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It is the first book to look at the impact of plant intellectual property rights on the European plant breeding industry and assess whether recent developments, such as the Novartis deci

EUROPEAN PLANT INTELLECTUAL PROPERTY

This authoritative new work analyses European plant intellectual propertyrights Whilst the focus of the work is on Europe, and in particular the EuropeanPatent Convention, the Council Regulation on Community Plant Variety Rightsand the EU Directive on the Legal Protection of Biotechnological Inventions,these provisions are discussed within the context of international legislation,including the Agreement on Trade-Related Aspects of Intellectual PropertyRights (TRIPs) and the Convention on Biological Diversity It is the first book

to look at the impact of plant intellectual property rights on the European plant

breeding industry and assess whether recent developments, such as the Novartis

decision, will assist plant breeders, from all sectors of plant breeding, in the duction of new plant products In addition to a thorough discussion of the leg-islation, the book includes unique empirical research results obtained by theauthors as part of a two-year research project funded by the European Union,which surveyed attitudes towards, and use of, plant intellectual property rightswithin the European plant breeding community

pro-European Plant Intellectual

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The importance of plants, whether agricultural, medicinal, culinary, artistic,recreational or symbolic, resonates throughout history Throughout the centuriesman can be seen to place reliance on plants not merely to provide and maintainlife1(or to secure death),2but also to designate status and define humanity.3Fromthe earliest days man has also sought to use plants, whether by claiming plantmaterial as territory or by influencing our perceptions by ascribing symbolic qualities to that material, but it is only with the advent of modern genetics that we

have sought to secure rights not merely over but in the material itself

In his book, The Forgiveness of Nature: the Story of Grass,4Graham Harveydetails the way in which different types of grasses have been developed in order

to meet different needs From specialist amenity grasses for football pitches tograsses specifically bred to improve milk and beef quality, the book provides evidence of the fact that whilst most of us acknowledge the presence of grass, for

‘it is a common everyday thing, scarcely worth a mention’, few of us recogniseits influence on much that we do and, in turn, on the lives we lead Grass is notthe only member of the plant world which serves as a silent player shaping the

world we live in In his two beautifully illustrated books, The Plants that Shaped our Gardens,5and Dangerous Garden: The quest for plants to change our lives,6David Stuart outlines the many different ways in which plants have been utilisedfrom medicinal use to the purely aesthetic and yet, this use aside, most peoplegive little thought to the plants around them, the diversity within species, or tothe work which has gone into their production Such thoughts as we do havetend to focus on individually localised issues such as whether a certain plantwould be a desirable addition to a garden or if a particular vegetable would besuitable to serve at dinner—the innovation involved goes unnoticed and yetsuch enquiry and innovation is central to our ability to enjoy many of the plantproducts which surround us

This fascination with plants and man’s desire to make use of plant material

can be traced back through the centuries George Drower, in Gardeners, Gurus and Grubs,7provides numerous examples of little-known inventors who have

1 Through agricultural usage.

2 For example the use of hemlock.

3 One only has to look at literature through the centuries to see nature, in both its natural and man-made guises, used to denote territoriality (for example ‘this green and pleasant land’) or to symbolise or represent man’s state

made the gardening experience not only more enjoyable for the general public,but, in many instances, possible—such innovations including the wheelbarrow(Chuko Liang AD 231) and the classification of plants (Theophrastus circa

BC 322–288—his first book, An Enquiry into Plants, attempted to classify all known plants; his second book, The Causes of Plants, concentrated on roses).

Documentation from other civilisations also shows a reverence for plants Forexample in Ancient Egypt the onion (which had been introduced into the coun-try from Asia) was worshipped because it was thought to symbolise eternity andrecords show that frequently golden replicas of the vegetable were placed in thetombs of Pharaohs Although other vegetables were less venerated they werestill treated with great respect, and metal replicas of fruit and vegetables such asleeks, grapes, figs, radishes and pomegranates have been found.8

At a more general level, and concurrent with both the research into the mission of characteristics undertaken by Mendel and Huxley as well as therefinement of national and international industrial property standards, therecan be found the extensive descriptions of the exploits of those who could betermed ‘plant explorers’, who advertently placed the seeking out of new plants

trans-as the btrans-asis for their global wanderings The delightful book In Pursuit of Plants

by Philip Short9provides extracts from the journals of 19th and early 20th tury plant collectors from around the world, each of whom describes the excite-ment felt in discovering new and wondrous plants It is this desire to enquiretogether with developments in the capacity to utilise the material discoveredthrough the enquiry which has produced the modern world of plant breeding.This work has provided society with many of the plants which it enjoys on adaily basis, including those used in non-obvious capacities such as textiles, medicines and engineering, although these uses often go unnoticed Stuart

cen-‘Psycho’ Pearce may be a much lauded hero to Nottingham Forest fans but it isdoubtful whether many of the same Forest fans would pay similar homage to theInstitute of Grassland and Environment Research which produces grass specifi-cally designed for use on football pitches and was responsible for the playingsurface at the City Ground which enabled ‘Psycho’ to play some of his best football.10

For the most part, plant breeding activity and its results go unnoticed anduncommented upon because it is uncontroversial However, as has been well rehearsed elsewhere, this is no longer the case, and the activities of plant scientists are coming under increasing scrutiny One of the reasons for this is theincreasing awareness of the territorialisation of plant genetic material This is

8 http://nefertiti.iwebland.com/timelines/topics/agriculture.htm and http://www.aldokkan.com/ science/agriculture.htm.

9 Short, In Pursuit of Plants (University of Western Australia Press, 2003).

10 This connection is particularly significant to one of the authors, as her grandfather, Professor

ET Jones, was director of the Institute in the 1950s (when it was the Welsh Plant Breeding Station) and a founding father of the UK’s plant variety rights system, and her partner, Professor Robert Bradgate, is an avid Forest fan

nothing new—the use of land together with that which rests upon and below it

to define and describe States and status can be traced back throughout history Land, and what it represents in terms of identity and power, stands as a sin-gle thread linking all nations, all peoples and every person throughout history

At the heart of this universal connection to the land lies the desire to own, and

by owning, to define States are defined via their borders and increase theirpower by extension of those borders often via the use of force Individuals definethemselves by reference to their property and to what they place upon it This connection to the land is not merely based on a physical association with

it, it also resonates with perceptions as to what land represents Simon Scharma

in Landscape and Memory11provides examples of the roles land and landscapehave played in religion, literature and art, amongst others, in shaping our, oftenunconscious, views of the world around us In the past the global realisation ofthe importance of land came in the form of conquest Today the physical annex-ation of another country is deplored and even the threat of such annexation can

be sufficient to justify stern action from the international community, and land,and all that it represents has taken on what could be regarded as a heightened significance as countries and peoples seek to assert their identity

Equally the colonisation of land, where no force is used, but indigenouspeoples are nonetheless made subject to externally imposed rules and processes

is frowned upon as colonisers are increasingly called upon to apologise for pastpractices, provide compensation and, arguably most importantly of all, to polit-ically recognise the community(ies) affected In the absence of other land toacquire in order to add wealth and power, attention has turned increasingly tothe value of that which can be found upon and within it—and with this atten-tion comes the concomitant issue of, if there is a value, who has the right toexploit it or, put another way, who owns the right to the value in the material.One of the main sources of this value are plants and the interest in acquiring theright to control the exploitation of both plants and the genes making up theplants has led some commentators to view this as a new form of colonialisation.This focus on the value of indigenous plant material and the issue of who cancontrol access to any value residing within that material has meant that the con-trol mechanisms, and more specifically intellectual property rights, have them-selves come under increased scrutiny.12To a considerable extent the focus forthe scrutiny has been the developing world, but as this book will discuss, thereare also issues which arise which relate to policy and practice within a developedcountry context This book will look at the way in which all aspects of plantmaterial (from genes to species) have been increasingly regarded as privateproperty over which a private property right can be asserted The focus will be

11 (Harper Collins Publishers, 1995).

