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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Plant Breeders vs Farmers: SADC Draft Protocol for the Protection of New Plant Varieties

SADC Conference

Plant Breeders rights became an accepted branch of intellectual property with the adoption of the International Convention for the Protection of New Varieties of Plants (UPOV) in 1961.

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 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. For a practical look at the protection of plant breeders rights in South Africa, this blogger has previously discussed the recent High Court decision in Voor-Groenberg Nursery CC and Another v Colors Fruit South Africa (Pty) Ltd [2012].

Recently, it has been widely reported (see: here, here and here) that over 80 civil society organisations from the Southern African Development Cooperation (SADC) region and beyond have prepared a detailed submission to the SADC Secretariat calling for the rejection of the SADC Draft Protocol for the Protection of New Varieties of Plants. One of the key contentions raised by these civil society groups was that the Draft Protocol is modeled on the “one-size-fits-all” UPOV 1991. UPOV 1991 abolishes the farmers’ privilege in UPOV 1978 which allowed farmers to use the harvested material from plant varieties as propagating material but this privilege can be withdrawn at any time. Looking at Article 27 of the Draft Protocol, the farmer’s exception is limited in scope as it “only allows an exception for subsistence farmers.”

Furthermore, all countries acceding to UPOV 1991 were required to protect at least 15 plant genera and species for the first 10 years, whereas the draft protocol requires protection of all plant genera and species and does not provide for any transition period.

UPOV 1991 also introduces the concept of an essentially derived variety (EDV), which is expressly excluded from plant variety protection. This concept was intended to address the problem of new breeders that would modify an existing variety and seek to have such a variety protected under plant breeders rights. With the concept of EDV, any plant variety claimed to be new but whose essential characteristics or features are similar to existing plant varieties shall not be deemed to be new. The same concept of EDV can be found at Article 26(3) of the Draft Protocol.

Thus, the Draft Protocol, like UPOV 1991, is perceived as a move to strengthen the hands of the breeder to the detriment of the farmer by allowing greater privatisation of seeds and plant material.

The fundamental question which arises in this context is the role of IP in food security. The exceptions made for farmers are intended to be the last safety valve for the developing countries as well as a key balancing factor on the issue of food security. However, poor farmers under UPOV 1991 are required to buy seeds even for subsistence farming. The consequence is that farmers are now using low quality seeds for planting because they can no longer access the original seed. This has led to cases of low yield, famine and malnutrition all partially blamed on IP system.

In the early 1990s, plant breeding was a thriving industry involving not only by individuals but also multinationals like Monsanto, pharmaceutical companies like GlaxoSmithKline and even national parastatals like the Kenya Agricultural Research Institute (KARI). This period also saw the emergence of genetic use restriction technologies (GURTS) popularised by Monsanto. For instance, the one generational seed also know as ‘terminator seeds’ were seeds that were inserted with a gene that meant farmers could only plant the seeds once, thereafter it would only produce weeds.

This campaign to strengthen plant breeders rights and curb infringement by farmers, in the early 1990s culminated in the 1994 TRIPS Agreement of the WTO. Article 27 paragraph 3(b) expressly stipulates that all member states shall provide for the protection of plant varieties either by patent or by an effective sui generis system or a combination thereof. Sui generis in this context has been interpreted to mean either UPOV 78 or UPOV 91 or any other effective system.

Civil society organisations opposed to the draft SADC protocol argue that this flexibility in Article 27(3) of TRIPS has been removed without taking into account the different types and needs of farming systems within the SADC region. This blogger is persuaded by the argument by civil society and refers to TRIPS which makes it optional for WTO members to either opt for UPOV or a sui generis system for protection. This blogger argues that given the socio-economic differences among SADC member countries, a sui- generis mechanism would be better suited for plant variety protection within the 15 member states of SADC. The process of developing a sui generis system would allow for wider consultations between plant breeders and farmers with the aim of arriving at a mutually satisfactory balance between the various rights and interests involved.

Given the legally binding nature of protocols generally, this blogger argues that SADC member countries must seriously consider the submissions of the civil society before deciding on whether to adopt or reject the Protocol. Once the Draft Protocol is ratified by two thirds of the member states, it becomes a legally binding document committing all SADC Member States to the objectives and specific procedures stated within it.

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.