TWN Info Service on Biodiversity and Traditional Knowledge (Nov13/01)
1 November  2013
Third World Network

UPOV: To consider industry wish list on plant breeders' rights
Published in SUNS #7687 dated 1 November 2013

London, 30 Oct (Sangeeta Shashikant) -- The International Seed Federation (ISF) presented to the members of the International Union for the Protection of New Varieties of Plants (UPOV) a wish list aimed at further harmonising the application, examination and granting of plant breeders' rights (PBRs).

ISF represents the interest of the mainstream of the seed industry, including multinational seed companies such as Monsanto, Syngenta, Bayer, DuPont Pioneer, and DowAgroSciences, which continue to control about 75% of all private sector plant breeding research, and 60% of the commercial seed market.

The wish list includes new initiatives such as developing an international filing system for PBR applications based on the international patent filing system in the World Intellectual Property Organisation (WIPO) set up under the Patent Cooperation Treaty, a central approval system for variety denominations and a quality assurance program for PBR offices.

(UPOV is housed and serviced by WIPO in Geneva, Switzerland that provides certain administrative and practical services to UPOV. Though UPOV is a separate legal entity, its ties with WIPO are close. WIPO's Director-General, by virtue of position, is the Secretary-General of the UPOV with the power to approve the appointment of UPOV's Vice Secretary-General.)

ISF presented its wish list to UPOV members during the meeting of the Consultative Committee on 23 October. The Committee advises the highest body of UPOV - the Council. UPOV members met in Geneva for various meetings on 21-25 October.

At first, ISF outlined its recommendations in a letter to the Vice Secretary-General of UPOV, Mr. Peter Button, dated 21 January 2013. According to the letter, the recommendations are based on a thorough discussion by the ISF Intellectual Property Committee and the ISF Breeders' Committee of replies to a questionnaire sent out to its members asking them about problems they have encountered with the application for, and examination and granting of PBRs.

On receiving the letter, the UPOV Secretariat converted the ISF wish list into an annex of an official document (CC/86/11) of the Consultative Committee proposing ways in which the ISF wish list can be accommodated.

According to sources, the ISF recommendations were strongly backed by the UPOV Secretariat including by its Secretary-General, Mr. Francis Gurry, and the European Union.

Several development experts who have analysed the ISF recommendations have expressed concern that these recommendations would lead to loss of policy space and flexibilities, as they will regulate areas not currently regulated by the two existing Acts of 1978 and 1991 of the UPOV Convention. A Patent Cooperation Treaty-like filing system for UPOV will further reinforce the monopolisation by multinational companies of seed systems, some experts say.

[Of the current 71 UPOV members, only 18 are developing countries and most of these are members of UPOV 1978, while most developed countries are members of UPOV 1991. The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of the large number of countries by filing an "international" patent application. The Treaty regulates in detail the formal requirements with which any international application must comply.]

Edward Hammond, Director of Prickly Research, a research consultancy based in Texas, USA, expressed concern in particular over ISF's call to maintain pedigree information of protected varieties confidential. "With the amount of published pedigree information on PBR-protected varieties dwindling, a crisis of transparency has emerged, with such rights being approved over varieties whose origin is unknown - the equivalent of allowing a patent without requiring disclosure of the invention," said Hammond.

He added that, "ISF is proposing to move UPOV still further away from disclosure practices that allow identification of misappropriation by encouraging PVP offices to neither solicit nor publish pedigrees."

He advises, "Consistent with their demands at the WIPO and the WTO (World Trade Organisation), governments should not allow this UPOV secrecy on origin of genetic resources to continue to develop", stressing that without this information being made public, identifying misappropriation and achieving equitable benefit sharing will be much more difficult and, in some cases, impossible.

Another expert said that allowing confidentiality allows right holders to continue to protect their varieties by way of trade secret even after the PVP protection expires.

ISF's WISH LIST ON HARMONISING APPLICATION, EXAMINATION AND GRANTING ASPECTS OF PBR APPLICATIONS

ISF's letter to the UPOV Vice Secretary-General Peter Button makes recommendations in the areas of application process, material requirements, examination process, variety descriptions, denomination and legislation (For the letter, see Annex 1 of CC/86/11.)

In brief, the recommendations mentioned in the letter are as follows:

1. Application process

(i) Application slot: It should be possible to file applications all year round. Where countries restrict application for a certain crop to certain months in a year, the time slot set should be sensible and realistic.

(ii) Photographs: In general, photographs should not be necessary for agricultural forage or cross-pollinating species. In other crops, photographs should only be necessary where it is considered relevant. It should not be necessary to provide photograph of the comparative variety.

(iii) Pedigree information: Pedigree information should not be requested and if requested should not become public. A breeder should be able to indicate whether certain information provided in the application should be considered confidential.

(iv) Electronic applications: There should be a possibility in all UPOV member countries to file an application by email or electronically.

(v) Correspondence: Correspondence should be sent to the address indicated by the applicant and preferably by email as the need to communicate through local agents can result in unwanted and risky delays. In countries where English is not the national language, the ability to correspond in English should be available.

