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UPOV Convention

This Section will compare IPRs under TRIPS to IPRs under the UPOV Convention. The UPOV Convention established the International Union for the Protection of New Varieties of Plants (UPOV).[1] The 1961 UPOV Convention has been revised in 1972, 1978, and 1991. In the review of TRIPS Article 27.3(b), WTO Members have debated the merits of the various UPOV conventions and their relationship to the TRIPS Agreement. Some advocate the 1991 Act of the UPOV Convention (UPOV 1991) as the most appropriate system and level of protection. Others argue that, since UPOV 1991 does not permit limits on the eligibility for protection of varieties by species of plant, newly developed varieties of species of plant that would not have been eligible for protection under the 1978 Act are now eligible for protection under the 1991 Act.[2]

The UPOV Council has adopted a series of Explanatory Notes on the UPOV Convention.[3] The Preambles in these Explanatory Notes contain this proviso: “The only binding obligations on members of the Union are those contained in the text of the UPOV Convention itself, and these Explanatory Notes must not be interpreted in a way that is inconsistent with the relevant Act for the member of the Union concerned.” However, this proviso is silent regarding the effect of these Explanatory Notes on the interpretation of the provisions of the UPOV Convention. The interpretation of the Convention is not the same as the interpretation of the Explanatory Notes. Thus, while the Explanatory Notes do not create binding obligations, they are relevant to the interpretation of the binding obligations, as well as the rights, set out in the Convention itself, by virtue of Articles 31 and 32 of the Vienna Convention on the Law of Treaties.

UPOV 1991 obliges contracting parties to “grant and protect breeders’ rights” (Article 2) and to apply UPOV 1991 “to all plant genera and species” (Article 3). The minimum period of protection is 20 years from the date of the grant of the breeder’s right and, for trees and vines, 25 years (Article 19). Thus, the minimum period of protection for trees and vines is 5 years longer than for patents under Article 33 of the TRIPS Agreement. Contracting parties must provide national treatment to nationals of other contracting parties insofar as the grant and protection of breeders’ rights (Article 4).

In contrast, the length of protection varies among sui generis systems. Thailand grants rights for a maximum of 12, 17, or 27 years, depending on the type of plant involved. India grants protection for 15 or 18 years, also depending on the type of plant variety involved. Some argue that the length of protection that IPRs confer should vary with the particular technology.[4] For example, 20 years of patent protection for pharmaceuticals confer a shorter term in practice, due to the length of time required to obtain marketing approval for the product.

Article 1(vi) of UPOV 1991 defines the term “variety” as:

a plant grouping within a single botanical taxon of the lowest known rank, which grouping. .. 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.

The TRIPS Agreement does not define the term “plant varieties.” WTO Members have debated whether and how to define several terms in Article 27.3(b).[5] Some suggest that the 1991 UPOV definition inform the definition of the term “plant varieties” in Article 27.3(b).[6] Some critics argue that biotechnology advances, particularly molecular marker technologies, are making the very concept of plant variety obsolete.[7]

UPOV 1991 Article 5 provides that the breeder’s right shall be granted where the variety is new, distinct, uniform, and stable. This provision is more detailed than the patentability requirements of TRIPS Article 27.1 (new, inventive step and usefulness) and adapted to the specific situation of plant varieties. However, advances in biotechnology also make these UPOV criteria more difficult to apply in practice, since the analysis must take place at the molecular level, and molecular information can be used to avoid detection of IPR infringements more easily.[8] As noted above, TRIPS Article 27.3(b) does not have a novelty requirement for sui generis systems.

Article 14, subject to Articles 15 and 16, requires that the following acts in respect of the propagating material of the protected variety obtain the authorization of the breeder: (i) production or reproduction (multiplication), (ii) conditioning for the purpose of propagation, (iii) offering for sale, (iv) selling or other marketing, (v) exporting, (vi) importing, and (vii) stocking for any of the foregoing purposes. The same acts with respect to harvested material obtained through the unauthorized use of propagating material of the protected variety also require the authorization of the breeder. Contracting parties may add other acts to this mandatory list. These provisions also apply to varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety (Article 14(5)(a)(i)), varieties which are not clearly distinguishable in accordance with Article 7 from the protected variety (Article 14(5)(a)(ii)) and varieties whose production requires the repeated use of the protected variety (Article 14(5)(a)(iii)). Again, advances in biotechnology make these criteria more difficult to apply in practice.[9]

Article 15(1) provides compulsory exceptions to the breeder’s right: (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 (the breeder’s exemption), and, except where the provisions of Article 14(5) apply (varieties which are essentially derived from the protected variety), acts referred to in Article 14(1) to Article 14(4) in respect of such other varieties.

