Report On Survey Of Plant Variety Protection Regimes

________________________________________________________________________ report on survey of plant variety protection regimes

________________________________________________________________________
Report on Survey of
Plant Variety Protection Regimes
in APEC Economies
Submitted by: Singapore
APEC INTELLECTUAL PROPERTY RIGHTS EXPERT’S GROUP
Survey of Plant Variety Protection Regimes among APEC Economies
Table of contents
Background and Overview
Page 3
A. APEC economies’ Plant Variety Protection systems : UPOV or sui
generis ?
Page 4
B. What is a “New Plant Variety” ?
Page 8
C. Key information on Plant Variety Protection Regimes in APEC – Fact
sheets by economy
Page 16
D. Information to be furnished by applicants - application
requirements & special rules
Page 35
E. Commentary on special rules in APEC economies’ Plant Varieties
Protection Regimes
Page 42
F. Commentary on National Treatment
Page 44
G. Examination guidelines, tools, and references used to examine new
plant variety applications
Page 46
H. Issues encountered in implementing Plant Variety Protection Regimes
Page 53
I. Conclusion
Page 55
2 June 2009
Background and Overview
At the XXI APEC-IPEG meeting in August 2005 in the Philippines,
members agreed that a survey on the legal regimes for Plant Variety
Protection (“PVP”) among APEC economies should be included in the
work-plan of IPEG. There was general broad support for this survey.
Singapore, having initiated this survey, became the lead economy for
this matter.
The broad aims of the survey included the following :
(i) To collate information on effective PVP regimes which will be
important to investors/businesses of the bio-tech and/or seed industry
in the APEC economies.
(ii) To present the various options of sui generis PVP regimes. For
economies which do not have such a regime, they could consider these
options in fulfilling their commitments under TRIPS.
(iii) To produce a useful reference tool for economies which are
reviewing their PVP regimes for improvement or are seeking technical
cooperation partners.
Various member economies' comments were incorporated in a draft survey
form circulated for comments between early 2006 and December 2006.
Singapore wishes to thank China, Japan, Mexico, Thailand and the
United States of America for their inputs on the said draft survey
form. Singapore has finalized the draft survey on the abovementioned
subject matter based on these inputs. The said survey form is attached
as Annex A.
Singapore also acknowledges the time and effort expended by the
individuals in each economy which has completed the survey. The 16
economies which have responded to the survey are listed in Annex B.
We have digested and analyzed the responses from each economy, and our
findings are consolidated and reported herein. Our report seeks to
shed light on the following issues/areas :
(i) Which APEC economies are UPOV members, and which have a sui
generis protection regime.
(ii) Various economies’ definitions of "New Plant Variety”.
(iii) Distinctive features of each economy's PVP regime.
(iv) Various economies’ special rules regulating plant variety
protection, e.g. disclosure of source, consent of owners from which
the plant variety has been improved and benefit sharing.
(v) Whether there is national treatment for persons from other APEC
economies and foreigners.
(vi) Examination guidelines, tools or reference used in the course of
examination of new plant varieties in the various economies.
(vii) Problems in implementing PVP regimes across APEC.
It is hoped that this report will fulfill the aims stated above and
generally contribute to the development of plant variety protection in
APEC. Should you have any queries or comments on this report, please
contact Mr Alvin Sim at [email protected].
A. APEC economies’ Plant Variety Protection systems : UPOV or other
sui generis systems ?
The International Union for the Protection of New Varieties of Plants
(UPOV)1 is the only organization providing and promoting an effective
internationally harmonized system of plant variety protection. Through
the UPOV Convention, first established in 1961 and subsequently
amended in 1978 and 1991, members grant an intellectual property right
to breeders based on a clearly defined set of principles. In essence,
a new plant variety is eligible for protection only if :
(i) it is distinct from existing varieties;
(ii) sufficiently uniform in its characteristics;
(iii) stable, i.e. remains unchanged after repeated propagation or at
the end of each cycle of propagation;
(iv) new , i.e. not have been commercialized prior to certain dates
with reference to the date of application for protection; and
(v) has an acceptable denomination (i.e. variety name)2.
Items (i) to (iii) form what is commonly known as the “DUS” test.
Therefore, one of the first questions of the survey was whether an
economy is a member of UPOV and if so, which Act of the UPOV
Convention they are bound to3; or in the alternative to identify what
other sui generis systems, if any, are in use.
Table I : APEC economies’ PVP systems
Economy
Accession to UPOV
Other sui generis system
1961 Act
1978 Act
1991 Act
Australia
●
●
Patent protection under the Patents Act 1990
Canada
●
Chile
●
China
●
Hong Kong, China
Plant Varieties Protection Ordinance
(Cap. 490)4
Indonesia
(i) Law No. 29 of 2000 regarding Plant Varieties Protection
(ii) Patent regime (Law No. 14 of 2001)
Japan
●
●
Korea
●
Patent protection under the Patent Act
Mexico
●
Patent regime
Peru
Common Provisions on the Protection of the Rights of Breeders of New
Plant Varieties; Supreme Decree 008-96-ITINCI
Philippines
Plant Variety Protection Act of 2002
Singapore
●
Patent protection under the Patents Act
Chinese Taipei
Plant Variety and Plant Seed Act
Thailand
Plant Variety Protection Act B.E. 2542 (1999)
United States
●
Patent protection under United States Code Title 35 – Patents
Viet Nam
●
Table I above reveals that 6, or over one-third of the 16 respondents
are not members of UPOV. This is a fairly significant minority (see
rows highlighted in purple), perhaps revealing that for various
reasons, APEC economies either (i) have held back from becoming UPOV
members, even if their PVP systems may mirror the UPOV system5, or
(ii) are still taking steps to accede to UPOV6. Notwithstanding this,
it must be noted that even respondents who are non-UPOV members
utilize the 5 basic criteria for plant variety protection (as listed
above) in their sui generis plant variety protection systems.
Interestingly, a few economies – Australia, Korea, Mexico, Singapore
and the US appear to have protection systems that are both UPOV-based
and through their patent legislation. The rationale for this will be
examined in the concluding remarks of this report, when APEC
economies’ PVP systems are analyzed. See pg. 55
Becoming a UPOV member requires countries to submit their laws for
examination for conformity with the provisions of the Convention. If
the laws conform, they are then able to deposit their instrument of
accession and become a party to (“join”) the most recent Act of the
Convention. In addition, members that are bound by older Acts of the
Convention (e.g. the 1978 Act of the Convention), can if their
legislation meets the new provisions, deposit a new instrument of
accession and thus join a later Act (e.g. the 1991 Act of the
Convention). Countries cannot choose to join older Acts; they can only
join the Act currently in force i.e. currently the 1991 Act of the
UPOV Convention.
Conformity with the UPOV Convention is assessed on the basis of
whether a country’s law(s) incorporates the substantial provisions of
the Convention. Countries are not required to adopt the wording of the
Convention though some choose to do so, This helps to explain the
different formulations used by different countries.
Amongst those economies which are members of UPOV, roughly half of
them are bound to the current 1991 Act, while the other half acceded
earlier and remain bound to the earlier 1978 Act.
B. What is a new plant variety ?
Notwithstanding the UPOV Convention, registration of a new plant
variety within each economy ultimately boils down to meeting the
requirements for such a variety within that economy’s legislation.
Studying the definition of “new plant variety” for each economy will
thus provide insight into the nuances of how each economy accords
protection to the same.
General observations on the definition of “Plant variety”
Economies appear to have adopted various formulations defining the
term “plant variety”.
(a) Economies under the 1991 Act
Economies that have acceded to the 1991 Act of UPOV have generally
followed the definition of “variety” in the said Act. This is :
“a plant grouping within a single botanical taxon of the lowest known
rank, which grouping, irrespective of whether the conditions for the
grant of a breeder’s right are fully met, can be
- defined by the expression of the characteristics resulting from a
given genotype or combination of genotypes,
- distinguished from any other plant grouping by the expression of at
least one of the said characteristics and
- considered as a unit with regard to its suitability for being
propagated unchanged”7
(b) Economies under the 1978 Act
“Variety” is not defined in the 1978 Act of UPOV. For economies which
have adopted this Act, the definitions of “plant variety” appear to be
varied. For example :
(i) Mexico defines it as “subdivision of a species that comprises a
group of individuals with similar characteristics that is considered
stable and uniform”8.
(ii) Japan (which also ratified the 1991 Act), defines it as “a plant
grouping which can be distinguished from any other plant grouping by
all or parts of the important characteristics of the plant grouping
(hereafter referred to as “characteristics”) and which can be
propagated while maintaining its characteristics without change” 9.
(iii) Canada defines it as "plant variety means any cultivar, clone,
breeding line or hybrid of a prescribed category of plant that can be
cultivated”10.
(c) Other sui generis systems
For economies that are not members of UPOV, the definitions of “plant
variety” or “variety” appear equally, if not more varied. For example
:
(i) Hong Kong, China defines “plant” and “variety” separately. “Plant”
covers any multicellular vascular organism with a root system, algae
or fungi. "Variety" means a cultivar of a plant to which the Ordinance
applies, and means any clone, hybrid, stock, or line, of such a plant,
but does not mean a botanical variety of such a plant 11.
(ii) Peru currently defines it as a “set of cultivated botanical
individuals that are distinguished by specific morphological,
physiological, cytological and chemical characteristics and can be
perpetuated by reproduction, multiplication or propagation12.
(iii) Indonesia defines it as “a group of plants of a species marked
by the shape, the growth, the leaves, the flowers, the fruits, the
seeds, and the characteristic expression of the genotype or a
combination of genotypes which can be distinguish them from the same
species by at least one determining character which when multiplied
shall not undergo changes”13.
The difference probably lies in the fact that a definition of “plant
variety” is only found in the 1991 Act and not the 1978 Act. However,
the legislation for economies which have acceded to the 1978 Act
generally at least stipulates the characteristics of uniformity and
stability in their definitions of “plant variety”14. On the other
hand, for economies that have not acceded to UPOV at all, such
characteristics may or may not be set out15.
Observations on the definition of “New”
In most economies, whether a plant variety is “new” (or “novel”) is
prescribed on the basis of whether the plant variety had been sold
with the breeder’s consent prior to the date of application within a
certain time period (beyond which it will not be considered new).
