Tài liệu EUROPEAN PLANT INTELLECTUAL PROPERTY docx

EUROPEAN PLANT INTELLECTUAL PROPERTY

This authoritative new work analyses European plant intellectual property

rights. Whilst the focus of the work is on Europe, and in particular the European

Patent Convention, the Council Regulation on Community Plant Variety Rights

and the EU Directive on the Legal Protection of Biotechnological Inventions,

these provisions are discussed within the context of international legislation,

including the Agreement on Trade-Related Aspects of Intellectual Property

Rights (TRIPs) and the Convention on Biological Diversity. It is the first book

to look at the impact of plant intellectual property rights on the European plant

breeding industry and assess whether recent developments, such as the Novartis

decision, will assist plant breeders, from all sectors of plant breeding, in the pro￾duction of new plant products. In addition to a thorough discussion of the leg￾islation, the book includes unique empirical research results obtained by the

authors as part of a two-year research project funded by the European Union,

which surveyed attitudes towards, and use of, plant intellectual property rights

within the European plant breeding community.

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European Plant Intellectual

Property

Margaret Llewelyn

&

Mike Adcock

OXFORD AND PORTLAND, OREGON

2006

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Published in North America (US and Canada) by

Hart Publishing

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© Margaret Llewelyn and Mike Adcock 2006

Margaret Llewelyn and Mike Adcock have asserted their rights under the Copyright, Designs and

Patents Act 1988, to be identified as the authors of this work.

All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or

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be addressed to Hart Publishing at the address below.

Hart Publishing, 16C Worcester Place, Oxford, OX1 2JW

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ISBN–13: 978–1–84113–322–5 (hardback)

ISBN–10: 1–84113–322–1 (hardback)

Typeset by Hope Services, Abingdon

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Preface

The importance of plants, whether agricultural, medicinal, culinary, artistic,

recreational or symbolic, resonates throughout history. Throughout the centuries

man can be seen to place reliance on plants not merely to provide and maintain

life1 (or to secure death),2 but also to designate status and define humanity.3 From

the earliest days man has also sought to use plants, whether by claiming plant

material as territory or by influencing our perceptions by ascribing symbolic

qualities to that material, but it is only with the advent of modern genetics that we

have sought to secure rights not merely over but in the material itself.

In his book, The Forgiveness of Nature: the Story of Grass,4 Graham Harvey

details the way in which different types of grasses have been developed in order

to meet different needs. From specialist amenity grasses for football pitches to

grasses specifically bred to improve milk and beef quality, the book provides

evidence of the fact that whilst most of us acknowledge the presence of grass, for

‘it is a common everyday thing, scarcely worth a mention’, few of us recognise

its influence on much that we do and, in turn, on the lives we lead. Grass is not

the only member of the plant world which serves as a silent player shaping the

world we live in. In his two beautifully illustrated books, The Plants that Shaped

our Gardens,

5 and Dangerous Garden: The quest for plants to change our lives,

6

David Stuart outlines the many different ways in which plants have been utilised

from medicinal use to the purely aesthetic and yet, this use aside, most people

give little thought to the plants around them, the diversity within species, or to

the work which has gone into their production. Such thoughts as we do have

tend to focus on individually localised issues such as whether a certain plant

would be a desirable addition to a garden or if a particular vegetable would be

suitable to serve at dinner—the innovation involved goes unnoticed and yet

such enquiry and innovation is central to our ability to enjoy many of the plant

products which surround us.

This fascination with plants and man’s desire to make use of plant material

can be traced back through the centuries. George Drower, in Gardeners, Gurus

and Grubs,7 provides numerous examples of little-known inventors who have

1 Through agricultural usage. 2 For example the use of hemlock. 3 One only has to look at literature through the centuries to see nature, in both its natural and

man-made guises, used to denote territoriality (for example ‘this green and pleasant land’) or to

symbolise or represent man’s state. 4 (Jonathan Cape, 2001). 5 (Frances Lincoln Ltd, 2002). 6 (Frances Lincoln Ltd, 2004). 7 Drower, Gardeners, Gurus and Grubs, The Stories of Garden Inventors and Innovations

(Sutton Publishing, 2001).

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made the gardening experience not only more enjoyable for the general public,

but, in many instances, possible—such innovations including the wheelbarrow

(Chuko Liang AD 231) and the classification of plants (Theophrastus circa

BC 322–288—his first book, An Enquiry into Plants, attempted to classify all

known plants; his second book, The Causes of Plants, concentrated on roses).