The breeder’s exemption is also affected by technological advances. New “reverse breeding” techniques shorten the time needed to create new varieties, thereby shortening the de facto period of exclusivity enjoyed by the original breeder. This has led to proposals to phase in the breeder’s exemption according to the time it takes to reverse breed new varieties.[10] Such proposals are comparable to proposals to increase the patent term for pharmaceuticals to account for the time required to obtain marketing approvals and appear designed to extend monopolies that would limit access.

The Explanatory Notes on Article 15(1)(i) set out two examples of acts “possibly” not falling within the scope of the exception for acts done privately and for non-commercial purposes: non-private acts for non-commercial purposes and private acts which are undertaken for commercial purposes.[11] The Explanatory Notes on Article 15(1)(i) also set out examples of acts “possibly” falling within the scope ofthe exception for acts done privately and for non-commercial purposes: the propagation of a variety by an amateur gardener for exclusive use in his own garden and the propagation of a variety by a farmer exclusively for the production of a food crop to be consumed entirely by that farmer and the dependents of the farmer living on that holding.[12] According to this explanation of Article 15(1)(i), if I am an amateur gardener, I propagate a protected variety of roses in my garden, my neighbor invites me over for dinner and I bring my neighbor a bouquet of those same roses, I am in violation of Article 15(1)(i). However, it seems a bit of a stretch to consider such an act a “commercial purpose.”

Regarding Article 15(1)(ii), the Explanatory Notes simply state that “[t]he breeder’s right does not extend to the use of the protected variety for experimental purposes.”[13] No definition of the term “experimental purposes” is provided in the Explanatory Notes or the Convention itself. However, this term should not cover “acts done for the purpose of breeding other varieties,” since those acts are subject to the breeder’s exemption in Article 15(1)(iii). To interpret Article 15(1)(ii) otherwise would make Article 15(1)(iii) redundant, contrary to the principle of effective treaty interpretation. Regarding the breeder’s exemption in Article 15(1) (iii), the Explanatory Notes state, “there are no restrictions on the use of protected varieties for the purpose of breeding new plant varieties.”50

Article 15(2) provides an optional exception to the breeder’s right:

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 Article 14(5)(a)(ii).

The Explanatory Notes suggest that the farmer’s exemption in Article 15(2) was aimed at those crops where, for the Member of the Union concerned, there was a common practice of farmers saving harvested material for further propagation, based on a recommendation of the Diplomatic Conference of 1991.51 However, there are two aspects to note about this explanation. First, the Diplomatic Conference note uses the phrase “should not be read,” which indicates that this interpretation of Article 15(2) is not mandatory. Second, the Diplomatic Conference note would constitute negotiating history under Article 32 of the Vienna

Convention on the Law of Treaties and only be relevant as a supplementary means of interpretation.[14]

The Explanatory Notes also suggest that the farmer’s exemption in Article 15(2) relates to selected crops where the product of the harvest is used for propagating purposes, for example small-grained cereals where the harvested grain can equally be used as seed. They suggest further that it may be inappropriate to introduce the exception for agricultural or horticultural sectors, where it has not been a common practice for the harvested material to be used as propagating material, based on the same recommendation of the Diplomatic Conference of 1991.[15]

Regarding the phrase “reasonable limits and safeguarding of the legitimate interests of the breeder,” the Explanatory Notes commentary expands the breeder’s right and limits the farmer’s exemption beyond what the text of Article 15(2) suggests. They suggest considering several factors to determine whether the implementation of the farmer’s exemption introduces limits to the breeder’s right that are reasonable and whether the national legislation safeguards the legitimate interests of the breeder:

  • (1) type of variety (whether there has been a common practice of farmers saving harvested material for further propagation);
  • (2) size of farmer’s holding, crop area, or crop value (to determine the extent to which a farmer is permitted to use farm-saved seed and with a different level of remuneration to breeders);
  • (3) proportion or amount of harvested crop (to determine the maximum percentage of the harvested crop or maximum acreage which the farmer may use for further propagation and/or the level of remuneration);
  • (4) changes in the level of harvested material used for further propagation, evolution of farming practices, and breeding and propagation methodologies, and economic developments to justify limiting the level of farm-saved seed to those levels which had been common practice before the introduction of plant variety protection; and
  • (5) remuneration to safeguard the legitimate interests of the breeders.[16]

