Industrial Properly

Monthly Review of the United International Bureaux for the Protection of Intellectual Property (BIRPI) Geneva

4th Year No. 12 December 1965

Contents

INTERNATIONAL UNIONS Paris Union. Adhesion. Republic of Cyprus 270

LEGISLATION Italy. Decrees concerning the Temporary Protection of Industrial Property Rights at Two Exhibitions (of September 25 and October 5, 1965) 270 Union of Soviet Socialist Republics. I. Law Concerning Industrial Designs Ap- proved in Accordance with Order No. 535 of the Council of Ministers of the USSR, of July, 1965, by the State Committee for Coordination of Science and Research of the USSR (Order No. 232, of August 5, 1965) and by the State Committee for Inventions and Discoveries of the USSR (Order No. 49, of August 3, 1965) 270 II. Instructions Concerning Formulation of Applications for Industrial Designs Approved by Order No. 49 of the State Committee for Inventions and Discov- eries of the USSR, of August 3, 1965 273

NEW PLANT VARIETIES International Convention for the Protection of New Varieties of Plants. Ratifi- cation. United Kingdom of Great Britain and Northern Ireland 275 International Convention for the Protection of New Varieties of Plants and Some Comments on Plant Breeders' Rights Legislation in the United Kingdom (Leslie J. Smith) 275

GENERAL STUDIES 175111 Anniversary of the U. S. Patent System 286

BOOK REVIEWS International Trademark Protection (Eric D. Offner) 288 Talâlmânyok, Szabadalmak (Istvân Gazda, Dezsb" Kb'vesdi and Dr. Sândor Vida) . 288 Upphovsrättsligt skydd for Brukskonst (Seve Ljungman) 288 Le nouveau régime des marques (Paul Mathély) 289 Das Recht des unlauteren Wettbewerbs in den Mitgliedstaaten der Europäischen Wirtschaftsgemeinschaft (Eugen Ulmer) 289

NEWS ITEMS Appointment of Director of Industrial Property, Chambers of Commerce and Industry and Handicrafts (France) 289 Appointment of new Director of the National Institute of Industrial Property (France) 289 Appointment of Director General of the International Patent Institute (The Hague) 289

CALENDAR Calendar of BIRPI Meetings 290 Meetings of Other International Organizations concerned with Intellectual Property 290

NOTE: The General Statistics of Industrial Property for the Year 1964 will be published in the form of a separate inset which will be added to one of the next issues of Industrial Property 270 INDUSTRIAL PROPERTY — DECEMBER 1965

XVIII" Mercato internazionale del tessile per Vabbigliamento (Milan, October 27-30, 1965); INTERNATIONAL UNIONS II" Mostra internazionale delle attrezzature alberghiere e turi- stiche (Genoa, November 25 to December 5, 1965) shall enjoy the temporary protection provided by Laws Paris Union No. 1127 of June 29, 1939 >), No. 1411 of August 25, 19402), 3 4 Adhesion No. 929 of June 21, 1942 ), and No. 514 of July 1, 1959 ).

REPUBLIC OF CYPRUS i) See Prop, ind., 1939, . 124; 1940, p. 84. 2) Ibid., 1940, p. 196. According to a communication received from the Federal 3) Ibid., 1942, p. 168. Political Department, the following note was addressed by *) Ibid., 1960, p. 23. the Embassies of the Swiss Confederation in the countries of the Paris Union to the Ministries of Foreign Affairs of those countries: . . . ( 1 ranslation) UNION OF SOVIET SOCIALIST REPUBLICS " In compliance with the instructions of the Federal Poli- I (Translation) tical Department, dated December 17, 1965, the Swiss Em- bassy has the honour to inform the Ministry of Foreign Affairs Law Concerning Industrial Designs that the Government of the Republic of Cyprus informed the Approved in accordance with Order No. 535 of the Council Government of the Swiss Confederation of the adhesion of of Ministers of the USSR, of July 9, 1965, by the State Com- that State to the Paris Convention for the Protection of In- mittee for the Coordination of Science and Research of the dustrial Property of March 20, 1883, as revised at Lisbon on USSR (Order No. 232, of August 5, 1965) and by the State October 31, 1958. Committee for Inventions and Discoveries of the USSR (Order " This communication is made in application of Article No. 49, of August 3, 1965) 16 (2) of the above-mentioned Convention. In conformity with paragraph (3) of this article, the adhesion of Cyprus will take 1. — By "industrial design"1) [industrial design2), mod- effect on January 17, 1966. el3)] is understood a new artistic conception of an article, " With regard to its contribution to the expenses of the suitable for production by industrial means, in which a unity International Bureau of the Union, this State is placed, at its of technical and aesthetic qualities is achieved. request, in the Sixth Class for the purposes of Article 13 (8) Industrial designs of industrial articles, other than haber- and (9) of the Paris Convention as revised at Lisbon. " dashery, sewn and knitted goods, fabrics (with the exception of decorative fabrics), footwear, and headwear, are subject to State registration and legal protection. This adhesion will bring the Membership of the Union to 74 countries '). 2. — The author of an industrial design may, at his dis- cretion, request either mere recognition of his authorship, or i) See Industrial Property, 1965, p. 239 (Algeria). recognition of his authorship and also of his exclusive right in the industrial design. In the first case, a certificate of authorship shall be issued for the industrial design; in the second case, a patent. The forms of certificates and patents shall be approved by the State Committee for Inventions and Discoveries of LEGISLATION the USSR4). If the industrial design is created in connection with the author's work in, or upon the instructions of, a State, co- ITALY operative or public enterprise (organization) in the USSR, Decrees or if the author of the design has been granted pecuniary or other material assistance by a State, cooperative or public concerning the Temporary Protection of Industrial Property enterprise (organization), a patent may not be issued in res- Rights at Two Exhibitions pect of such design, but rather a certificate. (Of September 25 and October 5, 1965) ') 3. — No certificate or patent in respect of an industrial Single Article design may be issued if an identical or similar design: Industrial inventions, utility models, designs or models ') IIpoMbimjieHHBiH o6pa3erj. and trademarks relating to objects appearing at the following 2) IIpOMblinjieHHblH pncyHOK. exhibitions: 3) MoaeJib. 4) rocyaapcTBeHHMfi KOMHTeT no flejiaM H3o6peTeHHÖ 1) Official communication from the Italian Administration. H OTKpfalTHH CCCP. LEGISLATION 271

(a) has been filed or registered in the USSR as an industrial cating the surname, first name, and patronymic, of the author design; (authors), the date of receipt of the application, the designa- (b) has been described in the public press in the USSR, or tion of the industrial design, and the title of the enterprise is known, at the time of filing the application, from (organization), if application has been made in the name of foreign publications available in the USSR, except in an enterprise (organization). cases where publication took place during the six months The date of priority of an industrial design shall be estab- preceding the date of filing the application; lished as the date of receipt of the application for issue of (c) has been openly used or displayed at exhibitions on the a certificate or patent by the State Committee for Inventions territory of the USSR prior to filing of the application, and Discoveries of the USSR, and, in the event of dispute, as unless such use or display occurred during the six months the date of mailing the application, or the date of filing the preceding the date of application. application with the enterprise (organization). No certificate or patent shall be issued in respect of an 7. — Examination of applications for the issue of certi- industrial design conflicting with the requirements of So- ficates or patents for industrial designs received by the State cialist morality. Committee for Inventions and Discoveries of the USSR shall 4. — A certificate or patent in respect of an industrial be made by the Ail-Union Scientific Research Institute for design shall be issued on the basis of an application drawn Technical Aesthetics of the State Committee for the Coor- 1 up in due form and filed with the State Committee for Inven- dination of Science and Research of the USSR ). tions and Discoveries of the USSR. Where necessary, and if requested by the All-Union Scien- The procedure for formulation and filing of applications tific Research Institute for Technical Aesthetics, State, co- for the issue of a certificate or a patent for an industrial operative and public enterprises (organizations) shall, within design shall be established by the State Committee for Inven- one month, present, free of charge, their findings with regard tions and Discoveries of the USSR. to the suitability for production by industrial means of designs submitted to them for consideration. 5. — Authors of industrial designs working in enterprises The Ail-Union Scientific Research Institute for Technical and in scientific research and other organizations in the USSR Aesthetics shall, within four months of receipt of an applica- shall normally file applications for the issue of certificates tion concerning an industrial design, inform the State Com- for designs through the intermediary of the enterprise (or- mittee for Inventions and Discoveries of the USSR of its ganization) in which they work. Enterprises (organizations) findings with regard to the novelty, aesthetic qualities,- and must assist authors in formulating such applications. suitability for production by industrial means, of the design. The enterprise (organization) shall, within one month, 8. — The State Committee for Inventions and Discoveries transmit the application for issue of a certificate to the State of the USSR may, whenever necessary, invite the author of Committee for Inventions and Discoveries of the USSR, the industrial design to participate in the examination of his together with its findings concerning the suitability of the application for the issue of a certificate. In such cases, the design for production by industrial means. author shall remain entitled to the average wage received at In cases where the work is carried out under a task assign- his place of work and shall be granted official leave of ab- ment, the director of the enterprise (organization) shall be sence by the enterprise (organization) in which he works, in obliged to formulate the application for issue of a certificate, accordance with established procedure. on behalf of the enterprise (organization), indicating the name of the author of the design. 9. — After examining the expert findings and other ma- Authors of industrial designs not working in an enterprise terials relating to the application, the State Committee for (organization) shall normally file their applications for issue Inventions and Discoveries of the USSR shall decide whether of a certificate through the All-Union Society of Authors of or not to issue a certificate or a patent for the industrial Inventions and Rationalization Proposals1), which shall give design. The State Committee for Inventions and Discoveries the authors all the necessary assistance concerning formula- of the USSR shall record industrial designs for which a certi- tion of their applications and send all the relevant materials ficate or patent has been issued in the State Register of In- within one month to the State Committee for Inventions and dustrial Designs of the USSR, shall publish a notice to that Discoveries of the USSR. effect in the Bulletin of Inventions, Trademarks and Indus- Authors of industrial designs or their heirs may also file trial Designs2), and shall issue the certificate or patent to their applications direct with the State Committee for Inven- the applicant. tions and Discoveries of the USSR. 10. — The State Committee for Inventions and Discov- 6. — The State Committee for Inventions and Discoveries eries of the USSR shall inform authors of its decision to issue of the USSR shall, within ten days, inform the applicant of its or refuse a certificate or patent for an industrial design within acceptance for examination of the application for a certificate ') BcecoK)3Hbiö Hay^iHO-HccjieflOBaTejibCKHH HHCTHTYT or patent, and shall issue an attestation to that effect, indi- TexHHqecKoft acTeTHKH Tocv/iapcTBeHHoro KOMHTeTa no KOopÄHHanBH Haymo-HCCJieflOBaxeJibCKHx paôoT CCCP. 2 ') BcecoK>3Hoe oÔmecTBo H3o6peTaTejiefi H paimoHajm3aTopoB ) BiojiJieTeH H3o6peTeHHH, TOBapm>ix 3H~aicoB H npoMbiuiJieHHbix (BOHP). oöpa3uoB. 272 INDUSTRIAL PROPERTY DECEMBER 1965 six months from the date of acceptance of the application designs shall be used through the intermediary of State enter- for examination. prises and organizations. Cooperative and public enterprises and organizations shall 11. — A patent for an industrial design shall be issued use industrial designs coming within their field of activities for a period of five years from the date of receipt of an on equal terms with State enterprises and organizations. application drawn up in due form by the State Committee for Inventions and Discoveries of the USSR; the author's Enterprises and organizations using industrial designs for rights shall be protected from that date. which certificates have been issued shall inform the author and the State Committee for Inventions and Discoveries of The validity of the patent may be extended only for the the USSR accordingly. succeeding five-year period. 18. — An industrial design for which a patent has been 12. — No fee shall be payable to the State for filing an issued may not be used without the authorization of the application for a certificate in respect of an industrial design. owner of that patent. Where the issue of patents is concerned, and also in the The owner of a patent is entitled either to issue an case of patents already issued for industrial designs, State authorization (a license) to use an industrial design or to fees shall be charged in accordance with the rates and time- assign the patent outright. The issue of a license or the total limits established for patents in respect of inventions. A fee assignment of a patent shall be registered with the State of 10 roubles shall be payable for extension of the period of Committee for Inventions and Discoveries of the USSR. In validity of a patent. Failure to pay the fee for a patent al- such cases, a fee is payable in accordance with the rate estab- ready issued within the appointed time shall render the patent lished for the issue of a license or the assignment of a patent invalid. in respect of an invention. 13. — If the applicant does not agree with the grounds Authors of industrial designs for which patents have been for refusal to issue a certificate or patent in respect of an issued shall receive remuneration from the enterprise (or- industrial design, he may, within one month from the date of ganization) in accordance with licensing agreements. receipt of the decision, lodge with the State Committee for Where the industrial design is of especial importance to Inventions and Discoveries of the USSR an objection ') the State and no agreement is reached between the ministry, with the grounds therefor, which must be examined within central office, economic council, or executive committee of two months. The decision taken in this matter by the Chair- the soviet of workers' deputies, and the owner of the patent, man of the State Committee for Inventions and Discoveries concerning the assignment of the patent or the issue of a of the USSR or his Deputy shall be final. license, the body concerned shall request the Council of Ministers of the USSR to authorize use of the design and to 14. — State, cooperative and public enterprises, organiza- fix the amount of remuneration due to the owner of the tions, and institutions, as well as private persons, may, within patent, or to order compulsory purchase of the patent. one year from the date of publication of the issue of the certificate, contest the validity of such issue by proving that 19. — Authors of industrial designs for which certificates the industrial design is not new or that another person is the have been issued shall be entitled to remuneration if the true author thereof. industrial design is introduced in industry or if it is marketed A patent for an industrial design may, at any time during abroad. Remuneration to authors of industrial designs shall its validity, be contested and annulled if it is proved that its be payable by the enterprises or organizations introducing issue violated the provisions of this Law. the designs, in accordance with the Instructions concerning In examining objections to a refusal to issue a patent or remuneration for industrial designs. Remuneration in respect a certificate, as well as disputes concerning the novelty of an of the introduction of designs shall not exceed 5,000 roubles industrial design, the State Committee for Inventions and for a single design and 2,000 roubles for a single person. Discoveries of the USSR may, if necessary, call for further expert advice. 20. — In the event of the sale abroad of licenses concern- ing industrial designs for which certificates have been issued, 15. — Disputes with regard to the novelty of industrial the State Committee for Inventions and Discoveries of the designs for which a certificate or a patent has been issued USSR shall pay the authors of such designs remuneration in shall be decided by the State Committee for Inventions and Soviet currency equivalent to up to 3 %> of the sums obtained Discoveries of the USSR. from the sale of such licenses. The total remuneration payable to the author (authors), including the amount payable for 16. — Disputes with regard to the authorship of indus- introduction of the design in the USSR, shall not exceed trial designs shall be decided by the courts, in accordance 10,000 roubles. with the procedure established by law. The Ministry of Foreign Trade shall credit the State 17. — The right to use industrial designs for which a Committee for Inventions and Discoveries of the USSR with certificate has been issued shall belong to the State. Such the corresponding sums from the proceeds of the sale of licenses for industrial designs, with a view to payment of ') Bo3pajKeHHe. the remuneration in Soviet currency. LEGISLATION 273