2. Material Requirements

(i) Confidentiality of material: There should be no obligation whatsoever to provide seeds or parental lines for hybrid applications and where provided it should be kept confidential. Where the application is handled by entities that are breeding the same species, then clear and strict measures should be implemented to secure confidentiality of the applicant's material.

(ii) Minimum sample size: Seed quantities should be reasonable, and optimally as low as possible.

(iii) Rules of exchange of material: There are no formal rules or guidelines for the exchange of plant or seed material between examination offices. ISF considers good traceability of what happens to their material after the application is complete to be important. As a minimum the breeder should be notified and ideally required to grant authorisation before material is sent to other authorities.

(iv) Availability of the material: Material of the protected variety should not become publicly available without the breeders' consent. Publicly available material should be restricted to material that is commercially available.

3. Examination process

(i) Reference Collections: UPOV should consider a quality assurance program for PBR offices to affirm they have adequate reference collections as an insufficient reference collection weakens protection as varieties, which are too similar, receive protection. Alternatively consider guidelines to PBR examination officers on best practices for conducting examinations.

(ii) Length of examination: A maximum period of 2 years should be prescribed. Multilateral cooperative agreements could be considered where certain countries carry out tests for other countries. Take-over of examination reports from another country should be stimulated. Where examination has been paid for purposes of national listing, there should be no further examination costs for a PBR application of the same variety.

A PCT-like system for PBR should be established. A uniform application form is a good first step.

(iii) Updating frequency: It should be mandatory that each PBR office maintains a continuously updated website. UPOV offices should receive updates on a regular basis and should regularly revise their informational databases. Beneficial if PBR offices also placed PBR related information in English on their websites.

(iv) Scope of database: Information on pending applications should be placed on official websites as it facilitates respecting IP rights.

4. Variety description

(i) Variety description of most similar variety: In some countries, the applicant is requested to provide the full variety description of most similar varieties whereas in the spirit of UPOV only the differences between the candidate variety and the most similar variety need to be provided.

(ii) Variety description by applicant: Where the applicant makes the variety description there needs to be more harmonised rules and supervision by the PBR authorities.

(iii) Variety description database: A variety description database including the Technical Questionnaire (TQ) information should be available to all interested parties.

5. Denominations

(i) Differences in denomination rules: Rules for naming the variety should be standardised across the globe and where possible there should be a central approval system.

6. Legislation

(i) A mechanism whereby national PBR laws would be reviewed by the UPOV office every x years to make sure these are still in compliance with the UPOV Convention. Alternatively it might be necessary for countries to have their PBR law revisions analysed by the UPOV office. In case the PBR laws deviate too far from the Convention, measures to remedy this should be available.

DECISIONS OF THE CONSULTATIVE COMMITTEE

The UPOV Secretariat converted the ISF wish list into an official document - CC/86/11 - proposing ways in which this list can be taken forward.

According to sources, the main emphasis of the ISF was on three major areas: creating a Patent Cooperation Treaty-like system for UPOV, creating a central approval system for variety denominations, and developing a quality assurance program for PBR offices to affirm they have adequate reference collections to ensure that varieties that are similar to protected varieties do not receive PBR protection.

The primary aim of the recommendations is to facilitate and expedite applications for breeders' rights across the globe and to enhance protection of their protected variety.

According to sources, ISF stressed that a Patent Cooperation Treaty-like system for PBR will enable a one-stop-shop approach and facilitate filing in more countries, which in turn will strengthen the UPOV system.

Some countries received the ISF recommendations with apprehension, sources say, as they stressed that it was not clear what problems the ISF recommendations were trying to resolve.

The Consultative Committee agreed to various decision points with regard to the ISF recommendations which in summary includes:

• The Committee would develop document UPOV/INF/15 "Guidance for Members of UPOV on Ongoing Obligations and Related Notifications and on the Provision of Information to Facilitate Cooperation" into an umbrella document that would identify key issues for the operation of a plant variety protection system and which would provide links to detailed information materials.

[Note: Information materials are developed by UPOV to provide guidance and harmonise implementation of the UPOV Convention.]

• The Committee would invite the Technical Committee and the Committee on Administrative and Legal Affairs (CAJ) to consider ISF's recommendations in relation to existing and possible future information materials. In a table in paragraph 6 of CC/86/11, the Secretariat identifies existing information material that are relevant to the consideration of ISF recommendations.

[Note: Recommendation 6 (i) cited above was listed as "not applicable" by the Secretariat.]

• The Committee notes the various improvements that would be made to the PLUTO Plant Variety Database in response to ISF's recommendations on the Database.
   
• The Committee invites the ISF to express its views to the UPOV Technical Committee with regard to databases of variety descriptions and the criteria identified by the Technical Committee for the publication of variety descriptions, as set out in document TC/45/9 "Publication of Variety Descriptions" (as reproduced in Annex III to document CC/86/11).
   
• The Committee requests the Secretariat and ISF to elaborate the problems faced and possible solutions in relation to ISF's ideas concerning: an international filing system; a UPOV quality assurance program; and a central examination system for variety denominations, for consideration by the Consultative Committee at its eighty-seventh session.