Protection of New Plant Varieties under the TRIPS Agreement

Universities Research Journal 2011, Vol. 4, No. 7 Protection of New Plant Varieties under the TRIPS Agreement Nyo Nyo Tin Abstract Intellectual property refers to property in creation of human mind. Intellectual property rights are exclusive rights given to the results gained by intellectual activities of human beings. They are intangible rights, important for economic development and have economic values. Since a new kind of plant results from the creation of the breeder, it needs to protect the intellectual property rights resulted from such plant. The Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement) is the first treaty which establishes universal minimum standard for the protection of intellectual property, including patents, copyrights, trademarks, industrial designs, integrated circuits and trade secrets. The TRIPS Agreement also provides for the protection of new plant varieties in article 27.3(b), and under this article, member states have to provide for the protection of new plant varieties either by patent or by sui generis system or by a combination of two. Key words: Intellectual property, plant varieties, sui-generis, article 27.3(b), IPR. Introduction Today, possession of land, labour and capital are not enough to get a success for a country, and it needs creativity and innovation as the new drivers for development. Therefore, intellectual property plays an important role in an increasingly broad range of areas, ranging from the Internet to health care to nearly all aspects of science and technology and literature and the arts. Normally, plant and plant varieties are regarded as common property. However, because of the development of technology and more investment of private sector in plant breeding, it needs to provide for breeders to be able to recoup their investments in breeding new varieties. The TRIPS Agreement provides for the protection of new plant varieties either by patent or by sui-generis system or by a combination of two in article 27.3(b). Tutor, Department of Law, University of Mandalay

224 Universities Research Journal 2011, Vol. 4, No. 7 Materials and Methods A review was made of the various concepts to intellectual property rights and plant varieties and an analytical study of the TRIPS Agreement and the UPOV Convention. Intellectual Property, Intellectual Property Right and Plant Varieties According to Article 1(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) 1994, "intellectual property refers to all categories of intellectual property, namely, copyright and neighbouring right, trademarks, geographical indications, industrial designs, patents, layout design of integrated circuits and undisclosed information". Article 2(vii) of the Convention establishing the World Intellectual Property Organization 1967 provides that intellectual property shall include the rights relating to Literary, artistic and scientific works; performances of performing artists, phonograms, and broadcasts; inventions in all fields of human endeavour; scientific discoveries; industrial designs; trademarks, service marks, and commercial names and designations; protection against unfair competitions, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields. According to this article, the scope of intellectual property rights covers anything arising out of human mind. So, it covers not only writings of authors but also a plant variety bred by man because they are made from the knowledge and creativity of man. If there is no such right on plant variety, it makes the breeder to deprive the opportunity to profit from his investment since a plant variety can be easily reproduced. Originally, the need for protecting new varieties was raised by the breeders of ornamental plants. The rationale for plant variety protection (PVP) is to provide an opportunity for breeders to gain returns from the investment made in developing a new variety. It is also believed that protection may stimulate private sector investment and facilitate technology transfer, thereby benefiting the framers and consumers. 1 The definitions of plant varieties are many and varied. Although the TRIPS Agreement recognizes the protection of new plant varieties, it does 1 Plant breeding and farmer participation, FAO of the United Nations, Rome, 2009, p.630.

Universities Research Journal 2011, Vol. 4, No. 7 225 not provide an exact definition of protectable plant varieties. A full legal definition can be seen in article 1(vi) of the International Convention for the Protection of New Varieties of plants (UPOV Convention) as follows: Variety means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder s right are fully met, can be (a) defined by the expression of the characteristics resulting from a given genotype or combination of genotypes; (b) distinguished from any other plant grouping by the expression of at least one of the said characteristics; and (c) considered as a unit with regard to its suitability for being propagated unchanged. Agreement on Trade-related Aspects of Intellectual Property Rights 1994 The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) was made between the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO). It is an integral part of the Marrakesh Agreement Establishing the World Trade Organization concluded on 15 April 1994 and entered into force on 1 January 1995. The Agreement binds all Members of the WTO. WTO has 153 member states, as on 10 March 2011. Myanmar is a founder member of the WTO and therefore, also a party to the TRIPS Agreement. The Agreement is based on the principles of national treatment and most-favoured- nation treatment. The objective of the Agreement is stated in article 7 that the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovations and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

