Sui Generis Systems:
Obligations and options for developing countries
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:

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:

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 Farmersí   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 peoplesí  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.

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.

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