12 See, for example, the views expressed by leading genetic scientists such as Sulston and Ferry,

The Common Thread (Bantam Press, 2003); Watson, DNA: The Secret of Life (Random House,

2004); and those of commentators on the possible impact of the science: Fukuyama, Our Posthuman

Future: Consequences of the Biotechnology Revolution (Profile Books, 2002).

on European provision although it has to be understood that this must, mately, be looked at against international trends and practices

ulti-In writing the book we have been greatly assisted by organisations such as theUPOV Office, the Community Plant Variety Rights Office, the European PatentOffice, national plant variety rights and patent offices, organisations represent-ing the interests, scientific and legal, of plant breeders, and the companies whoare engaged in the research itself In particular we would like to thank the following individuals who, over the years, have provided invaluable guidanceand advice, John Ardley, Bart Claes, Deryck Beyleveld, Julyan Elbro, JoseElena, Barry Greengrass, Joel Guiard, Bart Kieweit, Bernard Le Buanec, PeterOdell, Tim Roberts, Rene Royon, Bubpha Techapattaraporn, Roger Turner,Geertrui van Overwalle, Roger Walker and Sue Wigzell We are also very grate-ful to all the plant breeders who participated in the diverse aspects of the EUproject—they are unfortunately too many to mention, but we thank them allunreservedly

Our biggest thanks go to those who, with us, ran the EU-funded PlantIntellectual Property (PIP) project, the project team Antoine Alegre de laSoujeole, Jean-Louis Talvez, Marc Lecrivain, Fintan Moran, Abdullah Sayegh,Geertrui van Overwalle, Martin Ekvard, Rosa Manjon and Alexander Krefft.Anyone who was involved in the PIP project will know that there was one per-son above all who made the whole project succeed and that was Marie-JoseeGoode As the third member of the Sheffield Triumverate she was responsiblenot only for the smooth running of all aspects of the project, but also for mak-ing it the most enjoyable experience imaginable It is impossible to express ourgratitude to her or our delight in having made such a great friend

We owe an especial debt of gratitude to Richard Hart both for his belief in thevalue of this project but also for his patience (not least when the authors took adecision to delete the first final draft and rewrite from scratch)

Finally we would not have been able to write the book without the support ofRob and Diane They have borne the brunt of our forays abroad, obsession withplants and bits of plants, the highs and lows of the PIP project and especially thetrauma involved in writing it all up Without their constant belief in our ability

to write this book, this would still be a work in progress The words ‘thank you’seem so small and yet mean so much and we hope they understand the depth ofour gratitude and love We dedicate this book to them

As ever, responsibility for the contents of this book remains our own

Chapter 3: The Emergence of European Plant Protection:

II European Plant Property Protection in the Early 20th Century 136

Chapter 4: The Council Regulation on Community

IV Key Issues 218

Chapter 6: The European Convention—the Article 53(b)

III EPO Policy and Practice Regarding Genetic Resources and

Chapter 7: The European Directive on the Legal

III Key Issues 458

Chapter 10: European Plant Intellectual Property:

II National Responses to the International Obligations 522

Table of Cases

Advanta USA Inc v Pioneeer HiBred International Inc, No.04-C–238-S 27,

27 October 2004 49

Allen, re (1987) BNA’s Patent, Trademark and Copyright Journal 638 88

Auchinloss v Agricultural & Veterinary Supplies [1999] RPC 397 488

Boehringer Mannheim (Docket No 93/960), CA The Hague, 3 February 1994 488

Chakrabarty 447 US 303 (1980) 85, 86–88, 150, 291 Ciba-Giegy/Propagating Material (Case T–49/83) [1984] OJ EPO 112 294–99, 302 Comtesse Louise Erody (Case A–23/2002) 208, 240, 243 Festo v Shoketsu Kinzoku 122 SCT 1831 (2002) 328

Funk Bros Seed Co v Kalo Inoculant 33 US 127; 130 USPQ 280 (1947) 78

Genentech I/Polypeptide Expression (Case T–29/85) [1989] OJ EPO 275 473

Georgetown University/Pericardian Acces (T–35/99) [2001] EPOR 169 284

Harvard/Oncomouse [1990] OJ EPO 476; [1992] OJ EPO 589 88, 281, 301–2, 307, 334, 348, 360 Harvard College v Canada (Commissioner of Patents) [2002] SCC 76 99, 138 Hibberd, re 227 USPQ 443 (1985) 85, 86–88 Howard Florey/Relaxin [1995] EPOR 541 268, 281–82, 371 ICOS/SmithKline Beecham (Patent No 94 903 271.8–2106/0630405), 22 August 2001 265–66, 268, 271, 275–76, 389 Imazion Nursery Inc v Dania Greenhouses 69 F 3d 1560; 36 USPQ 2d 1673 (CAFC, 1995) 80

JEM Ag Supply Inc v Pioneer HiBred 534 US 124 (2001) 87–88 Kirin-Amgen v Hoechst Marion Roussel [2005] 1 All ER 667 325

Klinische Versuche I and II [1998] RPC 423; [1997] RPC 623 331, 488–89 Latimer, re [1889] Dec Comm Pat 123 78

Leland Stanford/Modified Animal [2002] EPOR 2 283–84, 376 Lowell v Lewis 15 Fed Cas 1018 (CCD Mass, 1817) 95

Lubrizol/Hybrid Plants (Case T–320/87) [1990] OJ EPO 71 295–96, 298–99, 306, 317, 374, 466–67 Madey (John MJ) v Duke University (No 01–1587) (Fed Cir, 2002) 97, 493 Microsoft (2004) 512

Monsanto Canada Inc v Schmeiser [2004] SCC 34 100, 482–85 Monsanto/Somatic Changes [2003] EPOR 327 269–70, 355, 466, 474 Monsanto v Stauffer [1985] RPC 515 331, 487 Mycogen Plant Science Inc/Modifying Plant Cells 298 Netherlands v European Parliament and Council [2001] ECR I–7079 362–63

Novartis/Transgenic Plant [2000] EPOR 303; [1999]

EPOR 123 122, 293, 303–16, 318–19, 334, 351,

356, 372, 375, 445, 461–62, 466, 519Nungesser v EC Commission [1982] ECR 2015 65

NV Phillips Gloeilampenfabriken (1954) 71 RPC 192 138

PMA et al v Republic of South Africa et al (High Court of South Africa

–Transvaal Provincial Division) Case No 4183/98 Unreported 112, 524Parker v Flook 437 US 584; 198 USPQ 193 (1978) 78Pioneer/Oilseed Brassica [2004] EPOR 421 276, 318–19Plant Genetic Systems/Glutamine Synthesise Inhibitors (PGS)

(Case G–3/95) [1996] OJ EPO 169; (Case T–356/93) [1995]

EPOR 357 279–82, 285, 298–304, 306–7, 312,

334, 351, 359, 374, 399, 462, 466–67Roche Products Inc v Bolar Pharmaceutical Co Inc (1984) 221

USPQ 157 (CD) (Cal) 96Rote Taube [1970] 1 IIC 136

137, 150Sakata Seed Corp v SVS Holland BV (Case A–17/2002) 215Schulin v Saatgut-Treuhandelverwaltungsgesellschaft mbh

(Case C–305/00) 243–44 Sieckman v Deutsches Patent und Markenamt [2002] ECR I–11737 520Unilever/Good Faith (GO2/97) [2000] EPOR 73 500Wellcome Foundation v Parexel International & Flamel, Trib de

Grande Instance de Paris, 20 February 2001 331, 487, 489Yoder Bros Ltd v Florida Plant Corp 193 USPQ 264 (1976) 78

Pt I 8

Pt II 502Section V 104–5, 502Art 1 66, 102, 112, 163, 248Arts 1–8 102Art 2 502Art 7 102–3, 129–30, 503Art 8 102–3, 129–30(2) 98, 103, 114Art 17(3)(b) 127Art 27 1, 23, 104, 128(1) 23, 92, 95, 104–6, 364, 368(2) 96, 105–8, 230, 366, 375–76, 390(3) 96(3)(a) 105(3)(b) 4, 18, 23–24, 27, 30–31, 60, 103, 105, 110,

