Plant Varieties

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9
Sui generis protection for
farmers’ varieties
Carlos M. Correa
Introduction
Farmers’ varieties are a vital source of diversity in plant breeding. Much has
been written about the development of sui generis regimes for the protec-
tion of plant varieties as an alternative to the dominant model of protection
enshrined in the International Convention for the Protection of New Varie-
ties of Plants (UPOV Convention).1 This chapter briefly discusses, first, the
evolution of intellectual property protection in the area of plant varieties and,
second, some of the fears that have been voiced over the years concerning
the implications of plant variety protection (PVP) and plant patents, as well
as some of the expectations about the benefits that could accrue to farmers
through the development of sui generis forms of protection that cover farm-
ers’ varieties. Against this backdrop, the chapter considers the main elements
that may be present in sui generis regimes that depart from the model of the
UPOV Convention, as illustrated by the sui generis systems adopted in India,
Thailand and Malaysia as well as by the model legislation approved by the
Organization of African Unity (OAU) in 2000. The requirements and other
conditions of protection under these systems are examined, particularly as they
apply to farmers’ varieties that do not comply with the uniformity or stability
standards.
The main argument presented in this chapter is that although the design
of sui generis regimes for the protection of plant varieties that do not apply
the UPOV model has been on the agenda of many developing countries,
nongovernmental organizations (NGOs) and academics for at least 20 years,
little progress has been made in finding solutions to the complex conceptual
and technical problems that are involved. Despite the experiences in a few
developing countries, there is little evidence about what such regimes have
achieved. Indeed, reliable models that can be followed do not seem to exist
yet, and considerable work is still necessary to design a national regime that
effectively addresses the needs of farming communities in a particular national
context.
156 Carlos M. Correa

Evolution of PVP systems
Until the emergence of professional breeding at the beginning of the twenti-
eth century, the improvement, production and exchange of seeds was entirely
dependent on farmers’ practices. When breeding became a business activity of
its own, breeders organized themselves to obtain some protection on the new
plant varieties that they were creating.2 Farmers’ traditional practices of saving,
replanting, exchanging or selling seed from their own harvest made it difficult
to recoup investments in breeding. Both in the United States and Europe, early
attempts were made to extend patent protection to plant varieties, but this pos-
sibility raised doubts – namely because of the incremental type of innovation
that characterizes plant breeding – and fears began to develop regarding pos-
sible distortions of the patent system (Dutfield, 2003, 186). The Lisbon Diplo-
matic Conference on the Revision of the Paris Convention, which was held in
1958, considered the possible allowance of patents in this field, but no action
was taken since the general view was that a ‘special law’ was needed to protect
new plant varieties (Dhar, 2002, 4).
The legislative movement towards a special form of protection for plants was
pioneered by the United States. In 1930, the Plant Patents Act was passed, which
allowed for the protection of asexually reproduced varieties (except tubers).3 In
Europe, efforts were made to develop a legal system that was adapted to the char-
acteristics of innovation in plant varieties.The first legislation on PVP was intro-
duced in the Netherlands in 1942, followed by Germany in 1953 (Van Overwalle,
1999, 161). The Association Internationale pour la Protection de la Propriété
Intellectuelle and the Association Internationale des Sélectionneurs pour la Pro-
tection de Obentions Végétales (ASSINSEL) took the lead in the search for a
specific legal means of protection. ASSINSEL requested the French government
to organize what became the International Conference for the Protection of
New Varieties of Plants, which was eventually convened in May 1957 in Paris.4
This conference laid down the basic principles of plant breeders’ rights that were
later reflected in the 1961 UPOV Convention (Dutfield, 2003, 186–87).
Although the model of protection for breeders’ rights that is enshrined in
the UPOV Convention and in the UPOV-based PVP laws has been influenced
by patent law, it has also received a significant amount of influence from seed
certification legislation.5 The incorporation of concepts derived from such leg-
islation (notably the uniformity and stability standards) has led to important
differences between PVP and patent law.
By the 1960s, three European countries had introduced breeders’ rights
laws. Eight more nations followed suit in the 1970s. Also in 1970, the United
States passed the Plant Variety Protection Act.6 Thereafter, plants could be
protected in that country both by the 1930 Plant Patents Act and the 1970
Plant Varieties Protection Act – a possibility that was, as a matter of principle,
excluded under the UPOV Convention. This situation prevented the United
States from acceding to the UPOV Convention until the ban on the accu-
mulation of protections was lifted by the revision of the convention in 1978
for countries that were already practicing it (Article 37). The ban was finally
Sui generis protection for farmers’ varieties 157

eliminated entirely by another revision to the convention in 1991. As a result,
under 1991 UPOV Convention, it is possible to accumulate patent and plant
variety protection.7
While special plant patents, based on the Plant Patent Act, have been
available in the United States since 1930 and breeders’ rights have been
in existence since 1970, the landmark decision by the US Supreme Court
in In re Chakrabarty opened the way for the issuance of utility patents for
plants.8 The first patent to cover plants or segments thereof was issued by the
US Patent and Trademark Office in Ex parte Hibberd.9 This patent covered
genetically engineered maize with high levels of tryptophan. Thereafter, a
large number of patents were granted covering any of the following subject
matter:
• DNA sequences that code for a certain protein

• isolated or purified proteins
• plasmids and transformation vectors containing a gene sequence
• seeds
• plant cells and plants
• plant varieties, including parent lines10
• hybrids
• processes to genetically modify plants
• processes to obtain hybrids.11
European countries followed a narrower approach than the United States

in regard to the patentability of plants. The 1973 Convention on the Grant
of European Patents (European Patent Convention) excluded plant varieties
from patent protection as well as the essentially biological processes for their
production (Article 53(b)).12 These differences became apparent during the
negotiation of the Agreement on Trade-Related Aspects of Intellectual Prop-
erty Rights (TRIPS Agreement).13 While the United States argued for patents
on plants, the European Economic Community proposed that the agreement
maintain the restrictive approach of the European Patent Convention.The lack
of consensus on the matter led to a compromise that left open considerable
options for the members of the World Trade Organization (WTO). Article
27.3(b) of the TRIPS Agreement provides that members may exclude from
patentability
plants and animals other than microorganisms, 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. This provision shall be reviewed
four years after the entry into force of the WTO Agreement.
Consistent with this provision, many developing countries excluded plant vari-
eties from patentability. Some also excluded DNA sequences and amino acid

sequences that corresponded to the peptides or proteins produced by naturally
occurring organisms (Boettiger et al., 2004, 1093).
In accordance with Article 27.3(b), all WTO members are bound to protect
plant varieties, but there is flexibility in regard to the form of protection.14 This
flexibility was, as mentioned earlier, a reflection of the lack of consensus among
the industrialized countries rather than a North-South divide. The precarious
nature of the agreement reached on Article 27.3(b) is indicated by the fact that
it was the only provision in the entire TRIPS Agreement that was subject to an
early revision – 4 years after the agreement’s entry into force. This period was
even shorter than the transitional period contemplated for developing countries
and economies in transition (Article 65). While the review of Article 27.3(b)
started in 1999, so far no outcome has been achieved and little interest has been
shown by developed country members to make any progress on the matter.
Despite the fact that the UPOV Convention is not mentioned in the TRIPS
Agreement, a UPOV-based breeders’ rights regime may constitute ‘an effective
sui-generis system.’15 More than 70 countries that are already members of the
International Union for the Protection of New Varieties of Plants (UPOV),
as well as others that generally follow the UPOV Convention model with-
out being members of the union,16 intend to comply in this way with the
TRIPS Agreement. However, the ability to grant patents,17 combine patents
with breeders’ rights or develop other types of sui generis regimes for the protec-
tion of plant varieties, provided only that such regimes are ‘effective,’ has created
considerable space for national legislations to design the modalities of protec-
tion in this area. In fact, the introduction of the concept of sui generis regimes in
the TRIPS Agreement has triggered the interest of many developing countries,
NGOs and academia in finding new modalities of protection for plant varieties
specifically adapted to the needs of developing countries.
The latitude of Article 27.3(b) is such that the scope, requirements and rights
conferred under a sui generis regime, as discussed later in this chapter, do not
need to conform to those prescribed under patent law or under the UPOV
Convention’s model of protection. Moreover, in some of the most recent leg-
islation on PVP, it is apparent that other concepts have begun to have an influ-
ence, notably the notion of farmers’ rights as well as the principles of benefit
sharing contained in the Convention on Biological Diversity (CBD)18 and in
the International Treaty on Plant Genetic Resources for Food and Agriculture
(ITPGRFA) (Correa, 2000).19 The introduction of these concepts has been
decisive in modelling new sui generis systems on the matter in some countries,
as elaborated later in this chapter.
As a result, there is a range of sui generis modalities of PVP, depending on the
type of requirements imposed and the type of rights conferred. Such modalities
include one or more of the following elements:
• new or relaxed requirements of protection that extend protection to varie-

ties that do not currently conform with the conventional requirements of
PVP as stated by the UPOV Convention;