21. — Complaints by authors with regard to the amount, plication is filed in the USSR within a period of six months method of calculation, and dates of payment, of remunera- after that date. tion for the use of industrial designs shall be examined by Any person who wishes to claim the priority established the management of the enterprise (organization) in conjunc- in accordance with the International Convention shall im- tion with the factory, works, or local trade union committee. mediately, upon filing the application, make a statement to An author who disagrees with the decision of the management that effect, and shall indicate the date of priority and the of the enterprise (organization) and the factory, works, or country in which the industrial design was first filed. A duly local trade union committee, with regard to his complaint, certified copy of the foreign application and all other ma- may appeal to the director of the higher level organization, terials necessary for establishing the date of priority may be who shall examine the complaint within one month. If the furnished later, but not more than three months after the author considers the decision of the director of the higher date of filing of the application in the USSR. level organization to be incorrect, he may refer the matter If, after a decision has been made concerning the issue of to court, in accordance with the procedure established by law. a certificate or patent for an industrial design, an application is filed for the same design by a national of a foreign country 22. — The author of an industrial design for which a cer- or a foreign legal entity, enjoying an earlier priority in accord- tificate has been issued shall enjoy the following privileges: ance with the International Convention, the State Committee (a) if the author is seconded for temporary work to another for Inventions and Discoveries of the USSR shall cancel or enterprise (organization) in connection with the intro- amend its previous decision concerning the issue of a certi- duction of his design, his period of service in his normal ficate or patent, and shall notify accordingly the person on place of work shall be considered as uninterrupted. The the basis of whose application the decision has been taken. duration of such temporary work shall be included in 25. — The priority of industrial designs displayed in in- the period of service in his enterprise qualifying for the ternational exhibitions organized in the USSR shall be de- leave, privileges, and advantages, provided at his normal termined by the date on which the exhibit is put on display place of work. If this temporary work lasts for eleven at the exhibition, provided that the application is filed not months or more, paid leave shall be granted by the more than six months after that date. enterprise (organization) in which the design is intro- duced; 26. — The use of an industrial design on means of trans- (b) a note of all industrial designs introduced and of re- port temporarily in the territory of the USSR shall not be muneration paid for such designs shall be entered in the regarded as an infringement of the right vested in the State author's service record; by virtue of the certificate issued in respect of such design, (c) remuneration for industrial designs not exceeding 1,000 or of the right of the owner of the patent. roubles shall be exempt from income tax. In cases where 27. — State committees, ministries, and central offices, the remuneration exceeds 1,000 roubles, tax shall be shall regularly submit to the State Committee for Inventions assessed upon the entire amount of remuneration, after and Discoveries of the USSR proposals concerning the regis- deduction of 1,000 roubles, separately for each design; tration abroad of industrial designs and the sale of licenses (d) authors of industrial designs who have provided the for such designs. State with proposals of outstanding value shall be entitled Foreign registration of industrial designs created within to additional living space, on equal terms with scientific the USSR or by Soviet citizens abroad shall be effected by workers. decision of the State Committee for Inventions and Discov- eries of the USSR. 23. — Nationals of foreign countries who are the authors Decisions concerning the sale or purchase of licenses for of industrial designs, or their successors at law, as well as industrial designs shall be taken by the State Committee for foreign legal entities, shall, subject to reciprocity, enjoy the Coordination of Science and Research of the USSR in accord- rights provided under this Law on equal terms with citizens ance with the procedure laid down for the sale and purchase and legal entities of the USSR. of licenses for inventions. The issue of patents or certificates for industrial designs, in respect of nationals of foreign countries and foreign legal entities, shall be effected through the Ail-Union Chamber of II Commerce 1). Instructions 24. — In the case of nationals of foreign countries and Concerning Formulation of Applications for Industrial Designs foreign legal entities, the priority of an industrial design, in Approved by Order No. 49 of the State Committee conformity with the International Convention to which the for Inventions and Discoveries of the USSR, USSR is a party, shall be established as the date of priority of August 3, 1965 of the first lawfully valid application filed in a country which is also a party to the said Convention, provided that the ap- General Provisions 1. — By " industrial design " (industrial design, model) ') Bcecoi03HaH ToproBan najiaTa. is understood a new artistic conception of an article, suitable 274 INDUSTRIAL PROPERTY — DECEMBER 1965 for production by industrial means, in which a unity of tech- be appended. If the foreign applicant claims priority in ac- nical and aesthetic qualities is achieved. cordance with the International Convention, the application must be accompanied by a copy of the original application, 2. — To permit proper evaluation of an industrial design duly certified by the competent body of the country in which on the basis of the materials in the application and to enable that application was filed. it to be used industrially, the external form of the article must be so displayed and described in the application that Description of the Industrial Design State organizations and enterprises can produce it industrially. 10. — The description of the industrial design shall de- 3. — A separate application shall be filed in respect of fine the characteristic features of the external appearance of each industrial design, and shall consist of a declaration (in the article, and shall include variants executed in color if accordance with the form appended hereto) *, two copies of color is a characteristic feature of the design. a description, four copies of a photograph of the design, and The description must clearly state the distinguishing fea- four copies of a technical drawing (in the case of simple tures of the form (design) given to the article as compared articles) or of a basic scheme of the components of the con- with other articles already known or described, as well as ception of the design (in the case of complex articles). the best method of adopting it for industrial use.

4. — Applications in respect of industrial designs shall 11. — The description shall comprise the following essen- be filed either in the name of the enterprise (organization) tial items: where the designs were created or in the name of the indi- (a) the designation of the industrial design; vidual authors or group of authors who created the designs (b) an introduction; outside their normal task assignments but file their applica- (c) a detailed description of the characteristic features of tions through the enterprise (organization), or through the the design. organs of the VOIR*) [All-Union Society of Authors of In- The designation of the industrial design shall be precise, ventions and Rationalization Proposals], or independently. brief, and specific; it may not be conventional or abstract in 5. — If the applicant considers that the industrial design character. The introduction shall mention the best method of could usefully be registered abroad, a recommendation to that adopting the article for industrial use. effect, indicating the countries where it is presumed that the The detailed description shall state all the characteristic design may be of interest, must be appended to the applica- features of the design, both new features and known features tion. The recommendation shall also state whether it is desir- used in conjunction with new features, what new ideas were able to sell licenses for the said design and to protect it at used in creating the industrial design, and how the charac- international exhibitions. teristics relating to form are combined with the engineering and technical nature of the article and the technological 6. — Applications in respect of industrial designs shall aspects of its production. be filed and examined separately from applications in respect The detailed description shall be independent of the photo- of inventions, even if the constructional conception of the graphs, technical drawings, or schemes submitted. article has been recognized as an invention. 12. — The designation of individual details of form shall Declaration comply with standard terminology in the artistic and con- 7. — The declaration must state the author's surname structional fields, and the description shall also use the ter- and the title and address of the enterprise (organization) in minology generally accepted in these fields. whose name the design is to be registered. Units of measurement shall be given in accordance with If the application is filed in the name of or through the the State All-Union Standards (GOST). It is preferable for intermediary of the enterprise (organization), the declaration the designations laid down by the international system of shall be signed by the author of the design and by the direc- units to be used (State All-Union Standards 9867-61). It shall tor of the enterprise, whose signature shall be certified by not be permissible to use in the description any form of ab- means of an official stamp. breviation other than those generally accepted: "i. e.", "etc.", " et al. ", " and the like ". 8. — A declaration filed in the name of or through the The description shall be typewritten on one side only of intermediary of the enterprise must be accompanied by the a sheet of smooth white paper measuring 21 X 29 cm. A space findings concerning the suitability of the design for produc- of 0.5 to 0.7 cm. shall be left between lines. A margin of 4 tion by industrial means. to 6 cm. shall be left on the left-hand side. The pages of the description must be numbered from first to last inclusive. 9. — In the case of applications for patents filed by a The description shall not contain any corrections or alter- foreign national or legal entity, one copy of a duly legalized ations. power of attorney to conduct the relevant proceedings shall Photographs, Technical Drawings, and Schemes * Omitted. (Ed.) 13. — All the characteristics of the industrial design shall ') BOHP (BcecoK>3Hoe o6m,ecTBO H3o6peTaTejieÄ H panHOHajiHsaTopoB). be clearly shown on the attached photographs, technical draw- SEW PLANT VARIETIES 275

ings (for simple articles), or basic schemes of the components of the conception of the design (for complex articles). 14. — The photographs shall be clear and distinct and NEW PLANT VARIETIES shall measure 18 X 24 cm. As many different photographs of the various views of the design shall be submitted as are necessary to show clearly its distinguishing features, but not International Convention less than four copies of each view. One photograph shall show a general view of the design. for the Protection of New Varieties of Plants Where necessary, the design may be presented in the form Ratification of a colored photograph, but at the time of registration pub- lication shall be in black and white, with an indication of UNITED KINGDOM OF GREAT BRITAIN the color combinations. AND NORTHERN IRELAND

15. — The first copy of the technical drawing or basic The Government of the United Kingdom of Great Britain scheme of the components of the conception of the design and Northern Ireland has ratified the International Conven- shall be made in Indian ink or black ink on smooth white tion for the Protection of New Varieties of Plants, signed in paper of good quality. Paris on December 2, 1961 1). The instrument of ratification The other copies may be presented in the form of photo- was deposited with the French Government and the United copies or tracings. Kingdom ratification has effect from September 17, 1965. The size of the sheets of paper shall not exceed 18 X 24 It will be noted that the United Kingdom of Great Britain cm. Figures shall be presented in such a way that they can and Northern Ireland is the first country to ratify this Con- be read when the sheets are held vertically. vention, which will come into force, in respect of those States 16. — In the case of the filing of an application concern- which have ratified it, thirty days after the deposit of the ing decorative materials, a pattern of the design (motif) third instrument of ratification [Article 31 (3)]. executed in the materials concerned shall be appended (on !) See Industrial Property, 1962, pp. 6 et seq. the same scale as the design).