113, 115–18, 120–21, 124–25, 127, 129–30, 133, 150–51, 156–58, 197, 232–33, 290, 366, 412Art 28 105, 470(2) 124Art 29 105Art 30 97, 108–10, 114, 233, 323, 366, 503Art 31 98, 110–14, 235–36, 323, 332, 366, 500, 503–7, 520(j) 504–6(l) 236Art 33 66Art 41 197Convention on Biological Diversity (CBD) 55–61, 76, 102–3, 110,

117, 126, 130–31, 178, 232, 244, 322Art 3 376

Art 8j 55–58, 61, 377 Art 16 56, 58, 61 (2) 61, 377 (5) 61, 377 Convention establishing the World Intellectual Property Organisation

1976 (Stockholm Convention)

Art 2(viii) 27

Convention for the Protection of Literary and Artistic Works 1886 (Berne Convention) 8, 125, 146 Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (Rome Convention) 146

International Convention for the Protection of New Varieties of Plant 1961 (UPOV 61/72) 5, 7, 13–14, 18–19, 24–25, 30, 34–36, 69, 75, 80, 87, 102, 117–18, 122, 125–27, 129–30, 135–36, 139, 141–200, 201–3, 215–17, 225, 235, 245, 251, 254–57, 261, 264, 290, 294–95, 307, 312–13, 343, 345–46, 349–52, 354–55, 372, 395, 398–99, 403, 409, 414, 416, 422, 430, 435, 443, 455, 457, 494, 510–11, 522–23 Preamble 159

Art 1 122

(iv) 161

Art 2(1) 34–35, 81, 87, 147–48, 256, 312, 356 (2) 122, 160–61 Art 4 160

Art 5 175, 190 (3) 178

Art 6 19, 160, 164 (1)(c),(d) 122, 160 Art 7 180

Art 8(1),(3) 177

Art 9 168

Art 13 174

Art 14 184

(1) 179

(3),(5)(a) 216

Art 15 176, 191, 197 (2) 191–92 Art 16 176

Art 17 29, 500, 508–10 (1) 230 International Convention for the Protection of New Varieties of Plant

1978 (UPOV 78) 5, 7, 18–19, 24–25, 30, 34–36, 69, 75, 80–81, 87,

117–18, 122, 126–27, 130, 135–36, 141–200, 202–3, 215–17,

225, 227, 230, 235, 239, 245, 251, 256–57, 261, 264, 290, 294,

302, 307, 312–13, 343, 345–46, 349–52, 354–55, 359, 372,

395, 398–99, 403, 409, 414, 416, 420, 424, 427, 429–30,

432, 443, 455, 457, 464–65, 493–94, 510–11, 522–23

Preamble 159

Art 1(iv) 161

Art 2(1) 34–35, 87, 147–48, 155, 256, 356 (2) 123, 161 Art 4 160

Art 5 175, 190 (3) 178–79 Art 6 19, 164, 172 (1)(a) 164

Art 7 180

Art 8(1),(3) 177

Art 9 168, 509 Art 14 184

(1) 179

(3) 216

(5)(a) 179

Art 15 176, 191, 197 (2) 191–92 Art 16 176

Art 17 29, 500, 508–10 (1) 230

Art 37(1) 151

International Convention for the Protection of New Varieties of Plant 1991 (UPOV 91) 5, 7, 18–20, 24–25, 28, 30, 34–36, 69, 75, 80–82, 87, 117–18, 122–23, 126–27, 130, 135–36, 141–200, 201–2, 204, 206, 213–17, 220, 225, 230, 233, 239, 245, 251, 256–57, 261, 264, 290, 294, 302, 307, 312–13, 343, 345–46, 349–52, 354–55, 361, 372–73, 395, 398–99, 401, 403, 409, 414, 420, 422–23, 426–27, 429–30, 433, 437–38, 443, 447, 449, 451, 455–57, 459, 464, 469–71, 485, 493–94, 509–11, 518–20, 522–24 Art 1 123–24, 161–62, 195 (iv) 161, 290 Art 2(1) 87, 256, 356 Art 4 160

Art 5 19, 163, 207 Art 6 172, 214 (1) 173, 213 Art 7 123, 164, 180, 208 Art 8 123, 168, 209 (1),(3) 177 Art 9 123, 168, 209

Art 13 481

Art 14 181, 184, 191, 215, 518 (1) 176, 179, 215 (2) 176, 215 (3) 176, 215–16 (5) 179

(5)(a)(i) 179, 230 (5)(a)(ii) 230

(5)(b) 181

Art 15 176, 179, 191–92, 197, 225, 233 (1) 179

(1)(iii) 179

(2) 179, 191–92, 216, 230 Art 16 176

Art 17 29, 194, 500, 508–10 (1) 230

Art 30(1)(i) 195

Art 37(1) 126

International Convention on the Protection of Industrial Property 1883 (Paris Convention) 8, 10–15, 18–19, 25, 48, 75, 77, 100–1, 116, 125, 133, 135–37, 144–45, 148, 244–45, 248–51, 259, 332, 374, 455, 501–2, 504, 511, 519, 525 Art 1 248

(2) 14, 224 (3) 10, 12–14, 38, 142, 249, 456 Arts 1–12 502

Art 2 248

Art 3 248

Art 5 500–1 (2) 500

(4) 500–1 Art 5A 501

International Treaty on Plant Genetic Resources for Food and Agriculture 2003 (ITPGR) 55, 58–61, 76, 102, 117, 130–31, 178, 244, 322 Art 1 59

Art 2 123

Art 9 60

Art 12(3)(d),(f) 59

Art 13(2)(b)(iii) 59

Patent Law Treaty 2000 247, 339 Treaty on the Deposit of Micro-organisms 1977 (Budapest Treaty) 75, 118, 292, 346, 349, 386 Universal Copyright Convention 1952 146

Vienna Convention on the Law Treaties 1969

Art 31(1) 118–19

European Union Legislation

Community Patent Convention (CPC) 254, 341, 343Arts 25–28 179, 330Art 27 179, 330Art 31(b) 330, 481, 487

EC Treaty 1957 511European Patent Convention 1973 (EPC) 5–7, 34–35, 69, 72, 97,

105–6, 110, 141, 146–50, 199, 219, 223–24, 237, 245, 247–287, 289–340, 341, 343, 346–47, 349, 354,

361, 365, 376, 380, 387, 398–99, 416, 421, 423–24, 426–27, 429–30, 432–33, 435–36, 438, 444, 522Art 52 260(1) 263, 301, 307(2)(a) 261Arts 52–57 314, 320Art 53 277, 280, 299(a) 261, 277–81, 283–84, 287, 310, 348, 375–76, 390(b) 25–26, 35–36, 150, 204, 221, 255,

257, 261–62, 287, 289–340, 351–52, 354, 367, 374, 456, 461Art 54 266Art 57 274Art 63 392Art 64(2) 304–5, 309–11, 314–15, 319–21, 379, 471(3) 320Art 69 179, 254, 259, 324, 330, 339(1) 324Art 83 275, 389Art 84 305–6, 389Arts 99–101 323Protocol 179, 259, 324, 330, 339

Secondary Legislation

Council Dir 66/401/EEC on the marketing of fodder plant and cereal seed [1966] OJ 125 62Council Dir 98/44/EC on the legal protection of biotechnological

inventions [1998] OJ L213/13 6–7, 76, 97, 106, 110, 124, 153,

156, 193, 201–2, 204, 206, 218, 221, 236–37, 260, 262–63,

303, 307–8, 310–12, 328, 332, 335–36, 341–395, 401, 409,

411, 413–14, 416, 421, 423–24, 426–27, 429–33, 435–36,

438, 441, 444–45, 447, 455, 459, 461–62, 467, 471, 474–75, 490–91, 497, 509, 514, 516, 519, 521–23, 525Preamble 131Recitals 364, 366–67, 373–74, 378Recital 9 364Recital 10 364, 376Recital 11 364Recital 12 364Recital 14 365–66, 369Recitals 22–25 370Recital 27 60–61Recitals 29–32 388Recital 30 372Recital 31 308, 372Recital 32 367, 374, 378, 461Recital 34 371Recital 36 375–76, 390Recitals 37–45 365Recital 52 385, 506–7Recital 53 506–7Recital 55 57, 61, 376–77, 385Recital 56 377Art 1 15(1) 104, 368–69Art 2 369, 373(1)(b) 373(2) 372–73, 467(3) 372Art 3 369–71, 463(1) 369(2) 47, 371Art 4 372–74, 388(1)(a) 372, 374(1)(b) 373, 465(2) 308, 372(3) 367, 374, 378, 465Art 5 369–70, 475(3) 274, 370, 474–75Art 6 375–76(1) 279, 376, 390(2) 375, 390Art 7 377

