Transcript Slide 1

Interface between patent and sui generis systems
of protection of plant varieties
•The 1978 UPOV Act does not allow both systems to be
applied to the same variety. However, the 1991 UPOV Act and
the TRIPS Agreement do.
•Art. 27.3(b) TRIPS states that members may exclude from
patentability plants and essentially biological processes for the
production of plants. However, Members must provide for the
protection of plant varieties either by patents or by an effective
sui generis system or by any combination thereof.
• Despite the fact that member states exclude plant varieties
from the patentable subject matter, in practice plant varieties
remain covered by patent protection (e.g., in Europe).
•Issus resulting from the difference between the scope and
exceptions under the two system.
Issues arising from the granting of protection
Rights conferred by the protection
TRIPS Agreement
(Article 28)
UPOV
(1991 Act – Article 14)
“1. A patent shall confer on its owner the “(1) [Acts in respect of the propagating
material]
following exclusive rights:
(a) where the subject matter of a patent is a (a) Subject to Articles 15 and 16, the following
product, to prevent third parties not having acts in respect of the propagating material of the
protected variety shall require the authorization of
the owner’s consent from the acts of:
the breeder:
offering for sale,
(i) production or reproduction
(multiplication),
(ii) conditioning for the purpose of
propagation,
(iii) offering for sale,
selling, or
(iv) selling or other marketing,
Importing
(v) exporting,
(vi) importing,
(vii) stocking for any of the purposes mentioned
in (i) to (vi), above.”
making,
using,
for these purposes that product;”
Exceptions
•
to the breeder’s right
- acts done privately and for non- commercial purposes
- acts done for experimental purposes and
- acts done for the purpose of breeding other varieties (breeder’s exemption)
•
to the rights conferred by a patent
- Article 30 of the TRIPS Agreement states that: “Members may provide
limited exceptions to the exclusive rights conferred by a patent, provided that
such exceptions do not unreasonably conflict with a normal exploitation of
the patent and do not unreasonably prejudice the legitimate interests of the
patent owner, taking account of the legitimate interests of third parties.”
- Open multilateral treaties in the field of patents do not expressly provide for
research/experimental use exception and the extent to which those limited
exceptions may be permitted (Paris Convention, PLT)
Balancing the reward to the respective rights holders
(essentially derived varieties)
• EDV concept maintains the access for all varieties for
breeding
• EDV does provide a mechanism to ensure a suitable
reward for plant breeders
• Imbalance remains for countries bound by the 1978 Acts
of the UPOV Convention
The ability to exercise the breeder’s exemption in the case
of varieties containing patented inventions
• purpose of the patent is to protect the developer of the
genetic element
• purpose of the plant breeder’s right is to protect the
developer of the unique combination of plant germplasm
forming the variety
• exercise of the breeder’s exemption constrained due to
lack of similar provision in patent system
Concluding remarks
• rapid progress in the development of genetic engineering
• increasing number of plant varieties will contain patented
inventions
• practical consequence: breeder’s exemption could be
lost or greatly weakened
Question
• how the breeder’s exemption could be preserved ?
Article 7 of the TRIPS Agreement: “The protection and enforcement of intellectual property
right should contribute to the promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers and users of technological
knowledge and in a manner conducive to social and economic welfare, and to a balance of rights
and obligations” (emphasis added)
Article 8.2 of the TRIPS Agreement: “Appropriate measures, provided that they are
consistent with the provisions of this Agreement, may be needed to prevent the abuse of
intellectual property rights by right holders or resort to practices which unreasonably restrain trade
or adversely affect the international transfer of technology (emphasis added)
•
Should States be allowed to implement Article 30 TRIPS in a way that it
protects the breeder’s exemption?
* plant-specific exception in the patent law
* clarification of the scope of research/ experimental use
exception under the national patent laws