17. — Models and samples of the article may be required in order to permit examination of the design. In such cases, each model and sample of the article must be supplied with International Convention a wooden label indicating the application to which it refers. for the Protection of New Varieties of Plants Models and samples of the article shall not be returned and Some Comments on Plant Breeders'' Rights Legislation to the applicant and shall not be kept, except in the case of in the United Kingdom models and samples in respect of which certificates have been issued. Such models and samples shall be kept for a period of By Mr. Leslie J. SMITH one year in the appropriate exhibition hall of the VNIITE 1) Controller of the U. K. Plant Variety Rights Office and Head, Seeds Division, U. K. Ministry of Agriculture, Fisheries and Food, London [Ail-Union Scientific Research Institute for Technical Aesthe- tics] . A new, specialist Convention 18. — Photographs, technical drawings, and schemes of 1. In its origin, and to some extent in its form and con- industrial designs, shall be submitted unfolded and shall be tent, the International Convention for the Protection of New so packed for dispatch as to avoid any possibility of damage. Varieties of Plants owes much to the ideas which inspired the Industrial Property Convention. Yet it is, quite strikingly, 19. — Additional materials altering the substance of an a specialist Convention catering in its own characteristic earlier application shall be considered as forming a separate fashion for a distinct sector of original, creative activity. In application. a recent article ') Mr. Laclavière has given a most interesting account of the genesis of the Plant Convention: the present ') BHHHT3 (BcecoK)3Hbift HayHHO-HccjieAosaTejibCKHH HHCTHTVT TeXHHHeCKOH 3CTeTHKH). article is more concerned with the practical working of the Convention and draws attention to some of the problems which will arise. 2. The Convention is a complex, detailed agreement be- tween (so far) eight signatory States2) in a part of the intel- lectual property field where no agreement had previously existed or been seriously attempted. The Convention is not yet in force and its provisions have not, therefore, been tested

i) See Industrial Property, 1965, p. 224. 2) These are: Belgium, Denmark, France, German Federal Republic, Holland, Italy, Switzerland and the United Kingdom. 276 INDUSTRIAL PROPERTY — DECEMBER 1965 by experience. Where national systems of plant breeders' rights (the minimum required by the Convention), promptly set in already exist, modifications will usually be required to comply train arrangements for the necessary instrument of ratifica- with the Convention. Moreover, although the Convention tion to the prepared and forwarded to the depository power. deals only with matters of protection and is quite self-con- 5. The early completion of all the necessary stages in the tained, the significance of some of its Articles is best appre- elaboration of a completely new legal system of proprietary ciated against the background of the controls, often very rights in the United Kingdom, together with the assumption extensive, exercised by signatory States over the production of international obligations under the Convention, indicate and commercialisation of plant material. In the following the importance attached by the United Kingdom to the en- analysis of certain Articles of the Convention, references to couragement of plant breeding as a means of improving agri- the United Kingdom law on plant breeders' rights may help cultural productivity. Equally, it demonstrates the desire of 3 to show how one of the signatory States ) has sought to give the United Kingdom that its growers should have ready access effect to the Convention. to the products of foreign breeders and likewise that British plant breeders should have the benefit of protection when The Convention and the U. K. law: development in parallel their products are used in other countries. 3. The Plant Convention and the U. K. system of plant breeders' rights were developed side by side. In 1957, when Layout of the Convention the Committee of Experts set up by an International Con- 6. The 41 Articles of the International Convention fall ference held in Paris in May of that year was beginning to into two more or less distinct groups. Articles 2 to 14, and grapple with the task of preparing a draft Convention, the two or three of the later Articles, contain the obligations of United Kingdom Government, acting on a decision taken im- member States with regard to the protection of the rights of mediately after the OEEC Stockholm Conference of 1954, the plant breeder. Each of these has its counterpart in the commissioned a representative group to begin a detailed study 15 sections and 4 schedules of Part I of the U. K. Plant Va- of the nature and effects of plant breeders' rights in other rieties and Seeds Act, 1964. They deal with such matters as countries and the possibility of introducing a legal system of protection in the United Kingdom. Four years of international the nature of the breeder's rights and their duration, the discussion led to the completion and signature of the Inter- necessity for prior examination and the criteria to be applied, national treatment, priority rights, 'and the naming of varie- national Convention towards the end of 1961. The U. K. group were equally successful in producing, by 1960, a detailed blue- ties. The remaining Articles of the Convention are mainly print for a plant breeders' rights system in the United King- concerned with regulating the relations between member dom. Published in that year, the group's report4) subsequently States, including the establishment of a Union, Council and formed the basis for new legislation — Part I of the Plant Secretariat, financial contributions and budgetary provisions, Varieties and Seeds Act, 1964 — which passed into law in official languages, provisions for ratification, accession, de- nunciation and amendment, arbitration and related matters. March 1964. Other Parts of the same Act brought the coun- try's seed control system up to date *). For the most part these Articles have no counterpart in the U. K. law, and the present study is not therefore concerned 4. This development in parallel of the international and with them. British systems encouraged cross-fertilisation of ideas. Meet- ing in London, the U. K. group were kept informed of prog- Agreement on common principles ress in the international talks taking place in Paris and else- 7. Before referring in detail to Articles 2-15, some brief where. At the same time, the United Kingdom delegate was remarks on the overall character and significance of the Con- able to advise the Committee of Experts on the attitude which vention may be of interest. Perhaps its most remarkable fea- might be taken in his country on the many problems of com- ture is the extent to which it will determine the shape and mon interest. This exchange had some important consequences. content of the domestic plant breeders' rights legislation and First, the United Kingdom law as it finally emerged from practice of each member State. Unlike the much older Indus- Parliament complied in all respects with the requirements of trial Property Convention, which allows States party to that the International Convention. Second, and flowing from this, Convention considerable latitude in such matters as the form, the United Kingdom, as soon as it was in a position to do so, extent and duration of patent protection, the Plant Conven- had no difficulty in signing the International Convention (on tion lays down a detailed code to which all member States November 28, 1962). Third, as a signatory country the United must conform, not only in their dealings with other member Kingdom in due course found itself in a position to ratify States, but in their domestic arrangements. To quote the Pre- the Convention on the basis of the 1964 Act and without amble to the Convention, the contracting States considered it further reference to Parliament. This stage was reached in highly desirable that the special problems connected with the present year, when the Government, having made protec- plant breeders' rights " should be resolved by each of them tion available to breeders in five species or genera of plants in accordance with uniform and clearly defined principles ".

3) The United Kingdom ratified the Convention on September 17, This has important practical implications for prospective 1965, and was the first country to do so. member States in connection with ratification and accession, 4) Report on Plant Breeders' Rights by the Committee on Transac- tions in Seeds published in London in July 1960 as Command 1092. particularly where already existing domestic legislation relat- *) Texts printed in italics refer to British legislation. ing to plant breeders' rights has developed on different lines. NEW PLANT VARIETIES 277

Changes to conform with the Convention would in such cases While member States have discretion to grant patents for be required as a condition of membership. It is sometimes plants if they so desire, and a minority may adopt this course, more difficult to introduce such changes than to legislate for the Convention is best regarded as creating a new, special the first time. Some delay in ratification on the part of the title of protection better adapted than the traditional patent States concerned is therefore to be expected while the prob- to the characteristics of plants considered as living material. A lems are resolved. full discussion of this issue would go to the roots of the Con- 8. The strong emphasis on uniform principles gives real vention and space does not permit, but some reference has substance to the Convention and should prove of undeniable been made to it in the recent article by Mr. Laclavière re- value to the plant breeder. National treatment, guaranteed ferred to above. The great majority of countries which took under Article 3, becomes more meaningful where the protec- part in drafting the Convention favoured a new, distinct tion afforded in the territory of each member State is granted breeder's right and there is little doubt that this special right according to uniform principles. As to the future, the accept- will be chosen as the normal form of protection in preference ance of such principles not only encourages the adoption of to the patent. The grant of such special rights would not ap- uniform practices in the operation of the various national pear to give rise to obligations under the Paris Convention Offices, implying the need for an advanced degree of co- on Industrial Property. It is interesting in this connection operation between them, but would also facilitate the intro- to note that recent proposals for a European patent expressly duction of an international right if that should later be found exclude plant varieties, while under the arrangements for desirable. harmonisation of patent laws, participating States are not 9. Among the basic principles of the Plant Convention bound to provide patents for plant varieties. are exclusivity of rights and national treatment for foreign 11. No specific provision is made in the Convention for breeders. These are familiar concepts which have long been a grant of rights by means of certificates of authorship of accepted on a nearly world wide basis under the Industrial inventions (inventors' certificates) such as are issued in the Property Convention. There are however other principles, USSR and other countries as a discretionary alternative to more or less basic, which give rise to obligations affecting patents. These also, if considered at some future date as a both legislative and administrative practice at the national form of rights to which the Convention might apply, would level. For example, every new variety for which rights are like plant patents require to be issued in conformity with the claimed is required to be subjected to certain tests before provisions of the Convention. rights may be granted. Each member State must, therefore, 12. Section 1 of the U. K. law provides for the grant of either introduce an organised system of growing trials or plant breeders' rights and no reference is made to patents. make joint trial arrangements with other States. Again, the Read in conjunction with the U. K. patent law, under which Convention lays down a minimum programme, which must patents have not in practice been granted for neiv varieties be completed by each member State within a specified period of plants, it is clear that the U. K. has chosen to create a of years, for extending protection to certain plant species special title of protection for plants ivhich is quite distinct and genera listed in an appendix to the Convention. Neither from a patent. of these requirements, nor others to be found in the Conven- tion and mentioned later, need however cause serious diffi- Articles 3 and 4: National treatment and Reciprocity culty in any country which recognises the importance of and Article 30 (1) (a). U. K. Act, S. 1 and 2 variety in the choice of crop and other plants. In such coun- 13. Entitlement to national treatment in all member tries arrangements will already exist, or can be developed, States of the Plant Union, that is to say the same treatment for ascertaining and assessing the characteristics of different as the laws of a member State accord to its own nationals, is varieties under local conditions. All these matters do of course required to be granted under Article 3 to: require careful thought and planning prior to ratification or (a) nationals of all other member States; accession. (b) persons and corporate bodies who, though not nationals Convention Article 2. Form of the breeder's rights. of a member State, are domiciled or have a registered U. K. Act, S. 1 office in a member State. 10. This Article defines " variety " and permits member To qualify for national treatment, plant breeders in both States to recognise breeder's rights in a new variety either categories (a) and (b) must conform with national conditions by the grant of a special title of protection or of a patent. and formalities. In the case of those nationals in category (a) These are not mutually exclusive forms of protection, except who are without domicile or establishment in a member that only one form may be used by a member State for any State, the Article expressly reserves to member States the particular plant species or genus. No choice is left to the right to impose conditions enabling the breeder's new plant individual applicant for protection. Whichever form of right varieties to be examined and controlled. This is important is granted, its content and mode of exercise must be as de- for the purposes of Article 10 of the Convention, which pro- fined in the Convention. Thus a patent granted for a plant vides for forfeiture of rights in the event of failure to main- variety under a system which did not conform with the Plant tain a protected variety true to type or to give facilities for Convention would not be an acceptable form of protection inspection. Seed control measures, though outside the scope under the Convention. of the Convention, are also facilitated by this provision. 278 INDUSTRIAL PROPERTY DECEMBER 1965

