(()lIl81P Patent Pending

Property Rights Protection In International Agriculture

BY ANWARUL HOQUE AND DAVID SKULLY Protection of plants and animals under TRiPs Article 27.3(b) Intellectual property protection provisions under the WTO threaten to pit developing countries against the developed world. Microorganisms Plant varieties shall Plants and animals are not excluded be provided may be excluded from patenting protection from patenting n the seven years since the Uruguay Round negotiations for the General Agreemem on Tariffs and Trade, stakeholders and observers have devoted much attemion to the agreemem gov­ Patenting Sui generis system Combination of I patent and Sui erning trade in goods. They have paid less attention to the World genens Trade Organization's Trade-Related Aspects ofInteUectual Property Rights Agreement (TRlPs). This agreement establishes a WTO-wide Adopt UPOV Develop own system to create and protect intellectual property rights (IPR), and system· system sets out a schedule for WTO members to use in reconciling their diverse intellectual property protection systems. "implicit in Article 27.3 (b) TRlPs obligates member coumries to pass laws governing intel­ lectual property rights (IPR) that conform to a set of minimum IPR Figure 1 - Intellectual Property Right protection for plants and animals in TRIPs standards. Developed-coumey WTO members were to comply by 1996, developing countries by 2000, and least-developed coun­ tries by 2005. tions and the COStS of tem porary monopolies li es at the core of Because most of its 143 members are developing and leas t­ most· intellectual property dispu tes. CreatOrs and holders of IPRs developed countries, the WTO has ye t to fully implemem the favo r stronger rights - longer duration and higher toyalties - standards. As compli ance deadlines approach, countries confront while the consumers and users tend to favor shorter duration and difficult and controversial issues of concern to agriculture and agri­ lower royalties. cultural trade. T hi s article discusses three IPR issues relevant to Each co un try has its own system for protecting intellectual agri culture: patents for plant varieties, access to and control of property, but effective enforcement stOps at national borders un less genetic resources, and geographical indications of food products. reciprocal enforcement agreements exist. Without reciprocity, an inventOr has no way to control unauthorized use of the invention Intellectual Property and International Law in foreign markets. Instead, the inventor must obtain property Intellectual property includes inventions, literary, and artistic right protection on a country-by-country basis. creations whose "owners" are given exclusive ri ghts through such International treaties to enforce intell ectual property rights legal devices as patents, copyrights, trade secrets, and trademarks. existed prior to the TRlPs. Efforts included the Paris Convention T he grant of exclusive rights for a limited period rewards inven­ for the Protection of Industrial Property (1883), and the Berne tive activity. T he trade-off between the benefits of more inve n- Convention for the Protection of Literary and Artistic Works

