[1] See Carlos Correa's paper in this
book.
[2] This chapter is based on Leskien
& Flitner, "Intellectual Property Rights and Plant Genetic Resources:
Options for a Sui Generis System", Issues in Genetic Resources No.
6, IPGRI, Rome 1997.
[3] Quoted in The Times of India, New
Delhi, 12 March 1993.
[4] The 1978 UPOV Act only requires contracting
parties to apply the UPOV Convention to a minimum of five genera when
first acceding to the Convention and then within three years apply it
to at least ten genera or species within six years to at least eighteen,
and within eight years to at least twenty-four genera or species in all
(Art. 4).
[5] Art. 1.2 of the Paris Convention
for the Protection of Industrial Property reads: "The protection
of industrial property has as its object patents,utility models, industrial
designs, trademarks, service marks, trade names, indications of source
or appellations of origin, and the repression of unfair competition."
[6] Although, as mentioned above, this
position is barely compatible with the TRIPS Agreement, it raises the
question of whether not to implement any sui generis system would be a
political option. If for their own interest UPOV members themselves do
not regard the sui generis system as an IPR they might not be interested
in challenging a country on the grounds of a lack of sui generis protection
for plant varieties. However, it should be noted that some UPOV members
do regard the sui generis system as an IPR as do other WTO members. WTO
members should therefore not rely on those members which currently argue
that the sui generis system is not an IPR and, consequently, does not
have to comply with the national treatment principle. Rather, they should
start to develop and implement a TRIPS-compatible sui generis system that
meets their needs. The existence of such a system might be particularly
helpful for the review of Art. 27.3(b) TRIPS in 1999.
[7] See pages 5-18 of Leskien & Flitner,
op.cit.
[8] For problems of the interface between
both systems see below.
[9] See pages 54 and 55 of Leskien &
Flitner, op cit.
[10] This also means that a PIC requirement
designed to refuse only nationals of other member states sui generis rights
for plant varieties which are based on domestic genetic material or related
knowledge, would seem to fall foul of the TRIPS Agreement.
[11] On 16 July 1997 the European Parliament
voted in favour of an amendment of the proposal for a directive on the
legal protection of biotechnological inventions (COM (95) 661) which aims
at the implementation of PIC. The wording of the amendment (76/rev.) reads
as follows: "If the object of an invention consists of biological
material of plant or animal origin or if it uses such material, a patent
on this invention shall be granted only when the patent specification
publishes the geographical place of origin of the material and the application
for the patent provides evidence to the patent authorities that the material
was used in accordance with the legal access and export provisions in
force in the place of origin."
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