• the expansion of rights conferred to farmers with regard to the use of saved
seeds;
• the addition of benefit-sharing provisions, with or without the registration
of plant varieties.
However, it is difficult to define a typology of the existing sui generis regimes

since many of them present a combination of these various elements. For
instance, the Indian law, which is discussed in greater detail later in this chapter,
extends PVP to some varieties that do not conform with the conventional
requirements of PVP, expands the rights conferred to farmers under PVP and
also includes benefit-sharing provisions.
Concerns about PVP

PVP that is based on the model of the UPOV Convention has raised two
types of fears. On the one hand, some consider that PVP only benefits com-
mercial breeders by creating private ownership rights to biodiversity, to the
detriment of farmers/breeders and traditional communities that have ensured
the conservation of plant biodiversity and varietal improvement for centu-
ries. The recognition of PVP would only reward those at the very end of
a more complex system of innovation and seed production and eventually
limit farmers’ and communities’ rights to biodiversity and even reduce their
space to innovate. A number of disadvantages for developing countries that
choose to use UPOV-based PVP models have been identified, including the
following:
• PVP encourages monopolies in genetic materials for specific traits;

• the plant variety holder may produce less seed than the demand to increase
prices and profits;
• PVP inhibits the free exchange of materials;
• PVP increases the prices of seeds, which the poor farmer may not be able
to afford;
• PVP will essentially benefit commercial breeders and not farmers or tradi-
tional communities;
• national breeders and local seed companies will be bought out by foreign
companies;
• companies in the North will get full commercial control over the com-
munities’ germplasm and knowledge;
• the criteria for protection will exacerbate the erosion of biodiversity, lead-
ing to harvest loss and further food insecurity;
• PVP will reduce information and germplasm flows and act as a disincentive
to research;
• PVP under the UPOV Convention conflicts with the CBD benefit-sharing
principles (GAIA/GRAIN, 1998; Chawla, 2003).20

One of the most often mentioned fears is that the high level of uniform-
ity required by PVP does not provide an agronomic advantage, but rather
may erode the diversity in plant germplasm and negatively affect agricultural
development and food security in the long run. It should be noted, however,
that while greater uniformity may indeed be induced by the commercial
breeders’ need to comply with such a requirement, it is often the result of a
demand by farmers for yield and quality maximization, the desire by urban
consumers and processing industries for quality and a need to comply with
seed certification legislation in order to obtain an authorization to commer-
cialize seeds.
From a very different perspective, doubts have been expressed about the
effectiveness of PVP as a method of promoting investment in plant improve-
ment. For instance, a study on the application of PVP in the United States
found that
whereas plant variety protection was initially designed as the primary (or
even exclusive) form of intellectual property protection for seed-grown
plants, the coming of plant biotechnology, and the dawning acceptance of
utility patents for plants, has relegated plant variety protection to a second-
ary role. Modest statutory amendments to the PVPA have shown no real
promise of lifting the PVPA up from this secondary status. Second, our
empirical assessment of licensing and enforcement activities concerning
U.S. plant variety protection certificates confirms that the PVPA regime as
presently constituted plays only a marginal role in stimulating plant breed-
ing research in the United States. Our assessment strongly suggests that
the PVPA does not provide patent-like ex ante innovation and investment
incentives and that the PVPA has not generated substantial ex post licens-
ing and enforcement activity. Instead, its role in the United States appears
to be very modest: it may serve as a marketing tool; it may provide some
non-propagation licensing rights akin to contractual shrink-wrap rights,
enforceable against those who deal in ‘saved’ seeds; and it may provide
a superior alternative to trade secret protection – for example, for seeds
whose secret parent lines might otherwise be revealed through reverse
engineering.
(Kesan and Janis, 2002, pp. 776–777)
Other studies have also indicated a modest impact of PVP on private invest-
ments in research and development and on the number of varieties released as
well as a tendency to focus on high value/low volume crops. In general, the
literature assessing the impact of PVPs is largely inconclusive, particularly about
the effects of such protection in developing countries.21 However, other studies
have reported positive outcomes from the implementation of the UPOV Con-
vention in several countries, such as a series of studies conducted by the UPOV
Secretariat (see Box 9.1).
Box 9.1 Impact of the UPOV Convention in selected

developing countries
Argentina
Argentina introduced a PVP system in 1973 and acceded to the UPOV
Convention in 1994. The following effects have been noted:
• The average annual number of titles granted to domestic breeders

was 26 in 1982–91, which more than doubled to 70 in 1992–2001
(267 percent).
• The average annual number of titles granted to foreign breeders
was 17 in 1984–93, which more than trebled to 62 in 1994–2003
(355 percent).
• The improved performance of new, protected varieties is indicated,
for example, in crops such as wheat and soybean, where the demand
for new, protected varieties is shown by their increased proportion of
the certified seed area, which rose from 18 percent to 82 percent and
from 25 percent to 94 percent, respectively, since the introduction of
the UPOV-based PVP law and accession to the UPOV Convention.
• An increase in the number of domestic breeding entities was seen,
for example, in soybean and wheat, most of which occurred in the
private sector.
• An increase of horizontal cooperation in the seed industry was identi-
fied, involving foreign seed companies and agreements for technology
transfer between national research institutes and breeding entities with
other national companies (technological relationship agreements), and
this cooperation has resulted in the more rapid movement of germplasm.
China
The PVP system became operational in 1999, and China also became a
member of the UPOV Convention in 1999. China’s PVP systems have
only been in operation for 5 years and for only a limited number of
genera and species, and it is not yet possible to evaluate their full impact.
Nevertheless, the following effects have been observed:
• A rapid uptake by farmers of new, protected varieties such as maize

and wheat has been seen, for example, in the province of Henan.
• New, protected varieties have been introduced for major staple crops
(such as rice, maize and wheat), horticultural crops (such as rose, Chi-
nese cabbage and pear), including traditional flowers (such as peony,
magnolia and camellia), and forest trees (such as poplar).
• New, foreign varieties, particularly ornamental varieties, have been

recently introduced.
• Commercial breeding activities have been stimulated in domes-
tic public research institutes and domestic seed companies, with
an increase in the number of breeders (e.g. of maize and wheat in
Henan Province) linked to an increased number of PVP applications.
• An increase in the income of breeders has been seen, including
public research institutions and agricultural universities, and further
investment in plant breeding has been encouraged.
Kenya
In Kenya, the PVP scheme started to operate in 1997, and the country
acceded to the 1978 Act of the UPOV Convention in 1999. Kenya grants
plant breeders’ rights for all plant genera and species other than algae and
bacteria. The following impacts have been observed:
• Significantly higher number of varieties of various agricultural crops

were developed and released in the six-year period following the
introduction of PVP (1997–2003), compared to the previous six-year
period (1990–96), particularly for maize.
• There has been an increased introduction of foreign varieties, espe-
cially in the horticultural sector, which contributes to the diversifi-
cation of the horticultural sector (e.g. the emergence of the flower
industry) and supports the competitiveness of Kenyan products in
global markets (cut flowers, vegetables and industrial crops).
• There has been an increased introduction of foreign germplasm in
the form of new, protected varieties (especially of horticultural crops),
which have been used by Kenyan breeders for further breeding.
• There has been an increase in the number of Kenyan-bred varieties of
agricultural crops with improved performance (e.g. in yield, pest and
disease tolerance, nutritional qualities, early maturity, and tolerance
to abiotic stresses) for local farmers, including subsistence farmers.
PVP titles for many Kenyan-bred varieties are in the hands of public
institutions, and local farmers can use the propagating material of the
new, protected varieties under privileged conditions (e.g. subsistence
farmers have been permitted to exchange seed among themselves).
• Public/private partnerships for plant breeding have been facilitated,
including partnerships between international research institutes and Ken-
yan seed companies, and there has also been an emergence of new types
of breeders (university researchers, private farmer-breeders, and so on).
Source: Based on International Union for the Protection of New Varieties of Plants
(2005).

