Info Service on Biodiversity and Traditional Knowledge (Nov13/01)
1 November 2013
Third World Network
UPOV: To consider industry wish list on plant breeders' rights
Published in SUNS #7687 dated 1 November 2013
London, 30 Oct (Sangeeta Shashikant) -- The International Seed Federation
(ISF) presented to the members of the International Union for the
Protection of New Varieties of Plants (UPOV) a wish list aimed at
further harmonising the application, examination and granting of plant
breeders' rights (PBRs).
ISF represents the interest of the mainstream of the seed industry,
including multinational seed companies such as Monsanto, Syngenta,
Bayer, DuPont Pioneer, and DowAgroSciences, which continue to control
about 75% of all private sector plant breeding research, and 60% of
the commercial seed market.
The wish list includes new initiatives such as developing an international
filing system for PBR applications based on the international patent
filing system in the World Intellectual Property Organisation (WIPO)
set up under the Patent Cooperation Treaty, a central approval system
for variety denominations and a quality assurance program for PBR
(UPOV is housed and serviced by WIPO in Geneva, Switzerland that provides
certain administrative and practical services to UPOV. Though UPOV
is a separate legal entity, its ties with WIPO are close. WIPO's Director-General,
by virtue of position, is the Secretary-General of the UPOV with the
power to approve the appointment of UPOV's Vice Secretary-General.)
ISF presented its wish list to UPOV members during the meeting of
the Consultative Committee on 23 October. The Committee advises the
highest body of UPOV - the Council. UPOV members met in Geneva for
various meetings on 21-25 October.
At first, ISF outlined its recommendations in a letter to the Vice
Secretary-General of UPOV, Mr. Peter Button, dated 21 January 2013.
According to the letter, the recommendations are based on a thorough
discussion by the ISF Intellectual Property Committee and the ISF
Breeders' Committee of replies to a questionnaire sent out to its
members asking them about problems they have encountered with the
application for, and examination and granting of PBRs.
On receiving the letter, the UPOV Secretariat converted the ISF wish
list into an annex of an official document (CC/86/11) of the Consultative
Committee proposing ways in which the ISF wish list can be accommodated.
According to sources, the ISF recommendations were strongly backed
by the UPOV Secretariat including by its Secretary-General, Mr. Francis
Gurry, and the European Union.
Several development experts who have analysed the ISF recommendations
have expressed concern that these recommendations would lead to loss
of policy space and flexibilities, as they will regulate areas not
currently regulated by the two existing Acts of 1978 and 1991 of the
UPOV Convention. A Patent Cooperation Treaty-like filing system for
UPOV will further reinforce the monopolisation by multinational companies
of seed systems, some experts say.
[Of the current 71 UPOV members, only 18 are developing countries
and most of these are members of UPOV 1978, while most developed countries
are members of UPOV 1991. The Patent Cooperation Treaty makes it possible
to seek patent protection for an invention simultaneously in each
of the large number of countries by filing an "international"
patent application. The Treaty regulates in detail the formal requirements
with which any international application must comply.]
Edward Hammond, Director of Prickly Research, a research consultancy
based in Texas, USA, expressed concern in particular over ISF's call
to maintain pedigree information of protected varieties confidential.
"With the amount of published pedigree information on PBR-protected
varieties dwindling, a crisis of transparency has emerged, with such
rights being approved over varieties whose origin is unknown - the
equivalent of allowing a patent without requiring disclosure of the
invention," said Hammond.
He added that, "ISF is proposing to move UPOV still further away
from disclosure practices that allow identification of misappropriation
by encouraging PVP offices to neither solicit nor publish pedigrees."
He advises, "Consistent with their demands at the WIPO and the
WTO (World Trade Organisation), governments should not allow this
UPOV secrecy on origin of genetic resources to continue to develop",
stressing that without this information being made public, identifying
misappropriation and achieving equitable benefit sharing will be much
more difficult and, in some cases, impossible.
Another expert said that allowing confidentiality allows right holders
to continue to protect their varieties by way of trade secret even
after the PVP protection expires.
ISF's WISH LIST ON HARMONISING APPLICATION, EXAMINATION AND GRANTING
ASPECTS OF PBR APPLICATIONS
ISF's letter to the UPOV Vice Secretary-General Peter Button makes
recommendations in the areas of application process, material requirements,
examination process, variety descriptions, denomination and legislation
(For the letter, see Annex 1 of CC/86/11.)
In brief, the recommendations mentioned in the letter are as follows:
1. Application process
(i) Application slot: It should be possible to file applications all
year round. Where countries restrict application for a certain crop
to certain months in a year, the time slot set should be sensible
(ii) Photographs: In general, photographs should not be necessary
for agricultural forage or cross-pollinating species. In other crops,
photographs should only be necessary where it is considered relevant.
It should not be necessary to provide photograph of the comparative
(iii) Pedigree information: Pedigree information should not be requested
and if requested should not become public. A breeder should be able
to indicate whether certain information provided in the application
should be considered confidential.
(iv) Electronic applications: There should be a possibility in all
UPOV member countries to file an application by email or electronically.
(v) Correspondence: Correspondence should be sent to the address indicated
by the applicant and preferably by email as the need to communicate
through local agents can result in unwanted and risky delays. In countries
where English is not the national language, the ability to correspond
in English should be available.
