It has long been established that one cannot patent the way one grows a plant, or even the plant itself. In Malaysia, section 13(1)(b) of the Patents Act 19831 expressly provides that plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes, cannot be patented.
However, the law has developed protections for the plant breeder. Under the TRIPS Agreement2, Article 27.3(b) stipulates that member countries shall provide for the protection of plant varieties by a patent or by an effective sui generis system or by any combination thereof. Being a signatory to the TRIPS Agreement, Malaysia has provided for plant varieties protection in the form of the New Plant Varieties Act 20043 (hereinafter referred to as “the Malaysian Act”) which came into operation on 20th October 2008. As stated in its preamble, the Act aims to provide for the protection of the rights of breeders of new plant varieties, and the recognition and protection of contribution made by farmers, local communities and indigenous people towards the creation of new plant varieties; to encourage investment in and development of the breeding of new plant varieties in both public and private sectors; and to provide for related matters.
This will assist the commercial development of new plant varieties and hopefully assist local communities in developing new herbal remedies and trying to grow variants of wild herbs and plants with medicinal properties.
The Act establishes a new Plant Variety Board, whose function is not unlike the Patents Board; to review and approve or reject applications for registration of new plant varieties and grant of breeder’s rights and to protect the rights of the breeders. The Board consists of the top officials of government departments, which deal with the agricultural industry in Malaysia. It includes notably the Director-Generals of Malaysian Agricultural Research and Development Institute and Forest Research Institute Malaysia, and representatives of the Ministry of Agriculture and Agro-based Industry, the Ministry of Domestic Trade and Consumer Affairs, and the Ministry of Science, Technology and Innovations, a clear indication that Parliament is indeed serious in protecting the rights of plant breeders.
Section 13 of the Malaysian Act provides for the categories of persons who will be entitled to apply for registration of new plant variety and grant a breeder’s right. This includes a breeder, the employer of the breeder, the successor in the title of the breeder, a farmer or group of farmers, local community or indigenous people who have carried out the functions of a breeder and any government or statutory body which has carried out the functions of a breeder.
However, an agent who has a registered office in Malaysia must be appointed if the applicant’s ordinary residence or principal place of business is outside Malaysia or if the applicant is a group of farmers. The authority representing the local community or indigenous people shall be the agent if the applicant(s) are from these two categories.
Applications can be made if a plant variety is new, distinct, uniform and stable, notwithstanding the fact whether a plant variety is bred, discovered and developed4.
Actual samples of plants are required to be propagated to prove the distinctiveness, novelty, uniformity and stability of the strain before they can be registered. The plants must also be correctly named using special international nomenclature and these names will be permanently associated with the strains regardless of who propagates them in the future (which makes these names quite different to trade marks).
The plant variety is new if on the filling date of application, the propagating or harvested material has not been sold or otherwise disposed off on a commercial basis by or with the consent of the breeder earlier than one year within Malaysia, and earlier than six years in other countries in respect of trees and vines and earlier than four years in respect of other plant varieties5.
Upon successful application, the breeder would then be granted, in accordance to section 30 of the Act, the sole right to produce or reproduce, condition the variety for the purpose or propagation (growing), offer the variety for sale, market the plant and to stock, export or import the variety, provided that the act is on a commercial basis – all the basis of a right granted for a patent.
However, there is a distinction between a breeder’s right and a patent. According to section 31 of the Malaysian Act, a breeder’s right is not breached if any infringement is done on a non-commercial basis, for an experimental purpose or any act done for the purpose of breeding other plant varieties, propagation by small farmers using harvested material of the registered plant variety planted on their own holding, exchange of reasonable amount of propagating materials among small farmers and the sale of farm-saved seeds in situations where non-usage is beyond the control of the farmer.
A successful application, by virtue of section 32 of the Malaysian Act, will guarantee a breeder’s rights for twenty years for a registered plant, variety that is new, distinct, uniform and stable; or for fifteen years for a registered plant variety that is new, distinct and identifiable. This duration can be extended by the Board on the grounds of national needs and interests.
