Sui Generis Systems:
Obligations and options for developing countries
By
Achim Seiler
| Keywords: |
Farmers' rights; Patent law; Plant breeders' rights; General
Agreement on Tariffs and Trade (GATT). |
| Correct citation: |
Seiler, A. (1998), "Sui Generis Systems: Obligations and
options for developing countries." Biotechnology and Development Monitor,
No. 34, p. 2-5. |
Four years after the adoption of the agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS), the obligations and
options of developing countries to provide for protection of plant varieties
remain undecided. In 1999, the sui generis option for the protection
of plant varieties will be evaluated by the TRIPS Council. The shape of
a TRIPS-compatible sui generis system will play a key role in establishing
alternatives to patents on plant varieties.
The stipulations of the agreement on TRIPS are of crucial importance
to the countries from the South. Developing countries which are members
of the World Trade Organization (WTO) are forced to adjust their
national systems for the protection of intellectual property rights
(IPRs) to the rigid standards already established in industrialized countries.
For developing countries the TRIPS Agreement provides for gradual transition
periods for the implementation of patent protection systems. Developing
country members may delay the full application of the TRIPS obligations
until 1 January 2000, least developed countries until 1 January 2005. By
that time their own systems for intellectual property protection must not
only be adjusted to the minimum standards required by the TRIPS Agreement,
but must also have implemented provisions for patent protection in fields
not yet covered by IPR protection, for instance for living matter.
Provisions for TRIPS
Member states to the TRIPS Agreement are not obliged to provide for
patent protection for plants and animals. However, they have to implement
some form of intellectual property protection for plant varieties. This
can be done either by providing for patent protection for plant varieties,
or by implementing a sui generis system (a system of its own kind),
or by any combination thereof (see box 1). In general,
developing countries can make a choice amongst the following policy options:
-
To make provisions for the patent protection of plant varieties.
-
To join the International Union for the Protection of new 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.
Member states opting for sui generis laws have to establish them
by January 2000. Already earlier, the respective national laws have to
be notified to the TRIPS council for screening for compliance with the
provisions of the TRIPS Agreement. In 1999, the sui generis option
within the TRIPS Agreement will be reviewed.
Therefore, the scope for the shaping of adequate sui generis
systems is now closely scrutinized. Of central importance are their legal
grounds, the different objectives as well as the basic question of how
to implement such systems. Another issue under discussion is whether a
sui generis system should fully or only partially comply with the
TRIPS stipulations (see box 2).
Options for the protection of plant varieties
Following Art. 27.3.(b) of TRIPS, member states could pursue four different
strategies:
-
Neither plants nor plant varieties are patentable. Following this
approach member states are obliged to provide for a sui generis system
for the protection of plant varieties as alternative to a patent system.
This approach meets the minimum requirements for developing countries to
investigate their options further in formulating their sui generis
protection systems.
-
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 plant varieties. This approach is pursued by the USA to
allow broad patents on plant groupings even beyond plant 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. This alternative could eventually prevent
any claims by which plant groupings beyond plant varieties could be brought
under private control.
-
Plants are patentable, but plant varieties are not. In this case,
member states are again obliged to provide for a sui generis system for
the protection of plant varieties. This combination will be the future
legal situation in Western Europe once the new European Patent Directive
(EPD) on the legal protection of biotechnological inventions is adopted.
However, patents on the transformation process of plants result in claims
on all transformed plants as products directly obtained by the process.
This could again lead to the patenting of plant varieties.
| TRIPS Article 27
Patentable Subject Matter
"1. 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. [...]
2. 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
or plant life or health or in order to avoid serious prejudice to the environment,
provided that such exclusion is not made merely because the exploitation
is prohibited by their law.
3. Parties 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." |
Tailor-made sui generis systems
Given the stipulations of the TRIPS Agreement as an integral part of
the WTO framework, the sui generis systems must comply with a number
of requirements. For instance, a sui generis system for plant varieties
must comply with the basic principles of national treatment, meaning that
member states are obliged to grant to non-nationals the same advantages
as to its own nationals. Furthermore, all advantages that are granted to
the nationals of other countries have to be applied immediately and unconditionally
to the nationals of all the other member states.