Spring 2002 CHOICES 39 (1886). These original conventions have been amended, Advances in biotechnology have made breeding faster, and the number of signatories has grown through the and easier, so UPOV was amended in 1991 in part to addition of developed nations. Strengmen plant breeders' rights. Many developing coun­ TRIPs promises to expand the domain of these con­ tries argue mese protections are too suong, mat UPOV's ventions to global proportions, by requiring all WTO version of breeders' rights is essentially a patenr. member countries to protect, without discrimination UPOV Article 15, "Exceptions ro me Breeder's Right" the IPR of traded goods. The TRIPs provisions most is also a point of contention. Article 15(1) lists manda­ relevam ro agriculture are Article 27 for patents and rory exceptions which are similar ro me "fair use" clause plant variety protection, and Articles 22-24 for geo­ for material copyrighted in the U.S. - copying a pub­ graphical indications. lication for one's personal, non-commercial use does not infringe on me U.S. copyrighr. Sim- Patents and Plant Variety The United States ilarly protected seed may be used for Protection was the first research or non-commercial purposes. The United States was the first coun­ co untry to grant Article 15 (2) is an optional exemption cry to grant intellectual property rights permitting countries ro allow farmers ro ro plant breeders. The Plant Patent Act of intellectual prop­ save protected seed for future planting 1930 allowed patents for new plant vari­ erty ri ghts to "within reasonable limits and subject ro me eties propagated asexually - by graft­ plant breeders. safeguarding of me legitimate interests of ing, for example. Plants that can only the breeder." This vague qualification is propagate sexually require genetic material from a male viewed as shifting me benefit of the doubt from farm­ and female parenr. Thus, seeds - the product of sexu­ ers ro plant breeders. ally propagated plams-were denied patent protection UPOV's perceived advocacy of plam breeders' rights until passage of me Plant Variety Protection Act of 1970. has kept many advocates of farmers' privileges from Under plant variety protection, seed producers who joining. To implement TRIPs many developing coun­ develop new varieties of crops that are distinct, uni­ tries have adopted or proposed non-UPOV sui generis form, and stable are granted Plant Breeders' Rights, an systems, and other countries are devising systems mat alternative ro a patenr. Countries that award mese rights preserve farmers' privileges. formed me International Union for me Protection of New Varieties of Plants (UPOV) in 1961. The United States Genetic Prospecting: Entrepreneurship or joined UPOV in 1981, and me Plant Variety Protec­ Bio-Piracy? tion Act was amended in 1994 ro conform ro UPOV The genetic resources in plants are the raw materi­ Few WTO members are UPOV members, so TRIPs als for developing new plant varieties, either through requires the creation of new laws and new institutions crossbreeding or by biotechnological memods. The pro­ ro make me system effective. WTO members must pro­ genitors of most new varieties come from where the vide some form of plant variety protection, either by crop was first domesticated, as well as in isolated niches patents or, if this is objectionable, by a sui generis (of where plants have adapted. The original habi tat of wheat its own kind) system, or by bom. and barley is Turkey, that of maize is in Mexico, and Developing a sui generis plant variety protection sys­ that of potaroes, the Andes. Plant breeders search these tem requires expertise, time, and funds, and carries the regions for specimens that contain potemially useful risk of not being accepted by other nations. As a result, genetic characteristics. UPOV has devised a "Model Law on Plant Variety Pro­ This "bio-prospecting" is a productive activity, but tection" that fulfi lls TRIPs requirements. Many coun­ problems arise when there is a valuable discovery. Who tries, however, have been reluctant to join UPOV owns the discovery? The bio-prospector? Local inhabi­ because of its emphasis on breeders' rights (see deci­ tants who may have cultivated me variety for generations? sion tree in Figure 1). Is there some equitable division among the claimants?

40 CHOICES Spring 2002 Tnis is an exceptionally contentious iss ue. For exam­ Genetic resources ple, tne twigs of the neem, (Azadirachta indicaa) a tree grown in India, are used to clean teeth, its leaves kill fungi, and oil from its seeds repels insects. These uses are regarded as "traditional knowledge" in India, but several No compensation for access to genetic resources and Traditional knowledge non-Indian firms own patenrs for substances derived from neem. Several are pesticides, and one is a toompaste "South" "North" Genetic ...4!------... Research & ingredient. Whatever the merits of tne argumenr, the Resources patents and TRlPs have led to mass demonstrations in India and to international legal disputes. $ The following quotation from an Indian submission to WTO's TRlPs Committee illustrates the "traditi·onal knowledge" view of me controversy: "Traditional knowl­ edge (TK) associated with biological resources is an intangible component of me resource itself. .. the ben­ 'Private' Seeds, phannaceuticals, pesti ~ides, etc. efits accruing from co mmercial use ofTK have to be Figure 2 - How critics of TRIPs view the issues: "Bio-Piracy" shared with me people responsible for creating, refining and using mis knowledge. Article 8(j) [of the Conven­ tion on Biological Diversity] provides for respecting, for germ plasm in me "global commons." These common protecting and rewarding me Knowledge, Innovations genetic reso urces are privatized through research and and Practices (KIP) oflocal communities." development. The seeds of new varieties are protected by Article 27 ofTRlPs appears to favor bio-prospectors intellectual property rights and are sold for profit in both because it promotes intellectual property rights. In this Norm and Soum. Critics label mis process "bio-piracy." view, genetic resources exist in nature and researchers (bio­ A coalition of seed industry players has proposed prospectors) develop "wild" or "native" germ plasm into conrributing royalties from seed sales to a Multilateral commercially viable varieties. Thus, a firm in one coun­ Fund for redistributing benefits to donor nations vi a try can claim excl usive rights to the use of a gene directed research. The seed industry, and me scientific extracted from ge rm plasm found in another counrry. community in ge neral, hopes to preserve open access The 1992 Convention on Biological Diversity (CBD) to genetic material for research purposes. provides an alternative view. It proclaims planr Actions under the auspices of the U.N. Food and germplasm to be the "common heritage of mankind," Agriculture Organization may help resolve mis conflict. but grants national governmenrs rights analogous to The Doha Declaration instructed me Council for TRlPs mineral rights for genetic resources found within their to examine the relationship between TRIPs and the borders. Moreover, it recommends mat "donor" coun­ Convenrion on Biological Diversity, the protection of tries be compensated wim a share of me research and pro­ traditional knowledge and folklore, and orner relevant ceeds from commercial exploitation in return for allow­ developmenrs in this area. ing access to tneir genetic resources. By focusing on compensation, the Council on Bio­ Geoghraphic Indications: What Makes a logical Diversity implicitly recognizes me incentive mat Vidalia a Vidalia? IPR protection provides for research and development. The physical source of an agricultural product can W ithout me value added by research, there wo uld be no impart distinct and val uable characteristics, often attrib­ funds to distribute. uted to soil, climate, or methods of cultivation. TRlPs Figure 2 illustrates how some critics of TRlPs per­ recognizes geographical indications that identify prod­ ceive the conflict. The Soum - developing countries ucts having "a given quality, reputation, or orner char­ - is me origin of most of the world's genetic resources. acteristics ... essentially attributable to its geographi­ The North - industrialized countries - bio-prospects cal origin." The United States does not use geographic