Art 8 378–81, 445, 453, 472, 476–80, 482, 485, 489, 492, 515(1) 379, 475–78(2) 379, 476–77Arts 8–10 485, 491, 497Arts 8–11 485Art 9 378–81, 445, 453, 472, 476, 478–80, 489, 492, 515Art 10 381–83, 472, 476, 479–80Art 11 382–83, 476, 479–80, 485(1),(2) 383Art 12 222, 385–86, 388–89, 449, 472, 504–7, 520(1),(3) 505–6(2) 505–6, 510(4) 384Art 13 386Art 14 478, 485Art 16(c) 387Council Dir 2001/18/EC on the deliberate release into the environment

of genetically modified organisms [2001] OJ L106/1 62–64, 70–71, 229Council Dir 2002/53/EC on the common catalogue of varieties of

agricultural plant species [2002] OJ L193 62–63Art 7 62Council Dir 2002/54/EC on the marketing of beet seed [2002] OJL 193 62Council Dir 2002/55/EC on the marketing of seeds [2002] OJL 193 62Council Dir 2002/56/EC on the marketing of seed potatoes

[2002] OJL 193 62Council Dir 2002/57/EC on the marketing of the seed of oil and fibre

plants[2002] OJL 193 62Council Dir 2003/90/EC setting out implementing measures for the

purposes of Art 7 of Council Dir 2002/53/EC [2003] OJL254 62Council Dir 2003/91/EC setting out implementing measures for the

purposes of Art 7 of Council Dir 2002/53/EC [2003] OJL254 62Dir 2004/27/EC Amending Directive 2001/83/EC on the Community

Code relating to medicinal products for human use [2004] OJL136 .493European Parliament and Council Dir 2004/48/EC on the enforcement of intellectual property rights [2004 OJL195 244Art 1 244Council Reg (EEC) 1765/92 establishing a support system for producers

of certain arable crops [1992] OJL90 231, 382Council Reg (EC 1768/92 concerning the creation of a supplementary

protection certificate for medicinal products [1992] OJL182 .66, 392Council Reg (EC) No 2100/94 on Community plant variety rights

(CPVR) [1994]OJL227 6–7, 19, 21, 24, 27, 31, 54, 85, 110, 123,

151, 153, 157–58, 162–63, 170, 176–77, 192–94, 196, 199–200, 201–45, 30–7, 332, 360–61, 368, 372–73,

381–82, 388, 398, 401, 413–14, 443, 449, 456–57,

459, 461, 469–70, 480, 485, 494, 505, 510–11, 514, 520, 523Preamble 206, 221, 237, 511Recitals 204

Pt 6 206Art 1 24, 205, 218–20Art 2 205Art 3 205, 218–19Art 4 205Art 5 372(2) 203, 207, 311, 461–62(3) 464Art 6 207Art 7 203, 208, 225, 240(2)(a) 240Arts 7–10 207Art 8 209Art 9 209Art 10 212(1) 212, 240(2) 212–14(3) 214Art 11 214, 239Art 12 214Art 13 215, 221, 225, 469–70, 481, 518(1)(a) 499(2) 215–16, 224(4) 215–16, 224–25, 468, 474(5) 215–16, 234, 238(5)(b),(c) 228(6) 225–26(8) 215–16, 229–30, 234, 323, 366Art 14 216, 221, 230–31, 234, 383–85, 456, 480, 514(2) 231, 485(3) 231–33, 243Art 15 216, 481(a)–(c) 233(b) 212(c) 212, 234(d),(e) 234Art 16 216, 238Art 17 217Art 18 217Art 19 217

Art 29 29, 234–37, 384, 388–89, 509–13, 520(1) 234, 237, 510(2) 237, 510(5)(a) 237Art 50(1)(g) 60Arts 55–57 209Art 67 217Art 92 220–21, 223–25, 464(1) 220Art 94 217(1)(a) 217Art 105 206, 217Art 114 240Protocols 210–11Commission Reg (EC) 1239/95 establishing implementing rules for the application of Council Reg (EC) 2100/94 as regards the fees payable

to the Community Plant Variety Office [1995] OJ L121/37 207, 241Commission Reg (EC) 1768/95 implementing rules on the agricultural

exemption provisions provided for in Art 14(3) of Council Reg

(EC) 2100/94 on Community plant variety rights [1995]

OJ L121/37 230–32Art 41 237(1)(a)(6) 509Council Reg (EC) 1610/96 concerning the creation of a supplementary

protection certificate for plant protection products [1994]

OJL198 66–68, 392Recitals 1–4 68Recital 5 67Recital 15 68Art 1 67Council Reg (EC) 258/97 concerning novel foods and novel food

ingredients [1997] OJL043 62, 229Council Reg (EC) 930/2000 establishing implementing rules as to the

suitability of the denomination of varieties of agricultural plant

species and vegetable species [2000] OJL108 63

National Legislation

Australia

Plant Breeder’s Rights Act 1994 184

s 3(1) 184

art 7 256Law No 92–597 of July 1992 427

Germany

Law on the Protection of Varieties and the Seeds of Cultivated Plants 1953 137, 140Law on Patents 1980 429Law on Patents 2004 474–75

Hungary

Law No XXXIII on the Protection of Inventions by PatentArt 1 374Art 6 374

India

Protection of Plant Varieties and Farmers’ Rights Act 2001 125–26

s 76A(3)(f) 374–75sch A2 374Plant Varieties and Seeds Act 1964 20, 54, 141, 143, 402

s 38(1) 160Plant Varieties Act 1997 508

United States

Constitution

Art 1(8) 77Drug Price Competition and Patent Term Restoration Act 1994

(Hatch-Waxman Act) 96, 493

s 271(e)(1) 96Inventors Protection Act 1999 (AIPA) 77Plant Patent Act 1930 (PPA) 77–82, 85–88

s 100(a) 90

Title 35 (Plant Patent Act 1930) 77–82, 85–88

Defining the Territory

I INTRODUCTION

IN THE 21ST century, the provision of plant property rights (mainly in the

form of patents and plant variety rights) is regarded as the norm Indeed, for

plant varieties international trade law mandates that such protection must

be provided The obligation to provide protection, which is contained in Article

27 of TRIPs (the Agreement on Trade-Related Aspects of Intellectual PropertyRights),1has been the focus of considerable debate, particularly in respect of itsimplications for developing countries What has been debated less is the effect

of granting private property rights in and over plant material within a developedcountry context As this book will discuss, protracted discussions took place inEurope during the 19th and 20th centuries as to whether plant material should

be the subject of a private property right As a result of these discussions the rent position is that plant varieties can be protected via a plant variety right andall other types of plant material by patents However, notwithstanding anapparent political consensus on protection, a number of important issuesremain which, if unresolved, could have serious implications for the Europeanplant breeding industry Of critical importance are the relationship between thedifferent rights (and, in particular, those points of tension which could arise as

cur-a result of the differences in function of ecur-ach right including different prcur-acticesrelating to the limitations/derogations to the right) and those internal aspects ofthe rights which might pose problems for plant researchers (such as the thresh-old for grant and scope of protection conferred) It is these themes, in both theirmodern and original guises, which form the core of this book

A problem facing the modern debate is the fact that because of the ingly global nature of plant research, the issue of the protection of the results ofthat research has tended to focus on commercial concerns such as the removal

increas-of trade barriers by standardising protection, promoting investment through thepromise of strong private property rights and maximising competition In such

an environment it has become easy to pass over those issues which were once the

1 The TRIPs obligation will be discussed in ch 2 In essence it requires member states of the WTO

to provide protection for plant varieties by the provision of patent protection and/or a sui generis

right Whilst micro-organisms must be protected under patent law, member states have the option

of excluding plants from patent protection.

