AGRONOMYAGRONOMY

NTUNTU?

Warren H.J. KUO

Professor & Chair, Department of Agronomy, National Taiwan University

2006 International Conference on Biology-related Patents2006/09/28~29, Taipei, TAIWAN

900

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600

500

400

300

200

100

0

稻雜糧總計特用總計青果總計蔬菜總計觀賞總計

’33 ’40 ’56 ’61 ’70 ’75 ’88 ’97

riceUpland crop

Special Crop

FruitsVegetables

Ornamentals

Changes in Crop ProductionCr

oppi

ng a

crea

ge, t

Ha

20042375943

21916513

tHa

0

100,000

200,000

300,000

400,000

500,000

600,000

700,000

800,000

900,000

1,000,000

1982 1985 1988 1991 1994 1997 2000 2003

Export

I mport

International trade of seedsN

T

Dolla

rs

International trades of ornamentals

0

10,000

20,000

30,000

40,000

50,000

60,000

70,000

80,000

1990 1992 1994 1996 1998 2000 2002 2004 2006

Export

Import

US

D

olla

rshttp://www.phalaenopsis.idv.tw/hybrids/C/Chih%20Shang's%20Stripes%20X%20Plantation%20Polkadot/0003.JPG

History of IP protection on plant varieties

1988 Plant Seed Act

2004 Plant Variety and Seed Act

VegetablesFruitsOrnamentals

Cereals

To be extended to all plant all plant genera and species

0

100

200

300

400

500

600

1991 1993 1995 1997 1999 2001 2003 2005

Application numbers of PBR

Ap

plic

ati

on

num

bers

Valid177

Withdrawed 9

Pending125

Rejected 7

Expired 229

Nullified 2

15th ,Sept

Ornamentals

Orchid

550

Rice, 25th July

Vegetables

Valid PBR 177

Pending95 cv. of 9 ornamentals22 cv. of 9 vegatables 8 cv. of 5 fruits/tea

Pear 4 Poinsettia41

Melon f.15

Tea 2 Orchid31

Tomato f.10

Papaya 1 Gerbera13

Tubers 5

Jujube 1 Chrysanthemum 8 Legumes 4

Peach 1 Polyanthus 7 Cabbage f. 3

Litchi 1 others27

other 3

10 127 40

Application numbers of PBR

550

Ap

plic

ati

on

num

bers

PublicSector 8916%

PrivateSector 461 84%

National 395 72%

Foreigner

155 28%

Ornamentals

Vegetables

Fruits/Tea

277

254

19

0

5

10

15

20

25

30

35

40

45

50

PBRApplication numbers

Mean 12

Median 317876

74%

Ap

plic

ati

on

nu

mbers

Private Sector

cucumber f. public, 5%

cucumber f. private, 48%

cabbage f. public, 3%

cabbage f. private, 13%

tomato f. public, 6%

tomato f. private, 21%

other public, 4%

other private, 0%

12121

734

55

15

10

254Application numbers of Vegetables

Cucumber family

TomatoEggplantSweet Pepper

Cabbagefamily

Public 44Private 210

Others

Others

Foreigners 3%Nationals 97%

62

PVP in Taiwan: who is claiming their rights?Vegetables

Ap

plic

ati

on

nu

mbers

Tomato

Melon

Watermelon

CabbageFamily

PepperHot/sw

Cucumber

Pumpkin

All fruit/tea tree cultivars are of

nationals’ application

Application numbers of Ornamentals

Poinsettia, public, 2%

Poinsettia, private,20%

Moth orchid , public,0%

Moth orchid , private,34%

Others, public, 9%

Others, private, 35%

Poinsettia

Moth orchid/Doritaenopsis

Other ornamental plants

565

9595

24

275Public 29Private 246

Others

Foreigners 52%Nationals 48% 106

PVP in Taiwan: who is claiming their rights?Ornamentals

Ap

plic

ati

on

nu

mbers

An infringe case

http://www.sakataseed.co.jp/method/flower/gypsophila.jpg

http://www.fleuralia.com/eng/prod/esqueixoscos.htm

Gypsophila ‘Yukinko’

• Of Israeli origin• Farmers were licensed to grow• Right holder sued defendants for propagated without permission• Farmers’ privilege not accepted• Settlement reached

Plant Breeders in Taiwan

Rice MaizeMaize (fresh)Forage cropsCover cropsSweet potatoTea treesTimber treesFruit treesVegetablesOrnamentals

Public sector

Private sector Maize (fresh)VegetablesOrnamentals

Genetically Modified Plants1980~2006

Commercial Production: none

Risk assessment: Event Environ.

riskFood risk

Rice (phytase) testing no application

Rice (lactoferrin) testing no application

Potato (phytase) testing no application

Broccoli (anti-ageing) testing no application

Tomato (Virus resistance) testing no application

Papaya (Virus resistance) passed no application

Prospects of GM plants

• Domestic seed markets too small to justify investment of GM technology• No supports from private sector • Infrastructure of public sector not suit• Production cost of rice not to be effectively lowered by GM technology • Small farms predominate (1.22 ha), and contamination is inevitable

Are Taiwanese plant breeders in need of patent protection

?

The Plant Variety and Plant Seed Act (2004)

UPOV 1991 Convention

Similarities between PVP and Patent protectionDifferences between PVP and Patent protection

C1. Hybrid maize seed designated 33P66, representative seed of said hybrid 33P66 having been deposited under ATCC accession number PTA-1522.

C2. A maize plant, or its parts, produced by the seed of claim 1.

C8. A hybrid maize plant according to claim 2, wherein the genetic material of said plant contains one or more transgenes.