Documentation from other civilisations also shows a reverence for plants. For

example in Ancient Egypt the onion (which had been introduced into the coun￾try from Asia) was worshipped because it was thought to symbolise eternity and

records show that frequently golden replicas of the vegetable were placed in the

tombs of Pharaohs. Although other vegetables were less venerated they were

still treated with great respect, and metal replicas of fruit and vegetables such as

leeks, grapes, figs, radishes and pomegranates have been found.8

At a more general level, and concurrent with both the research into the trans￾mission of characteristics undertaken by Mendel and Huxley as well as the

refinement of national and international industrial property standards, there

can be found the extensive descriptions of the exploits of those who could be

termed ‘plant explorers’, who advertently placed the seeking out of new plants

as the basis for their global wanderings. The delightful book In Pursuit of Plants

by Philip Short9 provides extracts from the journals of 19th and early 20th cen￾tury plant collectors from around the world, each of whom describes the excite￾ment felt in discovering new and wondrous plants. It is this desire to enquire

together with developments in the capacity to utilise the material discovered

through the enquiry which has produced the modern world of plant breeding.

This work has provided society with many of the plants which it enjoys on a

daily basis, including those used in non-obvious capacities such as textiles,

medicines and engineering, although these uses often go unnoticed. Stuart

‘Psycho’ Pearce may be a much lauded hero to Nottingham Forest fans but it is

doubtful whether many of the same Forest fans would pay similar homage to the

Institute of Grassland and Environment Research which produces grass specifi￾cally designed for use on football pitches and was responsible for the playing

surface at the City Ground which enabled ‘Psycho’ to play some of his best

football.10

For the most part, plant breeding activity and its results go unnoticed and

uncommented upon because it is uncontroversial. However, as has been

well rehearsed elsewhere, this is no longer the case, and the activities of plant

scientists are coming under increasing scrutiny. One of the reasons for this is the

increasing awareness of the territorialisation of plant genetic material. This is

vi Preface

8 http://nefertiti.iwebland.com/timelines/topics/agriculture.htm and http://www.aldokkan.com/

science/agriculture.htm. 9 Short, In Pursuit of Plants (University of Western Australia Press, 2003). 10 This connection is particularly significant to one of the authors, as her grandfather, Professor

ET Jones, was director of the Institute in the 1950s (when it was the Welsh Plant Breeding Station)

and a founding father of the UK’s plant variety rights system, and her partner, Professor Robert

Bradgate, is an avid Forest fan.

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nothing new—the use of land together with that which rests upon and below it

to define and describe States and status can be traced back throughout history.

Land, and what it represents in terms of identity and power, stands as a sin￾gle thread linking all nations, all peoples and every person throughout history.

At the heart of this universal connection to the land lies the desire to own, and

by owning, to define. States are defined via their borders and increase their

power by extension of those borders often via the use of force. Individuals define

themselves by reference to their property and to what they place upon it.

This connection to the land is not merely based on a physical association with

it, it also resonates with perceptions as to what land represents. Simon Scharma

in Landscape and Memory11 provides examples of the roles land and landscape

have played in religion, literature and art, amongst others, in shaping our, often

unconscious, views of the world around us. In the past the global realisation of

the importance of land came in the form of conquest. Today the physical annex￾ation of another country is deplored and even the threat of such annexation can

be sufficient to justify stern action from the international community, and land,

and all that it represents has taken on what could be regarded as a heightened

significance as countries and peoples seek to assert their identity.

Equally the colonisation of land, where no force is used, but indigenous

peoples are nonetheless made subject to externally imposed rules and processes

is frowned upon as colonisers are increasingly called upon to apologise for past

practices, provide compensation and, arguably most importantly of all, to polit￾ically recognise the community(ies) affected. In the absence of other land to

acquire in order to add wealth and power, attention has turned increasingly to

the value of that which can be found upon and within it—and with this atten￾tion comes the concomitant issue of, if there is a value, who has the right to

exploit it or, put another way, who owns the right to the value in the material.

One of the main sources of this value are plants and the interest in acquiring the

right to control the exploitation of both plants and the genes making up the

plants has led some commentators to view this as a new form of colonialisation.