2. Material Requirements
(i) Confidentiality of material: There should be no obligation whatsoever
to provide seeds or parental lines for hybrid applications and where
provided it should be kept confidential. Where the application is
handled by entities that are breeding the same species, then clear
and strict measures should be implemented to secure confidentiality
of the applicant's material.
(ii) Minimum sample size: Seed quantities should be reasonable, and
optimally as low as possible.
(iii) Rules of exchange of material: There are no formal rules or
guidelines for the exchange of plant or seed material between examination
offices. ISF considers good traceability of what happens to their
material after the application is complete to be important. As a minimum
the breeder should be notified and ideally required to grant authorisation
before material is sent to other authorities.
(iv) Availability of the material: Material of the protected variety
should not become publicly available without the breeders' consent.
Publicly available material should be restricted to material that
is commercially available.
3. Examination process
(i) Reference Collections: UPOV should consider a quality assurance
program for PBR offices to affirm they have adequate reference collections
as an insufficient reference collection weakens protection as varieties,
which are too similar, receive protection. Alternatively consider
guidelines to PBR examination officers on best practices for conducting
(ii) Length of examination: A maximum period of 2 years should be
prescribed. Multilateral cooperative agreements could be considered
where certain countries carry out tests for other countries. Take-over
of examination reports from another country should be stimulated.
Where examination has been paid for purposes of national listing,
there should be no further examination costs for a PBR application
of the same variety.
A PCT-like system for PBR should be established. A uniform application
form is a good first step.
(iii) Updating frequency: It should be mandatory that each PBR office
maintains a continuously updated website. UPOV offices should receive
updates on a regular basis and should regularly revise their informational
databases. Beneficial if PBR offices also placed PBR related information
in English on their websites.
(iv) Scope of database: Information on pending applications should
be placed on official websites as it facilitates respecting IP rights.
4. Variety description
(i) Variety description of most similar variety: In some countries,
the applicant is requested to provide the full variety description
of most similar varieties whereas in the spirit of UPOV only the differences
between the candidate variety and the most similar variety need to
(ii) Variety description by applicant: Where the applicant makes the
variety description there needs to be more harmonised rules and supervision
by the PBR authorities.
(iii) Variety description database: A variety description database
including the Technical Questionnaire (TQ) information should be available
to all interested parties.
(i) Differences in denomination rules: Rules for naming the variety
should be standardised across the globe and where possible there should
be a central approval system.
(i) A mechanism whereby national PBR laws would be reviewed by the
UPOV office every x years to make sure these are still in compliance
with the UPOV Convention. Alternatively it might be necessary for
countries to have their PBR law revisions analysed by the UPOV office.
In case the PBR laws deviate too far from the Convention, measures
to remedy this should be available.
DECISIONS OF THE CONSULTATIVE COMMITTEE
The UPOV Secretariat converted the ISF wish list into an official
document - CC/86/11 - proposing ways in which this list can be taken
According to sources, the main emphasis of the ISF was on three major
areas: creating a Patent Cooperation Treaty-like system for UPOV,
creating a central approval system for variety denominations, and
developing a quality assurance program for PBR offices to affirm they
have adequate reference collections to ensure that varieties that
are similar to protected varieties do not receive PBR protection.
The primary aim of the recommendations is to facilitate and expedite
applications for breeders' rights across the globe and to enhance
protection of their protected variety.
According to sources, ISF stressed that a Patent Cooperation Treaty-like
system for PBR will enable a one-stop-shop approach and facilitate
filing in more countries, which in turn will strengthen the UPOV system.
Some countries received the ISF recommendations with apprehension,
sources say, as they stressed that it was not clear what problems
the ISF recommendations were trying to resolve.
The Consultative Committee agreed to various decision points with
regard to the ISF recommendations which in summary includes:
Committee would develop document UPOV/INF/15 "Guidance for
Members of UPOV on Ongoing Obligations and Related Notifications
and on the Provision of Information to Facilitate Cooperation"
into an umbrella document that would identify key issues for the
operation of a plant variety protection system and which would provide
links to detailed information materials.
Information materials are developed by UPOV to provide guidance and
harmonise implementation of the UPOV Convention.]
Committee would invite the Technical Committee and the Committee
on Administrative and Legal Affairs (CAJ) to consider ISF's recommendations
in relation to existing and possible future information materials.
In a table in paragraph 6 of CC/86/11, the Secretariat identifies
existing information material that are relevant to the consideration
of ISF recommendations.
Recommendation 6 (i) cited above was listed as "not applicable"
by the Secretariat.]
Committee notes the various improvements that would be made to the
PLUTO Plant Variety Database in response to ISF's recommendations
on the Database.
Committee invites the ISF to express its views to the UPOV Technical
Committee with regard to databases of variety descriptions and the
criteria identified by the Technical Committee for the publication
of variety descriptions, as set out in document TC/45/9 "Publication
of Variety Descriptions" (as reproduced in Annex III to document
Committee requests the Secretariat and ISF to elaborate the problems
faced and possible solutions in relation to ISF's ideas concerning:
an international filing system; a UPOV quality assurance program;
and a central examination system for variety denominations, for
consideration by the Consultative Committee at its eighty-seventh