UPOV 1991 Enters into Force in Kenya: Farmers’ vs Plant Breeders’ Rights

Stephen Ndungu Karau Ambassador and Permanent Representative accession 1991 UPOV Convention Kenya Francis Gurry Director-General World Intellectual Property United Nations Geneva Switzerland 2016

H.E. Amb. Dr. Stephen Ndungu Karau, Ambassador and Permanent Representative deposits the instruments of accession to the 1991 Act of the UPOV Convention on behalf of the Republic of Kenya received by Dr. Francis Gurry Director-General World Intellectual Property Organization – April 11 2016 Geneva, Switzerland.

On May 11th 2016, the International Convention for the Protection of New Varieties of Plants (UPOV Convention) of December 2, 1961, as revised on March 19, 1991 entered into force in Kenya. As readers know, Kenya was the first country in Africa to join Union internationale pour la protection des obtentions végétales (UPOV) when it became a member on May 13th 1999 and subsequently domesticated the 1961 Act of the UPOV Convention in the Kenya Seed and Plant Varieties Act Cap 326.

Previously this blogger highlighted the recently adopted ARIPO Arusha Protocol and the draft SADC Protocol which are both modelled around UPOV 1991 standards. In this connection, the entering into force of UPOV 1991 in Kenya is a significant development for both plant breeders’ rights as well as farmers’ rights.

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Proposed Amendments to Seeds and Plants Varieties Act

KEPHIS Seeds and Plant Varieties Amendment Act Bill 2015

Article 11 of the Constitution of Kenya recognises culture as the foundation of the nation and as the cumulative civilization of the Kenyan people and nation and includes science and indigenous technologies and intellectual property (IP) rights of the people of Kenya within the scope of elements of culture that are recognised. The Constitution goes further and states in Article 11(3) (b) as follows:

“Parliament shall enact legislation to recognise and protect the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya”

It is this constitutional imperative that has resulted in the recently proposed amendments to the Seeds and Plant Varieties Act (Chapter 326 Laws of Kenya). A copy of the Seeds and Plant Varieties Amendment Bill, 2015 is available here.

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Jurisdiction is Everything: Time to Merge Tribunals for Copyright, Industrial Property, Seed and Plant Varieties

tribunal judiciary kenya cms-image-000005230

As readers may know, a government taskforce had earlier recommended the merger of the three intellectual property (IP) offices dealing with copyright, industrial property and anti-counterfeit matters. The implementation of these recommendations appears to have stalled with no progress made to-date. In addition to the IP offices, there is also the matter of the various IP dispute resolution bodies created under the various IP laws: the Industrial  Property  Act establishes the Industrial  Property  Tribunal, the Copyright Act establishes the Competent Authority (akin to a Copyright Tribunal), the Anti-Counterfeit Act  establishes the Anti-Counterfeit Agency and the Seeds and Plant Varieties Act establishes the Seeds and Plant Tribunal.

Recently, the Judiciary Working Committee on Transition and Restructuring of Tribunals developed a Draft Tribunal Bill 2015 to help domicile all tribunals under the Judiciary. This is an important step that could benefit IP owners and users in the quick and expert settlement of various IP-related disputes.

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Plant Breeders’ Rights and Intellectual Property Ownership

Summary:

In a judgment delivered on 23 August 2012 by Judge Griesel (Fortuin & Samela JJ concurring), the High Court of South Africa in the case of Voor-Groenberg Nursery CC and Another v Colors Fruit South Africa (Pty) Ltd [2012] has set an important precedent on the standard of proof of ownership of vegetative materials which are the object of intellectual property rights.

Legal Background

After Industrial Property and Copyright, Plant Breeders Rights is the third branch of intellectual property rights. This young branch of IP was born out of the UPOV Convention of 1961. UPOV stands for “Union internationale pour la protection des obtentions végétales”.
The Convention protects the variety of the plant not the plant itself therefore the subject matter of protection is the variety and not the whole plant. A variety is a new plant that is distinct from any other variety that is known to agriculture or published in any botanical literature. A variety is ‘known to agriculture’ if man has cultivated it. A variety is ‘known to botanical literature’ if it has not been recorded. Therefore any person who discovers a new plant variety that is wild, that man can use or domesticate, can apply to the competent authority for a Grant of a Plant Breeder’s Right.

The UPOV Convention 1961 was subsequently amended in 1978 and 1991. Kenya was the first country in Africa to domesticate the UPOV Convention. Kenya’s Seed and Plant Varieties Act Chapter 326 is modeled on UPOV 1961. South Africa’s Plant Breeders’ Rights Act 1976 is modeled on UPOV 1978.