This focus on the value of indigenous plant material and the issue of who can

control access to any value residing within that material has meant that the con￾trol mechanisms, and more specifically intellectual property rights, have them￾selves come under increased scrutiny.12 To a considerable extent the focus for

the scrutiny has been the developing world, but as this book will discuss, there

are also issues which arise which relate to policy and practice within a developed

country context. This book will look at the way in which all aspects of plant

material (from genes to species) have been increasingly regarded as private

property over which a private property right can be asserted. The focus will be

Preface vii

11 (Harper Collins Publishers, 1995). 12 See, for example, the views expressed by leading genetic scientists such as Sulston and Ferry,

The Common Thread (Bantam Press, 2003); Watson, DNA: The Secret of Life (Random House,

2004); and those of commentators on the possible impact of the science: Fukuyama, Our Posthuman

Future: Consequences of the Biotechnology Revolution (Profile Books, 2002).

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on European provision although it has to be understood that this must, ulti￾mately, be looked at against international trends and practices.

In writing the book we have been greatly assisted by organisations such as the

UPOV Office, the Community Plant Variety Rights Office, the European Patent

Office, national plant variety rights and patent offices, organisations represent￾ing the interests, scientific and legal, of plant breeders, and the companies who

are engaged in the research itself. In particular we would like to thank the

following individuals who, over the years, have provided invaluable guidance

and advice, John Ardley, Bart Claes, Deryck Beyleveld, Julyan Elbro, Jose

Elena, Barry Greengrass, Joel Guiard, Bart Kieweit, Bernard Le Buanec, Peter

Odell, Tim Roberts, Rene Royon, Bubpha Techapattaraporn, Roger Turner,

Geertrui van Overwalle, Roger Walker and Sue Wigzell. We are also very grate￾ful to all the plant breeders who participated in the diverse aspects of the EU

project—they are unfortunately too many to mention, but we thank them all

unreservedly.

Our biggest thanks go to those who, with us, ran the EU-funded Plant

Intellectual Property (PIP) project, the project team Antoine Alegre de la

Soujeole, Jean-Louis Talvez, Marc Lecrivain, Fintan Moran, Abdullah Sayegh,

Geertrui van Overwalle, Martin Ekvard, Rosa Manjon and Alexander Krefft.

Anyone who was involved in the PIP project will know that there was one per￾son above all who made the whole project succeed and that was Marie-Josee

Goode. As the third member of the Sheffield Triumverate she was responsible

not only for the smooth running of all aspects of the project, but also for mak￾ing it the most enjoyable experience imaginable. It is impossible to express our

gratitude to her or our delight in having made such a great friend.

We owe an especial debt of gratitude to Richard Hart both for his belief in the

value of this project but also for his patience (not least when the authors took a

decision to delete the first final draft and rewrite from scratch).

Finally we would not have been able to write the book without the support of

Rob and Diane. They have borne the brunt of our forays abroad, obsession with

plants and bits of plants, the highs and lows of the PIP project and especially the

trauma involved in writing it all up. Without their constant belief in our ability

to write this book, this would still be a work in progress. The words ‘thank you’

seem so small and yet mean so much and we hope they understand the depth of

our gratitude and love. We dedicate this book to them.

As ever, responsibility for the contents of this book remains our own.

viii Preface

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Contents

Preface v

Table of Cases xiii

Table of Legislation xv

Chapter 1: Defining the Territory 1

I. Introduction 1

II. Defining Europe 3

III. Defining the Property Right 8

IV. Are Both Intellectual Property Rights? 24

V. Defining the Science 37

VI. Key Policy Makers 47

VII. Use of Other Intellectual Property Rights 49

VIII. Intellectual Property in Practice 50

IX. Conclusion 69

Chapter 2: Plant Protection Rights: International Influences 75

I. Introduction 75

II. An Overview of US Plant Protection 77

III. An Overview of the TRIPs Agreement 101

IV. Conclusion 132

Chapter 3: The Emergence of European Plant Protection:

The Route to UPOV 135

I. Introduction 135

II. European Plant Property Protection in the Early 20th Century 136

III. Plant Property Provision in the 1950s 139

IV. The History of UPOV 142

V. The UPOV Convention 151

VI. General Concerns over the Convention 196

VII. Conclusion 198

Chapter 4: The Council Regulation on Community

Plant Variety Rights 201

I. Introduction 201

II. The Objectives of the Regulation 204

III. The Regulation 207

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IV. Key Issues 218

V. Conclusion 244

Chapter 5: The European Patent Convention—

General Practice 247

I. Introduction 247

II. The Paris Convention and the Patenting of Plant Material 248

III. The History of the EPC: The Strasbourg Convention 251

IV. The European Patent Convention 257

V. Conclusion 286

Chapter 6: The European Convention—the Article 53(b)