Economies also distinguish between time periods for sale within
jurisdiction, and sale outside jurisdiction.
For the 1991 Act, a variety must not have been sold earlier than 1
year before the date of application for protection (for applications
within jurisdiction). In respect of applications out of jurisdiction,
it must not be sold earlier than 4 years before the date of
application, or 6 years before such date (in the case of trees and
vines).
For the 1978 Act, a variety must not have been sold earlier than 1
year before the date of application for protection (for applications
within jurisdiction). In respect of applications out of jurisdiction,
it must not be sold earlier than 4 years before the date of
application, or 6 years before such date (in the case of vines, forest
trees, fruit trees and ornamental trees – inclusive of their
rootstocks for all these).
Table II shows the time periods (as reflected in economies’ plant
variety protection legislation) whereby a plant variety would be
considered new if it had not been sold outside a certain period prior
to the date of filing of the application for protection.
Table II : When is a plant variety “new” ?
Economy
Prohibited period of sale before date of application (within the
jurisdiction)
Prohibited period of sale before date of application (outside the
jurisdiction)
Remarks
Australia
Must not have been sold with the breeder’s consent for more than 1
year before date of application
Must not have been sold with the breeder’s consent :
(i) Trees and vines : ≥ 6 years before date of application
(ii) Others : ≥ 4 years before date of application
Section 43(6), Plant Breeders’ Rights Act 1994
Canada
Must not have been sold at all
Categories set out in the Schedule for :
(i) Woody plants (incl rootstock) :
> 6 years
(ii) Others : > 4 years
Section 7, Plant Breeders’ Rights Act
Regulations 6 and 7, Plant Breeders’ Rights Regulations
Chile
Must not have been “marketed” with the breeder’s consent for more than
1 year before date of application
May be “marketed” abroad with breeder’s consent :
(i) For forest/ fruit/ornamental
trees : ≤ 6 years
(ii) Others : ≤ 4 years
Article 9 of Law 19.342 on the Rights of Breeders of New Varieties of
Plants
China
Must not have been sold with breeder’s consent for more than 1 year
Must not have been sold with breeder’s consent :
(i) Vines, forest/fruit trees and ornamental plants : ≥ 6 years
(ii) Others : ≥ 4 years
Chinese Taipei
Must not have been sold solely or with breeder’ consent for more than
1 year before date of application
Must not have been sold solely or with breeder’ consent :
(i) For trees or perennial vine plants : ≥ 6 years before date of
application
(ii) Others : ≥ 4 years before date of application
Article 12, Plant Variety and Plant Seed Act
(See http://seed.agron.ntu.edu.tw/ENG/Eindex.htm for unofficial
translation)
Hong Kong, China
Must not be sold with agreement of owner for more than 12 months
before date of application
Must not be sold with agreement of owner :
(i) For trees and vines : ≥ 6 years before date of application
(ii) Others : ≥ 4 years before date of application
Sections 18(4)(a)(i) and 18(4)(a)(ii), Plant Varieties Protection
Ordinance (Cap. 490)
Indonesia
Must not be “traded” more than 1 year before the date of application
Must not be “traded” overseas :
(i) For perennial plants : > 6 years before date of application
(ii) For annual plants : > 4 years before date of application
Article 2(2), Law No. 29 of 2000 regarding Plant Variety Protection
Japan
Must not be “transferred in the course of business” more than 1 year
before date of application16
Must not be “transferred in the course of business” :
(i) For genus/species of agricultural, forestry or aquatic plant
specified by an Ordinance of the Ministry of Agriculture, Forestry and
Fisheries as a perennial plant : ≥ 6 years
(ii) Others : ≥ 4 years
Korea
Must not have been “assigned”17 for the purposes of exploitation more
than 1 year at the date of application
Must not have been “assigned” for the purposes of exploitation :
(i) Trees and fruit trees : > 6 years
(ii) Others : > 4 year
Article 13(1), Seed Industry Act
Mexico
Must not have been sold within the year prior to date of application
Must not have been sold :
(i) For grape vines, forest/fruit trees and ornamentals (including
rootstocks) : ≥ 6 years before date of application, or any date of
priority* claimed
(ii) Others : ≤ 4 years of date of application, of any date of
priority* claimed
Article 7, Decision 345 of 21 October 1993, Plant Variety (Cartegena
Agreement)
* if sale or disposal has taken place within any member country of the
Cartegena Agreement
Peru
“Exploitation” must not have begun for more than 1 year prior to date
of application
“Exploitation” must not have begun :
(i) For trees and grape vines : ≥ 6 years before date of application
(ii) Others : ≥ 4 years of date of application
Article 8, Decision 345 of 21 October 1993, Plant Variety (Cartegena
Agreement)
Philippines
Must not have been sold, offered for sale or otherwise disposed to
others, by or with consent of the breeder, more than 1 year before
date of application
Must not have been sold, offered for sale or otherwise disposed to
others, by or with consent of the breeder :
(i) For trees and vines : ≥ 6 years before date of application
(ii) Others : ≥ 4 years before date of application
Section 5, Republic Act 9168
Singapore
Must not have been sold or disposed of to another person, by or with
the consent of the breeder earlier than 12 months before the date the
application is made
Must not have been sold or disposed of to another person, by or with
the consent of the breeder :
(i) For trees and vines : ≥ 6 years before date of application
(ii) Others : ≥ 4 years before date of application
Section 22 (1)(a), Plant Varieties Protection Act
Thailand
Must not have been exploited by sale or distribution by the breeder or
with his consent for more than 1 year prior to date of application
Must not have been exploited by sale or distribution by the breeder or
with his consent for more than 1 year prior to date of application
Article 12, Plant Varieties Protection Act, B.E. 2542 (1999)
(See www.grain.org/brl_files/thailand-pvp-1999-en.pdf) for unofficial
translation)
United States
Must not have been sold or disposed of, by or with consent of the
breeder, more than 1 year prior to date of application
Must not have been sold or disposed of, by or with consent of the
breeder :
(i) For trees and vines : ≥ 6 years before date of application
(ii) Others : ≥ 4 years before date of application
Title 7 of the United States Code, Section 2402(a)(1)
Viet Nam
Must not have been sold or distributed for exploitation, with the
consent of the breeder, more than 1 year prior to date of application
Must not have been sold or distributed for exploitation, with the
consent of the breeder :
(i) For trees and grapes : > 6 years before date of application
(ii) Others : > 4 years before date of application
Economies have generally followed the definitions of “new” or “novel”
in the UPOV Conventions.
For the 1991 Act, in the case of varieties being sold or exploited
within the jurisdiction, this must not be carried out earlier than one
(1) year before the date of application. In the case of varieties
being sold/exploited outside of the jurisdiction, this must not be
carried out earlier than four (4) years from the date of application,
or six (6) years in the case of trees and vines.
Interestingly, Canada, being a signatory to the 1978 Act, simply
mentions “woody plants” in its requirements for exploitation outside
of jurisdiction, and has not followed the 1978 Act definition of “new”
closely.
Finally, it is noted from Table II that various terms are used by
economies to describe the classes of plants which are subject to
prohibited periods of sale overseas before the date of application for
protection. This exists even within economies which have acceded to
the same UPOV Convention. Take the case of economies which have
acceded to the 1991 Act : for the 6 year limitation period, Australia,
Singapore and the United States group “trees and vines” together,
Japan simply states “perennial plant”, Korea provides for “trees and
fruit trees”18, while Vietnam provides for “trees and grapes”. Given
that the UPOV Convention provides for “trees and vines” on this issue,
it is unclear if these differences are due to translational or other
reasons, and the implications of such differences.
C. Key information on Plant Variety Protection regimes in APEC -
Fact Sheets by economy
With a view to informing those interested in protecting plant
varieties across APEC, we have produced fact sheets showing the
following critical information pertaining to the protection of new
plant varieties :
*
Term of protection
*
Scope of protection
Certain common but important exceptions to a breeder’s rights are also
highlighted in these fact sheets :
(i) Protected varieties can be used as an initial source of variation
for the purpose of breeding new plant varieties (“Research
exception”).
(ii) Farmers may save and reuse their own seed of protected varieties
without infringing the relevant regime (“Farmers privilege”).
(iii) Availability of compulsory licensing to local authorities.
Acts done for private and non-commercial purposes, and for
experimental purposes are also often included as exceptions.
Notes on treatment of harvested material and essentially derived
varieties are also included where relevant, as are licensing rights.
We have also included (if indicated) the number of kinds of protected
species in each economy19.
Australia
Key information
Details
Remarks
Term of Protection
25 years from date of grant (Tree and vine varieties)
20 years from date of grant (All other varieties)
Section 22 Plant Breeder’s Rights Act 1994
See http://www.ipaustralia.gov.au/pbr/index.shtml
Scope of protection
As per 1991 Act of the UPOV Convention
Exclusive rights to :
(i) Produce or reproduce the material;
(ii) Condition the material for the purpose of propagation
(conditioning includes cleaning, coating, sorting, packaging and
grading);
(iii) Offer the material for sale;
(iv) Sell the material;
(v) Import the material;
(vi) Export the material; and
(vii) stock the material for any of the purposes described in (i) to
(vi) above.
These rights include licensing rights.
Section 11 Plant Breeder’s Rights Act 1994
Under Section 12 of the Act, such rights are also extended to
essentially derived varieties.
Under Section 13 of the Act, such rights are extended to certain
dependant varieties .
Note that under Sections 14 and 15 of the Act, such rights can be
extended to the harvested material or products obtained from the
harvested material when the propagating material has been reproduced
without authorization and the grantee has not had a reasonable
opportunity to exercise their rights in relation to the said
propagating material.
Exceptions
*
Acts done privately and for non-commercial purposes;
*
Acts performed for experimental purposes;
*
Research exemption
*
Farmer's privilege
Sections 16 and 17 Plant Breeder’s Rights Act 1994
Compulsory licensing
Available
Section 18 Plant Breeder’s Rights Act 1994
Number of kinds of protected species
New varieties from all genera and species are potentially protectable.
Varieties from more that 600 species have been issued rights.