In sum, the adoption of PVP generates fairly divergent views ranging from
the perception of a strong influence on seed production and use to opinions
that minimize the possible impact on the generation of new varieties. Those
aligning with the first approach generally advocate either non-intellectual
property right (IPR) protection or the development of sui generis regimes. For
those sharing the second view, the solution would be provided by the applica-
tion of utility patents.The following sections focus on some of the expectations
raised by the adoption and the characteristics of sui generis regimes.
Expectations about sui generis regimes

A significant number of proposals, with a varying degree of detail, have been
made for the protection of plant varieties under sui generis regimes that are not
based on the UPOV model. The general aim of these proposals is to reward or
otherwise protect the interests of commercial breeders as well as of farmers/com-
munities that are contributing to the improvement of plant varieties and, at the
same time, to promote the conservation and sustainable use of plant biodiversity.
The proposals are generally based on one or more of the following considerations.
Equity
It is expected that a sui generis regime would allow for the recognition of the
innovations made by farmers/communities, including compensation for a third
party’s use of farmers’ varieties for commercial purposes. Such recognition
would arguably bring equity into the relations between farmers and commer-
cial breeders, which have been marked so far by a significant asymmetry.
Conservation
A common rationale for a sui generis regime of protection is the assumption that
it may contribute to the conservation of farmers’ varieties and plant biodiversity
in the fields. The legal recognition of and compensation for farmers’ contribu-
tions would encourage them to preserve their knowledge and practices, which
are essential for a sustainable agriculture.Thus, the argument has been made that
vesting legally recognized ownership of knowledge in communities through

sui generis IPRs will raise the profile of that knowledge and encourage
respect for it both inside and outside the knowledge holding communities.
This will make the learning and development of such knowledge a more
attractive prospect for the younger members of such communities, thus
perpetuating its existence.
The possibility of economic returns for the use of that knowledge by
third parties acts as a further incentive for community members to respect
their knowledge and continue to engage in practices in which that knowl-
edge is used and generated.
(Crucible Group II, 2001, 68–69)

Preventing misappropriation
Another important justification for a sui generis regime is that it may erect a
barrier against the use or appropriation by third parties of innovations made by
farmers/communities without their consent and without benefit sharing. This
rationale is explicitly or implicitly present in most proposals for sui generis pro-
tection and is often based on the assumption that such regimes may counterbal-
ance breeders’ rights (Genetic Resources Policy Initiative, 2006, 19).
Dissemination of knowledge
The existence of a sui generis regime of protection would encourage the dis-
semination of innovations by farmers/communities. In line with this argument,
it has been observed that
indigenous and local knowledge holders will be more willing to disclose

otherwise secret knowledge once they know sui generis laws can give
then control over how their knowledge gets used. In this way, IP laws
encourage the disclosure, use and proliferation of knowledge that might
otherwise be lost.
(Crucible Group II, 2001, 69)
Farmers’ freedom to save and sell seeds

Occasionally, the development of a sui generis regime has been seen as being
instrumental in allowing farmers to continue to use their traditional varieties
and to sell the seeds of these varieties (Genetic Resources Policy Initiative,
2006, 10).22 It has also been regarded as being necessary to preserve farmers’
freedom to utilize, save or even sell varieties protected by third parties that have
been derived from their own varieties.
Incentive
Finally, a sui generis regime is often deemed to be an incentive for farmers/
communities to produce new varieties and thereby widen the sources for fur-
ther variation as well as to encourage them to share them with other farmers/
communities or conventional breeders. In many cases, the proposals for the
creation of sui generis regimes have not made their objectives explicit, and it is
difficult to ascertain what the rationale for the protection is. In addition, it is
not always clear whether the design of the proposed regimes is such that they
could be successful in reaching what seems to be their intended objective.
As noted by the Crucible Group II, merely using a law to make something
into property that was previously part of the public domain ‘does not sud-
denly save it, conserve it, make people respect it or want to use it . . . Fenc-
ing off their knowledge does nothing to protect it from being even more

eroded, undermined, or ignored or at risk of being lost’ (Crucible Group II,
2001). Achieving some of the possible objectives of the sui generis regimes may
not require any new or additional legislation, whereas other objectives could
require amendments to seed legislation rather than the establishment of a new
IPR (Genetic Resources Policy Initiative, 2006, 10).23 Some of the possible
disadvantages of a sui generis regime that assigns property rights are indicated
in Box 9.2.
One of the basic issues to be addressed under a sui generis regime is whether it
is necessary or convenient and whether the potential benefits brought about by
property rights over farmers’ varieties would offset the potential costs derived
from the establishment of private rights. There is a great deal of controversy
over this issue. Many proposals have been made to provide a sui generis protec-
tion that would cover new commercial varieties as well as farmers’ varieties,
and some national laws have already implemented this dual approach. There is
also a great deal of opposition to the belief that conferring private rights on
farmers’ varieties would be beneficial to the farmers/communities. Thus, it has
been argued that
where communities are concerned and where the innovation is the result
of a collective process and collective action, assigning property rights to
an individual or corporate holder may well lead to reduced availability
of germplasm. It may also have the effect of further marginalizing those
plant genetic resources and knowledge processes that are not covered by
Box 9.2 Possible disadvantages of a sui generis regime
• IPRs are meant to promote the invention of new things, such as

plants. Protecting existing plants is not in line with this basic idea.
• IPRs could be a disincentive to the exchange of genetic resources
between farmers and could thus lead to genetic erosion.
• With totally exclusive IPRs, farmers would probably tend to isolate
commercially successful varieties, which could lead to the erosion of
diversity.
• Since only the commercially attractive varieties are protected, it would
not be not sufficient to support the maintenance of all diversity.
• The allocation of the rights could lead to intercommunity distress
and social conflict because often the ownership of these rights is not
clear.
• Transaction costs could be high.
Source: Genetic Resources Policy Initiative (2006, 19).