226 Universities Research Journal 2011, Vol. 4, No. 7 Provisions for the Protection of New Plant Varieties The provisions relating to plant varieties are stated in Article 27.3(b) as follows: Members may also exclude from patentability plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. Article 27.3(b) appears to establish clear lines of protectability: (i) Plants, animals and essentially biological processes for the production of plants and animals which may be excluded from patent protection; (ii) Inventions concerning micro-organisms, non-biological and microbiological processes for which patent protection must be available; and (iii) Plant varieties for which protection must be provided, whether by patent and/or effective sui generis right. 1 Although the protection of plant varieties is recognized in the Agreement, it fails to provide any definition as to what is a plant variety. In addition, the distinction between a plant, that is, a living organism that belongs interpretation to the plant kingdom and a plant variety must be borne in mind for the interpretation of this clause. For example, when a pest-resistant gene is introduced by means of genetic engineering in a certain number of cotton plants, one or more transgenic plants are obtained. The patentability of these plants may or may not be admitted under national law. These plants, however, do not necessarily constitute a plant variety, unless whenever cultivated, the resulting plants retain certain predetermined characteristics and can be propagated unchanged. 2 1 Margaret Llewlyn and Mike Adcock, European Plant Intellectual Property, Hart Publishing, 2006, p.117. 2 www. iprsonline.org/unctadictsd/ /RB2.5-Patents-2.5.5-update.pdf,p.389.

Universities Research Journal 2011, Vol. 4, No. 7 227 According to article 27.3(b), it can be said in brief that members must provide for the protection of plant varieties either by patent or sui generis system or by a combination of them. Patent Protection under the TRIPS Agreement The provisions relating to patent protection are stated in Article 27. Under the TRIPS Agreement, members must grant patent protection for any inventions in all fields of technology, whether products or processes. But, they must be new, involve an inventive step and are capable of industrial application. 1 This article establishes the primary obligation. However, the TRIPS Agreement contains no definition of invention. The requirement is that anything which bears the qualities of novelty, inventive step and capacity for industrial application is patentable. The general principle is, therefore, that any invention involving genetic material must be regarded as patentable provided it meets the threshold for protection. 2 For patent protection, it is also required to disclose the invention. 3 Exclusions form patentability can also be seen in article 27.2 and article 27.3(a). According to these articles, members may exclude from patentability: inventions to protect ordre public or morality, human, animal or plant life or health or to avoid serious prejudice to the environment 4, and diagnostic, therapeutic and surgical methods for the treatment of humans or animals 5. Under the patent protection, the patent owner has the right to prevent third parties from making, using, offering for sale, selling or importing the product, 6 the patent process and product obtained directly by that process. 7 The term of protection shall not end before the expiration of twenty years from the date of filing. 8 1 Article 27.1 of the TRIPS Agreement. 2 Margaret Llewlyn and Mike Adcock, op.cit, pp.104-105. 3 Article 29 of the TRIPS Agreement. 4 Article 27.2 of the TRIPS Agreement. 5 Article 27.3(a) of the TRIPS Agreement. 6 Article 28.1(a) of the TRIPS Agreement. 7 Article 28.1(b) of the TRIPS Agreement. 8 Article 33 of the TRIPS Agreement.