heart of the debate These included the desirability of permitting private erty rights over key material such as food crops, the need to foster a specific,socially desirable, research sector (such as plant breeding), and the function ofany restrictions to such rights as are granted (and in particular the interfacebetween the public and private interests in the material protected)

prop-This change of focus could result in the belief that many, if not all, of those

‘old’ issues are now settled and, therefore, require no further discussion Such abelief would, however, be misplaced Clearly there are some issues whichappear to be as hotly debated now as they were when the rights were firstmooted—an example being the extent to which protected material can be usedfor research—however, it can be argued that over time the nature of the rightshas changed significantly with the result that the rationales for certain key prin-ciples enshrined in the rights can also be said to have changed and this has sig-nificance for those who rely upon them A key example of this is that the plantvariety rights system was not introduced as an intellectual property right (withall the private property connotations which accompany these rights) Instead itwas introduced to foster a specific sector seen as pivotal in securing the ongoingeconomic development of many countries, plant breeding Because this sectorwas seen as having great social significance, limitations on the rights of thebreeder were built into the system of protection to ensure that the rights werenot used to overly monopolise key plant material These limitations were firmlyrooted in the public interest Over time the plant variety rights system has,within certain jurisdictions (the EU being the most notable), been drawn into theintellectual property law family and the form of the right refined to mirror, inparticular, its patent law counterpart One of the basic tenets of intellectualproperty is the protection of the private property rights of the person who holdsthe right In the case of patents this means placing minimal limitations or dero-gations on the right granted Where such limitations/derogations do exist theyare given a very restrictive application In light of the inclusion of plant varietyrights within the intellectual property law family it could be argued that thesame restrictive interpretation and application should be given to the provisionswithin plant variety rights However, to so do would be to refute the originalintention behind the provisions—the question (which will be debated withinthis book) is whether it is appropriate to hold fast to the original intention or if

it now appropriate to fully embrace the patent law approaches to such sures To date this is not an issue which has been discussed much within the gen-eral fora of debate As will be seen below, because of the Europe-centric nature

mea-of the background to the rights under discussion, this issue mea-of the original fication versus the modern application is particularly resonant Before looking

justi-at these issues it is worth justi-attempting to define the geographical pljusti-atform uponwhich this discussion will primarily take place and the problems encountered inproviding a hard and fast definition

II DEFINING EUROPE

At first glance, the term ‘European plant intellectual property’ would appear to

be straightforward and uncomplicated It implies firstly that there is nality of practices and policy which gives rise to a ‘European’ system It isimportant to bear in mind that legal systems across Europe differ, with the mostobvious point of departure being those jurisdictions which operate on a civil lawbasis (such as France and Germany) and those which are common law based(such as the UK).2Secondly it implies that this practice (predicated as it is uponthe practice of permitting plant variety protection for plant varieties, withpatent protection available for all other types of plant innovation) is based upontwo sets of rights each of which fall within the intellectual property law familythereby carrying with them the same justifications and rationales for grant,extent of protection and derogation and that the justifications again find common ground within each European country as well as within the collectiveEuropean Union In addition, the fact of the two rights implies a division intypes of research activity—that which may give rise to a plant variety right andthat which could lead to a patent—and that it is possible to keep these divisionsclear for the purposes of applying the rights A further factor which has, if onlysubconsciously, served to differentiate between the two rights (and indeed thosewhose interests they are purported to serve) is the fact that the plant varietyrights system is often also referred to as plant breeders’ rights The inference isthat the right is intended to serve the interests of those who can be termed ‘plantbreeder’ and this sector-specific nature of the right has tended to attach to theright irrespective of whether it is referred to as a variety right or a breeders’right In an era where the boundaries between both types of plant subject mat-ter and those who engage in plant research are increasingly blurred, not to men-tion the patentisation of the plant variety rights system provided (as will bediscussed later in this chapter and in chapters 3 and 4) it is debatable whether it

commu-is accurate to dcommu-istingucommu-ish in practice That said, the sector-specific nature of theplant variety rights system remains important for this lies at the heart of the jus-tification for the right In particular, the public interest measures which resonatethroughout the right (even within its modern guise) serve to provide a centralpoint of demarcation between plant variety rights and the patent system Asthese provide the central themes to this book, which will be discussed in greaterdetail alongside the substantive law, this chapter will provide some thumbnaildefinitions of Europe, the two intellectual property rights under discussion, andthe science concerned, identify those organisations which are influencing policyand practice, and also outline some general issues relating to the operation ofintellectual property rights in practice

2 There will be further references to these differences later in this chapter.

For the purpose of European plant property rights there are three main cepts which need to be taken into account when defining what the actual legalposition is We will only provide an outline of each here as these are investigated

con-in more detail throughout the book

The three systems are a) Europe plant protection law as defined by theEuropean Union (EU), b) Europe plant protection law as defined by theEuropean Patent Convention (EPC), and c) Europe plant protection law asdefined by national laws conceived as a result of membership of internationaltreaties (which may or may not mirror the principles enshrined under the firsttwo headings).3Of course these are not separate from each other but are inex-tricably (for the present at least) interwoven with one another (not least forpolitical reasons) The result is that there is a great deal of convergence, butequally there remains a degree of divergence (both across jurisdictions andwithin national and pan-national systems of protection) which needs to beborne in mind when determining the exact nature of provision within Europe

We will begin in reverse order and start by looking at the international ations

oblig-Defining the International Obligation

All European countries, and indeed the EU itself, are members of the WorldTrade Organisation (WTO) This membership carries with it an obligation tocomply with the provisions of the TRIPs Agreement As will be discussed inchapter 2, the TRIPs Agreement provides member states with a number ofoptions as to the protection of plant material Article 27(3)(b) permits members

to exclude plants from patent protection, but nonetheless requires member

states to provide patent protection for micro-organisms and/or sui generis4tection for plant varieties (the issue of defining a plant, a micro-organism and aplant variety will be dealt with below) Where members do provide for protec-tion for plants (as opposed to plant varieties) the implication is that they will do

pro-so via the patent system, with only plant varieties being captured by the sui generis right (if that is the option chosen by the member state)

In terms of the provision of protection, European countries appear to beagreed As a result of membership of the EPC, all European countries excludeplant varieties from patent protection; none excludes plants from patent pro-tection This would seem to indicate that all plants, other than plant varieties,are patentable However, depending on the granting practices of the national

3 A discussion of the substantive laws of each of the EU member states relating to plant property rights is outside the remit of this book For this level of detail we would advise contacting bodies such as the European Bio-industry Association or European Seed Association, national granting offices or local organisations such as the UK’s Chartered Institute of Patent Agents and British Society of Plant Breeders (each of which has a local equivalent in nearly all other EU member states)

4 Of its own kind, this means a right which is individually tailored to a particular subject (the plant variety rights system is an example of such a right)

offices, the reality is not so clear, with some offices still refusing to grant patentsover plant innovations on policy grounds—primarily that they do not fallwithin the technical notion of what is an invention This means that on the face

of it (and in the absence of an express exclusion of plants from patent tion) there may be local diversity as to whether protection will be actually forth-coming (This issue will be revisited when looking at the concept of Europeanpatent provision under the EPC.) The second matter relates to the provision of

protec-a sui generis system Becprotec-ause of the express exclusion of plprotec-ant vprotec-arieties from

patent protection the implication is that all European countries will provide aform of specific plant variety protection, and that where they do so that protec-tion will be uniform within each country One of the reasons for the supposition

is the existence of the International Convention on the Protection of NewVarieties of Plants (UPOV) As will be seen in chapter 3, this Convention is gen-erally seen as European in form and spirit essentially because it was introduced

as a result of pressure from European plant breeders The reality, however, isthat not all European countries are members of UPOV (the most obvious absen-tee being Greece) and even where there is membership the nature of the mem-bership might differ as a result of the substantive revisions to the UPOVConvention5which have taken place over the years with some countries adher-ing to a previous as opposed to a current Act (an example being France which isstill a signatory to the 1978 Act) These differences in adherence are significant

in respect of which species are protectable, the duration of protection and alsothe derogations provided to the right granted These will be discussed at length

in chapter 3

European Plant Protection as defined by the EPC

All European countries (including those who make up the EU) are members ofthe European Patent Convention As will be discussed in chapters 5 and 6 thisseeks to harmonise patent law across Europe thereby facilitating not only theprovision of a single right enforceable in as many member states as the patentapplicant wishes, but also ensures that the overarching grant mirrors the grant-ing and enforcement practices of member states within which the right is to beprotected As mentioned above, the EPC expressly exclude plant varieties fromprotection (as well as essentially biological processes for the production ofplants) The problem with stating that there is therefore a cogent and unifiedsystem of policy and practice regarding plant innovations within all memberstates of the EPC is that the EPC is overseen by the European Patent Office(EPO) which is primarily concerned with grant This is crucial for three reasons The first is that anyone seeking to obtain patent protection in Europe has achoice They can either seek a patent via the EPO or they can apply through