More information on Australia’s protected species is available via
Plant Varieties Journals and PBR Database Search accessible at
http://www.ipaustralia.gov.au/pbr/index.shtml#journal
Canada
Key information
Details
Remarks
Term of Protection
18 years from date of issue off certificate of registration
Section 6(1) Plant Breeders Rights Act 1990
Scope of protection
Exclusive rights to :
(a) sell, advertise for sale and produce in Canada for the purpose of
selling, propagating material of the variety.
(b) repeatedly use propagating material in order to commercially
produce another variety (e.g. use of an inbred in a cross to produce a
hybrid).
(c) repeatedly use the propagating material in the production of
ornamental or cut flowers
Section 5(1) Plant Breeders Rights Act 1990
Includes the right to authorize (e.g. licence) the acts described in
(a) to (c).
Exceptions
*
Research exception
*
Farmers privilege
Compulsory licensing
Available
Section 32 Plant Breeders Rights Act 1990
Number of kinds of protected species
35 agricultural crops
229 horticultural crops
See http://www.inspection.gc.ca/
english/plaveg/pbrpov/cropreport/level2e.shtml
Chile
Key information
Details
Remarks
Term of Protection
18 years from date of registration (Trees)
15 years from date of registration (Other species)
Article 9 of Law 19.342
(See http://www.upov.int/en/publications/
npvlaws/chile/chili.pdf)
Scope of protection
Exclusive rights to :
(a) produce propagating material of the variety.
(b) sell, offer or display for sale the said material
(c) market, import or export the said material
(d) repeatedly use propagating material in order to commercially
produce another variety
(e) repeatedly use the propagating material in the production of
ornamental or cut flowers
Article 3 of Law 19.342
Exceptions
*
Research exception
*
Farmers privilege
See Articles 3 and 5 of Law 19.342
Compulsory licensing
No information available
Number of kinds of protected species
No information available
People’s Republic of China
Key information
Details
Remarks
Term of Protection
20 years from date of grant (Vines, forest trees, fruit trees and
ornamental trees)
15 years from date of grant (Other plants)
Scope of protection
As per 1978 Act of the UPOV Convention
Exceptions
*
Research exception
*
Farmers privilege
Compulsory licensing
Available
Number of kinds of protected species
62 agricultural plants
78 forestry plants
Hong Kong, China
Key information
Details
Remarks
Term of Protection
25 years from date of grant (Tree and vine species)
20 years from date of grant (All other species)
Sections 22(2)(a) and 22(2)(b), Plant Varieties Protection Ordinance
(Cap. 490)
Scope of protection
Exclusive rights to :
(a) to produce for sale, and to offer for sale or sell, reproductive
material of the variety concerned;
(b) to import or export reproductive material of the variety
concerned;
(c) if that variety is a plant of a type prescribed under the Plant
Varieties Protection Regulation, to propagate that variety for the
purposes of the commercial production of fruit or flowers of that
variety;
(d) subject to any terms and conditions that grantee may specify, to
authorize, by licence or otherwise, any other person or persons to do
any of the things described in (a) to (c).
Section 25, Plant Varieties Protection Ordinance (Cap. 490)
As per 1991 Act of the UPOV Convention
Note that under Section 31 of the Ordinance, such exclusive rights
also extend to essentially derived varieties.
Exceptions
*
Acts done privately and for non-commercial purposes;
*
Acts performed for experimental purposes;
*
Research exemption
*
Farmer's privilege
Compulsory licensing
Available
Section 29 Plant Varieties Protection Ordinance (Cap. 490)
Number of kinds of protected species
No information available
Indonesia
Key information
Details
Remarks
Term of Protection
20 years from date of grant (Annual plants)
25 years from date of grant (Perennial plants)
Scope of protection
Exclusive rights to :
(a) producing or multiplying the seeds;
(b) preparation for propagation purposes,
(c) advertising, selling or trading,
(d) exporting, importing, and stocking for purposes mentioned above.
Article 6.3, Law No. 29 of 2000 regarding Plant Varieties Protection.
Includes the right to authorize 3rd parties to use such rights.
Such rights extend to the use of seed and harvested material for
propagation (Article 6.1, Law No.29 of 2000).
Under Article 40.1, these rights can be transferred by inheritance,
donation, testament, notary act, or any other manner allowed under the
law (Article 40.1).
Exceptions
*
Use of plant variety in contradiction with prevailing laws, public
order, decency, religious norms, health and environmental
sustainability
Compulsory licensing
No information available
Number of kinds of protected species
No information available
Japan
Key information
Details
Remarks
Term of Protection
25 years from date of registration
30 years from date of grant (for woody plants)
Scope of protection
As per 1991 Act of the UPOV Convention
Note that protection may be provided :
(i) to products that are made directly from the harvested material
obtained from the protected variety; and
(ii) to harvested material obtained from unauthorized use of
propagating materials.
Exceptions
*
Research exception
*
Farmers privilege
See http://www.hinsyu.maff.go.jp/english/index.htm
Compulsory licensing
No information available
Number of kinds of protected species
No information available
Republic of Korea
Key information
Details
Remarks
Term of Protection
20 years from date of grant
25 years from date of grant (Trees and fruit trees)
Note that the duration of a plant patent under the Patent Act is 20
years.
Scope of protection
Exclusive rights to :
(1) exploit the protected variety commercially and industrially,
subject to similar rights of an exclusive licensee to the extent
allowed under the licence contract.
(2) commercially and industrially exploit harvested material and the
product which has been made directly from harvested material of the
seed of the protected variety. However, this does not apply where the
product is made directly by a person who has no knowledge of the right
when producing the product.
(3) (1) to (2) above shall also apply to :
(i) varieties which are essentially derived from the protected
variety, where the protected variety is not itself an essentially
derived variety,
(ii) varieties which are not clearly distinguishable or distinct in
accordance with Article 14, Seed Industry Act and
(iii) varieties whose production requires the repeated use of the
protected variety.
See Article 57(1), Seed Industry Act available at
www.wipo.int/clea/docs_new/pdf/en/kr/kr011en.pdf
Under Article 57(4), Seed Industry Act, a variety shall be deemed to
be a essentially derived variety when it is derived from the initial
variety or from a variety that is itself derived from the initial
variety, and retains the expression of the essential characteristics
that result from the genotype or combination of genotypes of the
initial variety, and essential characteristics of the corresponding
variety are the same as those of the initial variety except for
differences in the particular characteristics which result from the
particular breeding method although the corresponding variety is
clearly distinguishable from the initial variety.
Exceptions
*
Acts done for self consumption and for non-commercial purposes;
*
Research exemption
*
Farmer's privilege20
Compulsory licensing
No information available
Number of kinds of protected species
189 plant genera and species
Mexico
Key information
Details
Remarks
Term of Protection
18 years from date of grant for perennial species (forest trees, fruit
plants, grapevines, ornamentals) and their rootstocks
15 years from date of grant (All other species)
Scope of protection
Exclusive rights for the reproduction, distribution or sale of a plant
variety and its propagating material, as well as for the production of
other plant varieties and hybrids for commercial purposes.
Exceptions
*
Research exemption
*
Farmer's privilege
*
Use of plant variety for human or animal consumption (exclusively
for the benefit of the person growing it)
Compulsory licensing
No information available
Number of kinds of protected species
No information available
Peru
Key information
Details
Remarks
Term of Protection
25 years from date of grant (vines, forest trees, fruit trees and
their rootstocks)
20 years from date of grant (All other species)
Scope of protection
Exclusive rights in respect of reproductive, propagating or
multiplication material of the protected variety to the following acts
:
(a) production, reproduction, multiplication or propagation;
(b) preparation for the purposes of reproduction, multiplication or
propagation;
(c) offering for sale;
(d) sale or any other act that entails placing reproductive,
propagating or multiplication material on the market for commercial
purposes;
(e) exportation;
(f) importation;
(g) possession for any of the purposes in (a) to (f);
(h) commercial use of ornamental plants or parts of plants as
multiplication material for the production of ornamental and fruit
plants, or parts thereof or cut flowers;
(i) the performance of the acts mentioned above in respect of
harvested material, including entire plants and parts of plants,
obtained through the unauthorized use of reproductive or
multiplication material of the protected variety, unless the owner has
had reasonable opportunity to exercise his exclusive right in relation
to the said reproductive or multiplication material.
Article 24, Decision 345 of 21 October 1993, Plant Variety (Cartegena
Agreement)
The breeder’s certificate shall also entitle the owner to such scope
of protection in respect of varieties that are not clearly
distinguishable from the protected variety, within the meaning of
Article 10 of this Decision, and in respect of varieties whose
production calls for repeated use of the protected variety.
The competent national authority may confer on the owner the right to
prevent third parties from engaging, without his consent, in
infringing acts in respect of varieties essentially derived from the
protected variety, except where the latter variety is itself an
essentially derived variety.
Exceptions
*
Acts done privately and for non-commercial purposes;
*
Acts performed for experimental purposes;
*
Research exemption
*
Farmer's privilege
Note that in respect of the research exemption, this does not apply to
a variety essentially derived from a protected variety – see Article
25(c), Decision 345 of 21 October 1993, Plant Variety (Cartegena
Agreement).
In respect of farmer’s privilege, it does not apply to commercial use
of multiplication, reproductive or propagating material, including
whole plants and parts of plants of fruit, ornamental and forest
species – see Article 26, Decision 345 of 21 October 1993, Plant
Variety (Cartegena Agreement).
Compulsory licensing
Available
Article 30, Decision 345 of 21 October 1993, Plant Variety (Cartegena
Agreement).
Number of kinds of protected species
No information available
Philippines
Key information
Details
Remarks
Term of Protection
25 years from date of grant (Trees and vines)
20 years from date of grant (All other species)
Scope of protection
Exclusive rights in respect of propagating material to the following
acts:
(a) production or reproduction;
(b) conditioning for the purposes of reproduction;
(c) offering for sale;
(d) selling or marketing;
(e) exportation;
(f) importation;
(g) possession stocking for any of the purposes in (a) to (f).
Section 36, Republic Act 9168
Note that these rights also extend to harvested material (which may
be, entire plants and parts of plants), obtained through the
unauthorized use of propagating material, unless the owner has had
reasonable opportunity to exercise his exclusive right in relation to
the said reproductive or multiplication material (see Section 38).