In order to be "effective", national sui generis legislation
must provide for the implementation of juridical procedures for PVP
holders to execute their rights. By this, they can effectively exclude
others from unauthorized use of the protected plant variety or obtain a
remuneration.
Even with these formal requirements, there is still a range of options
for developing countries to shape sui generis systems in compliance
with the TRIPS stipulations as well as with their own developmental and
ecological demands.
At present, space to manoeuvre still exists mainly because there is
no formal reference made to the UPOV Convention. Furthermore, key elements
for the shaping of sui generis systems are either unclear or not
defined at all.
Firstly, there could be several ways to define the term plant
variety. For granting protection under the traditional plant breeders
right (PBR) system, plant varieties must meet the criteria of being
distinct, uniform and stable (DUS). "Uniformity" and
"stability" could be replaced by the criterion of identifiability.
This would allow the inclusion of plant populations which are more heterogenous,
thus taking into account the interests of local communities. The scope
of protection could be limited to cover only the reproductive parts of
plants, or could be extended to include also harvested plant materials.
Secondly, the TRIPS Agreement does not prohibit the development
of additional protection systems, nor does it prohibit the protection of
additional subject matter to safeguard local knowledge systems and informal
innovations as well as to prevent their illegal appropriation. Several
elements could be added, such as community gene funds, the establishment
of mediation procedures (public defender) for the protection of local interests
or local registers. Local registers could help to install benefit sharing
mechanisms. Furthermore, by publishing information on local innovations,
their status of novelty expires, and hence, they should become unpatentable.
Thirdly, as outlined in a study by GRAIN (1997), member states
have, with regard to sui generis systems, some space of interpreting
the principle of non-discrimination in the TRIPS Agreement. A sui generis
system that puts the emphasis on the place of invention could
be in full compliance with the TRIPS principle of national treatment. By
this, developing countries could positively discriminate in favour of domestic
innovations.
Following the logic of Correa (1997) it could even be argued
that sui generis systems do not necessarily have to provide for
exclusive rights that prevent others from the use/production of protected
matter. Instead, the scope of protection could be confined to a specific
use of certain objects or processes.
Different sui generis systems under development
Developing countries shaping their own sui generis systems are
confronted with far-reaching consequences that touch upon the whole spectrum
of biodiversity-related problems. This includes national regulation of
access to genetic resources, protection of communal innovations and indigenous
knowledge against illegal appropriation. It furthermore touches central
elements of Farmers’ Rights at national and international levels.
At present there are many different approaches under development, varying
from country to country according to the specific needs and attentions.
Many approaches deliberately avoid compliance with the TRIPS stipulations
and are in frank contradiction to its stipulations. Instead, they are striving
for the conservation of intellectual efforts of local communities so that
they are not taken over by any western-style IPR regime.
On the other hand, many countries, especially in Latin America, interpret
the range of options more narrowly than necessary. For instance, the members
of the Andes Pact, including Bolivia, Columbia, Ecuador, Peru and
Venezuela provide for plant variety protection by a system comparable to
UPOV (see also Monitor
No. 33). The common PVP regime in all Andean states exceeds the provisions
of the UPOV 78 Convention and includes key elements of UPOV 91 such as
extending protection also on the harvested product and by the introduction
of essentially derived varieties. At the same time, however, they are developing
a common agreement on biosafety and a special regime for the safeguarding
of traditional knowledge.
The political context
Despite the juridical analysis, the review of Art. 27.3.(b) in 1999
is part of a broader political process. Industrialized countries will seek
to get even better conditions for the realization of far-reaching exclusive
claims over living materials to safeguard the commercial interests of the
biotechnology industry. Therefore, the developing countries will face pressure
from some industrialized nations either to explicitly name UPOV as the
reference convention for the interpretation of the sui generis clause,
or to delete the whole subparagraph 27.3.(b) entirely, leaving no more
exceptions from patentability. This would ultimately correspond to the
original objectives, pursued by the USA during the negotiations on the
Uruguay Round of the General Agreements on Tariffs and Trade (GATT),
signed in 1994.
