General features of plant variety rights information searching
While within a particular country plant variety rights are often readily searchable by examiners and the public, it may be of benefit to breeders and producers to be able to search the rights issued by other countries.
Thus, for example, it would be of value to have the data internationally and searchably available, e.g. on a website such as the Patent Lens, for various national sui generis systems and for the International Union for the Protection of New Varieties of Plants (UPOV),65 which was established by the International Convention for the Protection of New Varieties of Plants adopted in Paris in 1961 and revised in 1972, 1978 and 1991.
The main reasons this enlargement of the data available would be desirable are similar to those outlined for patent information in earlier chapters of this paper. Plant-derived products from one country that are subject to plant variety protection in other countries may be subject to impoundment when imported into these countries. With the standardization afforded by TRIPS, many multinationals are becoming increasingly active about protecting their PVR rights by this mechanism.66
66van Wijk AJP, Louwaars NP and Eaton DJF (2004) Framework for the Introduction of Plant Variety Protection in Developing Countries. Centre for Genetic Resources, Wageningen.
Plant patents and other sui generis systems
A complexity or advantage for searching plant variety rights in different countries is that they may be found in several different systems. TRIPS allows the development of sui generis systems, for example, which are in active development in some important markets, and in countries from which considerable new crops, particularly ornamentals and medicinal plants but also new variants of traditional crops, arise, e.g. Indonesia67 and India.68
In the USA, the use of plant varieties may obtain government-approved monopoly rights under one of three different systems: plant variety protection certificates (PVP) under the U.S. Plant Variety Protection Act (1970) cover plants that are sexually reproduced,69 with the intent to conform in UPOV 1978 and 1991; plant patents according to the U.S. Plant Patent Act (1930) cover plants that are asexually reproduced (e.g. by tissue culture, cuttings etc.) except tubers; and plants and plant parts may be covered by utility patents, for example in product-by-process claims.
- Searches of both can be provided in patent databases,70 though they do differ in that the former may be infringed only by asexual propagation from the actual plant protected by the patent, and as there are no annuities, there is not the possibility as with utility patents that a failure to pay annuities may cause the subject matter to enter the public domain.
Australia’s system has also incorporated various protection schemes simultaneously. AT IP Australia’s website a limited comparison is provided between Plant Variety Rights under the PVR Act of 1987 and Plant Breeding Rights under the PBR Act of 1994 and the interface between plant patents and plant breeding or variety rights. Some varieties may have double protection in Australia.71
67Dr. Ir Sugiono Moeljopawiro, Department of Agriculture, Center for Plant Variety Protection, Jakarta, Indonesia, personal communication.
68Prof. Dharam Pal Deswal, Dept. of Seed Science and Technology, CCS Haryana Agricultural Faculty, HISAR, India, personal communication.
69This Act was amended in 1996 to include potatoes and Jerusalem artichokes.
70For example, CAMBIA’s Patent Lens currently contains not only the all the US utility patents but also the plant patents, on which we’ve recently contributed to statistical studies with the International Science and Technology Practice and Policy Center (INSTEPP).
71The 1978 UPOV Convention did not accept double protection but the 1991 Act lifted the ban. In the USA, 1994 legislation clarified double protection, and in Europe there has also been clarification of rights in the event of a conflict of interest between PBR holder and a patent holder arisen on the same variety.
Another reason for facilitating searches of the plant protection information of other jurisdictions is that it can provide other information of value to breeders and primary producers. For example, many European countries carry out VCU (Value for Cultivation and Use) indexing for disease resistance and other performance characteristics concurrently with the DUS (Distinctiveness, Uniformity, Stability) testing required for determination of novelty, at least for certain food crops (particularly vegetables and cereals).72 Some countries, notably the Netherlands, are also experimenting with provision of visual documentation of the distinctive characteristics, for example in ornamental species by a requirement for standardized digital photographs of particular views at set distances from buds and flowers at various developmental stages.73
It may be of value for individual countries to provide more information searchable on a website about the Technical Guidelines that are used for DUS testing, particularly as these are actively evolving in international collaboration in the Technical Working Parties of UPOV. For example, the definition of agreed standards on Eucalyptus is being led by Brazil in the Technical Working Party for Ornamental Plants and Forest Trees.74
72Dr AJP van Wijk, Centre for Genetic Resources, Wageningen, the Netherlands, personal communication.
73Dr Ir Liesbeth Hof, Centre for Genetic Resources, Wageningen, the Netherlands, personal communication.
74Dr Daniela de Moraes, National Plant Varieties Protection Service, Brasilia, personal communication.
Biological Diversity and Access and Benefit Sharing
The area of what information should be provided on plant variety rights and how it should be used in intellectual property protection is quite dynamic. In connection with worldwide consideration of the requirements of the Convention on Biological Diversity75 and the Bonn Guidelines,76 the International Treaty on Plant Genetic Resources,77 and the potential WIPO development agenda, some calls are being made for plant accession information to be made available in connection with patent applications that claim plants or plant-derived material, or even in applications that use plant genetic resources in examples.
Each country may consider what information requirements it may make of applicants that would be added to its searchable databases, in advance of any international requirements to provide this information.
75Concluded at the 1992 UN Conference on Environment and Development in Rio de Janeiro and in force since 1993, it requires signatories, which comprise over 180 countries including Australia, to facilitate access to genetic resources in ways that promote their sustainable use.
76For implementation of the Convention on Biological Diversity, requiring national competent authorities to provide national focal points for information.
77Entered into force 29.7.04, setting up a multilateral system with requirements for Access and Benefits Sharing.
Other recommendations for governments
- For the benefit of the public and plant breeders, it would be desirable to have more readily locatable links to case law on PVRs, some of which is currently provided at the UPOV website.78
- A government could certainly request, perhaps optionally, and then provide to stakeholder, more information on intended usage at the time of application and in other interactions with the applicant or rights-holder.
78e.g. Grain Pool of WA vs. The Commonwealth of Australia & Anor (P34/98) is provided at http://www.upov.int/en/about/legal_resources/case_laws/pdf/au_gazette_89_12-2000.pdf