2006 International Conference on Biology-related Patents
2006/09/28~29, Taipei, TAIWAN
AGRONOMY
Warren H.J. KUO
Professor & Chair, Department of
Agronomy, National Taiwan University
Cropping acreage, tHa
Changes in Crop Production
900
800
700
2004
稻
237 rice
crop
雜糧總計
59 Upland
Crop
特用總計
43 Special
青果總計
219 Fruits
蔬菜總計
165 Vegetables
觀賞總計
13 Ornamentals
tHa
600
500
400
300
200
100
0
’33 ’40
’56 ’61
’70 ’75
’88
’97
International trade of seeds
1,000,000
Export
900,000
Import
NT Dollars
800,000
700,000
600,000
500,000
400,000
300,000
200,000
100,000
0
1982
1985
1988
1991
1994
1997
2000
2003
International trades of ornamentals
US Dollars
http://www.phalaenopsis.idv.tw/h
ybrids/C/Chih%20Shang's%20Stri
pes%20X%20Plantation%20Polka
dot/0003.JPG
80,000
Export
70,000
Import
60,000
50,000
40,000
30,000
20,000
10,000
0
1990
1992
1994
1996
1998
2000
2002
2004
2006
History of IP protection on plant varieties
1988 Plant Seed Act
Vegetables
Fruits
Ornamentals
2004 Plant Variety and Seed Act
Cereals
To be extended to all plant all
plant genera and species
Application numbers of PBR
550
Valid
Pending
Expired
177 Withdrawed
125 Rejected
229 Nullified
9
7
2
Rice,
25th July
Application numbers
600
500
400
Orchid
Vegetables
Ornamentals
300
200
100
0
1991 1993
1995 1997
1999 2001
2003 2005
15th ,
Sept
Valid PBR
177
4 Poinsettia
Pear
2 Orchid
Tea
Papaya 1 Gerbera
Jujube 1 Chrysanthemum
1 Polyanthus
Peach
1 others
Litchi
10
Pending
41 Melon f.
31 Tomato f.
13 Tubers
8 Legumes
7 Cabbage f.
27 other
127
95 cv. of 9 ornamentals
22 cv. of 9 vegatables
8 cv. of 5 fruits/tea
15
10
5
4
3
3
40
Application numbers of PBR
550
Ornamentals
Application numbers
250
277
200
Vegetables
150
254
100
Fruits/Tea
50
19
0
Public
Sector
89
16%
Private
Sector
461
84%
National Foreigner
395
72%
155
28%
PBR
Application numbers
Private Sector
Application numbers
50
45
40
35
30
25
20
15
10
5
0
178
76
Median 3
74%
Mean
12
Application numbers of Vegetables
Public
44 254
Others
Private 210
10
cucumber f. public, 5%
12
121
Tomato
Eggplant
Sweet Pepper
55
cucumber f. private, 48%
cabbage f. public, 3%
cabbage f. private, 13%
15
Cucumber
family
tomato f. public, 6%
tomato f. private, 21%
other public, 4%
34
Cabbage
family
7
other private, 0%
PVP in Taiwan: who is claiming their rights?
Foreigners 3%
Nationals 97%
Vegetables
Application numbers
50
62
40
30
20
All fruit/tea tree
cultivars are of
nationals’ application
10
0
Tomato
Pepper
Water
Pumpkin
Hot/sw
melon
Melon
Cabbage
Cucumber
Family
Others
Application numbers of Ornamentals
275
Poinsettia
Other
ornamental
plants
95
5 56
Poinsettia, public, 2%
95
24
Public
29
Private 246
Poinsettia, private,
20%
Moth orchid , public,
0%
Moth orchid , private,
34%
Others, public, 9%
Others, private, 35%
Moth orchid/Doritaenopsis
Application numbers
ns
G ett
Ka erb ia
hr l e
ys an ra
an ch
th oe
em
um
A Ro
nt s
hu e
Im riu
pa m
tie
Pe ns
C tun
G alla ia
yp
so lily
ph
St i l a
at
ic
e
Po
i
PVP in Taiwan: who is claiming their rights?