Factual scenario in the case of Voor-Groenberg Nursery CC v Colors Fruit South Africa

Sheehan Genetics LLC (‘Sheehan Genetics’), a California-based company, developed ten different varieties of seedless grapes. Sheehan Genetics then entered into a licence agreement with a Spanish company, Antonio Munoz Y Cia SA (‘AMC’), in terms of which AMC was granted an exclusive licence to test and com­mercially develop all new plant material bred, acquired and developed by Sheehan Genetics. Later on,
Sheehan Genetics and AMC entered into a sub-licence agreement with Colors Fruit South Africa Pty Ltd. In terms of the sub-licence Colors was granted certain rights regarding the exploitation of the so-called “Sheehan varieties” in South Africa and Namibia.

The rights are set out in paragraph 5 of the judgment as follows:

” (a) an exclusive right (to the exclusion of both AMC and any third party) ‘to obtain from AMC … all the propagating samples of all new vegetative material bred and/or developed by Sheehan Genetics and received by AMC from time to time, so that Colors Fruit may (i) test, plant and cultivate them; (ii) obtain their products; and (iii) secure their statutory protection’ in the form of registration of plant breeders’ rights in the name of Sheehan Genetics within the defined territory (‘Planting and Cultivation Rights’); and
(b) a non-exclusive right to use the intellectual property rights of which Sheehan Genetics was the proprietor, to market and distribute the products in the agreed distribution territory (‘Marketing and Distribution Sub-Licence’).”

In terms of the sub-licence agreement, Colors was appointed as Sheehan Genetics’ South African agents in connection with matters relating to plant breeders’ rights, governed locally by the Plant Breeders’ Rights Act, 15 of 1976 (‘the Act’). To this end, Colors contracted the services of Voor-Groenberg, a local entity, to propagate and multiply the plant material obtained by it [Colors].

Things went south when AMC notified both Sheehan and Colors of its intention to terminate the licenses described above. Despite this notice of termination of the license, Colors took the view that it would not terminate any of its production or cultivation programs; and further that it would not surrender any of its rights in respect of the plant materials. Why? Well, Colors claimed it had acquired ownership of the Sheehan plant varieties! How? Colors made two separate arguments:

1. Colors argued that the sub-licence did not contain a reservation of ownership in favour of Sheehan Genetics or AMC. This fact, together with supply of the plant material to Colors, can lead only to the conclusion that the intention must have been for Colors to become owner.

2. Colors relied on the provisions of s 23(6) of the Plant Breeders’ Rights Act.

The High Court rightly dismissed Color’s ownership claim on both these grounds. The Court rightly dismisses Colors’ first argument at paragraphs 22, 23 and 24. However for purposes of this post, we shall focus on the second argument because it is directly pertinent to our discussion on intellectual property rights.

The point of departure is section 23 of the South African Plant Breeders’ Rights Act which states the holder of plant breeder’s right has certain exclusive rights in respect to the propagating material of the relevant variety; or harvested material, including plants, which was obtained through the unauthorized use of propagating material of the relevant variety. These include:
(a) production or reproduction (multiplication);
(b) conditioning for the purpose of propagation;
(c) sale or any other form of marketing;
(d) exporting;
(e) importing;
(f) stocking for any of the purposes referred to in paragraphs (a) to (e).

This section provides that any person exercising any of the above rights must have proof of prior authority from the rights holder in the form of a license.

It is clear from the above facts that Colors had obtained such a license however in the absence of any proof of assignment of rights from Sheehan, could Colors claim to be the holder of plant breeder’s rights in respect of the Sheehan variety? The answer is an emphatic ‘No’. Therefore Colors cunningly decided to rely on the exceptions provided in section 23(6) of the Plant Breeders’ Act to claim it had acquired the rights to use the plant varieties. This section provides that:

“a person who procured any propagating material of a variety in a legitimate manner shall not infringe the plant breeder’s right in respect of the variety if he or she—
(a) resells that propagating material;
(b) subject to the provisions of subsection (2), sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;
(c) uses or multiplies that propagating material in the development of a different variety;
(d) uses that propagating material for purposes of bona fide research;
(e) uses that propagating material for private or non-commercial purposes; or
(f) is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.”

To my mind, this section is akin to the exceptions and limitations provision in section 23 of the Copyright Act commonly known as the ‘fair dealing’ or ‘fair use’ provisions. However, in the case of copyright as is the case for plant breeders’ rights, such provisions can only be relied on as defences where there is an allegation of infringement of rights. The court makes a similar observations at paragraph 29:

“reading s 23(6) in context, it provides a defence – not a cause of action – to a limited class of persons, namely persons without a licence obtained under s 25 or 27, who are accused of infringing a plant breeder’s right. Like estoppel, therefore, s 23(6) is meant to be utilised as a shield, not as a sword.”

These exceptions are sometimes referred to as the “farmer’s privilege” as contemplated in UPOV 1978 and were part of a larger campaign to obtain international recognition of plant breeders’ rights which was finally realised in 1994 with article 27(3) (b) of the TRIPS Agreement.