the property rights regime. Indeed, the mere existence of such rights may
still not offer sufficient incentives to develop markets that adequately cap-
ture the value of biodiversity, again, because of the public goods nature
of many of the benefits. In particular, assigning exclusive property rights
to germplasm might reduce the ability of poorer farmers to access seed
germplasm, given that often less informed, less educated, and marginal-
ized rural populations are at a disadvantage in claiming ownership . . . The
granting of exclusive intellectual property rights over germplasm might
reduce access to plant genetic material to everyone, including poorer
farmers.Thus, even the seemingly positive benefits of granting intellectual
property rights to local communities may lead to unintended negative
consequences.
(Eyzaguirre and Dennis, 2007, 1495)
An aspect that is often disregarded in the proposals for sui generis regimes
that encompass farmers’ varieties is that, as noted in the preceding quotation,
individual farmers or communities may face a significant burden in com-
plying with the formalities for acquiring rights such as registration because
of both the complexity and possible cost of the procedures.24 Most impor-
tantly, enforcing any conferred rights would require considerable effort and
resources. Most farmer-bred varieties are unlikely to capture a significant
share in the commercial seed market, and when a variety occasionally does
achieve such a share, it may be very difficult for the rights holder to monitor
whether an infringement has occurred (Salazar, Louwaars and Visser, 2007,
1523). Moreover, if an infringement has been identified, bringing a legal
action in court would generally be very costly and beyond the reach of farm-
ers/communities. The outcome of litigation may also be uncertain, especially
when more than one farmer or community claims ownership of a particular
plant variety.
Most importantly, all of these considerations probably underestimate the
fact that many communities might not accept the concept of property rights
over germplasm and might not wish to exercise community rights against their
neighbouring communities. Assigning ownership for financial or other eco-
nomic returns may run against farmers’ spirit of free exchange. These cultural
motives may prevent the widespread application of new sui generis regimes more
than the legal problems emerging from any attempt to bring farmers’ varieties
under current IPR systems (Salazar et al., 2007, 1523).
Even if rights holders were willing and able to exercise the conferred rights,
a further uncertainty is the state’s capacity to implement sui generis legislation,
especially to assess whether a particular variety meets the requirements of eligi-
bility for protection. As mentioned later in this chapter, administrative authori-
ties must establish whether a variety for which protection is sought is novel,
distinct, uniform and/or stable, or at least identifiable, depending on the national
law. This assessment requires technical competence, which is missing or insuf-
ficient in many developing countries, particularly if the legislation applies to

a broad range of crops.25 Countries adhering to the UPOV Convention may
rely on the technical assistance provided by or through its Secretariat. There is
no organization playing a similar role for those countries opting for a sui generis
regime.
Whatever the expectations are about the goals that sui generis regimes
may achieve, they cannot be empirically confirmed or dismissed so far, since
only a few countries have introduced such regimes and they have only done
so in the recent past. As noted by Pablo Eyzaguirre and Evan Dennis (2007,
1495), the current debates on the feasibility and benefits of establishing
intellectual property protection in this area ‘are often stymied or sterile due
to the lack of empirical evidence and experiences of local communities and
indigenous groups with established rights to local biological and biocultural
resources.’
Scope and conditions of protection under

sui generis regimes
A sui generis intellectual property regime is a set of rules tailored to the par-
ticular characteristics of the subject matter that it is intended to protect. The
specificity of a sui generis regime is determined by the application of different
requirements to obtain protection, including the subject matter that is being
protected (e.g. commercial varieties and/or farmers’ varieties); the scope of the
rights that are conferred; the conditions that are imposed on the applicants or
rights holders (e.g. disclosure of the source of the material); and the recognition
of farmers’ rights as defined in the ITPGRFA.26
In the literature, sui generis regimes for plant varieties are often deemed to
be those that differ from the model established by the UPOV Convention,
although, as noted earlier, the latter may also be regarded as a sui generis system,
given its significant differences with the patent regime. In the next sections,
some of the special features of sui generis systems for plant varieties that diverge
from the UPOV model are examined.
Coverage
While PVP focuses on new plant varieties, sui generis regimes may cover other
categories of varieties that are not necessarily novel or that do not comply
with one or more of the requirements under the UPOV Convention. For
instance, the Indian Protection of Plant Varieties and Farmers’ Rights Act
(PPVFR Act), which was adopted in 2001, applies to: (1) new plant varie-
ties; (2) extant (domestic and existing) varieties; and (3) farmers’ varieties.27
Under the PPVFR Act, farmers’ varieties are a subset of extant varieties.28 They
include varieties that have ‘been traditionally cultivated and evolved by the
farmers in their fields’ and those that are a ‘wild relative or landrace of a variety
about which the farmers possess the common knowledge’ (Article 2(1)). Thai-
land also adopted a sui generis regime in 1999. The Plant Varieties Protection

Act (PVP Act) applies to new and local varieties as well as to local domestic and
wild varieties with a differentiated regime, as discussed later in this chapter.29 In
accordance with this Act:
• A ‘local domestic plant variety’ means ‘a plant variety which exists only in
a particular locality within the Kingdom and has never been registered as a
new plant variety and which is registered as a local domestic plant variety
under this Act.’
• A ‘wild plant variety’ means ‘a plant variety which currently exists or used
to exist in the natural habitat and has not been commonly cultivated.’
• A ‘general domestic plant variety’ means ‘a plant variety originating or
existing in the country and commonly exploited and shall include a plant
variety which is not a new plant variety, a local domestic plant variety or a
wild plant variety’ (section 3).
In Malaysia, new commercial and ‘traditional’ varieties are covered by the legis-
lation adopted in 2004 (Protection of New Plant Varieties Act 2004),30 but the
law incorporates the concept of ‘plant variety’ found under legislation mod-
elled in accordance with the UPOV Convention.
Protection requirements
A new plant variety may be protected under the PVP laws that follow the
UPOV Convention model if it meets the requirements of novelty, distinct-
ness, uniformity and stability (NDUS). These requirements were essentially
transposed to PVP regimes from the early seed certification laws enacted in
Europe. They allowed for the differentiation of the plant protection regime
from patent protection, which was generally deemed to be inappropriate for
plant varieties at the time that PVP was first introduced.31 Sui generis systems
may not apply one or more of the NDUS requirements. For instance, the
Indian PPVFR Act allows for the registration of extant and farmers’ varieties
that are not novel, but it requires that they conform to the distinctness, uni-
formity and stability (DUS) requirements (Article 15(2)). Dropping the nov-
elty requirement (which is essential under PVP legislation) may significantly
expand the range of varieties eligible for protection since those varieties that
have been offered for sale or commercialized at any time before an applica-
tion for protection is filed are eligible for protection.32 The Thai PVP Act does
apply the NDUS requirements (except for local domestic plant varieties that
need not comply with the novelty requirement), but with a modified distinct-
ness criterion.33
Section 14.2 of the Malaysian Protection of New Plant Varieties Act 2004
provides that plant varieties bred or discovered and developed by a farmer,
local community or indigenous peoples are protectable if they are new, dis-
tinct and identifiable. While only ‘new’ varieties may be protected, this pro-
vision introduces a significant departure from the NDUS standards since

uniformity and stability are not required.34 This criterion is easier to apply to
asexually reproducing crops that have built-in uniformity and stability than to
other crops.35
The African Model Law for the Protection of the Rights of Local Com-
munities, Farmers and Breeders and for the Regulation of Access to Biologi-
cal Resources (OAU Model Law), which was approved by the OAU in 2000,
also proposes to grant protection to varieties that may be identified without
relying on the NDUS requirements.36 Article 25(2) of the OAU Model Law
states that
a variety with specific attributes identified by a community shall be granted

intellectual protection through a variety certificate which does not have
to meet the criteria of distinction, uniformity and stability. This variety
certificate entitles the community to have the exclusive rights to multiply,
cultivate, use or sell the variety, or to license its use without prejudice to
the Farmers’ Rights set out in this law.
Hence, the OAU Model Law seems to replace the NDUS requirements
by the following concept: ‘specific attributes identified by a community.’
It is unclear, however, which attributes would be considered and how they
would be determined. The absence of general criteria to establish eligibility
for protection might lead to significant uncertainty and competing claims
about ownership.
Farmers’ varieties generally are composed of a number of different genotypes
and are not subjected to a process of selection to increase uniformity since uni-
formity would pose a high risk to small farmers (Salazar et al., 2007, 1523).37
Different types within one farmer’s variety may develop in order to respond to
particular growing conditions or may tend to predominate as a result of bio-
logical or abiotic stresses (ibid.).The lower degree of uniformity, in turn, means
that new farmers’ varieties are less stable over generations than other varieties
that meet the NDUS requirements.38
Views differ about the extent to which the uniformity and stability stand-
ards may be left out. One view is that their absence may become very prob-
lematic since different communities may make multiple claims over the same
variety, especially for crops that outbreed. Another view is that the uniformity
standard may be compromised in protecting farmers’ varieties but that the sta-
bility requirement should definitely be preserved (Genetic Resources Policy
Initiative, 2006, 11). According to still another opinion, an even more flexible
approach is possible since the role played by the DUS requirements under
intellectual property protection is not the same as it is under seed certifica-
tion laws. These issues were discussed extensively at a meeting entitled ‘Explor-
ing Legal Definitions of Farmers’ Varieties in Strategies to Promote Farmers’
Rights,’ sponsored by the Genetic Resources Policy Initiative (GRPI) in Hanoi
and held 26–28 October 2006. Participants at the GRPI meeting in Hanoi
concluded that the distinctness standard (or the ability to identify) was the most