Exceptions
*
Acts done for non-commercial purposes;
*
Acts done for experimental purposes;
*
Research exemption
*
Farmer's privilege
Under Section 39 of Republic Act 9168, note that the research
exemption does not apply to :
(i) a variety essentially derived from a protected variety, where the
protected variety is not an essentially derived variety.
(ii) varieties which are not clearly distinct from the protected
variety.
(iii) varieties whose production requires repeated used of the
protected variety.
Under Section 43, the National Plant Variety Protection Board may
impose conditions on farmer’s privilege, taking into account the
nature of the plant cultivated, grown or sown.
Compulsory licensing
Available
Section 57 of Republic Act 9168
Number of kinds of protected species
No information available
Singapore
Key information
Details
Remarks
Term of Protection
25 years from date of grant (subject to payment of a prescribed annual
fee)
Section 24, Plant Varieties Protection Act
Scope of protection
Exclusive rights to the following in respect of propagating materials
of the protected plant variety:
(a) Production or reproduction;
(b) Conditioning for the purpose of propagation;
(c) Offering for sale;
(d) Selling or other forms of marketing;
(e) Export;
(f) Import;
(g) Stocking for any of the purposes listed in (a) to (f)
Note that under Section 28(7) of the Act, such rights are extended to
the harvested material, obtained when the propagating material has
been reproduced without authorization and the grantee has not had a
reasonable opportunity to exercise their rights in relation to the
said propagating material.
Under Section 29(1)(a) of the Act, such rights are also extended to
essentially derived varieties.
Exceptions
*
Acts done for private and non-commercial purposes
*
Acts done for experimental purposes
*
Research exception
*
Farmers privilege
In respect of farmer’s privilege, the protected variety must be
classified as exempt from the rights of the grantee for the purposes
of such privilege, and the harvested material must have been purchased
from or obtained with the authority of the grantee (See Section 31(2),
Plant Varieties Protection Act).
Compulsory licensing
Available
Section 34, Plant Varieties Protection Act
Number of kinds of protected species
8 orchid species
4 aquatic plant species
2 vegetable species
1 ornamental plant species
Chinese Taipei
Key information
Details
Remarks
Term of Protection
25 years from date of approval and publication of the plant variety
right (Trees and perennial vine plant)
20 years from date of approval and publication of the plant variety
right (All other plant species)
Scope of protection
Exclusive rights in respect of plant seeds to engage in the following
acts:
(a) production or propagation;
(b) conditioning for the purposes of propagation;
(c) offering for sale;
(d) selling or marketing;
(e) exportation;
(f) importation;
(g) possession stocking for any of the purposes in (a) to (f).
Note that these rights also extend to
(i) harvested material obtained through the unauthorized use of plant
seeds of the plant variety, or
(ii) to products obtained through the use of such material,
where the owner has had no reasonable opportunity to exercise his
exclusive rights.
Exceptions
*
Acts done for non-commercial purposes;
*
Acts done for experimental purposes;
*
Research exemption
*
Farmer's privilege
Farmer’s privilege includes “the conditioning and nursing of harvested
material obtained from the propagating material” of a protected plant
variety.
Compulsory licensing
Available
Number of kinds of protected species
102 botanical taxa
Thailand
Key information
Details
Remarks
Term of Protection
12 years from date of certificate of registration (Plants capable of
bearing fruit within cultivation period of 2 years)
17 years from date of certificate of registration (Plants capable of
bearing fruit after cultivation period of more than 2 years)
27 years from date of certificate of registration (Plants of
“tree-based utilization” capable of bearing fruit within cultivation
period of 2 years)
Scope of protection
Exclusive rights for the reproduction, sale, distribution, import,
export or possession for any of the said acts of the propagating
material of the plant variety.
Exceptions
*
Acts done for private or non-commercial purposes;
*
Research exemption
*
Farmer's privilege
In respect of farmer’s privilege : Note that if the plant variety is a
“promoted plant variety”, cultivation or propagation is limited to 3
times the quantity of the variety obtained.
Compulsory licensing
No information available
Number of kinds of protected species
35 genera and species
United States
Key information
Details
Remarks
Term of Protection
25 years from date of grant (Tree and vine varieties)
20 years from date of grant (All other varieties)
Scope of protection
As per 1991 Act of the UPOV Convention
Section 111, Plant Variety Protection Act.
Apart from the usual scope of protection found in other jurisdictions,
the Act also specifically mentions :
*
Using the variety to product hybrids
*
Dispensing the variety to others in a form that can be propagated
*
Conditioning the variety for the purposes of propagation
The scope of protection also extends to :
*
Essentially derived varieties (unless the protected variety is an
essentially protected variety)
*
A variety that is not distinguishable from the protected variety
*
A variety requiring repeated use of a protected variety
*
Harvested material obtained through the unauthorized use of the
propagating material of a protected variety.
Exceptions
*
Research exemption
*
Farmer's privilege
*
Transportation or delivery by a carrier in the ordinary course of
business
*
Advertising in the ordinary course of business
Compulsory licensing
Available
Number of kinds of protected species
Numerous
Viet Nam
Key information
Details
Remarks
Term of Protection
25 years from date of grant (for trees and grapes)
20 years from date of grant (for other plant species)
Scope of protection
Exclusive rights to the following in respect of propagating materials
of the protected plant variety:
(a) Production or multiplication;
(b) Processing for the purpose of propagation;
(c) Offering for sale;
(d) Selling or other marketing;
(e) Exporting;
(f) Importing;
(g) Stocking for any of the purposes listed in (a) to (f)
The rights holder also is entitled to pass on by inheritance or
transfer the rights over the plant variety.
Note that rights holders are also entitled to protection for the
following :
1. Plant varieties that originate from the protected plant variety,
except where such protected plant varieties themselves originate from
another protected plant variety;
(A plant variety is regarded as originating from a protected plant
variety if such plant variety has retained the expression of the
essential characteristics that result from the genotype or combination
of genotypes of the protected variety except for the differences
resulting from actions on the protected variety.)
2. Plant varieties which are not clearly different from the protected
plant variety;
3. A plant variety, the production of which requires the repeated use
of the protected plant variety.
Exceptions
*
Acts done for non-commercial purposes
*
Acts done for experimental purposes
*
Research exception
*
Farmers privilege
Compulsory licensing
Available
Number of kinds of protected species
15 species
Note that a perusal of the economies’ legislation (where possible)
show that the exclusive rights accorded under such legislation
generally include the ability to license such rights.
The survey responses reveal that while there are common
characteristics in the economies’ regimes with regards to scope of
protection, there are also a couple of areas where laws can be
advanced and streamlined across the board :
(i) Not all economies accord protection to essentially derived
varieties21. Those that do, apart from Peru, are signatories to the
1991 Act. Japan, a signatory to the 1991 Act, does not appear to
provide such protection.
(ii) Not all economies accord protection for harvested material22.
Like essentially derived varieties, this is a protection accorded
under the 1991 Act. However, several economies which are not UPOV
members appear to have seen it important to accord such protection,
probably because it can be seen as an important commercial right for
farmers.
In view of the above, economies may wish to consider updating their
laws to the latest standards recommended by UPOV.
D. Information to be furnished by applicants – application
requirements & special rules
It may be helpful for those interested in plant variety protection in
APEC to have a good overview of the application requirements found
across the economies.
Technical information about plant variety
The survey responses revealed that applicants for plant variety
protection must generally provide the following information about the
plant variety :
*
Genus and species, i.e. the botanical and common names of the
plant variety
*
Proposed denomination,
*
A description of the plant variety
*
A statement that the variety is sufficiently homogeneous, i.e.
uniform and stable
*
The manner in which the variety was originated, i.e. method of
obtaining plant variety
Information to be furnished – overview of economies’ specific or
unique requirements
Table III provides some details about the specific or unique
requirements to be met if one wishes to apply for plant variety
protection in individual economies23.
Table III :
Some specific or unique requirements for PVP applications (in addition
to the general information outlined above)
Economy
Information to be furnished
Australia
(i) For foreign applicants : name and address of any agent or legal
representative or address for service of documents in Australia
(ii) Authorization of an agent – where the application is filed by
someone other than the applicant
(iii) Whether the variety has sought or been granted protection in
another country and details of that application
(iv) Whether priority is being claimed as a result of a preceding
application made by the applicant in another UPOV member country, and
if so documents to support that claim
(v) Nomination of a Qualified Person24
(vi) Detailed Description of the Variety distinguishing it from
similar varieties of common knowledge
(vii) Certification by a Qualified Person
(viii) Confirmation of Submission of Propagating Material to a Genetic
Resources Centre
(ix) Confirmation of Submission of ACRA Specimen (if the species is
native to Australia)
(x) Photograph of showing distinguishing characteristics of the new
plant variety.
(xi) Documents verifying succession (if applicable)
If the variety is subject to a third party comment, objection or
claim, additional information rebutting that comment, objection or
claim will be requested.
Application forms are available at :
http://www.ipaustralia.gov.au/pbr/forms.shtml
Deposit of samples required prior to registration : Yes
(at approved Genetic Resource Centre)
Canada
(i) For foreign applicants : name and address of any agent or legal
representative and evidence to prove it
(ii) Whether the variety has sought or been granted protection in
another country and the name of that country,
(iii) Whether priority is being claimed as a result of a preceding
application made by the applicant in a country of the Union or an
agreement country25
(iv) Any request for exemption from compulsory licensing (where
applicable)
(v) Manner and location in which the propagating material will be
maintained
(Please refer to Section 9(1) and 9(2) as well as section 19(1), 19(2)
of the Plant Breeders’ Rights Act for details)
Deposit of samples required prior to registration : Yes
(for seed propagated crops, at Plant Genetic Resources Office)
Chile
(i) The application for a new plant variety must contain an express
mention of any varieties that are similar;
(ii) The applicant must undertake to maintain the corresponding
reference specimens throughout the period of validity of the
registration, and specify the testing station or other place in which
they are kept (Please see Article 20(c) and (d), Law No. 19.342)
(iii) Where the variety has already been protected abroad, the breeder
shall enclose a copy of the title or patent granted to him.
