1. TRIPS Art. 27.3(b) and Agriculture
Achim Seiler, Trade Consultant and Capacity Building Specialist, Kathmandu
EU-Project: Trade and Private Sector Development (TPSD)
TPSD is implemented by
in cooperation with
and

2. Art. 27, Patentable Subject Matter
Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (...) Patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. (Art. 27.1)

3. Art. 27 Patentable Subject Matter (II)
Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal of plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law. (Art. 27.2)

4. Art. 27 Patentable Subject Matter (III)
Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement. (Art. 27.3)

5. Art. 28 Rights Conferred
A patent shall confer on its owner the following exclusive rights:
where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling or importing
(Fn. No 6) for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
Fn. No 6: This right, like all other rights conferred under this
Agreement in respect of the use, sale, importation or other
distribution of goods, is subject to the provisions of Art. 6

6. Strategic Options
To make provision for the patent protection of plant varieties
To join the International Union for the Protection of ne varieties of plants (UPOV) in either of both variants (UPOV 78 or 91)
To provide for comparable plant variety protection (PVP) without formally joining the UPOV Convention
To devise a sui generis system which is better designed to suit national interests and to take into account the protection demands of informal and local communities
To provide a combination of patent and sui generis protection

7. Technical Options:
Neither plants nor plant varieties are patentable. Following this approach, Member states are obliged to provide a sui generis system for the protection of plant varieties
Plants and plant varieties are patentable. In this case, a sui generis system would merely be in addition to the coverage of patent protection for pant varieties
Plants are not patentable, but plant varieties are. This scenario provides an option for a sui generis system in addition to the patent protection for plant varieties
Plants are patentable, but plant varieties are not. In this case, Member states are again obliged to provide a sui generis system for the protection of plant varieties.

8. Option 1
Utility Patent protection
Sui Generis/
(UPOV)
Plants (Plant “Majorities”) no
Plant varieties
yes
Option 2
Utility Patent protection
Sui Generis/
(UPOV)
Plants (Plant “Majorities”)
yes
Plant varieties
optional

9. Option 3
Utility Patent protection
Sui Generis/
(UPOV)
Plants (Plant “Majorities”) no
Plant varieties
yes
optional
Option 4
Utility Patent protection
Sui Generis/
(UPOV)
Plants (Plant “Majorities”)
yes
Plant varieties no

10. * The patentability of plant parts (cells) as products directly obtained by a microbiological process is based in the EPO granting practice on the redefinition of plant cells into microorganisms in combination with the regulation in Art. 53(b) EPC which deviates from the TRIPS wording in Art. 27.3(b). Art. 53(b) EPC explicitely obliges to grant patents on products directly obtained by a microbiological process; according to the granting practice at EPO: ”The term “microorganism” includes not only bacteria and yeasts, but also fungi, algae, protozoa and human, animal and plant cells, i.e. all generally unicellular organisms with dimensions beneath the limits of vision which can be propagated and manipulated in a laboratory. Plasmids and viruses are also considered to fall under this definition”

11. The Development of a Transgenic Plant Variety Resistant to Insect Attack leading to Multiple Rights
Subject
Components
Example
IPR
Plant Variety
Germplasm
Protected Variety e.g. potato
PVR
Selectable marker gene
Promotor coding sequence
35S neo
Patent
Promotor TR
Coding Sequence
Bt2
Patent pending
Transformation Technology
Ti-plasmid
PGV2260
Gene Expression Technology
Transcription Initiation
Viral Leader
Translation Initiation
Joshi
Codon usage
AT GC
Number of different IPR:8

12. Comparison of Main Provisions under the UPOV Convention and Patent Law (I)
UPOV 78 Act
UPOV 91 Act
Patent Law
Protection Coverage
Plant Varieties of nationally defined species
Plant varieties of all genera and species
Inventions
Requirements
Distinctness
Uniformity
Stability
Novelty
Inventiveness
Non-
obviousness
Industrial
application and
usefulness
Protection Term
Min. 15 years
Min. 20 years
17-20 years (OECD)