Exclusions and Post-grant Issues 289

I. Introduction 289

II. Article 53(b) 289

III. EPO Policy and Practice Regarding Genetic Resources and

Traditional Knowledge 321

IV. Post-grant Issues 323

V. EPO Developments in Context 334

VI. Conclusion 337

Chapter 7: The European Directive on the Legal

Protection of Biotechnological Inventions 341

I. Introduction 341

II. The Road to Adoption 344

III. Directive 98/44 364

IV. The European Commission’s Report on the Development

and Implications of Patent Law in the Field of Biotechnology

and Genetic Engineering 387

V. Other Related EU Legislation 392

VI. The Response from Industry 393

VII. Conclusion 394

Chapter 8: The Views of European Plant Breeders 397

I. Introduction 397

II. Assessing the Views of Plant Breeders 397

III. Conclusion 453

Chapter 9: Common Ground? 455

I. Introduction 455

II. Diversity in Function and Experience 455

x Contents

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III. Key Issues 458

IV. Conclusion 513

Chapter 10: European Plant Intellectual Property:

Some Concluding Thoughts 517

I. Overarching European Provision 519

II. National Responses to the International Obligations 522

III. Diversity of Research and Organisation 524

IV. Broader Interests 525

Index 527

Contents xi

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Table of Cases

Advanta USA Inc v Pioneeer HiBred International Inc, No.04-C–238-S 27,

27 October 2004.......................................................................................49

Allen, re (1987) BNA’s Patent, Trademark and Copyright Journal 638..........88

Auchinloss v Agricultural & Veterinary Supplies [1999] RPC 397................488

Boehringer Mannheim (Docket No 93/960), CA The Hague,

3 February 1994......................................................................................488

Chakrabarty 447 US 303 (1980)...........................................85, 86–88, 150, 291

Ciba-Giegy/Propagating Material (Case T–49/83) [1984]

OJ EPO 112...............................................................................294–99, 302

Comtesse Louise Erody (Case A–23/2002) ....................................208, 240, 243

Festo v Shoketsu Kinzoku 122 SCT 1831 (2002) ..........................................328

Funk Bros Seed Co v Kalo Inoculant 33 US 127; 130 USPQ 280 (1947)...........78

Genentech I/Polypeptide Expression (Case T–29/85) [1989] OJ EPO 275 .....473

Georgetown University/Pericardian Acces (T–35/99) [2001] EPOR 169........284

Harvard/Oncomouse [1990] OJ EPO 476; [1992]

OJ EPO 589 ..............................................88, 281, 301–2, 307, 334, 348, 360

Harvard College v Canada (Commissioner of Patents) [2002] SCC 76....99, 138

Hibberd, re 227 USPQ 443 (1985) ......................................................85, 86–88

Howard Florey/Relaxin [1995] EPOR 541...............................268, 281–82, 371

ICOS/SmithKline Beecham (Patent No 94 903 271.8–2106/0630405),

22 August 2001 ...............................................265–66, 268, 271, 275–76, 389

Imazion Nursery Inc v Dania Greenhouses 69 F 3d 1560; 36 USPQ 2d 1673

(CAFC, 1995)...........................................................................................80

JEM Ag Supply Inc v Pioneer HiBred 534 US 124 (2001)..........................87–88

Kirin-Amgen v Hoechst Marion Roussel [2005] 1 All ER 667 ......................325

Klinische Versuche I and II [1998] RPC 423; [1997] RPC 623 ..........331, 488–89

Latimer, re [1889] Dec Comm Pat 123 ..........................................................78

Leland Stanford/Modified Animal [2002] EPOR 2 ..........................283–84, 376

Lowell v Lewis 15 Fed Cas 1018 (CCD Mass, 1817) ......................................95

Lubrizol/Hybrid Plants (Case T–320/87) [1990]

OJ EPO 71 .........................................295–96, 298–99, 306, 317, 374, 466–67

Madey (John MJ) v Duke University (No 01–1587) (Fed Cir, 2002)........97, 493

Microsoft (2004) ........................................................................................512