5 The original UPOV Convention was introduced in 1961 and was revised (minimally) in 1972 and (substantively) in 1978 and 1991 These revised versions are referred to as ‘Acts’.

national granting offices As will be discussed later, in order to obtain a patent

a certain threshold must be met Both the EPC and national patent laws refer tothe same threshold; however, the interpretation of what that threshold means inpractice can differ Whilst the EPO is vociferous in setting out its understanding

of these common principles, its decisions are not binding on national offices andare merely persuasive in nature This means that there can be differences ingranting practices between the EPO and national offices

Secondly, as already stated, the EPO is primarily concerned with grant It isnot concerned with matters relating to any limitations or derogations to thepatent right once granted Most national patent laws permit the use of patentedtechnology for research purposes, but the issue of what constitutes ‘research’may differ within jurisdictions In addition, most patent systems permit thirdparties to seek a compulsory licence if the technology protection by the patent isnot being appropriately disseminated—again there is local variation as to whensuch a licence can be sought Serving as a further complicating factor, thenational laws relating to the limitations and derogations may distinguishbetween types of subject matter (for example being more or less lenient where apharmaceutical product is concerned) and alternative principles may existwhich relate to material covered by a plant variety right which, when taken collectively with the patent law principles, may have an impact on the ability toprotect/exploit a patent or conduct a plant variety research

Thirdly, there is the issue of enforcement of the patent As stated, the EPC isprimarily concerned with grant—however, it does direct national courts as tohow they are to interpret the scope of the patent once granted This will be dis-cussed in more detail in chapter 6; in essence, however, the courts are required

to balance the interests of the patent holder with those of third parties Thenature of local jurisprudence may be such that there are differences of approach

as to what constitutes an appropriate balance (this will be further discussedbelow when looking at the nature of a patent)

Finally, there is the issue of EU plant property rights

Defining EU Plant Property Rights

The EU has been extremely active in recent years and has introduced two keynew pieces of legislation affecting the provision of a private property right overgenetic material However, the impact of these measures has been affected as aresult of attitudes and practices brought about as a result of the issues identifiedunder the two headings above The two pieces of legislation are the CouncilRegulation on Community Plant Variety Rights (hereafter, variously, theCommunity Regulation, the Regulation, and Regulation (EC) No 2100/94) andthe Directive on the Legal Protection of Biotechnological Inventions (theDirective) In respect of the former, this is intended to permit an applicant tosecure, through one application made at the Community Plant Variety Office, a

right which is enforceable across the EU The right is based upon the 1991UPOV Act.6The problems with Regulation (EC) No 2100/94 are two-fold.The first is that, as mentioned above, not all EU member states have signed

up to the 1991 Act Whilst this does not create a problem for the enforcement ofgrants made under Regulation (EC) No 2100/94 it does mean that there may be

a divergence between the rights which will be granted by a member state and itsobligation to enforce as a result of a grant made under the Regulation (for exam-ple a member state may not permit national plant variety rights over a particular species, possibly for policy reasons, but nonetheless will have toenforce a right granted over that species within its national courts as a result of

a Community right being granted)

Secondly, the 1991 Act introduces new concepts such as the essentiallyderived variety concept As will be discussed in chapter 3, the determination ofwhat is an essentially derived variety is to be left to the courts and, in the firstinstance, to national courts It is possible that this will give rise to national dif-ferences The same concerns arise over the restrictions placed on the ability of afarmer to retain seed from one year to the next for resowing This was freelypermitted under the first two main UPOV Acts (and therefore ostensiblyremains freely permitted for farmers within those jurisdictions which stilladhere to the previous Acts) However, it is not as simple as this, for thesechanges to the farm saved seed provisions appear to be compelling even withinthose jurisdictions where the previous Acts remain in force In addition the factthat member states are free to decide the measure of any recompense to thebreeder where the new limitations on the freedom to reuse are seen to operatemeans that there is likely to be diversity of operation notwithstanding the intro-duction of the Community system

The same problems arise in respect of the Directive on the Legal Protection ofBiotechnological Inventions As is the case with Regulation (EC) No 2100/94,the Directive builds on an existing system of protection, in this case the EPC.However, because of perceived problems with a) the way in which the EPC wasbeing interpreted in respect of biotechnological inventions and b) differences innational policy and practice, the European Commission felt it necessary to act

at the Community level The resulting Directive seeks therefore to provide ameasure of good practice which national offices are to follow The problem withthe Directive is that a) it does not fully address the problem of national differ-ences in the interpretation of the threshold for protection or enforcement, b) itdoes not provide any clarity on the limitations or derogations to the right (andfor many most crucially there is no symbiosis between the Directive and theRegulation on the issue of research), and finally c) many member states have concerns over the ethical basis of granting private property rights over geneticmaterial (and human genetic material in particular) and have, therefore struggled to adopt it

6 In June 2005 the European Union became the first intergovernmental organisation to become a member of UPOV: UPOV Press Release No 65, 29 June 2005.

Thus, in a nutshell, one can see that whilst the term European plant

intellec-tual property rights is a useful hook upon which to hang the issues relating toplant property rights within Europe, the term itself should not be taken as sig-nifying that there is a single system of rights which can be defined as European.7The next subject for definition is intellectual property rights and, in particu-lar, the question of whether it appropriate to treat both patents and plant variety rights as members of the same family

III DEFINING THE PROPERTY RIGHT

The World Intellectual Property Organisation (WIPO)8defines intellectual erty as ‘legal rights which result from intellectual activity in the industrial, scien-tific, literary and artistic fields’ The rights granted over this activity aim ‘atsafeguarding creators and other producers of intellectual goods and services bygranting them certain time-limited rights to control the use made of those pro-ductions’, with the rights traditionally divided into two branches, ‘industrialproperty’ and ‘copyright’ Central to dictating the form of each of the rights, aswell as the material protectable under them, are the Paris Convention on theProtection of Industrial Property (first signed in 18839and last revised in 197910)and the Berne Convention for the Protection of Literary and Artistic Works (firstsigned in 1886 and most recently amended in 1971).11It is noteworthy that neitherthe WIPO handbook nor the two Conventions mentions either plant varieties orthe system for protecting plant varieties as intellectual property or intellectualproperty rights The significance of this omission will be discussed later

prop-It is not proposed to discuss in detail either the origins of, or the justificationsfor, the grant of private property rights.12Suffice to say that the State grant ofrights to reward the placing of new products, whether technological or artistic inform, into the market place can be traced back over several centuries The objec-tive is to both reward intellectual activity and provide an incentive for furthersuch work by allowing the holder to prevent others from copying the protectedmaterial Because the rights are essentially anti-competitive in nature (and there

7 There is another issue relating to the term ‘European’ which will be addressed in ch 8 This relates to the notion of what is a European plant breeder In an era of take-overs and mergers, not

to mention a research culture where the use of plant material knows few terrestrial bounds, it can

be difficult to attribute use to any one jurisdiction or community of users The relevance of this will

be explained when discussing the Plant Intellectual Property project, funded by the EU, which

sought to seek the views of European plant breeders.

