A simple "agreement" proposed to accommodate Industry's UPOV-plus demands
Sangeeta Shashikant (London): An upcoming UPOV meeting in Geneva will consider a proposal to establish a centralized harmonized system for the administration and examination of PBR applications to be known an "International System of Cooperation" (ISC), by way of a simple "agreement" adopted by the Council, UPOV's highest governing body.
The ISC is a demand of the International Seed Federation (ISF), the International Community of Breeders of Asexually Reproduced Ornamental and Fruit Plants (CIOPORA) and CropLife International (CLI) which jointly represent the interests of the mainstream 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) and seed giants in the ornamental and fruit sectors.
The proposal is contained in UPOV document CC/89/6 prepared by the UPOV Secretariat to clarify issuesraised with regard to Industry's proposal and propose possible ways forward with regard to ISC. UPOV's Consultative Committee meeting on 27th March 2015 will consider this document. Key bodies of UPOV will be meeting in Geneva from 23rd to 27th March.
UPOV Secretariat argues that such "agreement" is comparable to the "Agreement between the World Intellectual Property Organization and the International Union for the Protection of NewVarieties of Plants", which sets out the organizational arrangements between WIPO and UPOV. This WIPO-UPOV Agreement is signed by the Director General of WIPO and the President of the UPOV Council and entered into effect when approved by both the Coordination Committee of WIPO and the Council of UPOV.
[Note: The Director General of WIPO serves as the Secretary General of UPOV. WIPO also offers services to UPOV such as office space, translation and production of documents, travel arrangements etc.]
Observers of UPOV's processes argue that UPOV Secretariat's approach to the ISC proposal is "flawed" and downplays the implications that ISC will entail for UPOV members. The ISC proposal is UPOV- plus with legal implications for individual UPOV members and will involve significant administrative, resource and financial implications. Thus if an ISC is to be established it will require a legal framework comparable to UPOV Acts of 1978 and 1991 whereby countries that wish to be parties to the ISC would have to formally accept the Treaty through accession or ratification process.
They also question whether UPOV members have the mandate to authorise or engage in negotiations on a new treaty to establish ISC.
In addition, they also question the need for ISC, pointing to a number of factors indicating that the proposed harmonization is presently unnecessary and undesirable. These factors include: (i) existing UPOV tools implement most of the proposed elements. For example the GENIE Database (provides information on cooperation in examination), the variety similarity search tool (assesses acceptability of a proposed variety denomination for all UPOV members); Model form for the Application of PBRs, PLUTO Database (provides information on novelty); Electronic Application System (EAS) Project (concerns an Electronic application form and at a later stage translation and payment authorization; (ii) low level of harmonization among UPOV members with regard to the requirements of an application for PBR; and (iii) low level of participation of UPOV members in UPOV meetings.
Industry's Proposal is UPOV plus
Industry's proposal for the establishment of ISC entails a centralized mechanism for filing PBR application, with standardized requirements and forms, which would then be assessed for compliance with formal requirements and novelty by selected "preliminary examining office(s)". The application form would then be distributed to UPOV members designated by the breeder. The system would also encompass centralized DUS examination systems whereby accredited DUS testing stations would issue test reports for other UPOV members.
Additionally the system would include inter alia: standardized fees paid to centralized systems, monitoring of DUS examination, receiving and maintaining reports of decisions on granting of PBR ; addressing objections concerning conduct of the DUS examination; maintaining and publishing all relevant "bibliographic" information concerning PBR applications; maintaining standard UPOV variety descriptions, information on varieties of common knowledge included in the DUS examination, harmonization with regard to status and disposition of any propagating material provided by the breeder and information relating to pedigree and parental lines of hybrids (to be maintained as confidential) and could include a search for relevant varieties of common knowledge against which the application variety may be compared.
Industry anticipates that establishment of the proposed ISC will result in "More PBR applications by more breeders in more crops, countries and regions" as "it will be easier for breeders to file applications, so more applications can be expected by the PBR offices in countries where previously there have been few applications".
Details and a critique of Industry's proposal is available at http://www.twn.my/title2/intellectual_property/info.service/2014/ip141107.htm
UPOV Secretariat claims that elements of the ISC are based on "existing provisions" of the UPOV Convention (paragraph 46 of CC/89/6).