important condition for a sui generis protection of farmers’ varieties39 and that
the two other requirements could be lowered:
The group felt that the standards of uniformity set out in the UPOV
guidelines could be loosened to take into account the special nature of
farmers’ varieties (particularly with respect to out-breeders). Alternative
standards from those set out in the guidelines created by UPOV could be
developed . . . Stability is not so important as a condition for intellectual
property protection . . . [t]he overseeing authority can always retract pro-
tections when a variety shifts as a consequence of instability . . . It could be
argued that stability, for example, is an important criterion for the purposes
of advancing the public protection policy goal of a seed law. However, it is
not so relevant when one is discussing the conditions under which the state
may grant a form of monopoly over the use of that same material.
(Genetic Resources Policy Initiative, 2006, 20–21)
In fact, there seems to be a good argument for allowing the relaxation of the
uniformity and stability requirements, to the extent that it would not affect
the identification of the subject matter of protection. The strict application
of such requirements may lead to the exclusion of farmers’ varieties from the
possible coverage of a sui generis regime since very few varieties (except in the
case of asexually reproducing plants) would qualify for protection. A standard
of identifiability (as already adopted by the Malaysian sui generis regime) may
overcome the problem posed by the heterogeneity of farmers’ varieties as well
as of extant varieties.40 It should be borne in mind, however, that allowing for a
relaxation of the DUS standards may significantly complicate the enforcement
of conferred rights in the case of disputes about the ‘title-hood’ of a particular
variety or the infringement of rights.
The possible adoption of a standard of identifiability (associated with novelty
and distinctness) was considered by the Crucible Group as one of the options
for the protection of farmers’ varieties under a sui generis regime. In explaining
this option, the Crucible Group stated that
this element replaces the relatively strict requirements of uniformity

and stability with the looser condition of ‘distinctness and identifiability’
(DI) . . . A DI protection requirement would not comply with the UPOV
Conventions. This would not be a problem, of course, for countries that
are not signatories to the UPOV Conventions. Despite not satisfying the
UPOV standards, the criterion of identifiability may well satisfy TRIPs
Article 27.3(b), which includes no obligation on WTO member countries
to follow the UPOV model or to become members of UPOV. Being the
widest in scope, Element 3 could be used as a national baseline criterion.
Varieties that satisfy the stricter criteria could qualify for stronger and/or
longer protection.
(Crucible Group II, 2001, 148)

At the GRPI workshop in Hanoi, the participants recommended that it would
be better to relax, rather than abandon, the uniformity requirement. It con-
cluded that a sui generis regime could be based on ‘nDu’ standards, where
n = sui generis novelty involving non-commercialization outside of the

local setting of use of the farmers’ varieties in question (i.e. a variety would
be deemed ‘new’ despite its use in a particular area, if not commercialized
outside it); D = distinct as understood and identified in the UPOV Con-
vention; and u = a relaxed standard of uniformity, taking into account the
less uniform nature of many varieties bred by farmers.
(Genetic Resources Policy Initiative, 2006, 29)
Under this proposal, the novelty and uniformity requirements are less strict
than under legislation based on the UPOV Convention, while the stability
requirement is left out altogether. Only distinctness is preserved as it is provided
for under such legislation, in recognition of the key importance of determining
it for the operation of any plant variety protection system. Of course, the cover-
age of protection under these requirements would be much broader than under
the UPOV Convention. Its implementation would require some safeguards to
ensure that only varieties developed by a certain category of farmers (e.g. tra-
ditional farmers) are able to be protected since, otherwise, much of the output
of commercial breeding may also be subject to protection. Further, although it
would generally be in the interest of commercial breeders to have a strict set
of conditions for PVP, such as they exist under the UPOV Convention, they
may be in a better position than farmers/communities to use a broadly defined
system of protection based on more relaxed requirements.
Rights conferred
Sui generis regimes may differentiate the rights granted in accordance with the
type of plant varieties covered (NDUS-compliant varieties, farmers’ varieties
and so on). They may also provide exceptions that are different from those
admitted under UPOV-based legislation. Thus, in Thailand, the PVP Act dif-
ferentiates the protection that is accorded to the specific categories of new
or local plant varieties from the protection that is granted to the general cat-
egories of domestic and wild varieties. The new plant varieties may be pro-
tected under exclusive rights in the same way that they are under UPOV-type
regimes. A similar protection scheme applies to registered local community
varieties.41 General domestic and wild varieties are not eligible for exclusive
rights, but rather are covered under a benefit-sharing mechanism. Permission
by government officials is required in order to access these varieties for com-
mercial purposes.42
In Malaysia, all protected varieties are subject to the exercise of exclusive rights
generally available under PVP. In the case of India, extant varieties (including
farmers’ varieties) may be granted exclusive rights in a way that is similar to that

of new varieties.43 It is important to note, however, that Article 39.1(iv) of the
Indian PPVFR Act provides an exception for the reuse of seeds that is broader
than what is mandated in the UPOV Convention. It allows farmers to save, use,
sow, resow, exchange, share and even sell farm produce, including the seed of a
variety protected under the Act, provided that the seed is not branded.
There are reasons to think that the provision of exclusive rights that are equiva-
lent to those available under conventional PVP but subject to less strict require-
ments of protection may lead to a great deal of legal uncertainty and litigation.
Hence, if the standards of uniformity and/or stability are relaxed, the correspond-
ing rights should generally be narrower (Genetic Resources Policy Initiative,
2006, 10). In addition, the exercise of exclusive rights might defeat the very pur-
pose of some of the sui generis regimes, to the extent that farmers and communi-
ties may be prevented from continuing with the practices of exchange that are so
important to conserve plant diversity and ensure a sustainable agriculture.
Prior consent and benefit sharing

Some of the sui generis systems proposed or adopted so far combine, in varying
ways, exclusive rights with elements of benefit-sharing regimes aimed at the
recognition and eventual compensation of farmers’ innovations in accordance
with the principles of the CBD. For instance, the Indian PPVFR Act provides
for a detailed procedure for claiming compensation for benefit sharing (see
Box 9.3).44
Box 9.3 Benefit sharing under Indian law
Rights of communities
41. (1) Any person, group of persons (whether actively engaged in farm-
ing or not) or any governmental or nongovernmental organisa-
tion may on behalf of any village or local community in India,
file in any centre notified, with the previous approval of the
Central Government by the Authority in the Official Gazette
any claim attributable to the contribution of the people of that
village or local community as the case may be in the evolution of
any variety for the purpose of staking a claim on behalf of such
village or local community.
(2) Where any claim is made under subsection (1), the centre noti-
fied under that subsection may verify the claim made by such
person or group of persons or such governmental or nongov-
ernmental organisation in such manner as it deems fit and if it
is satisfied that such village or local community has contributed
significantly to the evolution of the variety which has been reg-
istered under this Act, it shall report its findings to the Authority.
(3) When the Authority, on a report under subsection (2) is satisfied,

after such enquiry as it may deem fit, that the variety with which
the report is related has been registered under the provision of
this Act, it may issue notice in the prescribed manner to the
breeder of that variety and after providing opportunity to such
breeder to file objection in the prescribed manner and of being
heard, it may subject to any limit notified by the Central Gov-
ernment, by order, grant such sum of compensation to be paid
to a person or group of persons or governmental or nongovern-
mental organisation which has made claim under subsection (1)
to the Authority, as it may deem fit.
(4) Any compensation granted under subsection (3) shall be depos-
ited by the breeder of the variety in the Gene Fund.
(5) The compensation granted under subsection (3) shall be deemed
to be an arrear of land revenue and shall be recoverable by the
Authority accordingly.
Source: PPVFR Act, available at: http://agricoop.nic.in/PPV&FR%20Act,%202001.