14. To give reality to the grant of national treatment, the same genus or species. That is to say, for a non-listed each member State is required by Article 30 (1) (a) of the genus any member State may if it wishes insist on a recipro- Convention to assure the provision of appropriate legal re- cal offer of facilities for obtaining protection. If a member medies for the effective defence of rights. State does not wish to insist on reciprocity, the option is offered under Article 4 (4) of extending the benefit of pro- 15. The above provisions relating to national treatment tection in non-listed genera to the nationals of any State are based on the principle of reciprocity, in the sense that which is a member of the Plant Convention or of the Indus- each member State agrees to grant national treatment on trial Property Convention. In view of Article 33 (1), it is not condition that all the other member States do likewise. Thus entirely clear whether the option could be exercised sepa- far, the Plant Convention and the Industrial Property Con- rately for each non-listed genus. Alternatively, a member vention (Articles 2 and 3) are on similar lines. The obligation State may apply Articles 2 and 3 of the Industrial Property under Article 3 of the Plant Convention is, however, fully Convention which relate to national treatment. This would be binding on member States only in respect of varieties of cer- of importance particularly to those countries which protect tain plants, that is to say, of the thirteen genera and species plants by means of patents. named in the Annex to the Convention. As explained below, Article 4 (4) of the Plant Convention enables member States 18. In requiring protection for not less than five of the who protect other genera and species to limit the application listed genera as a condition of entry into membership, and of national treatment in certain circumstances. laying down a common programme after entry, the Plant Convention allows member States less freedom than does the 16. Article 4 defines the scope of the Convention, which Industrial Property Convention. On the other hand, the in principle applies to all botanical genera and species. It optional limitation of national treatment under Article 4 (4), lays down as a condition of membership that varieties of at though permitted for the reasons explained, is in a sense less least five of the thirteen named species and genera should be liberal than the practice adopted under Articles 2 and 3 of protected, prescribes a timetable for extending protection to the older Convention. the remaining eight, and declares the intention of member States to apply the Convention progressively to as many other 19. The U. K. Act does not in itself protect any species genera and species as possible. Thus Article 4, while not pre- or genus of plant. It is an enabling measure brought into op- pared to leave member States with unlimited discretion each eration by the responsible Ministers under delegated powers. to decide its own rate of progress, recognises that different S. 1 of the Act accordingly provides for Orders to be made countries may be at different stages of development, and from time to time extending protection to any species or have different facilities and different needs. It is accepted genus named in the Order. No timetable is laid down in the that member States will wish to study the technical and finan- Act and the rate of progress is at the discretion of Ministers cial implications before extending protection to additional subject, on the U. K. assuming the responsibilities of a mem- plant species. While fully endorsing the general principle of ber State of the Convention, to the minimum requirements protection of new plant varieties, the Convention does not of Article 4. Orders have been made and are in operation for therefore seek to apply the principle indiscriminately and at five of the listed species (wheat, barley, oats, potatoes and one step to the whole of the plant world. It seems likely that roses) under which applications for rights conforming with the general practice of member States will be to extend pro- the Convention's requirements are now being examined. Some tection, in time, only to some hundreds at most of the cul- 30 applications have so far been received for cereal varieties, tivated plant species where differentiation into distinct va- 7 are for potato varieties, and 120 are roses. More than half rieties has taken place or may occur later. The protected spe- of these are of foreign origin. Arrangements are being made cies may, however, be expected to include most of those of for protection to be available in other genera as soon as commercial importance in the industries of agriculture, horti- possible. culture and forestry. 20. In respect of national treatment, S. 2 of the U. K. Act 17. Although a common pattern and minimum rate of makes no distinction between its own nationals and the natio- development is laid down by Article 4 (3) for the thirteen nals of any other country, whether members of the Plant genera and species listed in the Convention, in practice there Convention, or of the Industrial Property Convention, or of are bound to be differences within that pattern in the rate neither Convention. All foreign breeders are without excep- of progress of different member States. Nevertheless, by vir- tion entitled to apply for and receive protection for their tue of Article 3, national treatment, as earlier explained, new varieties in the United Kingdom, on the same terms and applies without qualification to the whole of this group. Thus subject to the same conditions as U. K. nationals, and irre- a national of member State A who breeds a new variety of spective of the opportunities, or lack of them, for U. K. na- maize (one of the listed species), is entitled, in all other tionals to obtain protection in other countries. The U. K. has member States which protect maize, to the same treatment as not, therefore, in its instrument of ratification, availed itself the nationals of those States, whether or not maize is at the of the right to reciprocity as permitted by Article 4 (4) of time a protected species in State A. But in respect of any the Convention. Only in respect of priority does the U. K. genus or species which is not listed in the Annex, Article Act (in Part I of Schedule 2) enable a distinction to be made 4 (4) in effect allows the other member States to refuse pro- between one country and another. This is explained below in tection to nationals of State A unless State A also protects connection with Article 12 of the Convention. NEW PLANT VARIETIES 279