Deposit of samples required prior to registration : Yes
(in such quantities as are specified by the Certifying Committee)
China
(i) Photograph of new plant variety.
(ii) The technical questionnaire for the variety may be filed.
(Note : All applications shall be in the Chinese language)
Deposit of samples required prior to registration/allowed : Yes
(at the Storage Centre of New Varieties of Plant, Ministry of
Agriculture, in respect of sexual propagation material)
Hong Kong, China
Within the prescribed period after being requested by the Registrar to
do so, the applicant shall furnish the Registrar with-
(a) such further reproductive material of the variety concerned as the
Registrar may specify;
(b) any other information that the Registrar thinks relevant and
requests from that applicant.
Deposit of samples required prior to registration : Yes
Indonesia
(i) Drawing and/or the picture to support the description of the new
plant variety.
(ii) Special power of attorney, if the application is filed by a
proxy, mentioning the name and full address of the rightful proxy.
(iii) Formal legal documents as evidencing heredity, if the
application is filed by an heir (of a new plant variety owner).
(Note : All applications shall be in Bahasa Indonesia)
Deposit of samples required prior to registration/allowed : Yes
Japan26
(i) Technical questionnaire for the new plant variety
(ii) Photographs of the new plant variety
(iii) Documents verifying succession (in case a successor existing)
(iv) Documents verifying nationality of breeder
(v) Documents verifying the first application (in case of claiming the
right of priority)
(vi) Power of attorney (in case an attorney existing)
Deposit of samples required prior to registration/allowed : Yes
(for seed propagated varieties and fungi only)
Korea
(i) Where the priority of an earlier application is claimed, the
matters prescribed in Article 27(3), Seed Industry Act must be stated27.
(ii) A technical description of the variety and a procedural
description of the variety breeding (See Article 26(1)(viii), Seed
Industry Act)
(iii) Photographs and samples of a variety
(iv) Where the entitlement to a variety protection is vested in the
joint breeders in accordance Article 17(2) of the Act, all joint
breeders shall file an application jointly.
Deposit of samples required prior to registration : Yes
Mexico
(i) Information, where appropriate, on the commercialization of the
plant variety in Mexico or abroad
(ii) Where appropriate, the percentage share corresponding to each of
the breeders in making use of and exploiting the plant variety
(iii) Any priority claim
(iv) The beneficiaries designated by the applicant
(v) A technical report (giving details of the characteristics of the
plant variety in question), based on the technical guidelines/official
Mexican standards issued by the National Service of Inspection and
Certification of Seeds for each genus/species or the specific UPOV
guideline
(vi) Legal instrument verifying the legal status of the legal
representative (where appropriate)
(Note : All applications shall be in the Spanish language or
accompanied by Spanish translation by an authorized translator.)
Deposit of samples required prior to registration : Yes
(but need not be deposited together with application)
Peru
(i) Live sample of the variety or the document evidencing its deposit
in
another country that has PVP regime (if applicable)
(ii) Evidence of assignment of rights (if applicable)
(iii) Document indicating the geographic origin of the vegetal
material used to develop the new plant variety. It may include the
access contract to genetic resources28
(iv) Document indicating the origin and genetic contents of the
variety
which includes all known details related to the source of the genetic
resources used for the development of the new plant variety29
(v) Documents showing the cancellation of the trademark register, if
necessary (if the denomination has a trademark register).
(vi) Evidence of first application in case a priority is claimed.
Deposit of samples required prior to registration : Yes.
In the case of a document evidencing its deposit in another country,
it must specify the name of the institution where the sample is
deposited and must include photographs.
Philippines
(i) Detailed origin and breeding history of the variety, including the
results of other plant variety tests or trials that have already been
done on the variety. (See Section 28, Republic Act No. 9168)
(ii) Photographs, drawings or plant specimens and other additional
information;
(iii) Such other exhibits as the Board may require from time to time.
Deposit of samples required prior to registration : Yes
Singapore
(i) Technical Questionnaire.
(ii) a description of the plant variety;
(iii) the proposed denomination for the plant variety
(iv) an address for service within Singapore;
(v) if a right of priority is claimed, full particulars of the
relevant priority application;
(vi) the application fee and such other fees as may be prescribed.
Deposit of samples required prior to registration : No
Chinese Taipei
(i) Test report on the cultivation of the plant variety,
(ii) Matters to which one must pay attention when cultivating the
plant variety
Note that a plant variety denomination (whether bred locally or
abroad) must be expressed in both Chinese characters as well as
English. For varieties bred in foreign countries, the plant variety
denomination must be written in Roman letters and Chinese. (See
Article 14, Plant Variety and Plant Seed Act)
Deposit of samples required prior to registration : Yes
Thailand
(i) A statement that the propagating material of the new plant variety
sought to be registered has been filed, and that the genetic material
used in the breeding or in the development of the new plant variety
will be furnished to the competent official for the purpose of
examination thereof within the time specified by the competent
official
(ii) A profit-sharing agreement in the case where a general domestic plant
variety or a wild plant variety or any part thereof has been used in
the breeding of the variety for a commercial purpose.
(iii) Other particulars as prescribed in the Ministerial Regulation.
(See Section 19(4) – (6), Plant Variety Protection Act, B.E. 2542)
Deposit of samples required prior to registration : Yes
United States
(i) Statement of basis of ownership
(ii) Declaration of Deposit of Seed to National Center for Genetic
Resources Preservation30
Deposit of samples required prior to registration : Yes
Viet Nam
(i) Photos and technical questionnaires using the prescribed form;
(ii) Documents proving the registration right (if the registration
right has been transferred to the applicant)
(iii) Documents to prove the priority right in cases claming priority31
These and other documents must generally be submitted in the Viet
language; if they are in other languages, they must be translated into
Vietnamese at the request of the Ministry of Agriculture and Rural
Development
Deposit of samples required prior to registration : Yes (for varieties
which have undergone the technical test)
Other requirements
(i) Test reports and technical questionnaires
Potential applicants should note that some economies require a
supporting test report to be filed at first instance (e.g. Mexico). In
other economies, no test report is required and the examining
authority will conduct its own test to verify the “DUS” of the plant
variety (e.g. Singapore, Philippines). Other authorities allow
applicants to file the application and then test the variety under the
scrutiny of the authority’s examiners. Applicants should thus seek
legal and technical advice on the economy they are seeking plant
variety protection in on whether they need to procure a test report
from a technical professional to support their application.
(ii) Priority claims
Under the 1978 and 1991 UPOV Acts, a party who has filed for plant
variety protection in UPOV member X (“economy of 1st filing”) can
apply claim priority for a period of twelve (12) months when he files
for similar protection in UPOV member Y. In other words, he can
utilize the date of filing for the first application as the filing
date for his second and any subsequent applications.
Non-UPOV economies appear to also have deployed this rule in their sui
generis plant variety regimes. These economies will accord priority to
the relevant application if their nationals are able to claim priority
in the economy of 1st filing. See the examples of Peru32 and the
Philippines33. Applicants interested in priority claims in non-UPOV
economies should check the rules on priority with local legal and
technical advisors. Please also refer to Section F below for a
discussion on the closely related issue of national treatment.
E. Commentary on special rules in APEC economies’ Plant Varieties
Protection Regimes
The nature of plant varieties gives rise to certain unique questions
in the realm of intellectual property. One of these is what protection
is afforded to owners of a plant variety that has been improved by a
third party.
Issues include : if a third party applies for protection for such an
improved variety, is he required to disclose the source of the
materials used for breeding such improved variety ? Is the consent of
owners from which the plant variety has been improved required ? Is
there any sharing of the benefits derived from exploiting such variety
?
It is observed that quite a few economies require applicants for plant
variety protection to disclose the parent variety/ies used :
Economy
Note on details of disclosure
Australia
Disclosure of breeding history and materials used for breeding,
including accession number/passport data of the materials/variety
(where relevant) is required for the purposes of examination.
Japan
Disclosure of breeding history and materials used for breeding.
Philippines
Disclosure of breeding history.
Singapore
Disclosure of origin and breeding of the new plant variety and the
propagating material of the new variety.
Thailand
Origin of the new plant variety or genetic material used in the
breeding/development of the new variety.
United States
Disclosure of breeding history (under Plant Variety Protection Act).
Such disclosures would enable examiners to trace the parentage of the
improved variety in question. However, very few economies have
follow-up provisions requiring consent of the breeder of the parent
variety for, or benefit sharing resulting from, any commercial
exploitation of the new plant variety.
The exceptions are Thailand and Peru. In Thailand, applicants must
show that a profit sharing agreement would be in place where a general
domestic plant variety/wild plant variety has been bred for a
commercial purpose.
In Peru, applicants seeking protection for an improved variety must
disclose the genetic content and origin of the improved variety,
including “all known details regarding the source of the genetic
resources contained in the variety or for its development…”34.
With regards to consent from local owners of the original variety in
question, there is a regulatory framework in Peru35 allowing
indigenous people to assert their rights over collectively held
knowledge related to biological resources, which could include plant
varieties. This is via a prior informed consent and licensing
mechanism which will enable benefit sharing with regards to plant
varieties that are improved and commercialized.
Access and benefit arrangements are addressed separately from IP
matters in Australia. For example, it has adopted a Nationally
Consistent Approach for Access to and the Utilization of Australia’s
Native Genetic and Biochemical Resources. This approach is reflected
in Australia’s support for world’s best practice guidelines for access
to genetic resources (the “Bonn Guidelines”) and the Environment
Protection and Biodiversity Conservation Act 1999 developed to manage
access to and the use of genetic resources in Australian Commonwealth
(federal) areas.
As noted by a couple of economies, such issues are under discussion at
both the World Trade Organization and the World Intellectual Property
Organization. It is acknowledged that there is interest in these
issues, which are related to concerns over the alleged
misappropriation of genetic resources, and the role of the patent
system, if any.36. These issues, together with the promotion of the
use of genetic resources/traditional knowledge databases by some
quarters to address the issue of erroneously granted patents, are
complex and is outside the scope of this survey.