228 Universities Research Journal 2011, Vol. 4, No. 7 Protection under the Sui Generis System The TRIPS Agreement does not give any definition for the term sui generis. It is a Latin word which means specific or of its own kind. Under the sui generis system, member states have the chance to set the protection system with their own discretion. However, it needs to comply with the requirements of the Agreement such as national treatment and most-favoured-nations treatment, under which member states are obliged to grant to nationals of other states the same rights as to its own nationals. It is important here to observe that IPR protection for plants and plant varieties was in practice in some countries much earlier than the Uruguay Round of GATT negotiations or the establishment of WTO. In 1930, a legislative instrument was established in the USA for patenting varieties of asexually propagated plants. 1 In addition, in 1920s and 1930s several countries introduced legislation that gradually evolved into a sui generis system of protection ( breeders rights ) distinct from the patent system. Based on requirements of distinctness, novelty, uniformity and stability, breeders rights have typically been permitted to control the commercialization of propagating materials (like seeds), without interfering, however, either with the use of saved seeds by farmers on their own land ( farmers privilege ) or with the development of new varieties by a third party taking as a starting point a protected variety (breeders exemption ). Such sui generis regime obtained recognition at the international level in the 1960s with the adoption of the International Convention for the Protection of New Varieties of Plants (UPOV Convention). The Convention introduced minimum standards for the recognition of breeders rights. 2 Even before the language of the TRIPS Agreement was finalised, a member of the Secretariat of the General Agreement on Tariffs and Trade (GATT) said that TRIPS would oblige parties to provide for the protection of plant varieties, but would leave them free to decide whether to grant such protection through patents, through an effective sui generis system such as 1 Sudhir Kochhar, System Perspective for IPR Protection in the Plant Kingdom, vol.9, July 2004, Journal of African Law, 45, 1(2001), p.344. 2 www. iprsonline.org/unctadictsd/ /RB2.5-Patents-2.5.5-update.pdf, p.394.

Universities Research Journal 2011, Vol. 4, No. 7 229 the UPOV system, or through any combination of two. This statement identifies UPOV as an effective sui generis system. 1 However, the provisions of TRIPS on plant varieties do not refer to or incorporate any pre-existing intellectual property agreements, including the UPOV Convention. This omission contrasts sharply with other fields of intellectual property, such as patents, copyrights and trademarks, for which TRIPS expressly requires WTO Members to comply with the standards of protection contained in pre-existing IPR agreements, such as the Berne Convention for the Protection of Literary and Artistic Works and the Paris Convention for the Protection of Industrial Property. As a result of this omission, WTO Members are neither required to become members of UPOV nor to enact national laws consistent with the UPOV Convention in order to comply with their obligations under TRIPS. International Convention for the Protection of New Varieties of Plants (UPOPV Convention) 1961 The International Convention for the Protection of New Varieties of Plants (UPOV Convention) was established in Paris in 1961, and from which International Union for the Protection of New Varieties of Plants (UPOV) emerged. Since 1961, the Convention was revised three times: in 1972, 1978 and 1991. The 1991 Act entered into force on 24 April 1998 and on that same date the 1978 Act was closed to future accessions except by a few states already in the process of adhering to it. 2 As of January 15, 2011, the UPOV has 68 member states. Among them, 45 states were parties to the 1991 Act, 22 states to the 1978 Act and 1 to the 1962/1972 Act. Myanmar is not a member of this Convention. The purpose of the Convention is to recognize and ensure the interests of the breeders of new plant varieties by giving the property right in accordance with defined conditions. 3 The UPOV Convention establishes a national treatment system under which citizens of any member state are treated as citizens of all member states in obtaining plant breeders right. 1 Biswajt Dhar, Sui Generis Systems for Plant Variety Protection: Options under TRIPS, April 2002, p.7. 2 Laurance R. Helfer, Intellectual Property Rights in Plant Varieties: International Legal Regimes and Policy Options for National Governments, Food and Agriculture Organization of the United Nations, 2004, p.21. 3 Article 1 of the 1961 Act.

230 Universities Research Journal 2011, Vol. 4, No. 7 Under the 1991 Act, breeder means: -the person who bred, or discovered and developed, a variety, -the person who is the employer of the aforementioned person or who has commissioned the latter s work, where the laws of the relevant Contracting Party so provide, or -the successor in title of the first or second aforementioned person as the case may be. 1 Variety means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder s right are fully met, can be - defined by the expression of the characteristics resulting from a given genotype or combination of genotypes, - distinguished from any other plant grouping by the expression of at least one of the said characteristics and - considered as a unit with regard to its suitability for being propagated unchanged. 2 The Convention covers all genera and species for protection 3 and it grants dual protection for the same genus. 4 The scope of the breeder s right extends not only to production or reproduction, conditioning for the purpose of propagation, offering for sale, selling or other marketing, exporting, importing and stocking for any of the above mentioned purposes of the propagating material of the protected variety 5 but also to the harvested material, including essentially derived varieties. 6 The minimum period of protection is 25 years for trees and vines, and 20 years for other plants. 7 In order to be protectable under the UPOV Convention, the variety must meet with four conditions: distinctness 8, uniformity 1, stability 2 and novelty 3. In In addition, the variety must have a denomination. 4 1 Article 1(iv) of the 1991 Act. 2 Article 1(vi) of the 1991 Act. 3 Article 3 of the 1991 Act. 4 Article 2 of the 1991 Act. 5 Article 14(1) of the 1991 Act. 6 Articles 14(2-5) of the 1991 Act. 7 Article 19 of the 1991 Act. 8 Article 7 of the 1991 Act.