A review of Industry's Proposals and the Acts of 1978 and 1991 revealed that this conclusion is incorrect.
Industry's proposal as well as UPOV Secretariat's elaboration of that proposal in CC/89/6 is about overhauling the way PBR applications are filed and examined.
The 1978 and 1991 Acts do not regulate issues such as how applications should be filed, what information should be provided, preliminary examination offices, the criteria for selecting such offices, standardizing and centralizing DUS examination, take-over of test reports, accrediting DUS testing stations, fees that should be paid, how varieties should be described; what is required with regard to propagating material provided by a breeder, the status of information relating to pedigree and parental lines of hybrids (whether or not to keep it confidential) etc.
Accordingly, UPOV members have flexibility to decide on how to deal with each of the matters. It could opt to follow recommendations adopted by the UPOV Council on one or more matters or it could follow its own standards. There were no binding obligations on the mentioned matters.
Industry's proposal (elaborated by the UPOV Secretariat) contains elements that are UPOV-plus. It is apparent that the final outcome of the ISC is to deepen harmonization and impose binding obligations with regard to the harmonized elements on UPOV Members that are part of the ISC, consequently, reducing the flexibility that UPOV members have.
To establish the UPOV-plus ISC, UPOV Secretariat proposes that there be an "agreement" agreed by all UPOV Members and adopted by the UPOV Council. It adds that the agreement would enter into effect between the members of the Union that sign the agreement. The UPOV Secretariat compares such an agreement to an agreement signed between WIPO and UPOV.
Description of the proposed "agreement" as well as the comparison to WIPO-UPOV Agreement (which was signed by the Director General of WIPO and the President of the UPOV Council), suggests that the Secretariat may be considering a simple agreement adopted by the UPOV Council, which would take effect once a government signs the document without needing any ratification or accession process. Further it also suggests that administrative, financing and resource related matters will not be dealt with independently from the program and budget concerning the 1991 and 1978 Acts.
UPOV Secretariat's analysis is concerning as it is premised on comparing apples with oranges.
The agreement between WIPO and UPOV is between two international organizations and is largely about logistics and administrative matters (e.g. translation, meeting rooms, mail, travel arrangements etc) and has no legal implications for UPOV members.
On the other hand, the ISC proposal is about overhauling the present way in which PBR applications are filed and dealt with and DUS examination conducted. The elements it proposes are UPOV-plus with legal implications for UPOV members. The establishment of ISC would also involve significant resource and financial implications.
Thus if an ISC is to be established it will require a legal framework comparable to UPOV Acts of 1978 and 1991.
This line of thought (i.e. the need for another treaty) is supported by existing similar instruments that are administered by WIPO i.e. (i) International Patent System: Patent Cooperation Treaty (PCT); (ii) International Trademark System: Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (Madrid) and (iii) International Design System: Hague Agreement Concerning the International Registration of Industrial Designs (Hague).
The PCT  sets up an international filing system managed by WIPO. Such applications are originally filed with the receiving offices (defined in the Treaty) or with the WIPO Secretariat and such offices conduct the formality checks. The PCT application has the effect of automatically designating all Contracting States bound by the PCT. The international application is subjected to an international search (search for prior art relevant to assessing "novelty") that is carried out by one of the competent International Searching Authorities (ISA) under the PCT. Entitieswishing to be ISA would need to fulfil criteria set out in the PCT. The ISAwill issue an international search report, that is, a listing of the citations of published documents that might affect the patentability of the inventionclaimed in the international application. In addition, a preliminary and non-binding written opinion on whether the invention appears to meet patentability criteria in light of the search report results is also issued. There are also other additional services offered (e.g. publishing of applications, translation, performing checks on applications etc.) The PCT system is financed with fees paid by patent applicants. The final decision whether or not to grant a patent is left to national governments.
The PCT system was set up via an international legal framework (a Treaty) and States that wish to be a Contracting Party to the Treaty would have to ratify or accede to the Treaty. The PCT is overseen by its own Union, and its Assembly and manages its own Program & Budget.