Ornamentals
Foreigners 52%
Nationals 48%
106
60
50
40
30
20
10
0
Others
An infringe case
Gypsophila ‘Yukinko’
• Of Israeli origin
• Farmers were licensed to grow
• Right holder sued defendants
for propagated without
permission
• Farmers’ privilege not
accepted
• Settlement reached
http://www.fleuralia.com/e
ng/prod/esqueixoscos.htm
http://www.sakataseed.co.jp/m
ethod/flower/gypsophila.jpg
Plant Breeders in Taiwan
Public sector
Private sector
Rice
Maize
Maize (fresh)
Forage crops
Cover crops
Sweet potato
Tea trees
Timber trees
Fruit trees
Vegetables
Ornamentals
Maize (fresh)
Vegetables
Ornamentals
1980~2006
Genetically Modified Plants
Commercial Production: none
Risk assessment:
Event
Environ.
risk
Food risk
Rice (phytase)
Rice (lactoferrin)
Potato (phytase)
testing
no application
testing
no application
testing
no application
Broccoli (anti-ageing)
testing
no application
Tomato (Virus resistance)
Papaya (Virus resistance)
testing
no application
passed
no application
Prospects of GM plants
• Domestic seed markets too small to justify
investment of GM technology
• No supports from private sector
• Infrastructure of public sector not suit
• Production cost of rice not to be effectively
lowered by GM technology
• Small farms predominate (1.22 ha), and
contamination is inevitable
Are Taiwanese plant breeders
in need of patent protection
?
Similarities between PVP and Patent protection
Differences between PVP and Patent protection
The Plant Variety and Plant Seed Act (2004)
UPOV 1991 Convention
Similarities between PVP and Patent protection
Maize hybrids —US patent 6,180,857
C1. Hybrid maize seed designated 33P66, representative seed
of said hybrid 33P66 having been deposited under ATCC
accession number PTA-1522.
C2. A maize plant, or its parts, produced by the seed of claim 1.
Varieties which are essentially derived
from the protected variety (EDV)
C8. A hybrid maize plant according to claim 2, wherein the
genetic material of said plant contains one or more transgenes.
C9. A hybrid maize plant according to claim 2, wherein the
genetic material of said plant contains one or more genes
transferred by backcrossing.
C1. Hybrid maize seed designated 33P66, representative seed
of said hybrid 33P66 having been deposited under ATCC
accession number PTA-1522.
C2. A maize plant, or its parts, produced by the seed of claim 1.
Varieties which are not clearly distinguishable
C7. A maize plant…. capable of expressing all the
morphological and physiological characteristics of hybrid
maize plant 33P66, representative seed having been deposited
under ATCC accession number.
C11. A maize plant, or its parts, having all the morphological
and physiological characteristics of the plant of claim 2.
22. A maize plant, …one ancestor…is the maize plant…of
claim 21, said maize plant capable of expressing a
combination of at least two 33P66 traits … and well suited to
the Central Corn Belt, Western Corn Belt and Eastern Corn
Belt….
26. A maize plant, …one ancestor…is
the maize plant…of claim 25, ….
varieties whose
production
C21. A hybrid maize plant according to
requires the
repeated use of claim 11, wherein the genetic material of
said plant contains one or more transgenes.
the protected
variety
C25. A hybrid maize plant according to
claim 11, wherein the genetic material of
(Essentially)
said plant contains one or more genes
Derived Variety transferred by backcrossing.
C11. A maize plant, or its parts, having all the morphological
and physiological characteristics of the plant of claim 2.
Differences between PVP and Patent protection
Farmers’ privilege
Upov 1991
Article 15：Exceptions to the Breeder's Right
[Optional exception]
each Contracting Party may … restrict
the breeder's right … to permit
farmers to use for propagating
purposes, on their own holdings, the
product of the harvest which they
have obtained by planting, on their
own holdings, the protected variety ….
Differences between PVP and Patent protection
Farmers’ privilege
DIRECTIVE 98/44/EC
Article 11
1. By way of derogation from Articles 8 and 9, the sale or
other form of commercialisation of plant propagating
material to a farmer by the holder of the patent or with
his consent for agricultural use implies authorisation for
the farmer to use the product of his harvest for
propagation or multiplication by him on his own
farm, the extent and conditions of this derogation
corresponding to those under Article 14 of Regulation
(EC) No 2100/94.