Monsanto Canada Inc v Schmeiser [2004] SCC 34..........................100, 482–85

Monsanto/Somatic Changes [2003] EPOR 327.................269–70, 355, 466, 474

Monsanto v Stauffer [1985] RPC 515...................................................331, 487

Mycogen Plant Science Inc/Modifying Plant Cells .......................................298

Netherlands v European Parliament and Council [2001] ECR I–7079 .....362–63

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Novartis/Transgenic Plant [2000] EPOR 303; [1999]

EPOR 123...............................................122, 293, 303–16, 318–19, 334, 351,

356, 372, 375, 445, 461–62, 466, 519

Nungesser v EC Commission [1982] ECR 2015.............................................65

NV Phillips Gloeilampenfabriken (1954) 71 RPC 192..................................138

PMA et al v Republic of South Africa et al (High Court of South Africa

–Transvaal Provincial Division) Case No 4183/98 Unreported..........112, 524

Parker v Flook 437 US 584; 198 USPQ 193 (1978)..........................................78

Pioneer/Oilseed Brassica [2004] EPOR 421.....................................276, 318–19

Plant Genetic Systems/Glutamine Synthesise Inhibitors (PGS)

(Case G–3/95) [1996] OJ EPO 169; (Case T–356/93) [1995]

EPOR 357 ................................................279–82, 285, 298–304, 306–7, 312,

334, 351, 359, 374, 399, 462, 466–67

Roche Products Inc v Bolar Pharmaceutical Co Inc (1984) 221

USPQ 157 (CD) (Cal) ...............................................................................96

Rote Taube [1970] 1 IIC 136 ............................................................................

137, 150

Sakata Seed Corp v SVS Holland BV (Case A–17/2002)...............................215

Schulin v Saatgut-Treuhandelverwaltungsgesellschaft mbh

(Case C–305/00)................................................................................243–44

Sieckman v Deutsches Patent und Markenamt [2002] ECR I–11737.............520

Unilever/Good Faith (GO2/97) [2000] EPOR 73..........................................500

Wellcome Foundation v Parexel International & Flamel, Trib de

Grande Instance de Paris, 20 February 2001 ..............................331, 487, 489

Yoder Bros Ltd v Florida Plant Corp 193 USPQ 264 (1976) ...........................78

xiv Table of Cases

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Table of Legislation

International Legislation

Agreement on Trade Related Aspects of Intellectual Property Rights

(TRIPs)...........................4, 10, 27, 29–30, 57–60, 66, 70, 73, 75–77, 89–90,

92, 98, 100–121, 124–25, 127–28, 131–33, 195,

201, 233, 248, 261, 346, 361, 364–66, 377, 387,

459, 470, 475, 491, 502, 504, 506–7, 509, 519–20, 522, 525

Preamble.........................................................................................102, 128

Pt I.............................................................................................................8

Pt II........................................................................................................502

Section V.....................................................................................104–5, 502

Art 1 ...........................................................................66, 102, 112, 163, 248

Arts 1–8 .................................................................................................102

Art 2 ......................................................................................................502

Art 7 ...............................................................................102–3, 129–30, 503

Art 8 ......................................................................................102–3, 129–30

(2) .....................................................................................98, 103, 114

Art 17(3)(b) ............................................................................................127

Art 27 ....................................................................................1, 23, 104, 128

(1)................................................................23, 92, 95, 104–6, 364, 368

(2).......................................................96, 105–8, 230, 366, 375–76, 390

(3)....................................................................................................96

(3)(a)..............................................................................................105

(3)(b).....................................4, 18, 23–24, 27, 30–31, 60, 103, 105, 110,

113, 115–18, 120–21, 124–25, 127, 129–30, 133,

150–51, 156–58, 197, 232–33, 290, 366, 412

Art 28 .............................................................................................105, 470

(2)..................................................................................................124

Art 29.....................................................................................................105

Art 30......................................................97, 108–10, 114, 233, 323, 366, 503

Art 31...............................98, 110–14, 235–36, 323, 332, 366, 500, 503–7, 520

(j) ...............................................................................................504–6

(l)...................................................................................................236

Art 33 ......................................................................................................66

Art 41.....................................................................................................197

Convention on Biological Diversity (CBD) .....................55–61, 76, 102–3, 110,

117, 126, 130–31, 178, 232, 244, 322

Art 3 ......................................................................................................376

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