Article 5. Definition of breeder's rights. U. K. Act, S. 4 25. An important limitation is placed on the rights of 21. Article 5 defines the rights of the plant breeder. the breeder by Article 5 (3). This enables a protected variety These fall into two parts: the basic rights under paragraph (1), to be used by any other persons for breeding purposes e. g. to grant which is mandatory on member States, and additional as a parent in a hybridisation programme, without the neces- rights which may be granted, at the option of each member sity for obtaining the prior consent of the holder of the State, under paragraph (4). National treatment under Article 3 rights. Nor is his consent required for the commercialisation applies to the basic rights, but in respect of the additional of any new variety arising from such a breeding programme. rights, reciprocity may be claimed, as under Article 4 (4), as In the special case of F. lhybrids, however, one of whose a condition of extending the benefit of such rights to the parents is a protected variety, the breeder's consent to its nationals of other States. use as a parent is required. 22. The broad effect of the basic rights of the breeder 26. By making certain commercial activities involving in a new variety is that the variety may not be reproduced the use of a protected variety subject to the breeder's prior or propagated for the sale of seed, or of plants and parts of authorisation (para. (1) of Article 5), the Convention provides plants used as propagating material, without the breeder's for the creation of rights which are exclusive to the holder. prior consent. Nor may seed or propagating material of the Monopoly is not excluded. Paragraph (2) of the Article, how- variety be sold without such consent. Only commercial activi- ever, enables the holder of rights to authorise the use of ties are involved, and the holder of rights acquires no control his protected variety subject to conditions e. g. the payment over the reproduction or propagation of his variety where of a royalty. The Convention clearly envisages, therefore, a this is undertaken for pleasure e.g. by private gardeners. A system of licensing. Further, Article 9 enables member States more important limitation is that the basic rights do not in the public interest to place restrictions on the exercise of cover plant material produced or sold other than as repro- his rights by the breeder and thus to legislate against, inter ductive or propagating material. Thus although the produc- alia, monopolistic practices (see below). tion of wheat seed for sale, and the sale of wheat seed for 27. S. 4 of the U. K. Act, which defines the rights of the sowing are, for example, within the protection afforded to breeder in the United Kingdom, adheres closely to Article 5 the breeder, the production and sale of grain for flour mak- of the Convention. The basic rights of the breeder (over the ing, animal feeding, beer making and similar purposes are sale and reproduction for sale of a protected variety) are outside his control so far as his basic rights are concerned. mainly set out in subsections 1 (a) and (b). These rights are Although the breeder's control may be extended into this in principle available to all breeders, without distinction of field by the grant of additional rights under paragraph (4) nationality, residence or place of business and irrespective of of the Article, it is clear that the Convention is primarily the plant species to which the protected variety belongs. The concerned with giving the breeder rights in the reproductive- term reproductive material, as defined in S. 15 of the Act, is ness of his variety. The basic rights therefore cover only a used to denote both seed and vegetative propagating material. relatively small part of the total field of commercial produc- 28. The additional rights which member States have dis- tion, trade and manufacture involving the use of plant ma- cretion to provide in accordance with Article 5 (4) are de- terial of a protected variety. This may be contrasted with fined in subsection 1 (c) and Schedule 3 to the Act. Sched- the much wider powers normally vested in patent holders, ule 3 also deals with the special case of rights in ornamental e. g. in the U. K., the sole right to make use and vend the plants arising under Article 5 (1). Rights may cover the re- patented invention. production of a protected variety for the purpose of selling 23. In the special case of ornamental plants, Article 5 (1) fruit, flowers and so on, or may be further extended so as to of the Convention makes it clear that the basic rights of the comprise the sale of such products. The Agricultural Ministers, breeder cover the commercial use of plant material for pro- when making orders extending the Act to further species or pagation in the production of plants or cut flowers. This genera, have discretion to include either the first stage, or would appear to bring within the breeder's control such the first and second stages, of these additional and special activities as the multiplication of a stock of e. g. rose trees rights in the arrangements for any particular species or genus. for the sale of cut blooms. The guiding principle in reaching a decision is that such rights 24. The additional rights envisaged in Article 5 (4), which must be necessary, in the Ministers' opinion, to enable may be provided under the domestic law of a member State breeders in the species or genus concerned to receive ade- or through bilateral or multilateral arrangements under Ar- quate remuneration. Among the species so far covered by ticle 29, and may be granted for some genera but withheld orders in the United Kingdom, only in the case of roses do from others, are not carefully defined. Such rights could the breeders' rights extend to the reproduction of their varie- extend to the commercialised product e. g. to the sale of cut ties for the sale of cut blooms. This is an extension of some flowers, fruit, and presumably even grain for processing or importance to the breeders of forcing varieties. The sale of vegetables for consumption. Such control may be thought cut blooms is not subject to licensing. necessary in certain circumstances, for example where the 29. While Article 5 (4) of the Convention, as described basic rights of the breeder are, in the opinion of a member above, enables member States to insist on reciprocity before State, insufficient to provide him with adequate remunera- granting to foreign breeders the additional rights described tion. above, this is not demanded under the U. K. Act. The prin- 280 m DU ST RI AL PROPERTY DECEMBER 1965 ciple of national treatment covers these rights as well as the ficulties are bound to arise in applying them. The criterion basic rights of the breeder. for distinctness, for example, requires that the new variety 30. Under the U. K. Act, the holder of rights is solely "' must be clearly distinguishable by one or more important responsible for their enforcement. (Provisions as to compul- characteristics from any other variety whose existence is a sory licensing in Section 7 of the Act are described below.) matter of common knowledge ". This is a world wide, not a S. 4 (1) provides means of enforcement through the ordinary national, test, and its proper application pre-supposes at the courts of law, including the award of damages and injunc- least a knowledge in each national administration of the charac- tions for infringements as in the case of other proprietary teristics of all other existing varieties, whether commercialis- rights. No special enforcement machinery is provided by the ed, in trial or reference collection, or only described in a Act and in particular no direct Governmental action in de- publication, similar to the variety under examination. The fence of the breeder's rights is 'contemplated. Indirectly, how- extent to which it will in practice prove possible to apply ever, the U. K. seed control legislation assists the breeder, this test in any member State will depend on the state of by making it an offence to sell seed under the wrong varietal development of the technical services, which may be uneven name. Section 4 (4) of the Act makes it clear that holders of in respect of different species, differences in climatic condi- rights may issue licences for the reproduction or sale of their tions as between different countries, and, for the future, on varieties subject to conditions. These may include, for ex- the degree of collaboration between member States. This is ample, the payment of a royalty or requirements relating to one of the fields in which it would be hoped to see important the quality of the reproductive material tvhich may be pro- developments vmder the Convention on a bilateral or multi- duced or sold. The breeder may assign his rights to any other lateral basis. Specific reference is made to this in Article 30 person. of the Convention, which authorises the conclusion of special arrangements between member States for joint trials of new varieties, and joint reference collections and libraries. More- Articles 6 and 7. Conditions for the grant of rights. U. K. Act, S. 2 and Schedule 2 over, although not part of the Convention, there is attached to it a recommendation to member States to undertake as 31. Article 6 establishes certain conditions which a variety soon as possible studies for organising the examination of is required to satisfy before the breeder may be granted new varieties on an international basis. Such studies have rights in accordance with the Convention. These conditions already begun on an ad hoc basis pending the establishment relate to the distinctness, stability and uniformity of the of formal administrative machinery under Article 15. variety, and to its prior commercialisation. In addition, the 34. These studies have particular reference to the criteria variety must be given a name. Article 7 goes on to require by which new varieties should be judged. It is in this field member States to make arrangements for examining each where differences of interpretation may legitimately arise. variety submitted for a grant of rights to ensure that it con- For example, the quotation from Article 6 in the preceding forms with the conditions set out in Article 6. Thus the first paragraph refers to " important characteristics " and to a point to notice is that prior examination is a requirement of variety being " clearly distinguishable " from other varieties. the Convention, and that no variety may be protected unless The question must be asked: important for what purpose? it is found to satisfy certain criteria. For purposes of identification, perhaps suggesting morpho- 32. The application of the criteria of distinctness, stability logical rather than physiological characteristics? Or important and uniformity give rise to technical problems which can judged by economic or agronomic significance? Or perhaps only be resolved by growing the variety submitted for rights, both standards might be used, so that characteristics which comparing it with other varieties grown as controls, and mak- either serve to identify a variety or help to distinguish it ing laboratory or other tests designed to ascertain the charac- from other similar varieties, or differences which are of teristics of the variety. Under Article 7 (2) breeders may significant merit (or demerit), may be regarded as important accordingly be required to provide plant material for trial. for the purposes of the Convention? These provisions are made necessary by the particular nature 35. There are arguments for each of these solutions. The of living plant material and the inadequacy of even the most interpretation of " important " for any particular variety detailed written description or specification of a plant variety may indeed vary according to the group of plants to which as a means of distinguishing that variety from other similar the variety belongs. One thing seems certain. The makers of varieties. Such matters as the extent and layout of the trials, the Convention did not intend member States to base their their duration, the selection of control varieties, and the decisions on an assessment of value as such, for example on characteristics (morphological or physiological) which should higher yield or improved resistance to disease. Although the be recorded and taken into account, are left to the discretion introduction of a merit criterion was considered at one stage of member States. The Convention in Article 7 (1) directs, in the preparation of the Convention, it was rejected and however, that the trials are to be adapted to the mode of Article 6 (2) expressly excludes the use of any criterion other reproduction of the species concerned. than distinctness, stability and uniformity. A further indica- 33. While the Convention goes far to indicate what should tion is provided by Article 14, which makes it clear that be looked for in a new variety submitted for a grant of rights, plant breeders' rights are independent of seed control meas- there is still much room for differences of interpretation of ures taken by member States. The latter often include restric- the criteria laid down in Article 6, and many practical dif- tions on the use of inferior varieties judged by their economic NEW PLANT VARIETIES 281 or agronomic value, and this is the proper place for a value visions with retrospective effect. The Convention does not, test. An interpretation of Article 6 which permitted the re- for example, apply to varieties already protected or under fusal of a grant of plant breeders' rights to a variety solely consideration for protection in accordance with existing on grounds of lack of merit would clearly be inadmissible. national laws. Rights already granted under national laws are 36. Nevertheless, for those officials who are charged preserved by Article 37. Article 35, however, enables member with the function of clearly distinguishing between one variety States to relax the rule in Article 6 concerning prior com- and another, as well as the authorities, farmers and seed mercialisation in respect of recently bred varieties. This would merchants who may well be concerned at the proliferation make it possible to grant protection for varieties already on of new varieties showing minimal differences, there may be the market when the Convention comes into force, although a strong temptation in some member States to concentrate in other respects the provisions of the Convention e. g. prior attention on characteristics which are in some way related examination, would apply. Under Article 29 special arrange- to the merit of the variety. This could hardly avoid approach- ments may be made between member States for protecting ing more or less closely the imposition of a merit criterion. such varieties. In their anxiety to avoid the use of a merit criterion, Article 6 40. The provisions of the U. K. Act (S. 2 and Part II of might be interpreted in other member States so as to attach the Second Schedule) folloiv very closely those of Article 6 no real significance to the word " important ". In an extreme and little further explanation is required. The legislation case, rights might be granted in any variety which exhibited clarifies the Convention by providing (paragraph 2 (1) of any degree of difference in any character, no matter how Part II of the Second Schedule) that rights may not be grant- small or insignificant, provided the variety was clearly dis- ed in any variety which has already been commercialised in tinguishable. This also, however, would seem to be at variance the United Kingdom or in any other country before the date with the Convention and possibly inimical to the breeders' the species concerned was first made eligible for protection interests and the common interest alike. It seems unlikely in the United Kingdom. A concession is however included that a Convention devoted to plant breeders' rights would with limited retrospective effect in favour of varieties, whether adopt criteria which gave the breeder of a new variety no British or foreign, first commercialised not earlier than No- real measure of protection against the production and develop- vember 12, 1963 (when the draft law was first submitted to ment of other closely similar or almost identical varieties. Parliament), provided the breeder applies for protection be- 37. As regards the other technical criteria laid down in fore May 11, 1965. In practice, only a limited number of Article 6 — uniformity and stability — the scope for dif- varieties of wheat, barley, oats, potatoes and roses have been ferences of interpretation particularly in respect of sexually able to benefit from this concession. reproduced plants is perhaps even greater than in the case 41. The examination of new varieties for distinctness, of distinctness. It is probably common ground that " uni- stability and uniformity is in process of being developed in formity " and " stability " should be interpreted in such a the United Kingdom and only a brief reference is possible way as to ensure that a variety granted rights is capable of at the present stage. The requirements and the method vary remaining true to description and therefore identifiable from species to species, according to means of reproduction, throughout the period for which rights are granted. The the trial facilities which can be made available, and the cost. studies referred to above which are now going on may show A growing trial is required in every case and observations are wide differences in the present practices of signatory States made, generally speaking, over a minimum of two growing which, if not harmonised, may confuse breeders, limit the seasons. If this period is not sufficient, whether for climatic usefulness of the Convention and restrict trade. While per- reasons or because the observations made are inconclusive, fect uniformity in living material is a chimera which it is further trials may be required. Small plots and (in the case useless to pursue, it seems probable that the introduction of of cereals) ear rows are sown in successive years, and in the the Convention criteria into national law and practice will case of potatoes the breeder is also required to plant a one in some cases result in a tightening-up of the standards hith- half acre plot on his own trial ground for observation. The erto found acceptable. cereals and potatoes trials are conducted at either two or 38. In addition to novelty in the sense of distinctness three centres (at Cambridge and in Scotland and Northern from other varieties, a variety must possess novelty in the Ireland) : one centre is considered sufficient for roses. sense that it must not have been commercialised by the 42. The plant breeders' rights trials for agricultural and breeder in a member State before an application is made for horticultural varieties are conducted by a special technical protection in that State. Up to four years' prior commer- unit — the U. K. Variety Classification Unit — set up with cialisation in any other country is however permitted. This headquarters at Cambridge for this and other similar work enables the breeder to test the market for his new variety in under the 1964 Act. The Unit is financed from Government a selected country (which under Article 11 (1) need not be funds and consists of officers qualified by training and ex- his own) without imperilling possible later applications else- perience in the classification and identification of plant where. The priority provisions of Article 12 further assist varieties. The Unit reports on the trials and makes recom- the breeder in this respect. mendations to the Controller of the Plant Variety Rights 39. In principle, therefore, the Convention is intended Office who is charged with the sole responsibility, subject to to apply only to new varieties and there are no binding pro- a right of appeal to an independent Tribunal, for making -

282 INDUSTRIAL PROPERTY — DECEMBER 1965 decisions on the grant or refusal of rights. The Office is a to grant, as a minimum, under their national laws. For vines semi-autonomous department of Government with adminis- and trees which mature slowly the minimum period is 18 trative and judicial functions established specially for the years, and for all other species and genera 15 years, in each protection of new plant varieties, as foreshadowed in Article case dating from the grant of rights in the variety concerned 30 (1) (b) of the Convention. In accordance with Article 30 and excluding, therefore, the period for trial under Article 6. (1) (c), decisions on the grant of rights, together with much These protection periods do not differ greatly from the dura- other information concerning applications and their progress, tion of patents in most countries. Subject to the above minima, is regularly published by the Office in the Plant Variety and member States may adjust the period of protection to dif- Seeds Gazette. ferent classes of plants, but grants of unlimited duration are 43. In the case of roses, the trials are at present con- not permitted. It seems probable that the general intention ducted in collaboration with the Royal National Rose Society is to protect the breeder for so long as that is necessary to at the Society's trial grounds, and are assessed and reported provide him with an equitable reward from the variety con- on by an advisory panel of independent experts appointed cerned. by the Controller of Plant Variety Rights. It is probable that 47. Section 3 of the U. K. Act adopts as minima the pe- a similar system will be introduced for other decorative plants. riods of 15 years and 18 years prescribed by the Convention, and in addition lays down a maximum period of 25 years. It Article 7 (3). Provisional protection. U. K. Act, S. 1 is considered that in no case would a longer period be required and Schedule 1 to secure a fair reward for the breeder. Under the detailed arrangements made for wheat, barley, oats and roses, breeders' 44. Another provision of interest in Article 7 (para. [3]), rights will subsist for 15 years, and for 20 years in the case enables member States to grant the breeder of a new variety of potatoes. The Act permits extension of the period of rights protection against the unauthorised use of his variety while in any variety, within the maximum of 25 years, if the Con- it is undergoing examination for a grant of rights. Since troller is satisfied that the breeder has not, for reasons beyond possession of even a small sample of authentic seed or pro- his own control, already received adequate remuneration from pagating material may enable other persons to make effec- it. Not more than one such extension may be granted for tive use of a new variety during the trial period, when the each variety. breeder would normally be unprotected, this provision should prove of value to breeders. In giving effect to it in national 48. Experience will show whether the minimum periods legislation, there are however two obvious difficulties. The of protection laid down in the Convention are appropriate. first is that the characteristics of the variety and the question It seems probable that relatively few varieties will remain in of its novelty cannot be finally determined until after the commerce for the whole of the period, and that for some examination required by Article 6. To what, therefore, is the species, particularly décoratives, a shorter period of protec- right of provisional protection to be attached? Secondly, a tion would be sufficient to secure an optimum reward for grant of provisional protection may be capable of premature the breeder. However, the obligation to pay renewal fees for exploitation by the breeder as though he had already received keeping the rights in force, as referred to under Article 10, a grant of rights under Article 5, unless its use for this pur- seems likely to encourage the early withdrawal of obsolescent pose by the breeder is restricted. varieties. 45. Schedule 1 of the U. K. Act authorises the Controller to issue a " protective direction " i. e. provisional protection, Article 9. Restrictions on the exercise of rights. while a variety is under examination. No doubt for the rea- U. K. Act, S. 7 son that in some cases a doubt may exist, until trials are 49. This Article is short enough to be reproduced in full: completed, concerning the characteristics and distinctness of " The free exercise of the exclusive right accorded to the the variety, the grant of provisional protection is at the breeder or his successor in title may not be restricted other- discretion of the Controller. No grant may be made if there wise than for reasons of public interest. When any such re- is any doubt whether the applicant is the true breeder of the striction is made in order to ensure the widespread distribu- variety concerned. While provisional protection is in force, tion of new varieties, the member States of the Union con- the breeder is entitled to prevent other persons infringing his cerned shall take all measures necessary to ensure that the rights, by applying to the ordinary courts for an injunction. breeder or his successor in title receives equitable remunera- At the same time, in order to meet the objection that pro- tion. " visional protection might be exploited by the breeder as This is a key provision of the Convention if only for the though he had already received a grant of rights, the breeder reason that the laws of some signatory States, drawn up be- is required to give the Controller an undertaking that he fore the signing of the Convention, include provisions which will not himself commercialise the variety during the period may be in conflict with Article 9 and may require to be of provisional protection. amended in harmony with it. Seed control legislation as well as pre-Convention systems of plant breeders' rights in some Article 8. Period of Protection. U. K. Act, S. 3 cases involve controls over plant breeders, growers and seed 46. The Convention prescribes a period of protection for merchants which, as the authorities concerned recognise, are varieties of each species which member States are required difficult to reconcile with the Convention concept of exclusive NEW PLANT VARIETIES 283