Differences between PVP and Patent protection
Farmers’ privilege
Number of Farmers and Businesses Sued Per State
http://www.centerforfoo
dsafety.org/pubs/CFSMO
nsantovsFarmerReport1.
13.05.pdf
The Seed Availability and Competition Act 2004,
US [HR4693]
Differences between PVP and Patent protection
Breeders’ exemption
Upov 1991
Article 15：Exceptions to the Breeder's Right
[Compulsory exception]
The breeder's right shall not extend to
…..
(iii) acts done for the purpose of
breeding other varieties, and, except
where the provisions of Article 14(5)
apply, acts referred to in Article 14(1) to
Article 14(4) in respect of such other
varieties.
Differences between PVP and Patent protection
Breeders’ exemption
Freedom to Operate for
Public breeders
Differences between PVP and Patent protection
Breeders’ exemption
PIPRA members
•AVRDC: The World Vegetable Center, Taiwan
•CIMMYT: International Maize and Wheat
Improvement Center, Mexico
•CIP: International Potato Center, Peru
•IRRI: International Rice Research Institute,
Philippines
……….
Differences between PVP and Patent protection
Breeders’ exemption
•University of California,
Berkeley
•Cornell University
•University of California, Davis
•Iowa State University
•Kansas State University •University of California,
•Michigan State University Riverside
•University of Florida
•N. Carolina State
•University of Georgia
University
•University of Kentucky
•Ohio State University
•Oregon State University •University of Idaho
•University of Missouri•Purdue University
Columbia
•Rutgers University
•University of Tennessee
•University of Arizona
•University of Wisconsin WARF
•University of Arkansas
•Washington State University
…………
PIPRA members
Differences between PVP and Patent protection
Breeders’ exemption
Due parts of anything under
the sun that is
made by man
could be
patented
Differences between PVP and Patent protection
Breeders’ exemption
PVP
9
7
5
1
3
2
10
9999
4
8
6
11
Free to use
PVP
5
7
9
40
60
1
3
90
10
PVP
5
4
9
3
60
1
20
4
30
8
7
9
11
2
1
3
4
10
PVP
EDV
8
20
9
11
2
1
3
4
10
PVP
8
20
30
11
2
1
3
4
10
PVP
Differences between PVP and Patent protection
Breeders’ exemption
Patent
9
7
3
2
Patented
5
1
10
9999 4
8
6
11
5
7
9
11
2
1
3
4
10
5
7
9
11
2
1
3
4
10
BT
〤
8
20
9
11
2
1
3
4
10
Differences between PVP and Patent protection
A drawback in PVP
Company X
Company Y
GM cv.
cv. B
m
A
Back cross
cv. Bm
Bm
Patent
Bm
〤
PVP
Gene m
Plant Am
Essentially Derived Variety
Novel-trait Derived Variety
The protection of plant variety rights shall extend to
the following dependent varieties:
(i) varieties which are essentially derived from
the protected variety, where the protected
variety is not itself an essentially derived
variety,
(iv) varieties which novel-trait(s) are derived
from the protected variety, where the
protected variety is the initial variety bred to
possess the novel-trait(s).
The novel-trait shall be deemed to be
transgenic trait, mutated trait of non-natural
origin, or trait transgressed from wild species.
Genetic Transformation
Back Cross
A protected
cv. Km
cv. A
Essentially Derived
Novel Trait Derived
cv. Bm
B not
protected
cv. B
cv. Am
cv. A mn
cv. Fm
cv. Sn
cv. Bmn
In Conclusion, in TAIWAN:
PVP is
effective in promoting breeding activities
effective in facilitating technology transfer
a valid tool to deal with infringing case
Reasons not to protect by Patent
PVP is sufficient for traditional breeders
Intrinsic drawback of over protection for plants
Prospects of producing GM plants are small
Effective PVP for GM plants is possible
THE END
warren h.j. kuo
seed laboratory
department of agronomy
national taiwan university
237