Statements and Comments

IPR - Non-ASTA

ASSINSEL Statement on the Development of New Plant Varieties and Protection of Intellectual Property (adopted in June 1999)

1) In 1998, ASSINSEL made a survey among its members in 29 industrialized and developing countries (Argentina, Australia, Austria, Belgium, Brazil, Canada, Chile, Croatia, Czech Republic, Denmark, Finland, France, Germany, Netherlands, India, Ireland, Israel, Italy, Japan, Kenya, Norway, New Zealand, Poland, Slovakia, South Africa, Sweden, Switzerland, United Kingdom, United States), in order to define its position in the light of the new technical, legal and political developments which took place in the course of the last decade.

ASSINSEL members are unanimously in favour of a strong intellectual property protection necessary to ensure an acceptable return on research investment and to encourage further research efforts, essential to meet the challenges mankind has to face in the coming years, i.e. feeding an increasing population whilst preserving the planet.

2) For plant varieties, the type of protection varies according to the technical, legal and socio-economic status of the various countries. In all the countries, where plant varieties are protectable, a UPOV or UPOV-like system is available.There are only a few countries (namely USA, Australia and Japan) where protection through utility patents is also used and mainly implemented in the US. ASSINSEL considers that both kinds of systems are legitimate and it is up to each country to choose the solution which best fits its needs. However, at the moment, developing country members of ASSINSEL consider that it would be premature to develop protection of plant varieties through utility patent in their countries. This is the reason why ASSINSEL recommends that in developing countries the "sui generis" system agreed upon in the TRIP's agreement should be a UPOV-like system shaped upon the 1991 Act of the UPOV Convention.

3) As regards biotechnological inventions, ASSINSEL considers that the most appropriate protection is through patents provided, of course, that the criteria for patentability are fulfilled. ASSINSEL also considers that:

- Genetic components which cause expression of a characteristic (trait) in crops (genetic causative agents) should be eligible for patents when the claims are clearly supported by the description of the invention. However, partial DNA sequences such as Expressed Sequence Tags (EST's) not associated with an expressed characteristic should not be patentable.

- Characteristics (traits) of crops should not be patentable as such. However, their genetic causative agents, when identified, characterized and in a form suitable for use in genetic modification, should be eligible for patents and should remain protected when introduced into a plant and/or a plant variety. Alternative genetic approaches to achieve the same characteristic (trait) in crops should not infringe a pre-existing patent.

4) Products obtained directly by a patented process are protected and infringement of the process patent can occur when somebody else uses that same process to make products for commercialization. ASSINSEL considers that this is appropriate but that claims for a patented process should be supported by the description of the invention and not go beyond this definition i.e. that alternative technical approaches which lead to the product should not be seen as infringing the technical process.

5) When a commercially available plant variety protected by PVP contains patented traits, it should remain freely available for further breeding, according to the breeder's exception provided for in the UPOV or UPOV-like systems.

ASSINSEL considers that, if a new plant variety, not an essentially derived variety (e.d.v.), resulting from that further breeding is free of the pre-existing patented traits, it should be exploited freely. On the contrary, if the new developed variety is an e.d.v. or if it still contains patented traits and/or patented genetic causative agents, a license from the owner of the initial variety or of the patented traits must be obtained.

6) ASSINSEL members are not generally in favour of compulsory licensing, which would be an inferior way of getting access to plant genetic resources. Unrestricted compulsory licensing would almost make meaningless the new concept of dependency resulting from essential derivation included in the 1991 Act of the UPOV Convention to protect plant breeders' rights as well as the protection by patent granted to "biotechnological inventions". ASSINSEL acknowledges the principle of compulsory licensing in case of public interest as provided for in patent laws. ASSINSEL has also considered the concept of compulsory licensing in case of "significant technical progress of considerable economic interest", as provided for in the European Directive for the protection of biotechnological inventions and which is in line with the provision of the TRIP's agreement. However, the implementation of such a clause would have to be left to courts and thus be time-consuming and expensive. ASSINSEL considers that in any case, the best solution is to encourage contractual voluntary licensing for both essentially derived varieties and patented traits.

7) In the future, the benefits of the different systems available in various countries could be evaluated and harmonized into a strong intellectual property protection system that would serve both conventional and biotechnological genetics.