Spring 2002 CHOICES 41 indications. Instead, it provides intellectual property conjunction with the WTO's Agreement on Agricul­ rights through its Trademark Act. ture. These unsettled issues are expected to come up for For example, the term "Vidalia" is a registered trade­ further discussion in the Fifth Ministerial meeting of mark held by the Georgia Deparrment of Agriculrure. WTO in 2003. It is used to identify yellow Granex-type onions pro­ duced by authorized growers, in a 20-county area of For More Information southeastern Georgia. Berkey, J.O. "Implications of the WTO Protections Geographical indications are widely employed for for Food Geographic Indications." American Society wine and spirits. For example, the "appellation of ori­ ofInternational Law. Washington, DC (2000). gin" Champagne is reserved for sparkling wines from the Champagne region of France. Countries claiming an juma, Calestous. "Intellectual Property Rights and exclusive geographical indication are obliged to prevent Globalization: Implications for Developing its fraudulent use. There are several limitations: TRIPs Countries." http://www.cid.harvard.edu/cidtech/ does not protect geographic indications that have become home.htm (2000). generic terms - sherry need not come from the Jerez region of Spain; if a geographic indication is not protected Lesser, W. "An economic approach to identifying in its country of origin it cannot be protected elsewhere. an 'effective sui generis system' for plant variety TRIPs provides stronger protections for wines and protection under TRIPS." Agribusiness 16 (1) (2000): spirits than for other products: for wines and spirits one 96-114. may not circumvent geographic indications by modi­ fiers such as "kind," "type," "style," "imitation," or "like." Maskus, Keith E. IntellectuaL Property Rights in the An international registry for geographical indications is GLobaL Economy. The International Insti tute of Eco­ proposed to make these claims transparent. The Doha Dec­ nomics. Washington, D.C. (2000). laration asked the Council for TRIPs to address these issues before the next Ministerial Conference. There WIPO. "Intellectual Property and Genetic Resources: appears to be convergence between "trademarks" and An Overview." World Intellectual Property Organiza­ "geographical indications," but controversy remains con­ tion, Geneva (2000). cerning the scope of products that can be protected, the breadth of claims, and determination of priority. WTO. "Agreement on Trade-Related Aspects ofIntel­ lectual Property Rights." http://www.wto.org/ The Future: Solution on the Horizon? english/tratop_e/trips_e/cagmO_e.htm (2000). There are several points of view on how to settle these issues. One group of countries wishes to discuss WTO. Doha MinisteriaL DecLaration (November these issues during the TRIPs Agreement review process, 20,2001). which has been taking place since 1999. Some coun­ tries would likely be satisfied with changes in the lan­ AnwaruL Hoque is South Asia analyst guage of the cerrain Articles; others want a full review for the Economic Research Service ofthe of the total Agreement - an action resisted by a group US. Department ofAgricuLture. David of countries, including the U.S. SkuLLy is an agricuLturaL economist with Some members want to postpone the scheduled the Market and Trade Economics Divi­ TRIPs review until the implementation process runs its sion ofthe Economic Research Service of full course. It is only then that the real pros and cons of USDA. The opinions expressed in this the Agreement can come to the surface. Others think that article are those ofthe authors and not the only way these issues can be properly tackled is if the those ofERS or USDA. agriculture-related Articles of TRIPs are discussed in

42 CHOICES Spring 2002