Setting the Background

Max Planck Institute for Innovation and Competition, Munich, Germany


One effect of the TRIPS Agreement has been the establishment of patent rights in all WTO countries.1 The reason is to be sought in art. 27.1 of the said Agreement which explicitly demands patent protection in all areas of technology. As a result, countries that did not provide for patent rights in some or all technological areas prior to the TRIPS Agreement, are now obliged to emanate patent laws for every technological sector. Art. 27.1 does, however, establish some exceptions. One of these exceptions, contained in paragraph 3 of the same provision, is specifically designed for plant breeding. Based on this exception, TRIPS signatories may protect plant varieties through patent rights, a sui generis system or a combination thereof. Under a sui generis protection, countries are free to exclude plant varieties from patentability; however, patent rights extend on plant varieties when they incorporate patented biological material.2 This is because art. 27.3 (b) provides for the mandatory patentability of microorganisms. A consequence of such provision is, thus, the patentability of plant varieties despite their exclusion from patentable subject matter in some countries. It goes without saying that this situation creates legal uncertainty and impedes access to plant varieties for breeding purposes. Hence the need to adopt an exception for breeding purposes to patent rights in those countries where patent rights coexist with sui generis plant variety protection systems. A sui generis system implemented in most WTO countries is that of the breeder’s rights provided for in the International Convention on the Protection of New Varieties of Plants (UPOV).3 Two main differences distinguish this system of plant variety protection from patent rights. One concerns the subject matter; the other is related to the exception of rights. Under the breeder’s rights regime, intellectual property protection is granted only to a unique combination of genes expressed as a distinct, uniform and stable phenotype. The free access and use of material of the protected variety by other breeders is expressly allowed for the purpose of breeding their own varieties. This means that breeders are free to use their competitors’ varieties to introduce beneficial traits into their own breeding lines without infringing the original breeder’s rights. This practice is allowed under what is known as the ‘breeder’s exception’. This system of variety protection was weakened after the establishment of patents on biological material. Contrary to breeder’s rights, patents provide for a stronger protection by covering not only plants, but parts of plants, single genes, and breeding methods. Even more significantly, protection is often extended to every plant containing the inventive element or resulting from a patented process. As a consequence, the use of plant material under patent law expressly requires the authorization of the patent holder. The transaction costs and difficulties related to patent licensing restrict breeder’s freedom to use all available genetic material in their breeding programs.4 Fearing a blockage of genetic flows among plant breeding activities, breeders associations in the aforementioned European countries lobbied for the introduction of a breeding exception to patent rights.5 In the last years, the same issue was presented to the Dutch parliament, which adopted the same exception in 2013. The debate in the Netherlands distinguished between a ‘limited’ breeding exception (as already introduced in the patent laws of France, Germany, and Switzerland) and a ‘comprehensive’ breeding exception, that is an exception that allows the commercialization of plant varieties containing patented traits.6 This last type of exception was proposed by Plantum, the Dutch association of plant breeders and is recently under discussion in the House of Representatives in the Netherlands.7

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