F. Commentary on National Treatment
The following table shows whether each economy provides national
treatment. In other words, does it treat natural persons resident, and
legal entities having their registered offices within the economy, and
nationals of member economies equally in respect of plant variety
applications.
Table IV : Overview of national treatment rules
Economy
National treatment ?
Accession to UPOV
Remarks
Yes
No
Australia
●
●
Canada
●
●
Chile
●
●
China
●
●
Hong Kong, China
●
Indonesia
No information available on national treatment
Japan
●
●
Korea
●
No information available on national treatment
Mexico
●
●
Peru
●
Priority can be claimed if original application has been presented to
an office in a member of the Andean Community (Article 18, Decision
345 of 21 October 1993, Plant Variety (Cartegena Agreement)
Philippines
●
On a reciprocal basis (Section 21, Republic Act No. 9168)
Singapore
●
●
Chinese Taipei
●
On a reciprocal basis (Article 17, Plant Variety and Plant Seed Act)
Thailand
●
On a reciprocal basis (Section 20, Plant Varieties Protection Act,
B.E.2542 (1999))
United States
●
●
Viet Nam
●
●
Based on economies’ responses as set out above, it appears that
foreign individuals/entities will generally be able to seek plant
variety protection in other APEC economies. However, this is often but
not always premised on the economy from which applicant originates,
and the recipient economy, being UPOV members.
Apart from this scenario, the principle of reciprocity will apply if
either the economy from which the applicant originates, or the
recipient economy (or both) is not a UPOV member.
G. Examination guidelines, tools and references used to examine new
plant variety applications
Economies’ responses to the survey reveal that while some countries
use individually developed guidelines, there is a reliance on UPOV
technical guidelines/documents for the examination of new plant
variety applications. UPOV technical documents would include
especially, but are not limited to :
*
General Introduction to the Examination of Distinctness,
Uniformity and Stability and the Development of Harmonized
Descriptions of New Varieties of Plants
*
Examining Distinctness
*
Examining Uniformity
*
Genus specific "Guidelines for the Conduct of Tests for
Distinctness, Uniformity and Stability," or "Test Guidelines"
*
Practical Technical Knowledge
*
Plant Variety Database (available only on CDROM)
For more information/details about such guidelines, please see
http://www.upov.org/en/publications/list_publications.htm
It is assumed that economies which are signatories to the UPOV would
utilize the UPOV technical guidelines37. The following table gives a
brief idea of other/additional guidelines/tools each economy uses.
It is hoped that this table will encourage greater dialogue amongst
plant variety offices to exchange knowledge and expertise on how they
utilize existing guidelines, tools and references, in order to develop
a robust plant variety protection system in the APEC region. The
contacts of each economy’s agency in charge of plant variety
protection are thus listed to facilitate this.
Table V : Other examination guidelines, tools and references
Economy
Overview of other examination guidelines, tools & references
Administering national agency
Australia
(i) Various in-house resources available from the Australian Plant
Breeder’s Rights Website (http://www.ipaustralia.gov.au/pbr/index.shtml),
including:
*
Clarification of Plant Breeding Issues under the Plant Breeder's
Rights Act 1994 of Australia,
*
Plant Varieties Journal,
*
Plant Breeder’s Rights Web Database,
*
Interactive Variety Description System.
*
In-house test guidelines
(ii) Physical reference materials, including :
*
colour charts, principally the Royal Horticultural Society Colour
Chart,
*
texts including
*
International Code of Nomenclature for Cultivated Plants
*
Hortus Third
*
Zander, A Dictionary of Plant Names
*
A Compendium of Australia Vascular Plants
*
Basic statistical procedures and experimental design
principles
*
International Plant Genetic Resources Institute (IPGRI) list
of descriptors
(iii) Third party data bases, including
*
Genetic Resource Inventory Network (GRIN),
*
Various UPOV member states’ extensive data bases,
*
Crop specific databases
*
System-wide Information Network for Genetic Resources (SINGER)
*
International and Australian Cultivar Registration Authority web
databases,
*
US Patent and Trademark Office database.
*
Any relevant website for the crop in question
*
UPOV website
(iv) Local/foreign case law
(v) Direct contact with and exchange of information with other UPOV
members, including the purchase of DUS test reports
IP Australia
Discovery House
47 Bowes St Woden ACT 2606 Australia
Mailing address : PO Box 200 Woden ACT 2606 AUSTRALIA
Email inquiries through : [email protected]
Canada
(i) In-house test guidelines
(ii) Documents submitted by the breeder/applicant/trial coordinator
(iii) Basic statistical procedures and experimental design principles
(iv) Royal Horticultural Society Colour Chart
(v) Genetic Resource Inventory Network (GRIN) database
(vi) Texts - Hortus Third, Royal Horticultural Society dictionary
(vii) Any relevant website for the crop in question
Plant Breeders’ Rights Office
Canadian Food Inspection Agency
Address : 59 Camelot Drive
Ottawa, Ontario
K1A 0Y9
Email inquiries through : http://www.inspection.gc.ca/english/
tools/feedback/commene.shtml
Chile
Servicio Agricola Y Ganadero (Agricultural & Cattle Service)
Division De Semillas (Seeds Division)
Address: Avda. Bulnes Nº 140, Santiago-Chile
Phone: (56-2) 345 15 62
Website: www.sag.cl
China
(i) Documents submitted by the breeder/applicant
(ii) Judicial directives :
*
Judicial Explanation and Rules for handling cases of PBR lawsuit
(issued by The Supreme People’s Court of China).
*
Judicial Explanation on Relevant Issues Concerning the Laws
Applicable for Hearing the Dispute Cases Concerning the Property
Infringements of New Plant Variety, made by The Supreme People’s
Court of China.
(1) The Office for Protection of New Varieties of Plants
Department of Science, Technology and Education, Ministry of
Agriculture People’s Republic of China
Address: 11 Nong Zhan Guan Nan Li, Beijing, 100026, People’s Republic
of China
(2) The Office for Protection of New Varieties of Plants
State Forestry Administration People’s Republic of China
Address: 18 He Ping Li East Street, Beijing 100714, People’s Republic
of China
Hong Kong, China
(i) Gazettes and journals from other economies
(ii) Relevant websites
The Office of the Registrar of Plant Variety Rights
Agriculture, Fisheries and Conservation Department
Address : 5/F Cheung Sha Wan Government Offices
303 Cheung Sha Wan Road
Kowloon, Hong Kong
Email address : [email protected]
Indonesia
(i) Technical guidelines for every plant species
(ii) Local case law
The Centre for Plant Varieties Protection
Ministry of Agriculture, Republic of Indonesia
Address : Jl. Harsono RM No. 3, Gedung E-Lantai 3, Ragunan, Jakarata,
12550, Indonesia
Email address : [email protected], [email protected] and
[email protected]
Japan
In-house test guidelines for individual genera and species
See http://www.hinsyu.maff.go.jp/ (Details in Japanese only)
(1) Seeds and Seedlings Division (SSD), Agricultural Production
Bureau, Ministry of Agriculture, Forestry and Fisheries
Address : 1-2-1 Kasumigaseki, Chiyoda-ku, Tokyo 100-8950, JAPAN
(2) National Center for Seeds and Seedlings
Address : 2-2 Fujimoto, Tsukuba-shi, Ibaraki 305-0852, JAPAN
Korea
No information available
National Seed Management Office (NSMO)
Address : 328, Jungangro Mananku, Anyangsi, Kyunggido 430-016,
Republic of Korea
Web site : www.seed.go.kr
Mexico
(i) International plant breeders’ rights gazettes and other databases
(ii) In-house National List of Varieties eligible for seed
certification
National Service of Inspection and Certification of Seeds (SNICS)
Address : Av. Presidente Juárez No. 13, Col. El Cortijo, Tlalnepantla,
Estado de México, México.
Peru
Office of Inventions and New Technologies
National Institute for the Defense of Competition and the Protection
of Intellectual Property (INDECOPI)
Address : Calle de la Prosa 138, Lima 41, Peru
Philippines
(i) IPGRI list of descriptors
(ii) Local literature on crops
Bureau of Plant Industry
Plant Variety Protection Office
Address : San Andres, Malate, Manila, Philippines
Email address : [email protected]
Singapore
Examination reports from other UPOV member countries
Intellectual Property Office of Singapore
Address : 51 Bras Basah Road, #04-01 Plaza By The Park, Singapore
189554
Email inquiries through :
http://www.ipos.gov.sg/mis/con/Contact+Us_App.htm
Chinese Taipei
(i) CVPO criteria for assessing Essentially Derived Varieties
(ii) Japan’s legal measures for unauthorized use of direct processed
product of plant variety harvests.
(iii) Local literature on plants
Agriculture and Food Agency, Council of Agriculture, Executive Yuan
Crop Production Division, Seed and Seedling Management Section
Address: No. 8., Kuang-Hua Road;
Chung-Hsing New Village, Nantou 54044, TAIWAN
E-mail inquiries through : [email protected]
Thailand
Ministerial Regulations regarding Rules and Procedures (regarding
applications for new plant variety protection) – B.E. 2546
Plant Variety Protection Division,
Department of Agriculture,
Ministry of Agriculture and Cooperatives
Address : 50 Phaholyothin Road, Ladyao, Chatuchak, Bangkok 10900,
Thailand.
United States
US case law
Plant patents and utility patents for plants :
Patent examination practice as specified in the Manual of Patent
Examining Procedure
Plant Protection for asexually reproduced plants and utility patents
for plants:
United States Patent and Trademark Office
Address : P.O. Box 1450
Alexandria, VA 22313-1450
E-mail inquiries through : [email protected]
Website: http://www.uspto.gov/web/offices/pac/plant/
Plant Variety Protection for sexually reproduced plants:
Plant Variety Protection Office
Address : National Agricultural Library, Room 401
10301 Baltimore Boulevard
Beltsville, MD 20705-2351
E-Mail enquiries through : [email protected]
Website: http://www.ams.usda.gov/Science/PVPO/PVPindex.htm
Viet Nam
Department of Crop Production
Ministry of Agriculture and Rural Development
Address : No. 2 Ngoc Ha Street, Ba Dinh District, Hanoi, Viet Nam
H. Issues encountered in implementing Plant Variety Protection regimes
We are grateful for the 11 economies which shared information38 about
:
*
The type of support needed to strengthen an individual economy’s
plant variety protection regime;
*
Issues associated with implementing such a regime; and
*
Measures which have helped the successful implementation of such a
regime.
