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Plants > Plant Breeders' Rights Proposed Amendments to the Plant Breeders' Rights Act to bring existing legislation into conformity with the 1991 UPOV ConventionPlant Breeders’ Rights (PBR) are a form of intellectual property rights enabling breeders of new varieties of plants to have the exclusive right to produce and sell propagating material of their new plant varieties. The Plant Breeders’ Rights Act, which is the legislation establishing PBR in Canada, came into force August 1, 1990. The existence of a PBR system in Canada is broadly viewed as an important stimulus to varietal development and the introduction of new plant varieties to the Canadian marketplace. The current PBR Act conforms to the 1978 Convention of the Union internationale pour la protection des obtentions végétales (International Union for the Protection of New Varieties of Plants), known as UPOV. Canada ratified the 1978 Convention just prior to the revision and amendment of the UPOV Convention in 1991. On March 9, 1992, Canada signed the amended Convention signifying our intent to ratify. However, to enable the ratification process, amendments are required to the PBR Act. If given effect in legislation, the adoption of the 1991 Convention would increase incentives for the introduction of new varieties to the Canadian marketplace. The necessary amendments to the PBR Act to enable Canada’s ratification of the 1991 UPOV Convention were included in a previous legislative initiative, which died on the order paper at the closing of the Fall 1999 session of Parliament. Stakeholder interest in seeing PBR Act amendments reintroduced has gained momentum since June 12, 2002, when the Ten Year Report on the impacts of the PBR Act was tabled in Parliament. The Report concluded that the PBR Act has contributed to both an increase in investment in plant breeding, and an improvement in access to foreign varieties in both the agricultural and horticultural sectors. The following discussion paper outlines the differences between the 1978 UPOV Convention and the 1991 Convention; describes the main changes required to the PBR Act to bring it into conformity with the 1991 Convention; and highlights areas where scope exists to go beyond the minimum requirements of the 1991 Convention (See items 8, 9 and 11).
1. DEFINITIONSThe 1978 Convention does not include a definitions section. The 1991 Convention includes definitions to streamline wording and to promote uniform interpretation. The definition of breeder includes "the person who bred, or discovered and developed, a variety" (Article 1). The definition of breeder in the current PBR Act [Subsection 2(1)] includes any person who "originates or discovers the plant variety". The definition would have to be modified to state "any person who originates, or discovers and develops, the plant variety". 2. BASIC OBLIGATION OF THE CONTRACTING PARTIES (removal of ban on double protection)The 1978 Convention prohibits protection of the same botanical genus or species under PBR and patents. The 1991 Convention removed the ban on double protection (removed from Article 2). Nothing would have to be changed in the PBR Act or the Patent Act to comply with the removal of the ban. If the Patent Act changed its policy to allow the patenting of higher life forms, i.e. plants and animals, there would be no conflicts with the 1991 Convention. 3. GENERA AND SPECIES TO BE PROTECTEDThe 1978 Convention requires that new member States must cover at least five (5) genera or species at the time of joining, and then cover at least 10 genera or species within three (3) years; 18 genera or species within six (6) years; and 24 genera or species within eight (8) years. It also encourages member States to cover the largest possible number of genera and species. The 1991 Convention requires that States bound by the previous Conventions (1978 & 1972) must undertake to cover all genera and species within five (5) years (Article 3). Presently all crops, excluding algae, bacteria and fungi, are covered under the PBR Act. No changes to the current PBR Act are required to comply with the number of genera or species covered under the 1991 Convention. 4. NATIONAL TREATMENTThe 1978 Convention provides that nationals or residents of one member State may apply for PBR in other States and receive the same treatment as the nationals or residents of that State. However, it also permits restricting protection to foreigners on the basis of reciprocity, i.e. limiting protection for a given genus or species to nationals or residents of those member States that also provide protection for that genus or species. The 1991 Convention provides that nationals of all member States must be given national treatment and not restricted on the basis of reciprocity. It also provides that nationals of States of intergovernmental organizations, which are members of UPOV, must also be given national treatment (Article 4). In the current PBR Act [Subsection 2(2)], there is the option of reciprocal or national treatment for countries of the "Union". This would have to be modified to give national treatment, i.e. the same rights under the PBR Act as Canadians receive, to nationals of all UPOV member countries and intergovernmental organizations. 5. NOVELTYThe 1978 Convention specifies that a new variety must not have been offered for sale or marketed with the agreement of the breeder in the State where an application has been filed, nor marketed in any other State for more than six (6) years for vines, forest trees, fruit trees, ornamental trees and their root stocks or for more than four (4) years for all other plants. It provides that States may allow the marketing of a new variety in the country of application for one year before an application is filed. Under the 1991 Convention, the provision allowing marketing of a new variety for up to four (4) or six (6) years in another State has been retained. However, States must now allow up to one (1) year of sale prior to application in the country of application. Intergovernmental organizations which are members of UPOV may act as though they are one country, i.e. only one (1) year of sale is allowed in one (1) country of an intergovernmental organization before an application is made in any other country in that organization (Article 6). The current PBR Act (Section 7) does not allow any sale of a new variety in Canada prior to application. This would have to be amended to allow one (1) year of sale in Canada prior to application. 