Also, as of a patent, any interested person may institute court proceedings against the holder to invalidate the registration of a new plant variety and grant of a breeder’s right, if the holder has furnished to the Board false or misleading information or statement in respect of the application for registration of the new plant variety and grant of a breeder’s right, the holder has not complied with the requirements of the Act or the breeder’s right does not belong to the person to whom the breeder’s right was granted6.
Comparatively, Singapore has long recognised the need to patent plant varieties. The Singapore Patents Act 19947 did not expressly exclude plant varieties from being patentable, so long that it is new, involves an innovative step and that it is capable of industrial application. This in fact does not help plant breeders per say. The third criterion is difficult to satisfy in the case of plant breeding. Genetic re-assortment may occur during replication, such that even if the exact same plants are used for crossbreeding, the eventual outcome may not be exactly the same. As a result of this and also of the fact that Singapore are committed the UPOV Convention8 (whose membership as of September 2008 does not include Malaysia), the Singapore Parliament had introduced the Plant Varieties Protection Act 20049 (hereinafter referred to as the “Singapore Act”)
The primary aim of the Singapore Act is to provide greater incentive to encourage the development of new plant varieties, and to spur innovation amongst plant breeders in Singapore. The Singapore Act was remodelled after the 1991 International Convention for the Protection of New Varieties of Plants. However, primarily it contains similar provisions with the Malaysian version of breeder’s rights, with a Registrar of Plant Varieties being the main board instead of a board involving various significant governmental bodies10.
A significant distinction between this Act and the Malaysian version is that the Singaporean version recognises the UPOV Convention as a governing body for their plant breeder’s rights. This, in addition to basing their Act in accordance to the Convention11, would mean that any registration in member countries of the Convention will be recognised by the Singaporean Act. It effectively ensures a kind of ‘international registration’ of plant breeder’s rights, akin to the system envisioned by the TRIPs agreement for patents. Furthermore, the Singapore Registrar recognises the validity of tests done and approved in other member countries of the UPOV Convention. A bold distinction as compared to the Malaysian law; which requires all tests to ascertain a new variety to be done in the country’s Panel itself.
The Singapore Act also expressly states that only the plant genera and species listed in its Schedule will be protected by the Act12. The Schedule currently has 15 varieties of plants as of September 2008. The Act does give power for the relevant Minister to add and amend the Schedule13. However, what is interesting is that during the second reading speech on Plant Varieties Protection Bill 2004 by Senior Minister of State for Law by Associate Professor Ho Peng Kee14, the Professor had identified 15 varieties of plants to be governed by the Bill once passed. This would mean that although the Act has been in force for 4 years, it did not change intellectual property laws in the city state, and might be considered as redundant.
In contrast, the Malaysian Act protects all varieties which are listed Register of New Plant Varieties, and the Act did not specifically mention the species which it protects.
It is interesting to note that Australia has long recognised the rights of plant breeders. In fact, Australia is among the first countries, after Japan and New Zealand, to join the UPOV Convention15. As a consequence, plant breeders rights have been long established in Australia, with the first being the Plant Variety Rights Act 198716.
The current legislation applicable in Australia is the Plant Breeder’s Rights Act 199417 (hereinafter referred to as the “Australian Act”) which repealed the 1987 Act. The reason the new Act was introduced was to reflect the changes in the 1978 and 1991 versions of the UPOV Convention on which the Acts are based. Significant of the changes relates to Essentially Derived Varieties, Derived Varieties, Farm Saved Seed, alternative dispute resolution, timing of fee payment, prior sale limitation, harvested material/products made from the harvested material.
However, both Acts contains the same core principles, rights and obligation.
Being based on the UPOV Convention, the drafting of the Australian Act bears a remarkable resemblance with Singapore law. The notion of an international intellectual property right would again surface here.