Most of these economies are large, with a strong agricultural sector,
and thus have broad practical experience dealing with plant variety
protection issues.
Support needed to strengthen PVP regimes
The following appear to be the support needed :
(i) Technical and human resource training in the area of examination
and testing for new plant varieties39.
(ii) Logistical and infrastructure support, which could be costly. For
example, devices for detecting molecular markers and glasshouses40.
(iii) Capacity building programmes on dealing with infringement of
grants of plant variety protection. Examples of issues raised include
how to meet the demand for enforcement, how to develop measures to
detect infringements and implementing border measures41.
Additionally, these are the needs expressed by non-UPOV members :
(i) Incorporation/development of their region-specific plant varieties
testing methods into UPOV’s test guidelines42.
(ii) Access to databases of UPOV and non-UPOV members43.
Problems in implementation
The following problems were raised :
(i) The lack of competent examiners and other personnel to manage a
plant variety system is clearly an issue44.
(ii) The lack of competent personnel would clearly affect the list of
protected genera and species in some economies45.
(iii) The need for greater publicity, awareness and interest for plant
variety protection regimes generally. In this respect, education
programmes – to farmers, seed companies, farm managers, etc – need to
be seriously reviewed46.
The 2 problems mentioned – lack of competent personnel and lack of
awareness and interest possibly form part of a vicious cycle making it
difficult to enhance any economy’s plant variety protection regime.
These problems may ultimately affect the list of protected genera and
species and hinder the expansion of test guidelines and improvement of
examination and testing technology. However this conclusion is not
shared by all47.
What helps in implementation of PVP regimes
Australia was the only economy which gave detailed suggestions on how
to implement a PVP regime effectively. They found that the following
worked for them and has allowed protection to be offered to all genera
and species :
*
Having a system closely aligned to UPOV system
*
Minimise re-work by using relevant test reports produced by other
UPOV members
*
Use of a “breeder testing” system where breeders/agents use
comparative growing trials to prove that each new variety meets
DUS criteria, thus negating the need for costly government
infrastructure and testing facilities
*
Development of a “Qualified Person” scheme so that expertise is
developed in a range of technical skills and experience for plant
variety protection. Expertise is developed outside of the national
authority.
*
Making minor legislative adjustments from time to time to ensure
operational efficiency of system
I. Conclusion
Overview of APEC economies’ Plant Variety Protection Systems
As noted earlier in this report, a significant number of respondents
are not members of UPOV. Of the remaining APEC members who did not
participate in the survey, only New Zealand and the Russian Federation
are members of UPOV48. This means that only a total of 12 APEC
economies have signed on to UPOV, though it appears that many others
have schemes based on technical (DUS) criteria of the UPOV Convention.
Moreover, there are 6 economies which allow plant variety protection
under their patent systems. The details of how plant varieties are
protected by patents will not be explored in depth in this report.
However, for patents to be registrable, the universal requirements are
that it must be new, involve an inventive step, and be capable of
industrial application49. In simple terms, a potential patent must be
new, non-obvious (i.e. not known to the person having ordinary skill
in the art of the subject matter under examination), and useful.
It is unclear why few patent regimes are receptive to registering new
plant varieties – a possible reason could be the perception that
plants are traditionally not considered as something that can be
“invented”50. It could also be that while patents may be suitable for
some plant varieties, the eligibility criteria for patents does not
fit comfortably with the repeated use of well known methodologies to
produce easily anticipated results – a circumstance which is the norm
for most plant breeding activities.
It may thus be said that plant variety protection systems across APEC
clearly vary between economies. However, there is arguably a degree of
harmonization, and for those economies who are UPOV members, a
reasonable degree of legislative alignment.
Characteristics of plant variety protection systems by economy
The definition of “plant variety” differs from economy to economy,
even as between UPOV members. The 1991 Act contains a detailed and
technical definition as compared to the 1978 Act which does not define
“variety” 51. As a result, there may be a possibility that for a new
plant variety, registration outcomes may differ between economies with
different definitions – though this was not investigated in this
study.
As another indication of the varied systems of plant variety
protection across the region, it is noted that the term of protection
for plant varieties differs in economies that have acceded to the 1991
Act and the 1978 Act, with the former according longer protection.
However the disparity is easily explained as the different Acts of the
Convention, stipulated different minimum periods of protection52.
While some non-UPOV economies appear to have followed the term of
protection under the 1991 Act (e.g. Chinese Taipei and the
Philippines), others have not (e.g. Thailand).
As alluded to above, exceptions to plant variety protection are quite
standard across economies. APEC economies may wish to consider whether
there are any benefits in streamlining the extension of protection in
the area of essentially derived varieties and harvested material, as
these are commercial tools which may be useful for farmers.
Application requirements and special rules
The survey revealed nuances from economy to economy which would not be
obvious from just reading the legislation. For example, photographs of
the new plant varieties are required by some economies (e.g. Japan and
the Philippines).
Due to these differences in the requirements for registration of plant
varieties, it is crucial for applicants and/or their solicitors to
check the application requirements of the various economies before
they apply for plant variety protection. However, it is observed that
some economies do not appear to have, or provide details of such
information to the public. For instance, with regards to the important
supporting test report to be filed at first instance in some
economies, it is not obvious whether there is a format for such
report, or who would be qualified to prepare such report, etc.
Therefore, to facilitate smooth registration, applicants may wish to
consider engaging the services of a solicitor or agent in the relevant
economies. Alternatively, they can liaise personally with the relevant
plant variety protection offices to obtain the relevant information.
This will also help applicants navigate special rules pertaining to
priority claims, access and benefit sharing requirements (as in the
case of Peru and Thailand) and so on.
Examination guidelines
For the benefit of potential applicants of new plant variety
protection across borders, it would be helpful if the intellectual
property/plant variety protection offices of economies (especially
those with more established PVP regimes) can publish the following
information on their websites:
i.
Details of examination guidelines for new plant varieties;
ii.
Local literature on plant varieties; and
iii.
Decisions of important cases, and judicial directions pertaining
to plant variety protection on their websites.
This would also offer a good source of reference for economies with
less established PVP protection and the public at large.
Attention is drawn to the large amount of information available from
the UPOV website53.
The future of Plant Variety Protection regimes in APEC
In the context of the goal of economic integration for APEC and
enhancing regional trade, economies may want to consider ways of
facilitating cross-border protection of plant varieties and raise
regional standards for such protection. This may or may not include
efforts to encourage more economies to consider acceding to UPOV.
Further information of the impact of the introduction of effective
Plant Variety Protection on trade are included in the UPOV Report on
the Impact of Plant Variety Protection54.
If such goals are desired, several issues need to be examined
collectively. These include : the lack of trained technical personnel
to manage a PVP system, lack of equipment, developing capacity to deal
with infringement, upgrading legislative frameworks and a lack of
overall awareness of the utility of having a good PVP regime.
The differences in economies’ plant variety protection regimes also
needs to be addressed. Possible impediments for economies to accede to
UPOV may need to be examined. For UPOV members, apart from according
national treatment to non-UPOV members, Peru’s specific suggestion to
establish a cooperation agreements for DUS testing – e.g. approval or
validation of an examination performed abroad may be considered.
Even if harmonization is not the preferred or desired approach, in the
spirit of general technical cooperation, Japan’s suggestion for
harmonization of examination and registration procedures through, e.g.
utilization of examination reports from other economies may be a
worthy idea to examine further55. This can be carried out on a more
informal basis, especially in the light of the present differences in
APEC economies’ PVP regimes.
Annex A
Survey Form
Survey on Plant Variety Protection Regime in APEC Economies
To all APEC member economies:
For each item where your response is affirmative, you are requested to
provide details via a summary together with relevant statistics, and
references/links to supporting/illustrative documents/websites:
A. Does your economy provide for the legal protection existing and/or
new plant varieties? If your response to this question is negative,
please proceed to complete the survey by answering B and D. Otherwise,
please proceed to C.
B. Please indicate whether your economy had considered providing for
the protection of existing and/or new plant varieties in the past; if
this is the case, please also elaborate on the rationale of your
decision(s) against such protection.
C.
Is your economy a member of the UPOV? If so, please complete the
survey by stating which Act of the Convention is your economy a
party?
D. If your economy is not a member of UPOV, does you economy intend to
join UPOV? If so, please complete the survey by stating which Act of
the Convention does your economy intend to become a party to.
E. If your response to C and/or D are negative, please indicate
whether new plant varieties are accorded with protection through any
of the following regimes below; and where possible, also provide
details of examples (e.g. registration number, specification of the
new plant variety, etc) :
1) Patent Regime;
2) Sui Generis Plant Variety Protection Regime
3) others
F. How is the term “New Plant Variety defined in your economy’s
legislation/law ? Please specify the applicable provisions/case law.
G.
Please highlight and describe the distinctive features of Plant
Variety Protection regime in your economy, such as term and scope
of protection, exceptions provided under the regime, examination
process, etc.
H. Please list and describe the criteria (other than the criteria
described in the UPOV convention, if any) to qualify as a new plant
variety registrable / protectable under each regime which you have
indicated above.
I. Please list and describe the criteria on the number of genus and
species for which plant varieties protection is granted.
J. List here the information or documents which a breeder is required
to furnish or provide when making an application to register a new
plant variety:
K. Does the PVP regime of your economy allow for the deposit of
samples of the new plant variety which is registered?
L.
If a new plant variety is registrable under more than one IP
regime in your economy (e.g., patent and sui generis PVP regimes),
please indicate whether the breeder of a new plant variety can be
allowed double protection under both regimes.
M.1 Does your PVP regime or other national law or regulation require
any disclosure of source, consent from local owners from which the
plant variety has been improved, and the sharing of benefit derived
therefrom?
M.2 If the response to M.1 is negative, do you have any plan to
protect the interest of local owners from which the improved plant
varieties has been derived?
N. Is there any decision or case law in your economy which clarifies
any issue(s) in relation to protection of new plant variety? If so,
please provide details.