rights to be freely exercised by the breeder. Article 14 of nection with the distribution and licensing of a variety of the Convention expressly states that plant breeders' rights decorative plant, for example, as well as a food-producing are independent of national seed control measures, and that plant. In the event of complaint, each case would require the latter should, so far as possible, not be allowed to hinder consideration on its merits. Under S. 7 (2), however, the ap- the application of the Convention. plication of compulsory licensing to varieties of any species 50. It seems clear that under Article 9 a member State or genus may be temporarily deferred for a period, thus per- is competent to restrict breeders in the exercise of their mitting exclusive licensing or other arrangements favoured rights, for example by compulsory licensing, provided that by the breeder. In this way some species may be treated dif- reasons of public interest may be advanced. The Convention ferently from others, according to the degree to which the clearly accepts that one such reason may be the need to public interest is involved and other factors. secure the widespread distribution of a variety, but does not exclude other possible reasons e. g. that the licence condi- Article 10. Revocation of rights. U. K. Act, S. 3 tions imposed by the breeder are unreasonable. The Conven- 54. This Article prescribes the circumstances in which tion gives member States little guidance as to the extent of member States may, or are required to, annul or withdraw their powers to restrict the exercise of exclusive rights in the rights already granted. Under paragraph (1) it is mandatory public interest. Nor does the Plant Convention, unlike Ar- to annul rights which were granted under the mistaken im- ticle 5 A (2) of the Industrial Property Convention, mention pression that the variety was distinct from other known the permitted methods of restriction, although no doubt com- varieties or had not been previously commercialised. Cases pulsory licensing is one of them. No reference is made to of fraud by the applicant as well as grants requiring review licences of right. Exclusive compulsory licences are not pro- in the light of fresh information would seem to be covered hibited, and may presumably be granted if considered to be by this provision. Annulment is, however, to take place in in the public interest. There is much here for debate and study accordance with the provisions of the national law. Rights by member States, with each of whom lies the responsibility, are forfeit if the breeder fails to provide the competent under Article 9, for determining the nature and extent of authority with reproductive or propagating material of the any desired restrictions on the use of rights in its own ter- variety as originally protected i. e. to maintain the variety ritory and the occasions for imposing them. true to type. They are also subject to forfeiture, at the dis- 51. S. 7 of the U. K. Act introduces a system of compul- cretion of each member State, if the breeder does not co- sory licensing ivhich may be called into use as a result of any operate in measures for checking the variety and its trueness complaint of abuse of his rights by the breeder. An applica- to type, and for non-payment of fees. No other grounds for tion for a compulsory licence may be lodged if a breeder annulment or forfeiture are permitted. refuses to grant a licence or to issue a licence on reasonable 55. Perhaps the most interesting features of this Article terms. The Controller of the Plant Variety Rights Office, to are the careful statement of grounds on which alone rights whom application is to be made, is required to grant a com- may be annulled or forfeited, and the provisions concerning pulsory licence unless there seems good reason for refusing maintenance of the variety after rights have been granted. it. The applicant must, however, be financially sound and The latter are essential in relation to the living material show that he intends to use the licence in a competent and comprising a plant variety, since after protection has been businesslike manner. In reaching his decisions, the Controller granted a variety may through segregation, natural selection, is given four guide lines — to secure reasonable prices for crossing or mutation markedly change its characteristics in the public, wide distribution of the variety, maintenance of a relatively short time. Whether a breeder seeks protection quality, and a fair reward for the breeder. under the Convention or not, his work is not completed when 52. It is clear, therefore, that the U. K. legislation is a variety has been fixed, but must continue throughout the intended to encourage the widespread distribution of pro- commercial life of the variety in order to ensure a supply tected varieties on reasonable terms, and provides adequate of seed or propagating material having the same characteristics means for enforcing the application of this principle. While as the material examined for a grant of rights. There is a the issue by the breeder of licences to reproduce or sell a close link at this point with seed control and certification newly-introduced variety may of necessity be limited at first measures, which are designed to authenticate breeders' ma- by the available supplies of authentic plant material, it is a terial and the commercial material sold to growers. reasonable interpretation of the Act to say that the breeder 56. Under S. 3 (7) of the U. K. law, rights are to be ter- is expected to earn his reward primarily through meeting the minated if the applicant supplies incorrect information or demand for licences. He may be required to issue seed or new facts concerning the distinctness or prior commercialisa- other plant material to the holder of a compulsory licence, tion of the variety are discovered after the grant has been and penalties are provided for failure to do so. made. In S. 6 of the Act there are provisions concerning the 53. In principle, the compulsory licensing provisions ap- maintenance of varieties true to type by the breeder or on ply to all protected varieties irrespective of the species and his behalf, including a requirement to terminate rights if genus to which they belong. It may be inferred, therefore, acceptable plant material cannot be provided to the Plant that the public interest (Article 9) may be invoked in con- Variety Rights Office for examination. 284 INDUSTRIAL PROPERTY — DECEMBER 1965

Article 11. Miscellaneous provisions the right is reserved to extend the benefit of priority to non- 57. This short Article gives the breeder of a new variety member countries. The opportunity is also taken to state the the right to decide in which member State to make his first cardinal principle of priority, which underlies Article 12 of application for protection, and to apply for protection in the Convention but is not formally expressed there, that the other States while the first application is still under considera- first breeder to apply for rights in a variety is entitled to tion. Paragraph (3) makes it clear that protection is con- the grant. sidered and granted on a national basis: no provision is made for an international right. Article 13. Varietal denominations. U. K. Act, S. 5 62. Read in conjunction with Article 36, Article 13 re- Article 12. Priority rights. U. K. Act, S. 2 and Schedule 2 quires protected varieties to be named or otherwise identified, 58. Under paragraphs (1), (2) and (4) of this Article, the prescribes rules for the selection and registration of names, breeder of a new variety is entitled under certain conditions, and places restrictions on the use of registered names. These for a 12 month period dating from his first application for provisions are of the greatest importance to plant breeders, protection in a member State, to a right of priority in other to the national authorities of member States, and to the users member States. In effect, the Convention requires that the of new varieties. In most countries the correct naming of date of the first application (the priority date) should be reproductive and propagating material of different varieties accepted as the national application date by every other in commerce is one of the major aims of seed and plant legis- member State e. g. for purposes of priority over other ap- lation. It is generally enforced by strict control measures. plications. To benefit from this concession in any particular Article 13 recognises and builds on this by accepting the member State, the breeder must submit an application in that varietal name as a key factor in the protection afforded to State for the same variety within a year of the priority date new varieties under the Convention. and claim priority. He is also required to provide supporting 63. Thus, under Article 13 (7), reproductive and pro- documents within a limited time. pagating material of a protected variety must be offered and 59. So far, Article 12 is directed to the same problem as sold under the registered name of the variety. Further, para- Article 4 of the Industrial Property Convention, and follows graph 8 (a) of Article 13 requires that the registered name of broadly the same lines. Commercialisation of the variety and a protected variety may not be used for another variety of applications by other breeders during the priority period the same or a closely related species. That is to say, a regis- would not affect the novelty of the variety, nor could they tered name must be used in commercial dealings with a pro- give rise to third party rights or rights of personal possession. tected variety, and may not be misused to designate some In practice, the priority provisions of the Plant Convention, other variety. The holder of rights in the variety could expect so far as forestalling other applications is concerned, seem to be provided, under national legislation based on the under- likely to be of less significance than those of the Industrial taking in Article 30 (1) (a), with remedies in the civil courts Property Convention. Except in the case of identical natural for misuse of the registered name. Moreover, the require- mutations (sports) in certain species, which not infrequently ments of the Convention will often be buttressed in member occur more or less simultaneously in different places, the States by similar requirements under seed control legislation breeding of identical varieties is exceedingly rare. However, enforceable in the criminal courts by the competent national much may depend on the degree of difference between varie- authorities. ties required by member States under Article 6 as a condi- 64. While the practical effect of the Convention is to pro- tion of the grant of rights. tect from infringement not only the variety itself but also 60. In addition, Article 12 (3) allows the breeder who its registered name, a varietal name is not like a trade mark claims priority in a member State a further 4 years after the or trade name but is generic. This is made clear by Article 13 expiry of the priority period to supply plant material for (8) (b). Whereas a trade mark designates the goods of a par- examination. This provision is intended to allow a breeder ticular commercial undertaking, and may not be used without ample time in which to decide whether to proceed with his the owner's permission, a registered varietal name designates second and subsequent applications. No doubt this will be plant material of the variety irrespective of who produces or decided in the light of the decision on his first application sells it. The holder of the rights in a variety has no power and on the commercial acceptability or otherwise of his under Article 13 to refuse to allow other persons to use the variety. Meanwhile, examination fees would not normally be registered name, provided it is correctly used, and they in incurred. It is interesting to note that commercialisation may turn are under an obligation to use the registered name. This proceed during the 4 years in question without affecting the obligation continues even after the breeder's rights in the novelty of the variety. This may give rise to serious practical variety have expired. problems both for the breeder when he eventually acquires 65. The distinction drawn between varietal designations the right to issue licences, and for the industry which has on the one hand, and trade marks and trade names on the become accustomed to using the variety without payment of other, is underlined by Article 13 (3). This discourages the royalty. submission and registration of varietal names for protected 61. Part I of Schedule 2 to the U. K. Act gives effect to varieties which are identical to or may be confused with the priority requirements of the Convention, but in addition names for similar products, if such names are already pro- NEW PLANT VARIETIES 285 tected in a member State under trade mark or trade name new varieties submitted by breeders to the national author- legislation for the benefit of the breeder concerned. If such a ities. The Bureau of the Plant Union will handle such ex- varietal name is nevertheless registered for a protected va- changes, including objections by member States to the accep- riety, the breeder must either renounce or cease to exercise tance of breeders' proposals, centrally in Geneva. Although his rights in the trade mark or trade name in question. Ar- the services to be provided by the central Bureau in accord- ticle 36 carries this distinction between varietal names and ance with Article 13 appear to be little more than those of a trade marks even further by giving it retrospective effect. post office, they would be capable of development, for ex- Named varieties in which plant breeders' rights have already ample by agreement between member States under Article 29, been granted in a member State may not continue to enjoy so as to assist national authorities in the discharge of their trade mark or trade mark protection in that State after the obligations under Article 13. Convention comes into force in that State. The breeder must 70. Turning to the United Kingdom Act, Section 5 deals either renounce the trade mark or name, or change the va- with the procedures for naming protected varieties and pro- rietal name. If he fails to suggest a new varietal name within vides for drawing up nomenclature rules to be observed by 6 months, he may no longer exercise his rights in the trade breeders when selecting names for their varieties. Rules have mark or name. been promulgated by the Plant Variety Rights Office which 66. Acceptance by signatory States of the generic nature observe the requirements of Article 13 of the Convention and of varietal names and the inappropriateness of trade marks adhere as closely as possible to the International Code for recognises the special problems of protection as applied to Nomenclature. It is the practice of the Rights Office under plants. For some States this will involve the abandonment of these rules to consult in appropriate cases the national seed present practices and the substitution, in place of trade mark authorities of signatory States, and Registration Authorities protection, of the more comprehensive protection afforded under the Code, when names are submitted by breeders. As by plant breeders' rights. Unlike trade mark protection, how- regards trade marks, it is not the practice in the United King- ever, rights under the Convention are tenable for a limited dom to grant these in respect of plant varieties as such. Con- period only. sultation with the U. K. Registrar of Trade Marks is therefore 67. Rules for the selection and registration of varietal concerned with marks granted for seed plants, plant products denominations are laid down in paragraphs (2) to (6) of and the like, principally in Class 46 and (now) Class 31 of Article 13. Names may be used, or combinations of names and the U. K. Register. figures, but not figures alone. In addition to provisions con- 71. Under Section 5 (6) of the U. K. Act, the breeder is cerning misleading and confusing denominations, a variety given protection against the wrongful use of the registered must have a different name from all other varieties (of the name of his variety, as required by paragraph (8) of Ar- same or a closely related species) in any member State. The ticle 13. The obligation under paragraph (7) of the Article breeder is required to submit the same name in each member to use the registered name in commercial dealings with a pro- State where he deposits an application for protection. Regis- tected variety is however considered to be more appropriate tration of the name submitted by a breeder may be refused to seed control legislation. The required provision is there- by the competent national authority, and a substitute re- fore made in Part II (S. 16) of the U. K. Act. quired. Broadly speaking, the aim is for each protected va- riety to have only one name throughout the area to which Article 14. Protection in relation to national seed controls the Convention applies (though it is recognised that national linguistic and other differences may not always permit this), 72. References have been made above, under Articles 6 and for this name to be unique to the variety within the and 9, to particular aspects of the distinction drawn by Ar- species or genus concerned. No provision is made, however, ticle 14 between plant breeders' rights on the one hand, and for an international denomination as such and in the last seed and plant control measures on the other. Since it is resort each member State retains the right to accept any customary in many countries to regulate the production and proposed name or to reject it as unsuitable. marketing of plant material in the national interest, often in a stringent manner considered appropriate to the importance 68. No express reference is made in the Convention to the of such material in food production, problems of reconciling International Code for Nomenclature of Cultivated Plants. the protection and control systems will inevitably arise. Ar- This is a set of detailed rules and recommendations for the ticle 14 makes it clear that the rights of the plant breeder naming of cultivated varieties (cultivars) which are observed are independent of control measures. It would appear, there- in a number of countries, including signatory States of the fore, that the breeder is entitled to be granted the rights for Convention. Article 13 of the Convention was drawn up with which the Convention provides, irrespective of any control knowledge of the requirements of the Code and is not in measures taken by the member State concerned. Article 4quater conflict with it. The Code seems likely in most cases to pro- of the Industrial Property Convention deals with this point vide a working basis for the administrative practices of mem- in respect of patents. At the same time, member States are ber States under Article 13. not expressly inhibited by the Plant Convention from adopt- 69. The remaining provisions of Article 13 (paragraph ing control systems which might affect, adversely or other- [6]) deal with arrangements for the exchange of information wise, the breeders' exercise of those rights in the member between member States concerning the proposed names of State concerned. In devising their controls, member States 286 INDUSTRIAL PROPERTY DECEMBER 1965

