Developed nations acknowledge that art. 27.3 of TRIPS provides a choice between patenting and a sui generis system for protecting plants. Developed nations, however, construe UPOV as a minimum standard for establishing a sui generis system (Grain, 1999; UPOV Position, 2000). The following two sections discuss whether the reference to an effective sui generis system in art. 27.3 of TRIPS is a reference to UPOV. The first section argues that historically UPOV was never construed as the minimum standard under TRIPS. Moreover, construing UPOV as the mandatory minimum standard defeats the purpose of flexibilities in art. 27.3 of TRIPS. The second section establishes that UPOV is not an effective sui generis system as required under art. 27.3 of TRIPS considering that UPOV embodies: (i) diluted eligibility requirements; (ii) exaggerated scope of breeders' rights; and (iii) inadequate restrictions on breeders' rights.
Article 27.3 of TRIPS does not in any way refer to UPOV as the minimum standard for establishing a sui generis mechanism. The article language that members can protect plants using 'an effective sui generis' system rather than 'the sui generis' system lends credence to the argument that UPOV was not intended as 'the sui generis' system in TRIPS. Furthermore, when relying on other international treaties, TRIPS specifically refers to them such as the Paris and the Berne Conventions (TRIPS, 1994). In light of these specific treaty references, there is arguably no reason for the TRIPS text to exclude reference to UPOV in art. 27.3, especially if the negotiators had intended otherwise. The discussions in the WTO Secretariat document highlight why UPOV was not specifically designated in TRIPS as the sui generis system (Council for TRIPS, 2002). Switzerland and the USA asserted that the limited geographic coverage of UPOV at the time of the TRIPS negotiations precluded specific inclusion in art. 27.3(b) (Council for TRIPS, 2002). Members lacked the confidence that UPOV would be widely adopted and hence refrained from specifically referring to it in art. 27.3. Considering that members were uncertain of UPOV's wide adoption in the future, it is doubtful that TRIPS envisaged the former as the minimum standard for a sui generis system.
Moreover, the WTO review of art. 27.3 of 2002 reflects a lack of consensus among members vis-à-vis the incorporation of UPOV (Council for TRIPS, 2002). For instance, developed nations therein acknowledge the prevalence of sui generis systems other than UPOV and agree to determine the effectiveness of such systems on a case-by-case basis (Council for TRIPS, 2002). Thus, it is unlikely that in 1993 TRIPS designated UPOV as the effective sui generis system.
At the time TRIPS was negotiated, the 1978 text of UPOV was in force. This text of UPOV specifically denies 'double patenting' or combining protection using patents with a sui generis system (UPOV, 1978). Article 2(1) of the 1978 text of UPOV, read with the 1961 text of the treaty, specifically prohibits double patenting by providing that:
[E]ach Member State of the Union may recognize the right of the breeder provided for in this Convention by the grant either of a special title of protection or of a patent. Nevertheless, a member State of the Union whose national law admits of protection under both these forms may provide only one of them for one and the same botanical genus or species.
Article 2 7.3 of TRIPS, however, specifically provides for protection by combining both patents and a sui generis system. Thus, TRIPS does not prohibit the protection of the same species by a combination of regimes. For example. the US Supreme Court specifically allowed protection of the same species using a utility patent and a sui generis form of protection in J.E.M. AG Supply, Inc. v Pioneer Hi-bred International, Inc. (1994). It is unlikely that TRIPS, an agreement that allows overlapping protection, would implicitly refer to a treaty like UPOV (1978) which specifically prohibits such overlap (Bai, 1997). In response, critics point out that UPOV's 1991 amendment (before the TRIPS Agreement was signed) eliminated the double patenting prohibition and thereby integrated UPOV with TRIPS. The history behind UPOV amendments, however, indicates that the 1991 amendment resulted from a misinterpretation of the double patenting prohibition clause. The drafters of the Convention on the Unification of Certain Points of Substantive Law on Patents for Inventions (Strasbourg Convention, 1963) misconstrued the provisions of the 1978 UPOV as prohibiting plant patents (Bai, 199 7). Following this, the European Patent Convention (EPC) excluded patenting of plants (Bai, 1997). Consequently, UPOV was amended in 1991 to clarify that contracting parties should 'grant and protect breeders' rights' (UPOV, 1991). Thus, historically, the UPOV amendment was not intended to synchronize with art. 2 7 of TRIPS.
The distinctive feature of art. 27.3 of TRIPS is its lack of minimum standards. In light of the art. 27.3 flexibilities, treating UPOV as the mandatory standard defeats the purpose of the TRIPS art. 27.3. Showcasing UPOV as the mandatory requirement deprives members of the sui generis option in art. 27.3 of TRIPS. Such a construction violates the spirit of art. 27.3. The flexibilities of a sui generis system are meant to accommodate national requirements. If UPOV is construed as the sole sui generis system, members will be forced to adhere to a set of minimum standards. Reading a requirement of minimum standards under art. 27.3 undermines the flexibility to protect plant varieties. Such standards indirectly force members to provide more extensive protection than required under the TRIPS language. Any construction of art. 27.3 which mandates that members provide more extensive protection than envisaged by the language violates art. 1 of TRIPS (1994).
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