______
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 Regimesamong APEC Economies
Table of contents
Background and Overview / Page 3A. 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 meetingin August 2005 in the Philippines, members agreed that a surveyon thelegal regimesfor 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 thedraft 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 Simat .
A.APEC economies’ Plant Variety Protection systems : UPOV or other sui generissystems ?
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 grantan 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 to[3]; 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 system1961 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 system[5], or (ii) are still taking steps to accede to UPOV[6]. 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, Singaporeand the US appear to have protection systems that are bothUPOV-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) Perucurrently 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 propagation[12].
(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 generallyat 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 out[15].
Observations on the definition of “New”
In most economies, whether a plant variety is “new” (or “novel”) isprescribed on the basis of whether the plant variety had been sold with the breeder’s consentprior 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) / RemarksAustralia / 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 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 application[16] / 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 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.