The Explanatory Notes go on to emphasize that the farmer’s exemption does not extend to propagating material which was produced on the holding of another farmer.55 They then assert that the use of the words “within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder” means that the farmer’s exemption should be implemented “in a way which does not undermine the incentives provided by the UPOV Convention for breeders to develop new varieties.”[17]

The Explanatory Notes then suggest that contracting parties consider several factors in deciding if and how to implement Article 15(2): the impact on breeding, the costs and mechanisms required for implementation, and the overall economic impact on agriculture. They also suggest consultation with the interested parties[18] and introducing the farmer's exemption in a manner that facilitates modifying the legislation over time to adapt to the evolution offarming practices and breeding and propagation methodologies, as well as economic developments.[19]

WTO Members have debated UPOV provisions regarding the farmers' exemption. Some argue that UPOV 1978 allows farmers to save, exchange, and, to a limited degree, sell seeds of protected varieties, whereas UPOV 1991 gives the government discretion as to whether to permit farmers to save seeds for use on their own holdings and makes this exception subject to “reasonable restrictions” and the protection of the “legitimate interests” of the breeder. Moreover, the exception only applies to material that has been harvested on the same holdings and not to propagated material (just “the product of the harvest”). Thus, this exception does not benefit farmers in the case of GMO varieties that do not produce viable seeds (terminator technology).[20] Many Members, particularly developing countries, therefore argue that UPOV 1991 would have a negative impact on food security in developing countries and create dependence on foreign commercial breeders for seeds.[21]

Article 16(1) limits exhaustion of the breeder's right when the acts involve: (1) further propagation of the variety or (2) an export of material of the variety, which enables the propagation ofthe variety, into a country which does not protect varieties of the plant genus or species, except where the exported material is for final consumption purposes. Thus, Article 16(1) gives contracting parties less discretion than TRIPS Article 6 gives to WTO Members. TRIPS Article 6 leaves WTO Members free to determine their own regime with respect to exhaustion of patent rights, subject to national treatment and most-favored-nation treatment.[22] Some WTO Members argue that UPOV 1991 limits exhaustion of the right to sell or otherwise market plant varieties made within the national territory of the contracting party concerned, in contrast to Article 6 of the TRIPS Agreement, which leaves the issue of exhaustion of intellectual property rights to the discretion of each Member. For the foregoing reasons, several WTO Members argue that legislation based upon UPOV 1978 provides effective sui generis protection for plant variety rights for the purposes of Article 27.3(b). However, other Members argue that the farmers’ exemption can be justified under Article 27.3(b) as an exception to plant variety protection or under Article 30 of the TRIPS Agreement as an exception to patent protection, for farming activities are limited to small, subsistence farms which customarily reuse seed because they lack access to financial resources for new seeds every growing season, or where commercial activities of farmers are limited geographically.[23]

Article 17 of UPOV 1991 limits restrictions on the exercise of the breeder’s right to reasons of public interest. When the restriction “has the effect of authorizing a third party to perform any act for which the breeder’s authorization is required,” the contracting party must take all measures necessary to ensure that the breeder receives equitable remuneration. Article 9 of the 1978 UPOV Convention also limits restrictions on the exercise of the breeder’s right to reasons of public interest. When the restriction “is made in order to ensure the widespread distribution of the variety,” the Member State of the Union must take all measures necessary to ensure that the breeder receives equitable remuneration.

What would qualify as “public interest” justifications for restricting a breeder’s right? At the very least, if a WTO Member issues a compulsory license in accordance with TRIPS Article 31, such compulsory licenses should qualify. Since TRIPS Article 27.3(b) permits WTO Members to choose between patents and sui generis protection for plant varieties, there should be no inherent conflict between UPOV and TRIPS. The negotiating history of TRIPS indicates that the negotiators were aware of UPOV 1991, as well as the fact that many countries might prefer UPOV 1978 to UPOV 1991, when they drafted Article 27.3(b). This interpretation would be consistent with the presumption against conflicts between treaties.