Conclusion:

The High Court’s findings in this case are spot on in upholding the intellectual property rights of the plant breeder over any other competing interests. In the present case, the object of the plant breeder’s right is the plant variety including related propagating material and harvested material. One cannot claim ownership of the vegetative material of a particular plant variety if one is not recognised by law as the holder of the plant breeder’s right.

The Case for an Inter-Agency Approach to Intellectual Property Protection and Enforcement

Today marks the opening of an important event by the Anti-Counterfeit Agency (ACA): “Workshop on the Implementation of an Interagency Approach to Intellectual Property Protection and Enforcement: Kenya and the East African Community”

Unlike tangible property, IP is not well understood and thus is highly under-utilised in Kenya. That said, it is no secret that the proper administration and regulation of the intellectual property system in Kenya is faced with two main challenges: enforcement and awareness creation.

The US Department of Justice and the Department of Commerce along with the State Department, Customs & Border Protection and USPTO have been strongly advocating for Kenya and other countries in the East African Community to adopt an interagency approach to protection and enforcement of IP within the countries’ national borders and the EAC as a whole.

While it is often said that enforcement is the best form of awareness creation, one must still ask whether the government, stakeholders and industry players are doing enough to educate, enlighten, inform and advise Kenyans on what intellectual property is all about, why infringement is both morally and legally wrong and most importantly instilling and promoting a culture of respect for intellectual property.

As far as nation-wide IP awareness and IP enforcement, the buck ultimately stops with government and it’s 4 key specialised agencies dealing with IP namely:

a) Kenya Industrial Property Institute – KIPI ( which administers this Act and this Act)
b) Kenya Copyright Board – KeCoBo (which administers this Act)
c) Kenya Plant Health Inspectorate – KEPHIS (which administers this Act)
d) Anti-Counterfeit Agency – ACA (which administers this Act)

Effective and efficient utilisation of IP can be well facilitated by creation of a knowledgeable, skilled and positively-cultured human resource base through public awareness and training programmes in IP. In view of, and in order to facilitate, this, KIPI, KeCoBo, ACA and KEPHIS under the support of their parent ministries: Industrialisation, State Law Office and Agriculture should be mandated with the task of designing and implementing an Inter-Agency Intellectual Property Protection and Enforcement Strategic Plan (IPPESP).

This Inter-Agency IPPESP would aim at inculcating a culture that promotes creativity and innovation, protection and commercialisation of IP in Kenya through enhancement of awareness and utilisation of IP for industrialisation in accordance with the Constitution of Kenya, 2010 and our national development blueprint, Kenya Vision 2030.

The five strategic objectives of the Inter-Agency IPPESP should be:
1. To create general awareness in intellectual property matters. Eg. Electronic, print media
2. To train selected target audience on the various aspects of IP matters and relevance in operations of the targets
3. To promote creativity, innovation and IP enforcement in Kenya
4. To propagate emerging IP issues in Kenya; and
5. To ensure efficient and effective implementation of the IPPESP.

At present, the Government recognises (on paper) that the IP system as an important tool for trade, incentive for investment and thus a catalyst for national growth in this world’s liberalised economy. Consequently, as a commitment to regional/ international co-operation, Kenya is actively involved in formulation and implementation of regional/ international policy on IP system, and is partly to the main regional/ international treaties/agreements on IP. Nationally, the Government is devoting resources towards putting in place machinery for effective and efficient administration and management of the IP system within its territory, and all main aspects of IP are administered and managed in Kenya by four IPOs.

That said, adopting an inter-agency approach to IP enforcement in Kenya would not be without its set of challenges. The following key obstacles have been identified:

1. Challenge of coordination in terms of enforcement and public awareness
2. Conflict management and avoidance: between the various IP agencies, especially due to overlapping mandates and jurisdictions.
3. Capacity building
4. Confidentiality and information sharing
5. Multiplicity of legal provisions and procedures

In response to these challenges, a host of solutions have been proposed in the past:

1. Establishment of a CEOs Forum
The CEO forum would be convened by ACA (because it’s empowering legislation is the broadest IP statute on enforcement and protection) and this Forum would establish a mechanism/task Force to review current IP legislations with a view to harmonizing them and enhancing inter-agency cooperation.

2. A Memorandum of Understanding (MOU) between the four IP agencies
This MoU would be prepared and signed by the CEO/Executive Directors of the the four IP agencies comprising the CEOs Forum.

3. Establishment of Committees as agreed under MOU
An important committee in this regard would be a IPR Enforcement Committee comprising of persons who head the enforcement departments in the respective four IP agencies. Other committees would be be defined in the MOU and/or constituted as and when need arises under the Forum of CEOs.

4. Establishment of formal mechanisms for private-public consultations on enforcement of IPR

5. Establishment of a formal mechanism that brings together various Tribunals that enforce civil IP rights.

With this background in mind, ACA’s three day workshop starting today is aimed at arriving at “the best way to implement an interagency approach to IP protection and enforcement.”

IPKenya looks forward to the Workshop’s outcomes.