Meanwhile there is a good chance for the realization of the US position,
namely the extension of patentability on plant varieties. At present, the
European Patent Convention (EPC) excludes plant varieties and animal
races from patentability. The EPC Art. 53(b) for the exception from patentability
had been the reason why the sui generis clause was inserted into
the TRIPS provisions under Art. 27.3.(b). However, the new EPD that will
probably be adopted in 1998 is actively eroding such exceptions from patentability.
The linkages between the several sui generis approaches, as
well as efforts to enable local communities to ground their rights in national
and international legislations, are numerous. However, these grass-root
actions cannot be seen only in the context of the TRIPS sui generis
stipulations, since most of the activists categorically reject all patents
on life forms as well as all other claims on tangible or intangible skills
or creations in the area of common goods.
At present the outcome of the review of Art. 27.3.(b) is difficult
to predict. It will be a review-to-amend, meaning that it is open for a
complete renegotiation. Since the patentability of plant varieties is the
most contentious part of the TRIPS Agreement, it must be expected that
the political positions will sharply contrast between different countries.
It is not certain that this review can be successfully finished at all.
A failure of this negotiation and a subsequent moratorium called for by
the TRIPS council on the implementation schedules will also have repercussions
on other IPR requirements covered by the TRIPS Agreement.
| Different sui generis approaches
Intellectual Property Rights for Communities
This approach could be used to provide communities with IPRs for their
informal innovations and biodiversity-related skills that cannot be protected
by conventional IPR systems. Many Southern non-governmental organizations
(NGOs) and indigenous peoples’ organizations have the criticism that
in vesting those rights in communities the commodification and monopolization
of life forms will be even more strongly established worldwide.
Community Intellectual Rights and Collective Rights
This strategy could be pursued to protect the rights of indigenous
communities from being usurped by foreign interests. All biodiversity-related
rights of local communities (farmers as well as indigenous peoples) are
to be protected by adequate legislation, which the state has to abide by.
The primary objective is to prevent biopiracy. It is not intended to be
in full compliance with the TRIPS stipulations.
Modified Plant Variety Protection
This approach is grounded on the stipulations of the PVP system, as
laid down in the UPOV conventions. Slight modifications to improve the
situation of farmers are included. Instruments under development are Community
or Farmers Rights Funds, which are based on royalties on protected seeds.
Other measures are grace periods for filing applications on farmers varieties
and the exclusion of certain categories of farmer-controlled plant materials.
Comprehensive Biodiversity Legislation
In this case, an encompassing legislation deals with the protection
and sustainable use of biodiversity. It aims at the definition of coherent
policy measures in the national context. Aspects covered range from the
question of access to genetic resources, biosafety, IPRs and communal rights.
Sectoral Community Rights Regime
Following this approach, a regulation systems is designed especially
to deal with the interests of local communities concerning specific categories
of biodiversity. National legislation does not encompass all the biodiversity-related
problems coherently but concentrates only on specific areas which have
to be protected, for instance medicinal plants and the related indigenous
knowledge systems. Such a pragmatic approach does not exclude attempts
to implement broader legislation.
|
Achim Seiler
University of Frankfurt, Jakob-Heller-Str. 13, 60320 Frankfurt, Germany.
Phone & fax (+49) 69 567797.
Sources
Crucible Group (1994), People, Plants and Patents. Ottawa, Canada:
International Development Research Centre.
GRAIN (ed.)(1997), Signposts to Sui Generis Rights. Background
discussion papers for the international seminar on sui generis rights.
Bangkok, Thailand: GRAIN.
D. Leskien and M. Flitner (1997), "Intellectual Property Rights and
Plant Genetic Resources: Options for a sui generis system." Issues in
Genetic Resources, No. 6. Rome, Italy: IPGRI.
C. Montecinos (1996), "Sui Generis: A dead end alley." Seedling,
Vol. 13, No 4. Barcelona, Spain: GRAIN.
RAFI (1996), Enclosures of the Mind: Intellectual monopolies. A resource
kit on community knowledge, biodiversity and intellectual property.
Ottawa, Canada: RAFI.
Contributions to the Biotechnology and Development Monitor are not
covered by any copyright. Exerpts may be translated or reproduced without
prior permission (with exception of parts reproduced from third sources),
with acknowledgement of source.