pdf.
While the Indian law contains benefit-sharing elements, this law is perhaps
closer to the PVP regimes than it is to access legislation. Other systems rely
more heavily on the mechanisms introduced by the latter legislation. Thailand,
for instance, ‘has sought to provide other forms of incentives to breeders of
domestic and farmers’ varieties (i.e. it is closer to a liability regime than a prop-
erty rights regime’ (Robinson, 2007, 19).45 Moreover, under the OAU Model
Law, farmers would be given the right to ‘obtain an equitable share of benefits
arising from the use of plant and animal genetic resources’ (Article 26).
The benefit-sharing mechanisms to which the Indian law refers may be
orchestrated through bilateral agreements between the providers and users of
genetic resources.Yet, in many cases, the transaction costs may be too high and
the system too complex for farmers and communities. An alternative solution
is to ask that payments be made into a fund that would subsequently distribute
compensation to farmers or otherwise support them and their communities.
For instance, under the Indian PPVFR Act,
the farmer who is engaged in the conservation of genetic resources of

landraces and wild relatives of economic plants and their improvement
through selection and preservation shall be entitled in the prescribed man-
ner for recognition and reward from the National Gene Fund.
(Article 39.1(iii))
The Thai PVP Act also establishes a PVP fund. Its income is generated from
the collection, use, research or commercialization of general domestic or wild

varieties, registration fees, and so on. Similarly, the OAU Model Law envisions
a ‘community gene fund’ (Article 66).
The application of this kind of benefit-sharing mechanism for farmers’ vari-
eties rather than the application of exclusive rights that are generally conferred
under PVP has several advantages, including the fact that the varieties remain
available for use and exchange by any farmer or breeder and that the procedures
to obtain benefits would presumably be simpler than negotiating and enforc-
ing a voluntary license case by case. While contributions to the existing pool
of plant varieties will be rewarded, their diffusion would not be blocked or
retarded on the grounds of infringement of such exclusive rights.
Conditions for the application of protection

Sui generis regimes may include obligations on applicants or rights holders that
are not required under UPOV-based laws. Outstanding examples are the obli-
gation to disclose information about the source of a plant variety for which
protection is sought as well as the obligation to obtain the prior informed con-
sent of the traditional farmers/communities who have developed/conserved
the materials of origin.Thus, the Thai PVP Act makes the registration of a vari-
ety conditional upon the disclosure of the origin of either the new plant variety
or the genetic materials used in the breeding of that variety (section 19(3)). In
India, a breeder or other person making an application for registration of any
variety must disclose information regarding the use of genetic material con-
served by any tribal or rural families in the breeding or development of such a
variety (Article 40(1)).46 In Malaysia, applications for the registration of a new
variety are subject to the ‘prior written consent of the authority representing
the local community of the indigenous peoples in cases where the plant variety
is developed from traditional varieties’ (section 12(1)(f )). In Egypt, the PVP law
requires disclosure of the source of breeding material and traditional knowledge
as well as the prior informed consent of the traditional knowledge holders.47
These types of conditions seem to be instrumental to the objectives of sui
generis regimes that are aimed at preventing the misappropriation of genetic
resources by commercial entities and at respecting the rights of local communi-
ties with respect to the plant varieties that they have developed and conserved.
Rights holders
A common criticism of PVP legislation has been the fact that rights can only
be claimed by legally recognized natural or juridical persons and not by com-
munities. This problem has been specifically addressed in the referred to sui
generis regimes. For instance, under the Indian law, registration of a variety may
be applied for individually or by a ‘community of farmers claiming to be the
breeder of the variety’ (section 16(d)). In Thailand, section 44 of the PVP Act
provides that a ‘sui juris person, residing and commonly inheriting and passing
over culture continually, who takes part in the conservation or development of

the plant variety’ should appoint a representative for registration of the variety.
The application should, inter alia, include the names of members of the com-
munity and ‘the landscape together with a concise map showing the boundary
of the community and adjacent areas.’ Further, in accordance with section 45,
when a plant variety only exists in any particular locality and has been
conserved or developed exclusively by a particular community, that com-
munity shall have the right to submit, to the local government organiza-
tion in whose jurisdiction such community falls, a request for initiating an
application for registration of the local domestic plant variety in the name
of such community.
Problems with the attribution of rights to a community need also to be

addressed in a sui generis regime that covers a broad range of categories of plant
varieties, including farmers’ varieties.
Conclusions: developing a sui generis system

Establishing a sui generis regime for plant varieties poses significant technical,
administrative and political challenges since many complex issues need to be
addressed, and the adopted legislation will diversely affect different interest
groups. Any attempt to develop a sui generis regime should be based on a careful
assessment of the characteristics of the seed supply system, the role of private
and public breeders, the structure of farm production, the farmers’ capacity to
potentially use and enforce a new legal system and other relevant evidence.
The process followed to develop such a regime (including consultations with
potential rights holders) may be crucial to understanding the different issues at
stake and to drafting a set of rules that is efficient and instrumental for achieving
its intended objectives. In undertaking this task, it would be crucial to clarify
from the outset the rationale for granting such protection (beyond compliance
with the obligation under Article 27.3(b) of the TRIPS Agreement) as well as
the way in which the provided set of rights may maximize possible benefits and
minimize the costs of introducing a new modality of IPRs.
The effectiveness of a legal regime based on intellectual property concepts
(such as granting exclusive rights) to ensure the conservation, sustainable use and
improvement of farmers’ varieties should neither be presumed nor overstated.
Such a regime would be irrelevant if other conditions are not met, particularly
if farming communities are not able to keep their land and traditional practices.
Indeed, too much emphasis on a solution based on IPRs may divert attention
away from the factors that actually matter more to the preservation of plant
diversity in the fields. In addition, granting exclusive rights may, under certain
circumstances, be detrimental to the traditional practices of exchange and use of
plant varieties and reduce, rather than promote, plant diversity and food security.
A key question to be addressed in designing a sui generis regime of plant vari-
ety protection that is intended to support farmers in the conservation, use and

improvement of farmers’ varieties is the extent to which different components
of the overall national policy framework actually encourage such activities or,
rather, stimulate the incorporation and use of commercial varieties. This would
be the case, for instance, if the national policy actively promoted production for
the supply of local or foreign markets demanding uniform agricultural prod-
ucts. In such cases, a sui generis regime of protection is very unlikely to provide
by itself sufficient incentives to keep farmers’ varieties in the fields. In particular,
the interaction between different legal regimes may lead to unintended effects.
Thus, while a sui generis regime for farmers’ varieties may rely on a relaxed uni-
formity standard, farmers may be induced to develop more uniform varieties
if this is required by the applicable seed certification law as a condition for the
sale of seeds in the open market.
Even if the national policy framework were supportive of, or neutral to, the
conservation, use and improvement of farmers’ varieties, an outstanding ques-
tion is whether a sui generis regime would be compatible with the culture and
perceptions of its potential beneficiaries and, if such were the case, whether the
possible financial benefits derived therefrom would be greater than the costs
of acquiring, maintaining and, in particular, enforcing any rights conferred.
Another important question is whether the required capacity exists within the
country to set up and administer a new and complex system of rights.
Defining the taxonomy of varieties to be protected, the requirements of
protection, the scope of rights and who may claim the conferred rights are
some of the complex technical issues that need to be addressed in a coherent
way in designing a sui generis regime. As noted, only a few national sui generis
regimes have been adopted so far. Although some of them were enacted as early
as 15 years ago, still little information has been made available from which to
assess if they have been effective in attaining their objectives. It is also noticeable
that the sui generis OAU Model Law did not make its way into the national laws
of the various African countries. Yet this should not discourage governments
from designing new sui generis regimes at the national or regional level; it only
indicates that some caution is needed to embark on such an exercise. It should
be borne in mind that the very nature of a sui generis regime requires considera-
tion of the set of issues referred to earlier – namely, to have in view the particu-
lar context in which each regime is bound to apply. The issues at stake are too
important to make decisions based on simple emulation or on unsubstantiated
discourses of fear or hope about the impact of such regimes.
It has not been the purpose of this chapter to recommend a particular modal-
ity of sui generis regime nor the type of requirements that could be applied. As
a general rule, however, it may be suggested that the more the NDUS standards
are relaxed – which is necessary, in one way or another, in order to develop
a sui generis regime – the narrower the rights conferred should be. It should
also be borne in mind that a well-defined system of benefit sharing based on
remuneration rights, without granting exclusionary rights, may suffice to com-
pensate farming communities for their contributions to the conservation and
improvement of plant varieties.