Universities Research Journal 2011, Vol. 4, No. 7 231 There are two major exceptions and limitations to exclusive rights existed under the UPOV Convention: a breeders exemption and a farmers privileges. Article 15(1) of the 1991 Act states the compulsory exception that the breeder s right shall not extend to- (i) acts done privately and for non-commercial purposes, (ii) acts done for experimental purposes and (iii) acts done for the purpose of breeding other varieties, and, except where the provisions of Article 14(5) apply, acts referred to in Article 14(1) to Article 14(4) in respect of such other varieties. With regard to farmers privilege, an optional exception is stated in Article 15(2) as follows: Notwithstanding Article 14, each Contracting Party may, within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder, restrict the breeder s right in relation to any variety in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety or a variety covered by Article 14(5)(a)(i) or Article14(5)(a)(ii). From Article 15, it can be noted that private and non-commercial activities, including using protected varieties to create new varieties are outside the control of the breeder. However, this exception is itself restricted in its application to such new varieties as are not essentially derived from protected varieties. The drafters added this restriction to prevent second generation breeders from making, within merely cosmetic changes to existing varieties in order to claim protection for a new variety. 5 In addition, this article states farmers privilege explicitly. But there are conditions: first, the permit to use the variety must be within reasonable 1 Article 8 of the 1991 Act. 2 Article 9 of the 1991 Act. 3 Article 6 of the 1991 Act. 4 Article 20 of the 1991 Act. 5 Laurence R. Helfer, Intellectual Property Rights in Plant Varieties: International Legal Regimes and Policy Options for National Governments, Food and Agriculture Organization of the United Nations, 2004,p.28.

232 Universities Research Journal 2011, Vol. 4, No. 7 limits. In addition, the use of the protected variety must be on their own holdings and not for commercial purposes. Under the Convention, the breeder can file his first application for breeder s right in any member state and also apply to other member states without waiting for the grant of his first application. 1 It also sets up a multilateral priority filing system, under which an application for protection filed in one member state establishes a filing date for applications filed in all other member states within one year of that original filing date. This allows a breeder to file in any one member country within the one-year period required to preserve the novelty of his variety, and the novelty of the variety will still be recognized when he files in other member countries within one year of his original filing date. 2 From the above facts, the UPOV Convention can be said as a readymade sui generis system in which the standards required for the protection of plant varieties are stated. Although it grants monopoly right to breeders, it recognizes the farmers privileges and the use for research activities over the protected variety. In addition, it also provides national treatment and breeders of the member states can get the right of priority in filing the application for the grant of breeder s right on the same variety in any of the member states. In contrast to the patent right, the eligibility requirements are more flexible. So, it is suitable for member states of the TRIPS Agreement to resort to the UPOV system as an effective sui generis system. Comparison of Main Provisions of Plant Breeders 3 Rights under UPOV 1991 and Patent Provisions 1991 UPOV Act Patent Protection Plant varieties of all genera Inventions coverage and species Requirements Novelty Distinctness Novelty Inventive step (or non- 1 Article 10 of the 1991 Act. 2 http//en. wikipedia. org/ wiki/ Plant-Breeders -rights. 3 Graham Dutfield, Intellectual Property Rights, Trade and Biodiversity: The Case of Seeds and Plant Varieties, Background Paper, Intersessional Meeting on the Operations of the Convention, 28-30 June 1999, p.21.