8 The WIPO oversees the administration of both industrial property rights and copyright.

9 The first reported international conference looking at the provision of protection for inventors took place in Vienna in 1873.

10 20 March 1883, revised 14 December 1900, 2 June 1911, 6 November 1925, 2 June 1934, 31 October 1958, 14 July 1967, and 28 September 1979 The Convention currently has 169 members with accession dates ranging from 1884 (France) to 2004 (Namibia) See www.wipo.int for the full table of members.

11 And this central role is recognised within Part I of the TRIPs Agreement.

12See Drahos, A Philosophy of Intellectual Property (Dartmouth, 1996).

is great resistance to anti-competitive activities), anyone seeking to use them has

to meet certain criteria before the right will be granted—the level at which thethreshold for protection is set depending on the nature of the material to be pro-tected and the potential impact of the right granted The distinction in economicfunction which lies behind the two general headings is key to understanding thedifferent justifications lying behind industrial and intellectual property rights.Industrial property rights are invariably sought to protect products (orprocesses) which have commercial value for commercial reasons Because therights are used to protect a market interest they have to be sought, they do notarise automatically, and are granted only if a certain threshold for grant is met

by the applicant

In contrast, those rights which purists refer to as ‘intellectual’ as opposed toindustrial, for example copyright, have evolved to protect intellectual activitywhich has not necessarily been conducted with a market outcome in mind Therationale behind the pure intellectual property rights is that the mere fact thatintellectual effort has been expended, which is not directed towards producing

a particular technical or technological result, gives rise to an invisible bondbetween creation and creator, and this relationship attracts automatic propertyrights.13The result of that intellectual effort is regarded as unique to the indi-vidual and unlikely to be produced in that exact form by another unless theycopy it In contrast, the industrial property rights reflect the fact that it perfectlypossible for more than one person to come up with the same technical result Aperson claiming a patent over that result therefore has to prove why they should

be granted a right over it.14

It is not entirely clear why the collective name given to copyright, trademarks

and patents is intellectual rather than industrial One view, often expressed, is

that as the nature of trade marks and patents is to promote competition in the market place by excluding competitors from replicating the protected materialthese rights are nothing more than state-sanctioned monopolies which mostmarket-orientated societies shy away from sanctioning It has been argued thatthe collective term ‘intellectual property rights’ is used to give the rights some

credibility The problem with this usage is that it implies some intellectual

effort has been expended in the development of the material protected Whilstthis is not a problem for artistic works as such, and may not be a problem for

13 This rather romantic distinction only holds true under limited scrutiny as these rights have developed in recent years to take account of predominantly commercial interests in the protected works

14 One final point of general comment is that those rights which are thought to be more easily acquired (copyright and registered trademarks) allow the holder to use a short-hand method iden- tifying the existence of a property right through the use of the symbols © and ™ Neither patents nor plant variety rights use an equivalently simple symbol to denote that a right has been granted Instead the more cumbersome ‘patent pending’, ‘patent protected’ or ‘protected by plant variety rights’ phrase is attached to either promotional material (eg the identification label) or to packag- ing Some breeders see this as a problem, both for themselves and for other users, as it can make it difficult to know if they are using protected plant material—this is a issue which will be returned to

in ch 9 For a further comment see Hamrick, The State of Breeder’s Rights (FloraCulture, 2004).

many inventions which are the result of extensive intellectual endeavour, theintellectual element underpinning some inventions and all trade marks whichjustifies a right to monopolise the protected material is less easy to identify.

However, the convention is that the term intellectual is used for all categories,

and this has been adopted internationally as can be seen in the name of theWorld Intellectual Property Organisation and in the TRIPs Agreement.15Forthe purposes of this book, this convention will be followed

The two rights with which this book is concerned are patents and plant ety rights The origin for both can be found in the Paris Convention on theProtection of Industrial Property (which created the Paris Union)

vari-Defining Protectable Material

Article 1(3) of the Paris Convention states that the term ‘industrial property’shall apply: ‘to agricultural and extractive industries and to all manufactured ornatural products, for example wines, grain, tobacco leaf, fruit, cattle, minerals,beer, flowers and flour.’16The use of ‘for example’ clearly shows that this is anon-exhaustive list Although the principle of protection was included in theConvention, this did not mean that a) there was consensus on its inclusion17or

b) that it was intended to include all the results of plant research activities It is

unsurprising therefore that following the introduction of the Convention thisdisagreement should be evident in decisions taken over whether (and how) toprotect plant inventions A number of reasons help explain this.18

The Paris Convention firmly established the principle that plant products

could be industrial property; however, this did not mean that such patents were

not sought and obtained prior to the introduction of the Convention.19The

15The Agreement does not contain the term industrial property and no explanation is provided

as to why intellectual is used in preference to industrial.

16 This definition remains in all subsequent revisions of the Convention.

17The records of the Paris Conference of 1878 show that ‘[b]atailles très chauds took place on

whether chemical products, pharmaceutical preparations and foodstuffs should be patentable and, although the conference decided in the affirmative, an important minority was left dissatisfied.’

Tilton Penrose, The Development of the International Convention for the Protection of Industrial

Property (Johns Hopkins University Press, 1951), reproduced in Abbott, Cottier and Gurry (eds), The International Intellectual Property System: Commentary and Materials, Part One (Kluwer Law

International, 1999) 642.

18 Tellingly, however, such literature as exists indicates that those countries which did make early attempts to introduce some form of protection, for example France, invariably did so in response to pressure from their horticultural and ornamental breeding sectors and these were, even then, pre- dominately privately funded The calls for protection for the results of agricultural plant breeding (which remained mainly publicly funded until the latter half of the 20th century) came much later.

19There is evidence that patents over uses of plant material were being granted before the

intro-duction of the Paris Convention, for example British patents were granted in 1637 to Amye Everard als Ball for a tincture of saffron and roses (PatGB104) and, in 1824, to Miss Lucy Hollowell of Neithrop, near Banbury, in Oxfordshire over the uses of seed imported from Connecticut to

produce superior grass (source: Jaffe, Ingenious Women (Sutton Publishing, 2003)) The Paris

Convention thereby merely endorsed existing practice.

language used within the Convention implies that it was already possible (andpermissible) to protect plant products by one of the rights covered by theConvention—what the Convention did was to firmly establish any such practice

as a general principle Whilst the Convention refers to rights such as trade marksand the repression of unfair competition, the most obvious method of protect-ing the results of plant research was that which is used to protect the results ofother scientific endeavours, namely either patents or utility models However,access to protection was not forthcoming for, whilst the Convention recognisedthe industrial potential of plant products, the science itself was in its infancy andbreeders were unable to demonstrate the level and type of engineering required

to obtain industrial property protection At the most general level, therefore,even where there was support for granting such rights, the nature of the prop-erty systems available at that time was such that protection was effectively out

of the reach of any breeder

The next factor to bear in mind is that in the period immediately followingthe Paris Conference, the main focus for plant research was the production ofagricultural crops and much of this work was publicly funded.20Due to the pub-lic interest in both the work being undertaken and in the nature of the fundingsupporting it, it was felt that the provision of private property rights over thecrops produced would not be appropriate Two further factors served to sup-port to this position

The first was the fact that most of the plant breeders who were engaged inagricultural research had been trained as botanists This predominantly requires

an understanding of the external (phenotypic) features of a plant Once thedesired external characteristics are understood then the Mendelian principle ofheredity can be applied using fairly basic tools (such as cotton buds or tweezers)and techniques (cross-pollination), not to mention a lot of patience, in order toachieve the desired result

The second was that the focus of this research was on producing the

agricul-tural plant varieties These varieties might give rise to improved products such

as grain, flowers or fruit, but the work which was to be encouraged was thebreeding of the plants which produced those results When this is set against thetext of the Paris Convention it can be seen that the definition of industrial prop-erty refers only to end products (such as the flowers cut from a new variety orthe grain harvested from it) and not to the plants from which these products arederived A question can be asked whether the Paris Convention was intended toapply to the plants which produced the grain, flowers, and flour This is a criti-cal question for those seeking to open up the patent system to the researchresults of all plant breeding activities

20 For example, the first half of the 20th century saw the emergence of government-funded agricultural breeding institutes such as the German Max-Planck Institute for Breeding Research, the French National Institute of Agricultural Research, the Dutch Institute and Foundation for Agricultural Plant Breeding, the Swedish National Agricultural Research Centre, the British National Institute of Agricultural Botany and the aforementioned Welsh Plant Breeding Station.