Notes
1 International Convention for the Protection of New Varieties of Plants, 2 Decem-
ber 1961, online: <www.upov.int/en/publications/conventions/index.html> [UPOV
Convention].
2 In the United States, nearly 600 seed companies were operating by 1890. The American
Seed Trade Association was established in 1883.
3 Plant Patent Act, 35 U.S.C. §§ 161–164.
4 With the participation of West Germany, Austria, Italy, Belgium, Spain and the Nether-
lands, with Denmark, Norway, and Switzerland as observers.
5 A basic difference between patent protection and plant variety protection (PVP) is that
the latter allows for the use of a protected variety to develop and commercialize a new
variety (breeder’s exception). The 1978 UPOV Convention also allowed what is known
as the ‘farmers’ privilege – that is, the right to save and use seeds obtained from the cul-
tivation of protected varieties.
6 Plant Variety Protection Act, 7 U.S.C. §§ 2321–2382.
7 The United States has promoted this approach in the free trade agreements that have
been signed with a number of developed and developing countries since 2000 (see, for
example, Correa, 2009).
8 In re Chakrabarty, 571 F.2d 40, 197 USPQ 72 (CCPA), cert. dism’d sub nom., 439 U.S. 801
(1978), vacated, 444 U.S. 1028, aff’d, 447 U.S. 303 (1980).
9 Ex parte Hibberd, 227 USPQ 443 (Bd. Pat. App. 1985).
10 Patents have been granted on the basis of claims relating to phenotypic characteristics or
to a combination of phenotypic and genotypic characteristics. A trait identified or bred
into plant lines may be claimed either phenotypically or genotypically.
11 Patent grants in the United States including plant cell and tissue culture technologies,
enabling plant biotechnologies, genetic traits and germplasm showed strong growth
trends after this decision (Boettiger et al., 2004, 1093).
12 Convention on the Grant of European Patents, online: <www.epo.org/patents/law/
legal-texts/html/epc/1973/e/ma1.html>.The scope of this exclusion has been circum-
scribed by EC Directive 98/44 on the Legal Protection of Biotechnological Inventions,
which states that ‘inventions which concern plants or animals may be patented if the
practicability of the invention is not technically confined to a particular plant or animal
variety’ (Article 4.2). In particular, the European Patent Office has allowed the patent-
ability of transgenic methods and plants.
13 Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C of the
Marrakech Agreement Establishing the World Trade Organization, 15 April 1994, 33
ILM 15 (1994).
14 It is to be noted that Article 27.3(b) obliges members to grant patents on microorgan-
isms (provided they meet the corresponding patentability standards) but not on cells or
subcellular parts, such as genes.
15 The International Seed Federation ‘considers that the UPOV Convention, and particu-
larly its 1991 Act, is an effective sui generis system for the protection of plant varieties’
(International Seed Federation, 2003).
16 The admission of new members is subject to prior verification of compliance with the
obligations under the UPOV Convention.
17 Since new plant varieties incorporate incremental improvements on existing varieties,
they will rarely be patentable, unless the novelty and inventive steps are relaxed and the
disclosure requirements are adapted. For instance, in Canada, a patent claim for a soybean
variety applied by Pioneer Hi-Bred was rejected by the Supreme Court on the ground
that no description of the method was available, although the seeds of the variety were
deposited (see Judgments of the Supreme Court of Canada, online: <http://csc.lexum.
umontreal.ca/en/1989/1989scr1–1623/1989scr1–1623>).The option of patenting plant
varieties, thus, may in practice lead to the protection of a very small number of such

varieties. However, patent holders would enjoy stronger exclusive rights than under PVP.
In addition, the peculiarities of patent laws (such as the mixed relative/absolute nov-
elty requirement that was applied under US law) may allow the acquisition of patents
over plant varieties developed by traditional farmers, thereby leading to one form of
‘biopiracy’ (Correa, 2002). In 2001, the US Supreme Court decided in J.E.M. AG Supply,
Inc. v Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001), that sexually reproduced plants are
statutorily proper subject matter for full utility patents.
18 Convention on Biological Diversity, 31 ILM 818 (1992).
19 International Treaty on Plant Genetic Resources for Food and Agriculture, 29 June 2004,
online: <www.planttreaty.org/texts_en.htm>.
20 Many of these arguments have been contested in the literature on the subject (see e.g.
Dutfield, 2000, 50–53). The concerns presented in this section are intended to provide
the reader with a broad picture about the debates regarding this issue. The discussion on
the merits of the various arguments is beyond the purpose of this chapter.
21 See an illustrative list of relevant literature in Annex I of this chapter.
22 Based on the intervention by Dan Leskien at the workshop held by the Genetic
Resources Policy Initiative (GRPI) in Hanoi on 26–28 October 2006. Currently, how-
ever, there is no restriction to do so with farmers’ varieties.
23 Based on a presentation by Dan Leskien at the workshop held by the GRPI in Hanoi
on 26–28 October 2006.
24 On the cost of acquiring PVP on cultivars in some jurisdictions, see Tripp, Louwaars and
Eaton, 2007, 363.
25 In recognizing the problems associated with the implementation of PVP for a broad
number of crops, Article 4 of the 1978 UPOV Convention only required the gradual
coverage of different crops. When the convention entered into force for a country, only
a minimum of five crops had to be covered.This changed with the 1991 revision, which
required new members to protect 15 genera or species upon accession and all genera and
species within 10 years.
26 The treaty stipulates the following:
Article 9.1 The Contracting Parties recognize the enormous contribution that the
local and indigenous communities and farmers of all regions of the world, particu-
larly those in the centres of origin and crop diversity, have made and will continue to
make for the conservation and development of plant genetic resources which consti-
tute the basis of food and agriculture production throughout the world.
Article 9.2 The Contracting Parties agree that the responsibility for realizing
Farmers’ Rights, as they relate to plant genetic resources for food and agriculture,
rests with national governments. In accordance with their needs and priorities, each
Contracting Party should, as appropriate, and subject to its national legislation, take
measures to protect and promote Farmers’ Rights, including:
a protection of traditional knowledge relevant to plant genetic resources for food
and agriculture;
b the right to equitably participate in sharing benefits arising from the utilization of
plant genetic resources for food and agriculture; and
c the right to participate in making decisions, at the national level, on matters
related to the conservation and sustainable use of plant genetic resources for food
and agriculture.
Article 9.3 Nothing in this Article shall be interpreted to limit any rights that
farmers have to save, use, exchange and sell farm-saved seed/propagating material,
subject to national law and as appropriate.
27 Protection of Plant Varieties and Farmers’ Rights Act, online: <http://agricoop.nic.in/
seeds/farmersact2001.htm> [PPVFR Act]. On the various approaches and proposals

that influenced this legislation (including, in particular, the draft Plant Variety Recogni-
tion and Rights Act of the M. S. Swaminathan Foundation), see Dhar and Chaturvedi,
1998, 248–49.
28 Article 2( j): ‘extant variety’ means a variety available in India which is:
(i) notified under section 5 of the Seeds Act, 1966 (54 of 1966);
(ii) farmers’ variety;
(iii) a variety about which there is common knowledge; or
(iv) any other variety which is in the public domain.
29 Plant Variety Protection Act, online: <www.grain.org/brl_files/thailand-pvp-1999-en.