O. Is there any other decision or case law of other jurisdictions
which you would consider relevant to your economy and/or may assist
your PVP administrator or Courts in the decision on the registration
or invalidation of a new plant variety? If so, please provide details.
O.1 Please indicate the area which your economy’s PVP agency/authority
needs support from foreign countries.
P. List here any tool or reference which is/are used by your economy’s
PVP authorities in the course of examination of a new plant variety.
If so, please provide details.
P.1 Do you have any problem in implementing your protection regime for
new plant varieties and existing varieties (if any)? Please describe.
P.2 If you do not have problems in the implementation, could you
suggest any mechanism which ensures successful implementation?
Q. Does you economy provide national treatment for nationals of member
economies as well as natural persons resident and legal entities
having their registered offices within the territory of a member
economy?
R. What other relevant measures have your economy implemented or will
implement in your PVP legislation in order to promote an effective
system for plant varieties protection?
S. State the name and address of the agency / authority administering
your economy’s PVP:
T. Any additional comments:
Annex B
Economies which responded to the Survey on Plant Variety Protection
Regimes among APEC Economies :
Australia
Canada
Chile
People’s Republic of China
Hong Kong, China
Indonesia
Japan
Republic of Korea
Mexico
Peru
Philippines
Singapore
Chinese Taipei
Thailand
United States
Viet Nam
1 UPOV is actually a French acronym for Union internationale pour la
protection des obtensions vegetales.
2 For more details of the UPOV system of plant variety protection, see
introduction to UPOV at http://www.upov.org/en/about/introduction.htm.
3 Note: While countries may have acceded to more than one Act of the
UPOV Convention, they are only bound by the provisions of the most
recent of those Acts.
4 Though HKC is not a member of the UPOV, its plant variety protection
regime implemented through its Plant Varieties Protection Ordinance
(Chapter 490 of the Laws of Hong Kong) is based on the UPOV 1991 Act.
Full version of the legislation is available at
http://www.legislation.gov.hk/blis_ind.nsf/CurAllEngDoc?OpenView&Start=470&Count=30&Collapse=490.1
5 As at 12 May 2009, there were 67 members of UPOV – see
http://www.upov.org/en/about/members/. This may be contrasted with 184
member states in the World Intellectual Property Oganization.
6 Three non-UPOV APEC economies have sought the advice of the UPOV
Council on the conformity of their laws with the provisions of the
Convention. A further two APEC economies have sought advice from UPOV
on the development of their Plant Variety Protection legislation (see
UPOV Council documents (C/41/04 dated 31 August 2007 and C(Extra) 26/2
dated 17 March 2009).
7 See Article 1(vi).
8 Mexican Law on Plant Varieties or “Ley Federal de Varidades
Vegetales”. See
http://www.upov.org/en/publications/npvlaws/index.html.
9 Article 2(2), Seeds and Seedlings Act, Japan. See unofficial
translation of the Act at Asian Legal Institute website at
http://www.asianlii.org/jp/legis/laws/sasa1998an83om291998272/.
10 Section 2.1, Plant Breeders’ Rights Act. See
http://laws.justice.gc.ca/en/showdoc/cs/P-14.6/bo-ga:s_2//en#anchorbo-ga:s_2.
11 See Hong Kong Legal Information Institute website at
http://www.hklii.org/hk/legis/ord/490/s2.html.
12 Decision 345 of 21 October 1993, Plant Variety (Cartegena
Agreement). See http://www.wipo.int/clea/docs_new/en/pe/pe005en.html.
13 Art 1.3, Law No. 29 of 2000 concerning Plant Variety Protection.
14 Editor’s note : The Chilean Law No. 19.342 on the Rights of
Breeders of New Varieties of Plants has a definition of “Plant
Variety” which follows the 1991 Act.
15 Editor’s note : For example Hong Kong, China. On the other hand,
the legislation of Chinese Taipei and Thailand appear to contain
elements of the 1991 Act.
16 Editor’s note : This appears to be a reference to commercial sale
of a plant variety.
17 Editor’s note : This appears to be a reference to commercial sale
of a plant variety.
18 See Article 6(1) of the 1991 Act.
19 Editor’s note : It is the editor’s understanding that these numbers
represent the varieties that have been granted protection to-date in
each economy.
20 Editor’s note : there appears to be a limited farmer’s privilege –
under Article 58(2) of the Seed Industry Act, the Minister of the
Ministry of Agriculture and Forestry may restrict the rights for a
particular variety for such privilege. The scope of such rights shall
be made by Presidential Decree.
21 Protection for essentially derived varieties is accorded in
Australia, Hong Kong,China, Korea, Peru, Singapore, the United States
and Viet Nam.
22 Protection for harvested material is accorded in Australia, Hong
Kong, China, Japan, Korea, Peru, Philippines, Singapore, Chinese
Taipei, Viet Nam and the United States.
23 Editor’s note : This table does not contain an exhaustive list of
requirements.
24 A “Qualified Person” is one who is accredited to act as a technical
consultant to the applicant for plant breeders’ rights in Australia.
He oversees the comparative growing trial and provides evidence that a
plant variety meets DUS testing requirements. For more information,
please see “The Plant Breeder’s Rights Application Kit at
http://www.ipaustralia.gov.au/pbr/forms.shtml.
25 Priority may be claimed only when the application has been accepted
for filing in Canada within 12 months of the filing date of the first
application made in another UPOV member country. See “Instructions for
filing a Plant Breeders’ Rights application” at
http://www.inspection.gc.ca/english/plaveg/pbrpov/appguidee.shtml
26 Editor’s note : For a useful overview of application procedures and
requirements, please refer to monograph produced by Japan’s Ministry
of Agriculture, Forestry and Fisheries at
http://www.hinsyu.maff.go.jp/english/index.htm.
27 Pursuant to Article 27(3), a person intending to claim the right of
priority must specify such claim, the name of the country in which the
first application was filed and the filing date of such application.
28 Note that this requirement is pending implementation, and will come
into effect once the Common Regime on Access to Genetic Resources is
legislated. Editor’s note : See, however, note 34 for Peru below.
29 This may include information concerning any knowledge related to
the variety.
30 Editor’s note : For more information on the US Department of
Agriculture Plant Variety Protection Office’s application
requirements, please refer to their website at
http://www.ams.usda.gov/AMSv1.0/ams.fetchTemplateData.do?template=TemplateC&navID=PlantVarietyProtectionOffice&rightNav1=PlantVarietyProtectionOffice&topNav=&leftNav=ScienceandLaboratories&page=PlantVarietyProtectionOffice&resultType=&acct=plntvarprtctn
31 The documents proving the priority right of the application must
include:
(a) The copy of the first application(s) certified by the receiving
office(s).
(b) The paper of transfer or inheritance of the priority right if the
right is transferred from another person.
32 See Article 18, Decision 345 of 21 October 1993, Plant Variety
(Cartegena Agreement)
33 See Section 21, Republic Act No. 9168.
34 Article 15(f) of Supreme Decree 008-96-ITINCI, Regulation for the
Protection of Plant Breeders Rights of 6 May 1996. Editor’s note :
According to documents of the 26th Extraordinary Session of the UPOV
Council, Peru (in order to conform with/accede to the 1991 Act), has
amended this clause in their Regulations of the Draft Supreme Decree
establishing the Regulations for the Protection of Rights of Breeders
of Plant Varieties. The present requirement in Article 15(f) will be
removed when the amendments come into force. (See UPOV document
C(Extr)/26/2 dated 17 March 2009, at para 21 and 22 – available at
http://www.upov.org/en/documents/c_extr/index_c_extr_26.htm).
35 National Law N°27811, “Protection Regime for the Collective
Knowledge of Indigenous Peoples derived from Biological Resources”.
36 For more information on this subject, please refer to reports of
the World Intellectual Property Organization’s Inter-Governmental
Committee on Traditional Knowledge, Genetic Resources and Traditional
Cultural Expressions/Folklore at http://www.wipo.int/tk/en/.
=====================================================================
37 Editor’s note : It is observed that even non-UPOV economies such as
Peru and Philippines rely on UPOV guidelines and publications to aid
them in examining new plant variety applications.
38 Australia, Chile, China, Japan, Mexico, Philippines, Peru, Chinese
Taipei, Thailand, the United States and Viet Nam.
39 Views expressed by Chile, China, Thailand, Viet Nam, Peru.
40 Views expressed by Thailand, Philippines.
41 Views expressed by Mexico, Viet Nam, Japan.
42 Views expressed by Chinese Taipei, Philippines.
43 View expressed by Chinese Taipei.
44 Views expressed by Thailand, Chinese Taipei, Mexico, Philippines.
45 View expressed by China.
46 Views shared by China, Viet Nam, Mexico.
47 Views expressed by Australia.
48 New Zealand is a signatory to the 1978 Act, while the Russian
Federation is signatory to the 1991 Act.
49 It is noteworthy that Title 35 of the United States Code on Patents
specifically provides for the registration of plant patents, subject
to the overarching requirements for patents. See Sections 101-103 and
161.
50 Note that under Article 3(b) of the TRIPS Agreement, plants may be
excluded from patentability, though WTO members must provide the
protection of plant varieties either by patents or by an effective sui
generis system or combination thereof.
51 It should be noted that the intention of the various amendments to
the UPOV Convention, was to improve the clarity and certainty of PVP
schemes. Accordingly one of the aims of the Diplomatic Conference
leading to the 1991 UPOV Convention was to develop internationally
accepted definitions for key terms such as “plant variety”. It is not
surprising therefore that PVP schemes developed before 1991 use
different formulations.
52 As indicated above, in recognition of the need to address the
balance of rights in favour of the breeder and to reflect the
requirements of TRIP, the Diplomatic Conference leading to the 1991
UPOV Convention increased the minimum duration of protection to 20
years (25 years for trees and vines).
53 See http://www.upov.int/index_en.html.
54 Refer to, inter alia,
http://www.upov.int/en/publications/impact.html.
55 Note that since the survey, Japan has initiated the 2008 formation
of the East Asia Plant Variety Protection Forum. Its aim is to
strengthen and further develop the implementation of plant variety
protections systems in the Asian region in accordance with UPOV
principles.
62