Nevertheless, it should be noted that the Australian law differs from its Singaporean sibling in the sense that there is no Schedule limiting the number of varieties being protected. Section 61 of the Australian Act requires a Register of Plant Varieties to be kept and all varieties entered into the Register are protected by the Australian law. An applicant of breeder’s rights will have to check the Register to ascertain if he could apply for it. This could be done by looking through the Plant Varieties Journal or searching on the Plant Breeders Rights (PBR) database. Here, the Australian law resembles its Malaysian counterpart.
An amazing fact with Australian law is that it has been well used throughout the years. A quick check on the PBR database18revealed that as of 3rd November 2008, there are a total of 5848 applications for breeder’s rights, of which 1160 has been provisionally accepted to have rights and there are 2162 applications in which full rights have been granted. This is a far cry from the meagre 15 that had resulted from its Singapore counterpart, even though both countries share the same core legislations.
Breeder’s rights in Australia are also subjected to other intellectual property rights. A breeder may have rights to a variety and yet if he used a patented method of breeding, which does not belong to him, the breeder might not be able to reproduce the plant without consent of the patent holder. It should be noted that Australian intellectual property law allows breeding processes to be patented, as long as it fits the description of a patent. The Australian Government emphasises this through its IP Australia website19. The website also gives an example on how other intellectual property rights can cohabit with breeder’s rights; i.e. a trademark being used to sell a new variety of seeds.
In both Singapore and Australia a patent could still be granted for a plant variety, be it in its process to breed or the technology used to breed it, and that this right can be on top of any plant breeder’s rights that may arise on the basis of their legislation.
The Malaysian Act has effectively granted a ‘patent’ option to plant breeders, which recognises the intellectual properties of plant varieties. This is in spite the fact that the Malaysian Patents Act expressly prohibits patents from being granted for plant varieties. In contrast, member states of the UPOV Convention such as Australia and Singapore recognise that Plant Breeder’s Rights in itself are not enough to protect plant breeders. Hence in addition to the rights, applicants of those countries can still apply for a patent to protect the process to breed or components of a variety, such as gene technology or gene sequences.
The difference in approach could be due to the different levels of commercial agricultural development leading to different political considerations in the development of their respective intellectual property rights.
1 Malaysia; Patents Act 1983, No. 291
2 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) 1994
3 Malaysia; Protection of New Plant Varieties Act 2004, No. 364
4 Malaysia; Section 14 Protection of New Plant Varieties Act 2004, No. 364
5 Malaysia; Section 14(3) Protection of New Plant Varieties Act 2004, No. 364
6 Malaysia; Section 39 Protection of New Plant Varieties Act 2004, No. 364
7 Singapore; Section 13 Patent Act 1994, Chapter 221
8 The International Union for the Protection of New Varieties of Plants (UPOV Convention (1961), as revised at Geneva (1972, 1978 and 1991)), established by the International Convention for the Protection of New Varieties of Plants, is an independent intergovernmental organization having legal personality. Pursuant to an agreement concluded between the World Intellectual Property Organization (WIPO) and UPOV, the Director General of WIPO is the Secretary-General of UPOV and WIPO provides administrative services to UPOV
9 Singapore; Plant Varieties Protection Act 2004, Chapter 232A
10 Singapore; Section 5 Plant Varieties Protection Act 2004, Chapter 232A
11 References were made to the Model Law on the Protection of New Varieties of Plants, by UPOV, in which the bulk of the Act were based on
12 Singapore; Section 4 Plant Varieties Protection Act 2004, Chapter 232A
13 Singapore; Section 5(2) Plant Varieties Protection Act 2004, Chapter 232A
14 Source: Intellectual Property Office of Singapore; www1.ipos.gov.sg/main/newsroom/speeches/speeches_150604_Plant.html
15 Source: The International Convention for the Protection of New Varieties of Plants; www.upov.int/export/sites/upov/en/about/members/pdf/pub423.pdf
16 Australia; Plant Variety Rights Act 1987, No. 2, 1987, Repealed by Plant Breeder’s Rights Act 1994 Act No. 110 of 1994 as amended
17 Australia; Plant Breeder’s Rights Act 1994 Act No. 110 of 1994 as amended