From the perspective of those who believe Article 1(3) indicates that a patent

is a ‘desired objective for agricultural living matter inventions, plants and animals alike’21then it could be argued that the non-exhaustive nature of Article1(3) enables an expansive interpretation allowing the use of ‘includes’ to extendthe concept of industrial property to crops as well as crop products On one levelthis is a persuasive argument: after all, the Convention specifically refers to agri-culture as an industry and it also mentions specific types of plant products whichare regarded as property produced by that industry—why should the definitionnot also be applied to the plants which produce the products? However, wewould argue that it is more relevant to ask not how Article 1(3) can be inter-preted, but rather, given the emphasis on agricultural breeding, why there is noreference to the results of this research work (a fact which has remained the case

in all subsequent revisions of the Convention)?

This omission of the results of the work of the single biggest sector can betaken to mean that plant varieties (and agricultural crops in particular) were notintended to be protected by a Paris Convention industrial property right.Adding weight to this is the fact, as discussed earlier, that plant varieties couldnot meet the technical criteria for the grant of a patent and also the argumentthat the public interest would not be protected by allowing such rights to begranted over the result of work funded from the public purse This interpreta-tion indicates that Article 1(3) should be read as applying to plant end productsbut not to the plants which are used to produce them (as will be seen in the chap-ters on patent law and also in chapter 9, there is a fundamental problem withthis interpretation when it is applied to the results of modern plant molecularbiology) However, at the time that the Paris Convention was drafted, and itsprinciples first applied by member states, the art of plant breeding was primar-ily based on external observational skills and there was also a closer linkbetween the public purse and the production of agricultural crops

This emphasis on agricultural plant breeding did not mean that work was notbeing undertaken in other areas involving plants, nor that such work did notgarner government support A number of countries also set up national insti-tutes relating to these activities.22However, the public interest element in theresearch outputs was less than that for agricultural crops and there was a greateracceptance of both the investment of private capital into horticultural and orna-mental plant breeding and the need to protect that investment by the provision

of a private property right Ostensibly the results of this work (the fruit andflowers produced) could be protected as industrial property under the ParisConvention The problem was that, as with agricultural breeding, the art ofbotany prevailed and breeders could not rely, as many can today, on molecular

21Bent et al, Intellectual Property Rights in Biotechnology Worldwide (Macmillan, 1987) 41 (hereafter Bent et al).

22 For example the German Institutes for Horticultural and Ornamental Plant Breeding, the Dutch State Institute for Horticultural Plant Breeding, and the Swedish National Horticultural Research Centre.

biology to assist in proving that their research results had been engineered to theextent necessary to secure a patent right.23This did not stop breeders from thesesectors calling for their governments to provide protection for their end prod-ucts.24The nature of the government response depended on whether it was amember of the Paris Convention and there was inconsistency in both provisionand understanding of what could be industrial property.25 Those countrieswhich were not members clearly were under no obligation to regard plant mate-rial of the kind mentioned in Article 1(3) as industrial property Even thosewhich were members did not feel that the principle in Article 1(3) meant thatproperty rights had to be provided for all types of material regarded by theConvention as industrial property.26 However, a number of countries27 didattempt to introduce protection but the lack of sophistication within the sciencewas such that protection was only rarely available in practice

It is clear that, post Paris, the issue of how to protect plant material, whetherwithin any one jurisdiction or even across all member states of the ParisConvention,28was neither settled nor unified However, the aborted attempts toprotect plant material via patents did not necessarily mean that the objective of

patent protection per se was necessarily being rejected, but rather that the

subsequent failures speak more about the nature of the science involved and theattitudes towards patent law which existed at that time Because of this, thoseplant products recognised as industrial property within the Paris Conventionwere failing to be protected It was not until after the UPOV Convention hadbeen introduced (with its emphasis on protecting the investment in producingagricultural plant varieties) that the science caught up with the Paris Conventionprinciple, by which time the perception had grown that the only system of pro-tection was that under UPOV, this view being reinforced by the exclusion ofplant varieties within patent law, a provision which was interpreted in some

jurisdictions as being short-hand for the exclusion of all plant material (as will

be discussed in chapters 5 and 6) As will be seen in the next section, whatarguably added insult to injury was the fact that those who had been most vocal

in calling for protection both in the 19th and early 20th centuries, the horticultural and ornamental breeders, were those who secured least protection,

as patent protection remained elusive and the UPOV system focused on

23 The work of molecular biologists (particularly within the then emerging pharmaceutical industry) was key to the decision in the 1950s to remove the requirement that to be patentable an invention had to be a manufacture This is discussed in ch 5

24 In most instances, the plant research was funded privately and the need to protect this vidual investment played a central role in the demands to provide protection.

indi-25 For example France and the UK joined within a year, whereas Germany and Austria did not become members until the early part of the 20th century.

26 The UK, for example, made no attempt to provide protection for any form of plant material until the 1950s.

27 France being the most obvious example, as will be seen below.

28 It is worth bearing in mind that territorial boundaries across Europe were, at that time, ing and indeed even in the 21st century the physical shape of the EU is still evolving

chang-protecting the plants which gave rise to the end products whereas their interestsalso lay in protecting the end products derived from those plants.

With the benefit of hindsight, the Paris Convention can be said to have created a conundrum On the one hand, and with remarkable prescience giventhat it was not until the 1980s that patents over living material became widelyavailable, the Convention refers to plant material and plant products as indus-trial property—the inference being that such property can be the subject of aproperty right On the other, the reality was that, even at the time of drafting theConvention, patentable status would not have been forthcoming due to prob-lems in applying the granting criteria and concerns over the monopolisation ofkey agricultural crops

Whatever the thoughts of the draftsmen, the language of the ParisConvention and the legislative responses to it set the scene for the debate which

is still ongoing From the outset the legislative scene was set for potential tion between those staking the patent law claim to plant material and thoseseeking protection by alternative means (whether due to a belief that no plantmaterial of any kind should be protected by an industrial right or because it wasfelt that the type of material (for example agricultural crops) could not beregarded as industrial property Whilst it would be disingenuous to allege that

fric-each side sought to provide the sole form of protection, the result has been that

the two sides have often been presented, and not always externally, as ing an ‘either/or’ policy rather than embracing both forms

support-At the dawn of modern plant breeding, the position appeared to be that thework of agricultural plant breeders should not be treated as industrial property(and protectable under the auspices of the Paris Convention) but rather be pro-

tected by a sui generis right and it was this belief which led to the creation of the

UPOV system.29In contrast, members of the Paris Convention remained free toprotect plant end products (such as grain, flour and flowers) as industrial prop-erty protectable by a patent However, as the chapters on each of the systemswill show, not everyone has been satisfied with the provision of protectionunder each system As a result both have evolved to take account of a growingrange of plant research products This has meant that any original semblance ofclarity of separation30has gradually become eroded as the two systems movecloser together in terms of what they protect

29 It can be questioned whether the draftsmen of the UPOV Convention would have been able to take a non-Paris Convention route if they had been seeking to introduce specific protection for the types of plant material specified in Art 1(3) (flowers, flour etc, as opposed to varieties) or whether (as subsequent practice now appears to reflect is the case) Art 1(3) mandates that such plant prod- ucts can only be protected by a right recognised in Art 1(2)—which, as the patent system is the one used to protect research results in all other areas of scientific endeavour, would indicate by patent protection

30 Although even at this early stage the potential for overlap between the two rights can be seen

as the original UPOV right provided protection for the reproductive material of a variety (which can include flowers and fruit) and the later Acts permitted protection for the harvested material (flow- ers, fruit and grain) and derived material (which could include beer, flour and wine)