are, however, enjoined by paragraph (2) of Article 14 to avoid hindering the application of the Convention so far as possible. GENERAL STUDIES 73. Seed and plant control measures may in some cases restrict the production and marketing of a protected variety or forbid its use entirely on grounds of insufficient value in th the country concerned. Though entitled to a grant of rights, 175 Anniversary of the U.S. Patent System the breeder may therefore be unable to make any, or any effective, use of his rights within the territory of a particular The United States adopted its first patent law in 1790. member State. Nevertheless, such limitations on production Commemoration of this event culminated in a three-day and commercialisation taken in the national interest are not international assembly held in Washington from October 18 generally regarded as conflicting in principle with the requi- to 20, 1965. There were nearly two thousand participants rements of the Convention, although they may in practice from more than thirty countries. operate as an obstacle to the application of the Convention. BIRPI was represented by its Director, Professor G. H. C. It becomes doubly important, therefore, in conformity with Bodenhausen, and by Dr. Arpad Bogsch, Deputy Director. the principle set out in Article 14 (2), to operate any such The program was remarkable in every respect. It started limitations in a way which conforms so far as possible with with a demonstration, on the lawn around the Washington the basic provisions of the Convention. It would seem reason- Monument, of the " flying man ". A jet equipment harnessed able, for example, that any value criterion applied to new on his back allowed him to take off and land on his feet, and varieties under seed control legislation should be administered to move in the air with great speed and perfect ease as to in such a way as not to undermine the national treatment changing directions and altitude. provisions of Article 5. The International Assembly was opened by Mr. John T. 74. In confining this brief study of the Convention to its Connor, U. S. Secretary of Commerce, and Mr. Edward J. first 15 Articles only, it should not be thought that the second Brenner, Commissioner of Patents. A reception was given at group of Articles, which regulate the relations between mem- the Department of State by Mr. Dean Rusk, U. S. Secretary ber States, are not also of great importance for the operation of State. The festivities ended with a banquet at which Dr. and future development of the Convention. It is not going Harry Huntt Ransom, Chairman of the [U. S.] President's too far to say that the future of the Plant Union as an essay Commission on the Patent System, was the principal speaker. in international co-operation will largely depend on the The third and last day of the Assembly, called " Inter- active and enlightened use by the Council of member States national Day ", and organized principally by the staff of the and the Secretariat of the powers conferred on them under U. S. Patent Office directly in charge of international affairs these Articles. Preliminary consideration is now being given (Messrs. Gerald D. O'Brien, David B. Allen, John H. Merchant, by the signatory States to organisational matters in order that and Rene D. Tegtmeyer), as well as by Mr. Harvey J. Winter the Convention may operate without delay as soon as it comes of the Department of State, consisted of lectures dealing into force. In addition to that of the United Kingdom, two with the following three topics: " Patents as an instrument further ratifications are required for this purpose, and on of Government policy in economic development ", " The present information it seems possible that these will be se- importance of patents to business decisions on international cured some time during the course of 1966. trade and investment ", and " A critical appraisal of the patent systems of the world ". Among the speakers on the last subject, there were heads of five Patent Offices: Germany, Dr. Kurt Haertel; Nether- lands, Dr. C. J. De Haan; Sweden, Dr. A. C. von Zweigbergk; U. S. A., Mr. Edward J. Brenner; USSR, Mr. Y. E. Maksarev. Mr. Brenner's remarks will be of special interest to the readers of this review since they dealt with the question of how the problems facing the world's patent systems could be solved through international cooperation. The main passages of Mr. Brenner's address are repro- duced below: "... There are several propositions that most people who have studied the international patent situation closely appear to agree on. First, I believe that it is felt that the world will some day have a truly international patent system, adminis- tered by an international patent organization. Secondly, there is no doubt that patent applicants and patent offices of the world today face many serious problems as a result of the significant changes which have come about in the inter- GENERAL STUDIES 287

national patent picture in recent years. Further, it seems " I believe it is generally agreed that effective documenta- apparent that such problems will only become more severe tion is one of the most important ingredients needed in the in the future unless satisfactory solutions to them can be future international patent picture. There is, however, no achieved. Finally, there appears to be an increasing recogni- doubt that the cost of maintaining an up-to-date world-wide tion that international cooperation is both desirable and search file in the future will be quite substantial, so that it necessary to meet the challenges of the future and to eliminate is likely that only a limited number of patent offices of the or minimize the problems which must be faced and solved. world will be able to afford such a search file. However, it " The basic problems inherent in the international patent is indeed fortunate that the International Patent Institute at picture, of course, have existed for many years. However, it The Hague expects to be in a position to handle the search- has only really been in the last decade that these problems ing requirements of patent offices of the world which do not have become magnified to the point where there is an in- have a world-wide search file of their own. This is particu- creasing demand that solutions to them must be found. What larly important, I believe, since it will enable patent offices has caused the substantial increase in the severity of these with limited resources to participate in possible programs of problems? I believe it is generally recognized that the mag- exchanging patent information among patent offices of the nitude of the problems has increased as a direct result of the world. rapid expansion of international trade and the explosion of science and technology. These factors have, in turn, resulted " Important steps have already been taken to harmonize in a substantial increase in patent filing in the patent offices or unify patent laws or procedures among certain countries. of the world, not only as a result of an increased number of There is, for example, the very significant work done by the patentable inventions, but, particularly, because of a sub- Council of Europe in establishing a number of conventions stantial increase in filing of inventions in more countries directed towards harmonizing or unifying patent laws and than in the past. procedures. The six Common Market countries, of course, have been working on a convention for a Common Market " Now, what steps can be taken to solve the present and patent system and the Scandinavian countries have developed future problems of the international patent picture? There the Nordic patent system. appear to be at least two major steps that need to be taken. First, I believe it is essential that steps must be taken to "... One possible way in which an international patent eliminate, or at least to minimize, the necessity for patent system could be developed would involve a step-by-step ap- applicants to proceed under different patent laws and pro- proach to the matter by bilateral or multilateral agreements cedures from country to country. Secondly, I believe it is between various countries of the world. Under such an ap- necessary to eliminate, or certainly to minimize, the duplica- proach, the first step might be the exchange of search results tion of effort involved on the part of patent applicants in between examining patent offices. In such a case, after any filing and prosecuting patent applications on a given inven- problems which might arise initially had been solved, and a tion in multiple countries and, at the same time, to minimize satisfactory degree of confidence had been developed be- and ultimately to eliminate in whole or in part, the duplica- tween the patent offices involved, it might be possible then tion of effort on the part of patent offices in searching and not only to exchange, but also to accept in most cases the examining essentially duplicate patent applications. search results of the other patent offices involved in the pro- " In order to facilitate effective international cooperation gram. The next step could then possibly involve the exchange between the various countries of the world, it appears essen- of examination results which, in turn, could be followed by tial therefore to harmonize or unify the approach with re- an exchange and acceptance of examination results of the spect to at least two major elements involved in international other countries involved in such a program. This might then patent filing, namely, documentation and patent laws and be followed by treaties providing for the mutual recognition procedures. of patents granted by the other patent offices. Thereafter, it " In the field of documentation there is, of course, con- might be possible to establish an international organization siderable activity at the present time among various patent including an international patent office which would issue offices of the world. There are, for example, the activities of patents. In such an international patent system, it might, of ICIREPAT which are directed towards developing the in- course, be advisable to have regional offices located in several creased utilization of mechanized searching through the co- parts of the world to make the international patent office operative efforts of a number of examining patent offices of more conveniently available to patent applicants on a geo- the world. In addition, ICIREPAT is also currently engaged graphical basis. The patents granted by such an international in studying the feasibility of standardizing the format of patent office might initially have national effect in the patent applications and patents. There is also the develop- various nations of the world, or possibly supra-national effect ment of the International Patent Classification, which has in joint economic communities of nations where this ap- been under study for the past several years, and which is peared desirable. Ultimately, the patent granted by such an expected to be completed next year. Further, the Inter- international patent office might have international effect in national Bureau for the Protection of Industrial Property in those countries belonging to the international organization. Geneva is currently studying the feasibility of initiating a " It should be noted that it would be possible in the de- project which would provide information on families of velopment of such an international patent system to omit patents. some of the steps mentioned. The proposed Nordic patent 288 INDUSTRIAL PROPERTY — DECEMBER 1965