13. Comparison of Main Provisions under the UPOV Convention and Patent Law II
UPOV 78 Act
UPOV 91 Act
Patent Law
Protection Scope
Commercial use of reproductive material of the variety
Commercial use of all material of the variety
Commercial use of protected matter
Breeders exemption
Yes
Not for essentially derived varieties No
Farmers privilege
In practice: yes
Optional but subject to royalty payment
Prohibition of double protection
Any species eligible for PBR protection can not be patented
./.

14. Rights conferred (UPOV 78) (I)
The effect of the right granted to the breeder is that his
prior authorisation shall be required for
The production for purposes of commercial marketing
The offering for sale
The marketing
of the reproductive or vegetative propagating material, as such, of the variety. Vegetative propagating material shall be deemed to include whole plants. The right of the breeder shall extend to ornamental plants or parts thereof normally marketed for purposes other than propagation when they are used commercially as propagating material in the production of ornamental plants or cut flowers (Art. 5.1)

15. Rights conferred (UPOV 78) (II)
The authorization given by the breeder may be made subject to such conditions as he may specify (Art. 5.2.)
Authorization by the breeder shall not be required either for the utilization of the variety as an initial source of variation for the purpose of creating other varieties or for the marketing of such varieties. Such authorization shall be required, however, when the repeated use of the variety is necessary for the commercial production of another variety (Art. 5.3)

16. Rights conferred (UPOV 78) (III)
Any Member State of the Union may, either under its own law or by means of special agreements under Article 29, grant to breeders, in respect of certain botanical genera or species, a more extensive right than that set out in paragraph (1), extending in particular to the marketed product. A member State of the Union which grants such a right may limit the benefit of it to nationals of member States of the Union which grant an identical right and to natural and legal persons resident or having their registered office in any of those States. (Art. 5.4)

17. Rights conferred (UPOV 91) (I)
...the following acts in respect of the propagating material of the
protected variety shall require the authorization of the breeder:
production or reproduction (multiplication)
conditioning for the purpose of propagation
offering for sale
Selling or other marketing
Exporting
Importing
Stocking for any of the purposes mentioned in (i) to (vi), above
The breeder may make his authorization subject to conditions and
limitations (Art. 14.1)

18. Rights conferred (UPOV 91) (II)
...
The acts referred to in items (i) to (vii) of paragraph 1(a) in respect of harvested material, including entire plants and parts of plants, obtained through the unauthorized use of propagating material of the protected variety shall require the authorization of the breeder, unless the breeder has had reasonable opportunity to exercise his right in relation to the said propagating material (Art. 14.2)

19. Rights conferred (UPOV 91) (III)
Each Contracting Party may provide that (...) the acts referred to in items (i) to (vii) of paragraph (1)(a) in respect of products made directly from harvested material of the protected variety falling within the provisions of paragraph (2) through the unauthorized use of the said harvested material shall require the authorization of the breeder, unless the breeder has had reasonable opportunity to exercise his right in relation to the said harvested material (Article 14.3)
Each Contracting party may provide that, (...) acts other than those referred to in items (i) to (vii) of paragraph (1)(a) shall also require the authorization of the breeder (Art. 14.4)

20. Rights Conferred (UPOV 91) (IV)
a) The provisions of paragraphs (1) to (4) shall also apply in relation to
varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety
Varieties which are not clearly distinguishable (...) from the protected variety and
Varieties whose production required the repeated use of the protected variety

21. Rights Conferred (Exceptions)
The breeder’s rights shall not extend to
acts done privately and for non-commercial purposes
Acts done for experimental purposes
Acts done for the purpose of breeding other varieties (...) (Art. 15.1)
Notwithstanding Article 14, each Contracting party may, within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder, restrict the breeder’s right in relation to any variety in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety or a variety covered by Art. 14.5