Neither UPOV 1978 nor UPOV 1991 defines “equitable remuneration,” as in the case of TRIPS Article 31(h), which requires “adequate remuneration” according to the circumstances of each case taking into account the economic value of a compulsory license. The TRIPS agreement sheds some light on this issue, since Article 1.1 permits WTO Members to determine freely the adequate method of applying TRIPS provisions according to their own legal system and practice. Another issue is what measures are considered “necessary to ensure that the breeder receives equitable remuneration.”

The balance of rights between producers and users of biotechnology seems more balanced in the TRIPS Agreement than in UPOV 1991. First, TRIPS provides the flexibility ofchoosing patents or a sui generis system ofIPRs. Second, even ifpatents are chosen, rather than a sui generis system, UPOV is less balanced. UPOV 1991, particularly when read together with the Explanatory Notes, favors the interests of plant breeders over the interests of farmers. This is particularly true with respect to the interpretation of the farmer’s exemption in the Explanatory Notes, which, if accepted, would be more restrictive than the exception for compulsory licensing of patents in TRIPS Article 31.

  • [1] International Convention for the Protection of New Varieties of Plants of December 2, 1961, asRevised at Geneva on November 10, 1972, on October 23, 1978, and on March 19, 1991 (accessed May 15, 2011).
  • [2] Note by the Secretariat, Review of Article 27.3(b) para. 64.
  • [3] Explanatory Notes on Conditions and Limitations Concerning the Breeder’s Authorization inRespect of Propagating Material under the UPOV Convention, UPOV/EXN/CAL/1, October 21,2010 (accessed April 9, 2013).
  • [4] Masarek, “Treetop View of the Cathedral” 463—4.
  • [5] Note by the Secretariat, Review of Article 27.3(b). The terms debated are plants and animals,micro-organisms, and non-biological and micro-biological processes.
  • [6] Note by the Secretariat, Review of Article 27.3(b) para. 68.
  • [7] Mark D. Janis and Stephen Smith, “The Protection of Rights in Plant Varieties: TechnologicalChange and the Design of Plant Variety Protection Regimes” (2007) 82 Chicago-Kent Law Review1557, 1577-8.
  • [8] Janis and Smith, “The Protection of Rights in Plant Varieties” 1583-92.
  • [9] Janis and Smith, “The Protection of Rights in Plant Varieties” 1596-7.
  • [10] Janis and Smith, “The Protection of Rights in Plant Varieties” 1604-5.
  • [11] Explanatory Notes on Exceptions to the Breeder’s Right under the 1991 Act of the UPOVConvention, UPOV/EXN/EXC/1, adopted by the Council at its forty-third ordinary session on October22, 2009, paras. 5 and 6 (accessed April 9, 2013).
  • [12] Explanatory Notes para. 7. 3 Explanatory Notes para. 8.
  • [13] 50 Explanatory Notes para. 9. 51 Explanatory Notes paras. 14—15.
  • [14] However, there is some disagreement among experts regarding the role of Art. 32: JohnH. Jackson, The Jurisprudence of GATT and the WTO: Insights on Treaty Law and Economic Relations(Cambridge University Press, Cambridge 2000) 145 fn. 37 (arguing that preparatory history is to beused only when the means specified in Article 31 do not resolve an interpretative problem); StephenM. Schwebel, “May Preparatory Work be Used to Correct Rather than Confirm the ‘Clear’ Meaning ofa Treaty Provision?” in Jerzy Makarczyk (ed.), Theory of International Law at the Threshold of the21st Century (Springer, Berlin 1996) 541 (arguing that preparatory work must be given a greater role intreaty interpretation than the words of Art. 32 might suggest).
  • [15] Explanatory Notes para. 15. 3 Explanatory Notes paras. 19—23.
  • [16] 55 Explanatory Notes para. 24.
  • [17] Explanatory Notes para. 25. 2 Explanatory Notes para. 26.
  • [18] 58 Explanatory Notes para. 27.
  • [19] 59 Jason A. Barron, “Genetic Use Restriction Technologies: Do the Potential Environmental
  • [20] Harms Outweigh the Economic Benefits?” (2008) 20 Georgetown International EnvironmentalLaw Review 271.
  • [21] Note by the Secretariat, Review of Article 27.3(b) para. 65.
  • [22] Declaration on the TRIPS Agreement and Public Health, para. 5(d).
  • [23] Note by the Secretariat, Review of Article 27.3(b) para. 66.
 
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