system, involving mutual recognition of patents granted by The author deals at some length for instance, with the important the patent offices involved, is an example of this. and often controversial subject of licensing. He considers the law of " Participation in the development of an international Great Britain and other " registered user " countries such as Australia, Canada and South Africa, drawing attention to differences which exist patent system such as just outlined, could be open to any and quoting not only from decided cases but also from authoritative examining patent office having a world-wide search capabi- articles on the subject. His treatment of the law in Great Britain is stim- lity, either on the basis of maintaining its own world-wide ulating, boldly differing from a view held in many quarters. The Bowden search file, or by obtaining a world-wide search elsewhere, as Wire decision is carefully analyzed with interesting results. Licensing in for example, the International Patent Institute at The Hague. the United States, Italy, Luxembourg, Switzerland and the Netherlands also receives specific treatment. In addition, it appears that an effective working relationship Discussions of legal principles are amply balanced by practical ad- leading to such an international system could be worked out vice such as that relating to marking, the proper use of trademarks, between countries having full or deferred patent examination registration at customs and registrations under the Madrid Agreement, systems, or between national patent offices and regional to mention but a few. patent offices. However, the closer the world approaches an Set out fully, as appendices, are the London and Lisbon texts of the Paris Union Convention, the London and Nice texts of the Madrid international patent system where patents granted would be Agreement and Regulations, the Pan-American Convention of 1929, the effective in large geographical or economic areas, the greater African and Malagasy Convention and Articles 85 to 90 of the Rome would appear the necessity that actual or provisional patent Treaty. protection become effective only after a full examination. The information contained in this book is basic to an international practice. The reader is furnished with a sound background to the subject " In conclusion, I would like to say that I believe history and his attention is drawn to problems and pitfalls to be found in seek- will record in the immediate years ahead, some very signifi- ing trademark protection on an international level. cant developments in the international patent picture. The G. C. Webster. spirit of international cooperation is certainly in the air to- day, and we in the United States hope that this International Day Program will help to promote this spirit. Such coopera- Talâlmânyok, Szabadalmak [Inventions, Patents], by Istvân Gazda, Dezsö tion, we feel, will increase the effectiveness of the inter- Kövesdi and Dr. Sândor Vida. Közgazdasagi es Jogi Könyvkiadö (Pub- national system for the protection of industrial property. It lishing House for Economics and Law), Budapest, 1963. will also speed industrial development throughout the world This book of over 300 pages, written in Hungarian, deals with the by reducing costs and saving time. And finally, it will build patent law of Hungary today, still mainly based on the Statute on Patents international relationships which can assure peaceful coopera- for Inventions of 1895. The book frequently compares the solutions of Hungarian law with tion between all nations of the world. " those found in the laws of other countries. These comparisons are par- ticularly useful as they place the Hungarian situation in perspective. They are also a testimony to the authors' intimate knowledge of the patent laws of other countries and of the Paris Convention. A. B.

BOOK REVIEWS Upphovsrättsligt skydd for Brukskonst [Copyright protection of applied art], by Sei>e Ljungman. One volume of 239 pages. Published by Svenska Slöjdföreningen, Stockholm, 1965. (In Swedish)

International Trademark Protection, by Eric D. Offner. One volume of This book is entirely devoted to the question of protection of the 285 pages. Published by Fieldston Press, New York, 1965. designs of useful articles. In Sweden, such protection is, for all practical purposes, dependent on the copyright law, since all that an antiquated " The vastness of this subject matter, when considered on an inter- law on industrial designs offers is protection for certain articles of the national scale, has directed the author to apply a comparative law ap- metal industry. proach to the international protection of trademarks. The large body of The main body of the book is constituted by the reproduction of statutes and case law required the choice of specific examples to indicate sixty opinions which were rendered between 1954 and 1963 by a Com- the international movement of the law. " This passage from the Preface mittee of the Swedish Association for Handicraft (Svenska Slöjdförenin- illustrates Mr. Offner's objectives and in the compact text which follows gens) specially created to decide questions of infringement. Of the 60 he proceeds most competently to deal with the subject in an interesting cases, 15 deal with furniture, 10 with fabrics, 9 with light fixtures, 6 and very readable manner. with household equipment, 3 each with glassware, candlesticks, ceramics, The book is divided into the following main headings: planning a and mirrors, 2 with radio and television sets, and the rest with other world-wide trademark filing program; home registrations; user require- items. The text of most of the cases is accompanied by photographs of ments; classification of goods; ex parte prosecution of applications; the the plaintiff's and the defendant's product, briefly indicating, both in exercise of prior rights; exercise of rights of proprietorship; and recent Swedish and English, whether the first was found to be capable of pro- international developments. Under conveniently chosen sub-headings the tection under the copyright law and, if so, whether the second was held whole scope of international trademark activity is traversed. to constitute infringement. It is not an object of the book to list the requirements or detail the The book also contains the text of the opinions of the Courts -— procedure for the filing and prosecution of applications in any specific three of them coming from the Supreme Court itself — when there was country. But having read the book, the reader will have a broad concept appeal from the opinion of the Committee. It is remarkable that all the of the various systems and principles applicable. He will find readily at opinions were upheld by the Courts. A. B. hand in this book what he may only find with difficulty, if at all, else- where. And he will not find a bare statement of the law, but he will have the benefit of the author's views, based on extensive experience in this field. NEWS ITEMS 289

Le nouveau régime des marques [The new regime for marks], by Paul guideline for the competent authorities of the EEC countries and the Mathély. Vol. XCIX, No. 1, of " Annales de la propriété industrielle, EEC itself in charting the future of their legal institutions in this field artistique et littéraire ", 1965. of law which is obviously of great importance for such a powerful in- tegrated economy as that of the members of the European Common As readers know, the French Law of June 23, 1857, relating to Market. A. B. trademarks and service marks has been replaced since August 1, 1965, by the new law of December 31, 1964, as amended at June 23, 1965. Paul Mathély, Attorney at the Court of Paris, has written what amounts to a veritable monograph on this extremely important legislative reform. Under the title " The new French law relating to marks ", this special 111-page number of the review Annales de la propriété indus- trielle, artistique et littéraire, founded 110 years ago, contains 80 pages of commentary by Mr. Mathély, followed by the texts of the laws, decrees, and orders, which constitute the new body of legal provisions on marks. NEWS ITEMS In his study, Mr. Mathély traces the history of this reform and com- ments on the new provisions as compared with the old, placing special emphasis on the changes brought about by the new system. The work is written with admirable lucidity and shows an infallible Appointment of Director of Industrial Property, Chambers sense of distinction between what is essential and what is of minor im- of Commerce and Industry and Handicrafts portance. It will greatly facilitate comprehension and practical applica- (France) tion of the new law. A. B. By Decree of the President of the French Republic dated July 28, 1965, Mr. François Chapel, Inspector General of Industry and Commerce, has been appointed Director of Industrial Property, Chambers of Com- Das Recht des unlauteren Wettbewerbs in den Mitgliedstaaten der Euro- merce and Industry and Handicrafts. päischen Wirtschaftsgemeinschaft [The law of unfair competition in the Member States of the European Economic Community], Volume I, having the subtitle " Vergleichende Darstellung mit Vorschlägen zur Rechtsangleichung " [Comparative analysis together with proposals for the harmonization of the law), by Eugen Vlmer. One volume of 343 Appointment of new Director of the National Institute pages. Published by C. H. Beck'sche Verlagsbuchhandlung, Munich, and of Industrial Property Carl Heymanns Verlag KG., Cologne, 1965. (In German) (France) The Commission of the European Economic Community (EEC) in By Decree of the Prime Minister and of the Minister of Industry of Brussels commissioned the Institute for Foreign and International Patent, France, dated November 15, 1965, Mr. François Savignon, Civil Adminis- Copyright and Trademark Law of the University of Munich to establish trator (hors classe), Deputy Director of the Central Administration of a Gutachten (opinion) on the law of unfair competition in the six Mem- the Ministry of Industry, has been appointed as from October 1, 1965, ber States of the EEC. Head of the Industrial Property Service at the Ministry of Industry. As The work, when publication is completed, will consist of five vol- from that date, he has taken over his duties of Director of the National umes. The volume here reviewed is Volume I. The other four volumes Institute of Industrial Property. will deal with the national laws of France, Germany, Italy, and the three Mr. François Savignon succeeds Mr. Guillaume Finniss, who has been Benelux States, respectively. appointed Director General of the International Patent Institute at The Volume I is a comparative study of the six laws and contains sug- Hague. gestions for harmonizing them. It is broken down into four Chapters. The first Chapter deals with the history of the law of unfair com- petition in the six countries and with the fontes juris, including the Paris Convention, the Madrid Agreement (Indications of Source), and the Lis- Appointment of Director General of the International bon Agreement (Appellations of Origin). Patent Institute The second Chapter is devoted to the basic principles underlying (The Hague) unfair competition law, and the third Chapter to the various forms of unfair competition, including in particular the causing of confusion, the The Governing Body of the International Patent Institute has ap- exploitation of the work of others, dénigrement, misleading publicity, pointed Mr. Guillaume Finniss, already well-known to our readers, Direc- false indications of source and origin, boycott, discrimination, price under- tor General of the International Patent Institute, as from October 1, cutting, prizes and rebates. All these are treated in the form of com- 1965. parative analyses in which not only the statutes but also the court deci- * sions and international treaties are taken into account. The United International Bureaux take this opportunity of congra- The fourth Chapter contains suggestions for harmonization, in all tulating Messrs. Chapel, Savignon and Finniss on their new appointments these fields, among the laws of the six EEC countries. and wish them every success. The work is truly monumental. It covers the existing law in detail and as completely as is practical. The presentation is organized in a way which allows the differences and affinities to be grasped at a glance between the various subjects of that vast territory of law which is desig- nated under the heading of unfair competition. The style is crystal clear and very readable. The most important points are duly emphasized, and placed in a perspective which facilitates their understanding. The part on suggestions is down to earth and imaginative at the same time. It suggests no general panacea but examines separately each of the questions — so different in their nature and economic and emo- tional importance for the six countries — and proposes realistic solutions. Thus, the work of Professor Ulmer is not only invaluable for scholars and practicing lawyers but will also undoubtedly be most influential as a • • -.

290 INDUSTRIAL PROPERTY — DECEMBER 1965

CALENDAR

Meetings of BIRPI

Date and Place Title Object Invitations to Participate Observers Invited

December 9 to 10 Advisory Group of the In- Index of Parallel Patents Austria, Canada, France, International Patent Institute, Com- 1965 ternational Committee of Germany (Fed. Rep.), Hun- mittee for International Cooperation in Novelty-Examining Patent gary, Japan, Netherlands, Information Retrieval among Examining Geneva Offices Poland, Sweden, Switzer- Patent Offices (ICIREPAT) land, Union of Soviet So- cialist Republics, United Kingdom of Great Britain and Northern Ireland, United States of America

December 13 Ad hoc Conference of the Adaptation of the Regula- All Member States of the All other Member States of the Paris to 17, 1965 Directors of National In- tions of the Madrid Agree- Madrid Agreement (Trade- Union dustrial Property Offices ment, Nice Text (Trade- marks) Geneva marks)

December 18, Meeting of Representatives Stockholm Conference Member States of the 1965 of Member States of the Madrid Union Madrid Union Geneva

December 18, Meeting of Representatives Stockholm Conference Member States of the 1965 of Member States of the Hague Union Hague Union

February 7 Asian Seminar on Industrial Discussion of industrial All Asian States Members All non-Asian Member States of the to 11, 1966 Property property questions of spe- of the United Nations or a Paris Union; United Nations; Inter- cial interest to Asian coun- United Nations Specialized national Patent Institute; International Colombo tries Agency Association for the Protection of Indus- trial Property; International Chamber of Commerce; International Federation of Patent Agents

Meetings of Other International Organizations concerned with Intellectnal Property

Place Date Organization Title

Paris March 28 to April 2, 1966 International Confederation of Societies of Authors Legislative Committee, Confédéral and Composers (CISAC) Council, Federal Bureaux

Tokyo April 11 to 16, 1966 International Association for the Protection of Congress Industrial Property (IAPIP)

Prague June 9 to 18, 1966 International Confederation of Societies of Authors Congress and Composers (CISAC)