Universities Research Journal 2011, Vol. 4, No. 7 233 Provisions 1991 UPOV Act Patent Protection term Protection scope Breeders exemption Farmers privilege Prohibition of double protection Uniformity Stability Variety denomination 20-25 years 20 years Minimum scope: Producing, conditioning, offering for sale, selling or other marketing, exporting, importing, stocking for above purposes of propagating material of the variety. Plus, some acts in relation to harvested material if obtained through an unauthorized use of propagating material and if the breeder has had no reasonable opportunity to exercise his right in relation to the propagating material. Yes. However, essentially derived varieties cannot be exploited without permission of holder of rights in the protected initial variety. Up to national laws. No. obviousness) Industrial application Enabling disclosure In respect of the product: Making, importing, offering for sale, selling and using the product; stocking for purposes of offering for sale, etc. In respect of a process: Using the process; doing any of the above-mentioned acts in respect of a product obtained directly by means of the process. No. No. Up to national laws.

234 Universities Research Journal 2011, Vol. 4, No. 7 Conclusion Plant genetic resources are the foundation of food production. But, the process of plant breeding is a long-term investment and a plant variety, once produced, can be easily reproduced and propagated. Therefore, it is difficult to recoup their investments and it would undermine the incentive to engage in plant breeding. Only if there is a sound protection system, breeders can recover their investments and can get an incentive for future investments. In addition, protection of plant varieties is a way of promotion of food security, and it should be taken into account as a matter of national development. The TRIPS Agreement provides for the protection of new plant varieties either by patent or by a sui generis system or by a combination of them. Therefore, member states have the right to choose the system which is more suitable with the situation of the state concerned. Under the patent protection as stated in the Agreement, the right conferred is the exclusive right and there is no exemption such as breeders exemption and farmers rights. Under the provisions of the UPOV Convention, a ready-made sui generis system, the requirements to be protectable are more flexible and there can be exemptions such as breeders exemption and farmers rights. Therefore, member states should opt for an effective sui generis system for the protection of new plant varieties. Myanmar, a member of the TRIPS Agreement, is an agricultural country rich in plant genetic resources, and most of its exports are agricultural products such as rice, maize, beans, etc. Therefore, agriculture plays an important role in national economy and the development of improved seeds will help in the development of national economy. Thus, as a member of the TRIPS Agreement, Myanmar should provide for the protection of new plant varieties under the sui generis system. In addition, Myanmar should sign the UPOV Convention because it is compatible with the TRIPS Agreement. Besides, most of its contracting parties are developed countries and by becoming a member of the UPOV Convention, national treatment and right of priority can be obtained and therefore, it could be an incentive for local breeders to make more investments and a support for the development of national economy.

Universities Research Journal 2011, Vol. 4, No. 7 235 Acknowledgement I sincerely express my gratification to Dr Nu Nu Yi, Professor and Head of Department, and Dr Tin Htay Ei, Professor, Department of Law, Mandalay University for their guidance and advice. Books References Biswajt Dhar, Sui Generis Systems for Plant Variety Protection: Options under TRIPS, April 2002. Graham Dutfield, Intellectual Property Rights, Trade and Biodiversity: The Case of Seeds and Plant Varieties, Background Paper, Intersessional Meeting on the Operations of the Convention, 28-30 June 1999. Laurence R. Helfer, Intellectual Property Rights in Plant Varieties: International Legal Regimes and Policy Options for National Governments, Food and Agriculture Organization of the United Nations, 2004. Margaret Llewlyn and Mike Adcock, European Plant Intellectual Property, Hart Publishing, 2006. Plant breeding and farmer participation, FAO of the United Nations, Rome, 2009. Sudhir Kochhar, System Perspective for IPR Protection in the Plant Kingdom, vol.9, July 2004, Journal of African Law, 45, 1(2001). Conventions Agreement on Trade-Related Aspects of Intellectual Property Rights 1994. International Convention for the Protection of New Varieties of Plants 1961, as revised in 1972, 1978 and 1991. Websites http//en. wikipedia. org/ wiki/ Plant-Breeders -rights. www. iprsonline.org/unctadictsd/ /RB2.5-Patents-2.5.5-update.pdf.+