Maize hybrids —US patent 6,180,857

C9. A hybrid maize plant according to claim 2, wherein the genetic material of said plant contains one or more genes transferred by backcrossing.

Varieties which are essentially derived from the protected variety (EDV)

Similarities between PVP and Patent protection

C1. Hybrid maize seed designated 33P66, representative seed of said hybrid 33P66 having been deposited under ATCC accession number PTA-1522.

C2. A maize plant, or its parts, produced by the seed of claim 1.

C7. A maize plant…. capable of expressing all the morphological and physiological characteristics of hybrid maize plant 33P66, representative seed having been deposited under ATCC accession number.

C11. A maize plant, or its parts, having all the morphological and physiological characteristics of the plant of claim 2.

Varieties which are not clearly distinguishable

C11. A maize plant, or its parts, having all the morphological and physiological characteristics of the plant of claim 2.

C21. A hybrid maize plant according to claim 11, wherein the genetic material of said plant contains one or more transgenes.

C25. A hybrid maize plant according to claim 11, wherein the genetic material of said plant contains one or more genes transferred by backcrossing.

(Essentially) Derived Variety

22. A maize plant, …one ancestor…is the maize plant…of claim 21, said maize plant capable of expressing a combination of at least two 33P66 traits … and well suited to the Central Corn Belt, Western Corn Belt and Eastern Corn Belt…. 26. A maize plant, …one ancestor…is

the maize plant…of claim 25, …. varieties whose production requires the repeated use of the protected variety

Differences between PVP and Patent protection

Farmers’ privilege

each Contracting Party may … restrict the breeder's right … to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety ….

Upov 1991Article 15 ： Exceptions to the Breeder's Right

[Optional exception]

DIRECTIVE 98/44/EC

Article 111. By way of derogation from Articles 8 and 9, the sale or

other form of commercialisation of plant propagating material to a farmer by the holder of the patent or with his consent for agricultural use implies authorisation for the farmer to use the product of his harvest for propagation or multiplication by him on his own farm, the extent and conditions of this derogation corresponding to those under Article 14 of Regulation (EC) No 2100/94.

Differences between PVP and Patent protection

Farmers’ privilege

Differences between PVP and Patent protection

Farmers’ privilege

The Seed Availability and Competition Act 2004, US [HR4693]

http://www.centerforfoodsafety.org/pubs/CFSMOnsantovsFarmerReport1.13.05.pdf

Number of Farmers and Businesses Sued Per State

Differences between PVP and Patent protection

Breeders’ exemption

The breeder's right shall not extend to …..(iii) acts done for the purpose of breeding other varieties, and, except where the provisions of Article 14(5) apply, acts referred to in Article 14(1) to Article 14(4) in respect of such other varieties.

Upov 1991Article 15 ： Exceptions to the Breeder's Right

[Compulsory exception]

Differences between PVP and Patent protection

Breeders’ exemption

Freedom to Operate forPublic breeders

•AVRDC: The World Vegetable Center, Taiwan

•CIMMYT: International Maize and Wheat Improvement Center, Mexico

•CIP: International Potato Center, Peru

•IRRI: International Rice Research Institute, Philippines

……….

Differences between PVP and Patent protection

Breeders’ exemption

PIPRA members

•Cornell University •Iowa State University •Kansas State University •Michigan State University •N. Carolina State University •Ohio State University •Oregon State University •Purdue University •Rutgers University •University of Arizona •University of Arkansas…………

•University of California, Berkeley •University of California, Davis •University of California, Riverside •University of Florida •University of Georgia •University of Kentucky •University of Idaho •University of Missouri-Columbia •University of Tennessee •University of Wisconsin WARF •Washington State University

PIPRA members

Differences between PVP and Patent protection

Breeders’ exemption

anything under the sun that is made by man could be patented

Due parts of

Differences between PVP and Patent protection

Breeders’ exemption

8203011213410

820911213410

87911213410

Differences between PVP and Patent protection

Breeders’ exemption

1

2

3 4

5

6

7

8

9999

910

11

5794060139010

EDV

Free to use

PVP

549360120430

PVP PVP

PVP

PVP

PVP

820911213410

57911213410BT

57911213410

1

2

3 4

5

6

7

8

9999

910

11

Differences between PVP and Patent protection

Breeders’ exemption

Patent

〤

Patented

Differences between PVP and Patent protection

GM cv. Am

Company X Company Y

cv. B

Back cross

Gene m

cv. Bm

〤Bm PVP

Bm

A drawback in PVP

Patent

Plant Am

The protection of plant variety rights shall extend to the following dependent varieties:

(i) varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety,

(iv) varieties which novel-trait(s) are derived from the protected variety, where the protected variety is the initial variety bred to possess the novel-trait(s).

The novel-trait shall be deemed to be transgenic trait, mutated trait of non-natural origin, or trait transgressed from wild species.

Novel-trait Derived VarietyEssentially Derived Variety

cv. A

cv. Am

cv. Bm

cv. A mn cv. Fm cv. Bmn

cv. Km

cv. Sn

Novel Trait DerivedGenetic TransformationBack Cross

Essentially Derived

A protected

B notprotected

cv. B

In Conclusion, in TAIWAN:

Reasons not to protect by Patent

PVP is sufficient for traditional breedersIntrinsic drawback of over protection for plantsProspects of producing GM plants are smallEffective PVP for GM plants is possible

PVP is effective in promoting breeding activitieseffective in facilitating technology transfer a valid tool to deal with infringing case

THE ENDwarren h.j. kuo

seed laboratory

department of agronomy

national taiwan university 237