Interface between patent and sui generis systems of protection of plant varieties The 1978 UPOV Act does not allow both systems to be applied to the same variety. However, the 1991 UPOV Act and the TRIPS Agreement do. Art. 27.3(b) TRIPS states that members may exclude from patentability plants and essentially biological processes for the production of plants. However, Members must provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. Despite the fact that member states exclude plant varieties from the patentable subject matter, in practice plant varieties remain covered by patent protection (e.g., in Europe). Issus resulting from the difference between the scope and exceptions under the two system.

Issues arising from the granting of protection Rights conferred by the protection

Exceptions to the breeder’s right - acts done privately and for non- commercial purposes - acts done for experimental purposes and - acts done for the purpose of breeding other varieties (breeder’s exemption) to the rights conferred by a patent -Article 30 of the TRIPS Agreement states that: “Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.” -Open multilateral treaties in the field of patents do not expressly provide for research/experimental use exception and the extent to which those limited exceptions may be permitted (Paris Convention, PLT)

Balancing the reward to the respective rights holders (essentially derived varieties) EDV concept maintains the access for all varieties for breeding EDV does provide a mechanism to ensure a suitable reward for plant breeders Imbalance remains for countries bound by the 1978 Acts of the UPOV Convention

The ability to exercise the breeder’s exemption in the case of varieties containing patented inventions purpose of the patent is to protect the developer of the genetic element purpose of the plant breeder’s right is to protect the developer of the unique combination of plant germplasm forming the variety exercise of the breeder’s exemption constrained due to lack of similar provision in patent system

Concluding remarks rapid progress in the development of genetic engineering increasing number of plant varieties will contain patented inventions practical consequence: breeder’s exemption could be lost or greatly weakened

Question how the breeder’s exemption could be preserved ? Article 7 of the TRIPS Agreement: “The protection and enforcement of intellectual property right should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations” (emphasis added) Article 8.2 of the TRIPS Agreement: “Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology (emphasis added) Should States be allowed to implement Article 30 TRIPS in a way that it protects the breeder’s exemption? * plant-specific exception in the patent law * clarification of the scope of research/ experimental use exception under the national patent laws