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Plant Breeders' Rights CHAPTER 4.5 Plant Breeders’ Rights: An Introduction williaM h. lesseR, Susan Eckert Lynch Professor of Science and Business, Chair of the Department of Applied Economics and Management, Cornell University, U.S.A ABSTRACT anywhere else, until many centuries had passed. Based on the averages, there is a good chance that your Plants are one example of this. Food, fiber, and country has decided to fulfill its TRIPS (Trade-Related ornamental crops (F hybrids excepted) carry in Aspects of Intellectual Property Rights) Agreement com- 1 mitments by selecting an “effective sui generis system” over themselves the ability to regenerate true to form, patents for plants, something more commonly known as whether sexually or asexually. Anyone hold- plant breeders’ rights. This chapter attempts to explain ing a seed or a cutting immediately possesses all what plant breeders’ rights are by describing the organi- the skills of the master to recreate the variety of zation and function of the plant breeders’ rights system. Covering the objectives, scope, protection requirements, plant from which the seed or cutting came. Yet and examination provisions, the chapter compares the not until 1930 (the U.S. Plant Patent Act) did plant breeders’ rights system with the patent system and legal restrictions apply to the use of plant ma- attempts to clarify specific puzzling issues. These include terials for regenerative purposes, and even then concerns that the latest UPOV Act does not address farm- protection only applied to asexually propagated er seed savings (the choice is left to individual countries, with virtually all countries choosing to allow seed saving). plants (excluding tubers). An additional 30 years Plant breeders’ rights are less puzzling once the intent and passed before a harmonized format for legisla- structure of the system are understood. The system is, in tion covering IP protection for all plant varieties fact, one with very specific, if narrow, objectives. emerged. That is the International Convention for the Protection of New Varieties of Plants, or UPOV in its French acronym, an international 1. Introduction treaty first adopted in 1961 and revised several Guild members in mid-15th century Venice, times, the latest in 1991. The form of intellectual averse to direct competition from former ap- property created by UPOV is known widely, if prentices, passed a law prohibiting the apprentice informally, as plants breeders’ rights (PBR). This from entering the trade until about 18 years had chapter describes the acts and modes of opera- lapsed. That edict, according to intellectual prop- tion of PBR under UPOV-compatible national erty (IP) historians, marked the origins of pat- legislation. While every effort is made here to ents. Indeed, the duration of a patent (20 years be complete and accurate, it would be impos- from date of filing the application) is said to be sible discuss all of the considerations needed to modeled after that apprenticeship period in long- appreciate every possible contingency. Persons ago Venice. Yet some easily copied creations were wanting to learn more should refer to the text not granted similar IP protection, in Venice or of UPOV and other official documents, such as Lesser WH. 2007. Plant Breeders’ Rights: An Introduction. In Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org. © 2007. WH Lesser. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncom- mercial purposes is permitted and encouraged. HANDBOOK OF BEST PRACTICES | 381 lESSER at the UPOV Web site.1 The Handbook chapter only a single sentence refers to PBR. Article PBR in the Developing World, discusses the ef- 27.3(b) reads, in part, that WTO members must fects of PBR laws and the available alternatives at provide plant variety patents, “an effective sui ge- the national level. neris system,” or both. Most countries new to pro- tecting plants are opting for PBR over patents. PBR is clearly a sui generis system, but what con- 2. What are PlanT Breeders’ Rights? stitutes “effective” is less clear. PBR is a patent-like system that allows the plant variety owner to prohibit specific unauthorized uses of the variety. PBR laws apply only to plants, . What RoLE does UPOV Play? and hence are among the class of sui generis sys- If PBR is based on national law, what role does tems, that is, special purpose systems. Laws ap- UPOV, an international convention, play? plying to computer chips (that is, mask works … Essentially, UPOV establishes a framework law the set of templates used to manufacture chips) that may be adopted by countries into their own form another sui generis system. In fact, sui gene- national laws. After having done so, a country ris systems have been applied to everything from could submit its national law to the governing aeronautics to Xerox® machines. These systems body of UPOV for