Similar international filing and examination systems can also be found in WIPO withregard to trademark and industrial designs. The Madrid trademark system is underpinned by the Madrid Agreement Concerning the International Registration of Marks and a Protocol Relating to the Madrid Agreement. Both are independent treaties. States that are parties to either of these treaties set up a Union for the International Registration of Marks. The treaties include an international system for the filing and registration of trademarks managed by the WIPO Secretariat. A similar system exists with regard to industrial designs under the Hague Agreement, which constitutes 3 international treaties.
The ISC proposal is no different from the systems described above, thus the establishment of ISC would definitely require negotiating a new UPOV Act (atreaty). Once established, countries that wish to be parties to the ISC would have to formally accept the Treaty through accession or ratification process. Such a treaty would also establish its own administrative and financial processes, to be overseen by Contracting Parties of that treaty.
In this context, an important question that arises is whether UPOV members have themandate to authorise or engage in negotiations on a new treaty to establish ISC.
Case for ISC has not been made. Document CC/89/6 highlights a number of tools in place in UPOV (e.g. PLUTO Database, GENIE database, Electronic Application System (EAS), variety similarity search tool etc.) that already address many of the proposed elements, thus questioning the need for the ISC.
The same document points out that main users of cooperation in DUS (Distinct, Uniform, and Stable) examination are the EU and its Community Plant Variety Office. It adds that"cooperation agreements [in DUS examination]….has not increased in line with the number of genera and species for which practical experience has been declared by Union members" (paragraph 14). It also mentions that the proportion of members of the Union regularly attending UPOV session has declined substantially in recent years (paragraph 16 of CC/89/6).
These observations highlight the lack of need and interest in cooperation/harmonization as proposed by Industry. The EU, which may have some interest, already has in place arrangements for cooperation particularly in the context of its CPVO. This calls into question the value of establishing of ISC, bearing in mind the significant resource implications of such an endeavor.
Effect of ISC Reports/Decisions will be Binding.UPOV Secretariat argues in CC/89/6 ( paragraph 7) that "ISC would not affect the responsibility of the members of the Union in relation to the grant and protection of breeders' rights". While in principle this may be the case, in reality, once implemented, ISC Reports/Decisions will effectively be binding. For example, it may be difficult for national PVP offices to reject DUS test reports produced by specific centralized test stations, as the breeder is unlikely to pay fees for a separate DUS testing at the national level. Similarly once a "preliminary examination office" verifies the content of the application as well as issues a positive decision with regard to "Novelty", it would be difficult for national PVP offices to reject the application on the basis that the formalities or novelty has not be complied with. Developing countries in particular will not have the financial and institutional resources to question this examination, which will be done (most likely)- for a good part - in developed countries.
So effectively once the full ISC is up and running as presented by the Industry, the ISC reports/decisions on matters addressed by ISC would have the practical effect of "binding" national PVP authorities.
Fees.Industry's proposal speaks of setting a "universal schedule of fees". However UPOV Secretariat clarifies that in addition to an "ISC fee" there would be fees for DUS examination and fees for individual members of the Union. This clarification raises a number of important concerns:
(i) For fees paid at the national level, would UPOV members be required to follow a standard schedule of fees; (ii) with the establishment of ISC, there will be an expectation and perhaps even pressure that fees charged at the national level by UPOV members should be reduced since breeders would now also have to pay the "ISC fees". This may have a major impact on national PVP offices. The main beneficiaries are likely to be the selected preliminary examination offices that will receive fees; (iii) With DUS examination being conducted by specific testing stations, national PVP offices will loose the ability to claim fees for such testing,which may impact the sustainability of PVP offices; (iv) if a UPOV member is not satisfied with the outcome of the DUS examination, there will be no possibility to require the breeder to pay for separate DUS testing at the national level.
EAS Project is not comparable to ISC.Throughout UPOV document CC/89/6, UPOV Secretariat proposes that the ISC would build on the Electronic Application System (EAS) Project. However, the latter is merely a project to initiate electronic filing system and UPOV Members are not required to implement this system. UPOV members may also insert additional questions to the form, should they wish to do so.
On the other hand, the ISC (once fully implemented) is about instituting a harmonized international filing and examination system (UPOV plus) that will be binding on UPOV members that are part of the system. Once ISC is agreed to by way of an international treaty, EAS may be a component of the ISC. But to argue as the Secretariat has done that ISC can be implemented by extending the remit of the EAS Project is simply downplaying the legal, financial and resource implications that ISC will entail for the UPOV Union.