6. RIGHT OF PRIORITYThe 1978 Convention provides for a period of four (4) years after the expiration of the period of priority in which to furnish additional documents and material for which priority is claimed (based on a previous application elsewhere). Under the 1991 Convention, this period has been reduced to two (2) years (Article 11). The current PBR Act [Subsection 11(3)] will have to be amended from four (4) years to two (2) years. 7. PROVISIONAL PROTECTIONThe 1978 Convention provides that States may take measures to protect the applicant against infringement during the period between the filing of an application for PBR and the grant of the right. The 1991 Convention requires that States provide "provisional protection" (Article 13). The protective direction sections of the current PBR Act (Sections 19, 20 & 21) provide for protection from the time of application to the grant of rights, at the request of the applicant. Protective directions are allowed provided the applicant agrees not to sell their variety prior to grant of rights except under specific, limited circumstances. The provision for the protective direction would be amended to automatically allow protection pending a decision on the grant of rights. Under provisional protection, applicants are afforded the same rights for their variety while their application is pending as they would be once rights are granted. 8. SCOPE OF THE BREEDER’S RIGHTThe 1978 Convention provides for the scope of the breeder's rights to include the breeder's prior authorization for the production for the purposes of commercial marketing, the offering for sale, and the marketing of the reproductive material of the variety. The right of the breeder also extends to ornamental plants, normally marketed for purposes other than propagation, when they are used commercially as propagating material in the production of ornamental plants or cut flowers. The 1991 Convention extends the rights: a) in propagating material to cover production or reproduction (multiplication), conditioning for the purpose of propagation, offering for sale, selling or other marketing, exporting, importing and stocking. It provides for a cascading right in harvested material, i.e. the right will extend to harvested material if the breeder has not had an opportunity to exercise his right in relation to the propagating material. States may extend the protection to the product from harvested material and other additional acts. b) to apply in relation to essentially derived varieties. A variety is considered to be essentially derived when it is predominately derived from the initial variety, or from another essentially derived variety, whilst retaining the expression of the essential genotypical characteristics of the initial variety, and when it conforms in all other respects to the initial variety (Article 14). The 1991 Convention also provides that the breeder may make their authorization subject to conditions and limitations. The 1991 Convention applies to: i) varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety; ii) varieties which are not clearly distinguishable from the protected variety; and iii) varieties whose production requires repeated use of the protected variety. The current PBR Act (Section 5) lists the basic rights of the breeder. They include: a) only the holder may sell, advertise for sale and produce in Canada for the purpose of selling propagating material of the variety; b) only the holder may make repeated use of propagating material of the variety in order to commercially produce another variety (e.g. an inbred constantly used in a cross to produce a hybrid); c) only the holder may make repeated use of propagating material in the production of ornamental plants or cut flowers; and d) the holder may license others to do any of the above. The PBR Act would have to be amended to include the production, conditioning, exporting, importing and stocking of propagating material to be part of the breeder's rights. The PBR Act would also be amended to give the breeder the right to make their authorization subject to conditions and limitations. To bring the current PBR Act into conformity with the 1991 Convention, it would also have to be amended to extend rights to include harvested material (e.g. the grain, the fruit, cut flowers, etc.), including entire plants and parts of plants, obtained through the unauthorized use of propagating material. By extending protection to the harvested material, breeders of all crops would be provided protection for their varieties when they are propagated without their consent and the harvested material is sold. Presently, propagation of a protected tree fruit variety for non-sale purposes and the subsequent sale of the fruit is not an infringement. There is an optional provision in the 1991 Convention to extend the holder’s rights to products of harvested material (e.g. flour from the grain, juice from the fruit, perfume from the flower, etc.). However, it is not required that this provision be adopted to conform to the 1991 Convention. Please specify whether you support extending the holders’ rights to products of harvested material or not. There is no clause in the current PBR Act concerning "essentially derived varieties". To bring the current Act into conformity with the 1991 Convention, it would have to be amended to incorporate the "essentially derived" principle. 