evaluation and, if the law was differ significantly from patent laws. The differ- found to have similar critical elements, the coun- ences between the two systems—and the similari- try could become a UPOV-signatory nation. In ties—are explained below. practice, there is usually an informal assessment PBRs, like patents and other forms of IP law, done by UPOV prior to final diplomatic submis- are forms of national legislation. That is, protec- sion. UPOV does provide a mechanism for har- tion applies only in countries where protection monizing national laws and providing standard- has been sought and granted. Thus, the owner of ized definitions/interpretations of terms. UPOV a sunflower variety protected in the United States also requires nondiscrimination against foreign would have no legal control over how that vari- applicants of other Union members (National ety was used inside Canada. Critically, however, Treatment, Article 4 of 1991 Act). However, that the variety owner could prevent the importation Article has largely been supplanted by the geo- into the United States of the variety, including (in graphically broader national treatment require- most cases but depending on the specific coun- ments of TRIPS (Article 3). UPOV member states try’s sui generis laws with regard to plant varieties) have training and other technical support avail- grain, plants, plant parts, and, in some countries, able to them, although an annual membership fee even manufactured products produced using the based on national income is imposed. Countries protected variety. In the case of a U.S. PVP-pro- can and do have PBR systems without joining tected sunflower variety, the variety owner could UPOV, but little is known about their opera- not prevent it from being planted, grown, har- tion and few countries have implemented them. vested, or sold inside Canada, but U.S. PVP-pro- Since its inception, UPOV has adopted four acts tected sunflower seed, sunflower meal, sunflower (1961, 1972, 1978, and 1991). Members may oil, and similar products could be prevented from at their discretion adopt a more recent Act, but entering the U.S. stream of commerce. older acts are closed. Presently, the 1991 Act is PBR under the TRIPS Agreement (Agreement the only one now open to new members. There on Trade-Related Aspects of Intellectual Property are some important differences between the 1978 Rights) is a component of the World Trade and 1991 acts, to which essentially all current Organization (WTO). Signatories of WTO (cur- members belong. These differences are discussed rently about 150) are committed to comply with below. All terms and references here refer to these the TRIPS requirements of a harmonized mini- acts. There are some national-level differences, mum level of IP rights protection. Although the but for the most part identifying them involves a TRIPS text is quite exhaustive in most regards, greater level of detail than is possible here. 382 | HANDBOOK OF BEST PRACTICES CHAPTER . HoW do pBRS WoRk? geneous landraces rarely satisfy the uniformity PBR systems, like other IP systems, have three and stability requirements for PBR protection, major components: so a conflict in practice seldom arises. This does 1. Definition/identification of protectable sub- not mean that a landrace is specifically excluded ject matter from PBR protection, or that one could not be 2. Requirements that must be met to receive protected. Rather, the UPOV protection re- protection quirements demand more specific attention to a 3. Rights of the variety owner landrace (such as backcrossing), so the issue of whether, or not, landraces qualify for PBR pro- .1 Identifying what can be protected tection actually seldom arises. As to UPOV, it As a sui generis system, protection is limited to is quite evident that the system is intended for plant “varieties,” but this term lacks a standard planting materials, whether they are food crops definition. The definition in the 1991 Act (Article or horticultural varieties, that will be sold on a 1(vi)) reads in part: commercial basis. a plant grouping . Another area of potential overlap is with • defined by the expression of the character- the offering of patents and PBR for a plant. The istics … TRIPS Agreement specifically allows patents for • distinguished … by the expression of at plants, and, in the United States, both forms of least one of the said characteristics and protection have been available for some time. The • [having] suitability for being propagated matter has, however, not been so straightforward unchanged in E.U. countries, due to the adoption of the European Patent Convention (EPC). The EPC Beyond its technical relevance, this defini- (Article 53(b)) excludes protection for “plant or tion is significant since it departs from the lan- animal varieties,” raising the question of just what guage of earlier acts.
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