pdf> [PVP Act].
30 Protection of New Plant Varieties Act 2004, online: <www.grain.org/brl/?docid=
657&lawid=1404>.
31 In the 1950s, the ‘AIPPI [International Association for the Protection of Intellectual
Property] opposed the patenting of plant varieties on the grounds that doing so would
stretch basic patent law concepts like inventiveness to the point of undermining the
credibility of the patent system’ (Dutfield, 2003, 186).
32 It is worth noting, however, that unlike the concept of novelty under patent law, a variety
continues to be ‘novel’ in the context of PVP even if it has been known for a long time
as long as it was not sold or commercialized with the consent of the breeder for some
specified periods before the filing date of the application for protection (see e.g. Article
6 of the 1978 UPOV Convention).
33 Section 12(2) of the act requires that distinctness be ‘related to the feature beneficial to
the cultivation, consumption, pharmacy, production or transformation, including the
distinctness from the following plant varieties: (a) plant varieties already registered and
protected, whether in or outside the Kingdom, prior to the date of filing the application;
(b) plant varieties in respect of which application for registration has been made in the
Kingdom and which will subsequently have been registered.’
34 The concept of novelty differs, however, from that contained in the 1991 UPOV Con-
vention as disposal of the variety only affects its possible protection if made ‘on a com-
mercial basis’ (section 14(3)(a)). This change may permit the protection of existing local
varieties insofar as they have not been commercialized.
35 See the presentation by Lim Eng Siang at the GRPI meeting in Hanoi (Genetics
Resources Policy Initiative, 2006, 17–18).
36 African Model Law for the Protection of the Rights of Local Communities, Farmers
and Breeders and for the Regulation of Access to Biological Resources, online: <www.
cbd.int/doc/measures/abs/msr-abs-oau-en.pdf>.
37 Many commercial varieties are bred with the deliberate aim of obtaining a high degree
of uniformity in order to respond to market demands and/or to comply with the seed
certification or PVP requirements.
38 Landraces, which constitute a major component of the pool of plant genetic resources
available to farmers, have been defined by the Food and Agricultural Organization ‘as
an early, cultivated form of a crop species, evolved from a wild population, and generally
composed of a heterogeneous mixture of genotypes.’ See Biotechnology in Food and
Agriculture, online: <www.fao.org/biotech/find-formalpha-n.asp>.
39 This is not problematic for farmers’ varieties, which may be differentiated following
conventional methods.
40 This standard means that each generation of a plant variety must be identifiable as the
same distinct plant variety, without necessarily being uniform in all of its characteristics
(Leskien and Flitner, 1997).
41 A community may be granted exclusive rights to conserve, use, research, sell and com-
mercialize a registered plant variety.

42 In accordance with section 52 of the law, ‘a person who collects, procures or gathers
general domestic plant varieties, wild plant varieties or any part of such plant varieties for
the purposes of variety development, education, experiment or research for commercial
interest shall obtain permission from the competent official and make a profit-sharing
agreement under which the income accruing therefrom shall be remitted to the Plant
Varieties Protection Fund.’
43 This solution has raised concerns since some farmers may hypothetically exclude other
farmers from using widely diffused varieties that are not novel and thereby jeopardize
the traditional exchange of seeds (Robinson, 2007, 24).
44 The PPVFR Act, supra note 27, issued by the Ministry of Agriculture in Decem-
ber 2006, implements benefit sharing for farmers and communities, in cases where their
genetic resources have contributed to third parties’ new variety development (Form 1,
Part 10(c)).
45 Under a liability regime no exclusive rights are granted; hence, any party may use the
protected subject matter against payment of a remuneration to the title holder.
46 The PPVFR Act, supra note 27, requires information about the origin of the variety
including geographical source and farmer/village/community/institution/organization
(Form 1, Part 10(b)).
47 Owing to this obligation, the International Union for the Protection of New Varieties of
Plants has refused to recognize Egypt as being in compliance with the UPOV Conven-
tion. However, the obligation is a condition for the application and not an additional
condition for protection (Genetic Resources Policy Initiative, 2006, 18).
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Evaluation of Proposed Legislation,’ Journal of World Intellectual Property 1: 245–62.
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Genetic Resources Policy Initiative (2006). Exploring Legal Definitions of Farmers’ Varieties in
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Available at: www.worldseed.org/isf/on_intellectual_property.html (last accessed 15
June 2012).
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sity of Illinois Working Paper no. LE03–002. Available at: http://papers.ssrn.com/s013/
papers.cfm?abstract_id=384140 (last accessed 15 June 2012).
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Protection Act of 1970, Economics Research Report no. 6, Department of Economics and
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Robinson, D. (2007). Exploring Components and Elements of Sui Generis Systems for Plant Variety
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156 Carlos M. Correa

Sui generis protection for farmers’ varieties 157

• DNA sequences that code for a certain protein

European countries followed a narrower approach than the United States

plants and animals other than microorganisms, and essentially biological

158 Carlos M. Correa

• new or relaxed requirements of protection that extend protection to varie-

Sui generis protection for farmers’ varieties 159

However, it is difficult to define a typology of the existing sui generis regimes

Concerns about PVP

• PVP encourages monopolies in genetic materials for specific traits;

160 Carlos M. Correa

Sui generis protection for farmers’ varieties 161

Box 9.1 Impact of the UPOV Convention in selected

• The average annual number of titles granted to domestic breeders

• A rapid uptake by farmers of new, protected varieties such as maize

162 Carlos M. Correa

• New, foreign varieties, particularly ornamental varieties, have been

• Significantly higher number of varieties of various agricultural crops

Sui generis protection for farmers’ varieties 163

Expectations about sui generis regimes

vesting legally recognized ownership of knowledge in communities through

164 Carlos M. Correa

indigenous and local knowledge holders will be more willing to disclose

Farmers’ freedom to save and sell seeds

Sui generis protection for farmers’ varieties 165

Box 9.2 Possible disadvantages of a sui generis regime

• IPRs are meant to promote the invention of new things, such as

Source: Genetic Resources Policy Initiative (2006, 19).

166 Carlos M. Correa

Sui generis protection for farmers’ varieties 167

Scope and conditions of protection under

168 Carlos M. Correa

Sui generis protection for farmers’ varieties 169

a variety with specific attributes identified by a community shall be granted

170 Carlos M. Correa

this element replaces the relatively strict requirements of uniformity

Sui generis protection for farmers’ varieties 171

n = sui generis novelty involving non-commercialization outside of the

172 Carlos M. Correa

Prior consent and benefit sharing

Box 9.3 Benefit sharing under Indian law

Sui generis protection for farmers’ varieties 173

(3) When the Authority, on a report under subsection (2) is satisfied,

Source: PPVFR Act, available at: http://agricoop.nic.in/PPV&FR%20Act,%202001.

the farmer who is engaged in the conservation of genetic resources of

174 Carlos M. Correa

Conditions for the application of protection

Sui generis protection for farmers’ varieties 175

Problems with the attribution of rights to a community need also to be

Conclusions: developing a sui generis system

176 Carlos M. Correa

Sui generis protection for farmers’ varieties 177

178 Carlos M. Correa

Sui generis protection for farmers’ varieties 179

29 Plant Variety Protection Act, online: <www.grain.org/brl_files/thailand-pvp-1999-en.

180 Carlos M. Correa

References and bibliography