9. EXCEPTIONS TO THE BREEDER’S RIGHT (including farmer's privilege)The 1978 Convention does not limit the use of a protected variety for the purpose of breeding new varieties, nor does it specifically mention the "farmer's privilege", i.e. allowing farmers to save and use their own seed. The 1991 Convention contains compulsory exceptions to the breeder's right, in that it does not extend to (i) acts done privately and for non-commercial purposes; (ii) acts done for experimental purposes; or (iii) acts done for the purpose of breeding other varieties. It also provides member States with an option to limit the breeder's right by permitting farmers to save and use their own seed, i.e. farmer's privilege (Article 15). The current PBR Act does not prohibit using the variety for further breeding work nor does it prohibit farmers from saving and using their own seed of a protected variety. It is an infringement if harvested material such as ornamental plants or plant parts are used as propagating material in the production of ornamental plants or cut flowers. However, the propagation of propagating material of fruit trees for non-sale purposes and the subsequent sale of the harvested product, i.e. the fruit, is not an infringement. Farmer’s privilege was allowed in the current PBR Act because support for the legislation from some farm organizations was conditional on allowing farmers to retain the right to save and use their own seed. The PBR Act would have to be amended to incorporate the compulsory exceptions of the 1991 Convention. However, the 1991 Convention allows for adopting the farmer’s privilege as an exception to the breeder’s right. If this provision is adopted, producers would be able to save propagating material of a protected variety for use on their farm. If not adopted, it would be an infringement for producers to save propagating material of a protected variety and use it on their farm. Please advise: (1) whether you support the concept of farmer's privilege or not; (2) if you do support the concept of farmer's privilege, do you feel it should be limited to certain crops, e.g. cereals only, potatoes, fruit crops, etc.? 10. EXHAUSTION OF THE BREEDER’S RIGHTThe 1978 Convention does not have any provision on exhaustion of the breeder's right. The 1991 Convention spells out the principle of exhaustion of the right, limiting the breeder's right to exclude material of a protected variety or essentially derived variety which has been sold by the breeder. There are two exceptions where the breeder's right may be extended to include: a) acts involving further propagation of the variety. b) acts involving the export of a variety that may be propagated in a country where protection does not exist, except cases where the export is for consumption purposes (Article 16). The principle of "exhaustion" is aimed at ensuring that the holder of a breeder’s right can only exercise their right, and receive remuneration, once during the production cycle, with the two exceptions noted above. The current PBR Act [Subsection 5(3)] states that the sale of propagating material does not necessarily give the purchaser the right to multiply the material for sale. The sale authorizes the purchaser to sell anything purchased from the seller. The PBR Act would have to be amended to include the provisions of 1991 Convention. 11. DURATION OF THE BREEDER’S RIGHTThe 1978 Convention has a minimum period of protection of 15 years for all varieties except vines, forest trees, fruit trees, and ornamental trees, including their root stocks, which are allowed 18 years. The 1991 Convention increases the minimum periods of protection to 20 and 25 years (Article 19). The PBR Act [Subsection 6(1)] presently allows protection for a period of eighteen (18) years. The PBR Act would have to be amended to grant rights to at least meet the new minimums of twenty (20) years for all varieties except vines, forest trees, fruit trees, and ornamental trees, including their root stocks, which are allowed a minimum of twenty-five (25) years. 12. ANNULMENT OF RIGHTSThe 1978 Convention states that rights may be annulled if the variety was not distinct or new when rights were granted. Under the 1991 Convention, rights may be annulled for the reasons provided in the 1978 Convention, and also if: (1) the variety was not uniform or stable at the time of grant of rights; or (2) the right was granted to a person who was not entitled to it. The PBR Act (Section 34) states that rights may be annulled if the variety was (1) not distinct when rights were granted; or (2) sold prior to application in contravention of the regulations.The PBR Act would have to be amended to include the additional circumstances under which rights could be annulled. 13. REVOCATION OF RIGHTSRights may be revoked under the 1978 Convention if the breeder was not able to provide: (1) a sample of reproductive material of the variety; or (2) proof that the variety is being maintained; or (3) the prescribed fees. Under the 1991 Convention, rights may be revoked for the reasons provided in the 1978 Convention, and also if: (1) the variety is no longer uniform or stable; and (2) the breeder has not proposed a suitable, new denomination after a denomination was cancelled. The PBR Act [Subsection 35(1)] states that rights may be revoked if: (1) the holder has been unable to supply propagating material of the variety; (2) the holder has been unable to provide proof that the variety is being maintained; (3) the holder sold reproductive material of the variety while a protective direction was in force; (4) the holder has failed to pay the annual fee; or (5) the holder has failed to comply with the terms of a compulsory license. The PBR Act would have to be amended to include the additional circumstances under which rights could be revoked. 14. OTHER CONSIDERATIONSOther amendments concerning the definition of sales, not required by the 1991 Convention, could also be included to clarify what would not be considered a sale. For example, it could be specified that harvested material from testing, e.g. apples, or multiplication of a variety on behalf of the breeder would not be considered a sale. Comments on what circumstances should not be considered a sale would be appreciated. |
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