Plant Breeders Rights

Transcription

1 Photo Courtesy of Martin LaBar under Creative Commons License Plant Breeders Rights MBM Intellectual Property Law LLP (Jonathan Roch) April 14, 2016 AIC-2016 IP 101 Workshop

2 Plant Breeding Manipulating the composition of plants to meet evolving needs Yield; resistance/tolerance to stresses; shelf-life; taste; size; quality; firmness; harvestability, nutritional value Time consuming and costly process

3 UPOV International Convention for the Protection of New Varieties of Plants UPOV Convention (Paris, 1961) Revised 1972,1978 and 1991 Framework law, international standard 74 member countries (15 others initiated procedures)

4 International

5 Canada - Plant Breeders Rights Act August 1, UPOV 1978 February 27, UPOV 1991 Breeders stronger protection & more return for plant breeders Farmers better access to foreign varieties by encourage foreigners to protect and sell in CA PBRA is administered by the Canadian Food Inspection Agency (not CIPO)

6 Plant Breeders Rights (PBR) Form of IP rights to protect new varieties of plants and allow owner to prohibit specific unauthorized uses of the variety. Optional protection Still need to comply with other reglementary framework (e.g. Seeds Act)

7 PBRA Protection Requirements Variety must be : (1) Novel (new for prior sales in Canada 1 year grace period; outside Canada 6 years for tree or vine varieties or 4 years for all other varieties) (2) Distinct (distinguishable from other varieties) (3) Uniform (all plants in variety are the same) (4) Stable (each generation of plant is same) All plant species, except algae, bacteria and fungi, are eligible for protection

8 PBRA Process File Application (claim priority with year) Preliminary Examination Examination/Testing (comparative and trials) Publication and Opposition Registration Annual Renewal Government Fees $1,500 + $300/yr

9 PBRA Exclusive Rights Control over the propagating material Sale and production of propagating material; (UPOV 1991) reproduction, conditioning for propagation, exporting, importing, stocking UPOV 1991 longer protection: 25 years - tree and vine 20 years - other species

10 PBRA Exclusive Rights Rights apply in respect of any harvested material Rights extended to include essentially derived varieties (EDV) Automatic provisional protection from filing (enforce equitable remuneration retroactively once granted)

11 PBRA Limitations/Exemptions Farmers Privilege (confirmed by amendment) Growers or farmers who have purchased propagating material can continue saving, conditioning, storing and replanting seed (FSS) of a protected variety for replanting on their own farm. MAY NOT brown bag or sell seeds produced from grain of protected varieties

12 PBRA Implicit Exemptions Private and non-commercial purposes (such as by home gardeners, hobbyists, subsistence farmers, etc.) Experimental purposes Breeding other plant varieties Compulsory licensing Powers to revoke rights

13 PBRA Statistics 15% Canadian Applicants (50/50 public/private) 5000 different varieties protected Increase of 25% of new application since Feb 2015

14 PBRA Application for Marijuana Denomination: 'Big C' Botanical Name: Applicant/Holder: Cannabis sativa subsp. indica Griffin, Chris Balliol Street Toronto, Ontario M4S 1C3 Canada Application Date: Application Number:

15 PBRA Applications for Hemp Hemp Genetics International (Saskatoon) Recent 2015 Canabis sativa Hemp filings Denomination: 'Picolo' Botanical Name: Cannabis sativa Application Date: Application Number: Denomination: 'Grandi' Botanical Name: Cannabis sativa Application Date: Application Number:

16 Photo Courtesy of aussiegall under Creative Commons License PBRA - Denomination Section 10.1 Trade-marks Act prohibits plant variety denominations from being adopted as trademarks in association with the plant variety or another plant variety of the same species or use in a way likely to mislead Section 12(1)(f) Trade-marks Act prohibits registration of a denomination as a trademark

17 Photo Courtesy of Firkin under Creative Commons License PBRA - Denomination Trademarks Example New variety of cannabis sativa Register Trademark for the company name: e.g. HEMP GENETICS INTERNATIONAL or HGI Under the PBR Act the denomination is PICOLO The specific trademark for this variety could be WHITE FOX TM propagating material would be marketed as HGI PICOLO White Fox TM. After term of protection, the plant and denomination PICOLO would be available to everyone originator would still be the only one to market as WHITE FOX Melody

18 Patent Protection for Plant-related Inventions No patent protection on plants or seeds in Canada (multi-cellular organisms) Patent-related inventions (chemical sequence of an isolated gene and methods of their use to make genetically modified plants) International

19 Patent Examples in Canada CA 2,469,490 - METHOD OF PREPARING DELTA-9 TETRAHYDROCANNABINOL CA 2,510,557 - METHOD TO PRODUCE TOMATO PLANTS THAT EXHIBIT RESISTANCE TO BOTRYTIS CINEREA & TOMATO PLANTS DERIVED THEREFROM CA 2,433,532 - TRANSGENIC PLANTS CONTAINING ALTERED LEVELS OF STEROID COMPOUNDS (claim to recombinant construct/vector, host cell; plant comprising host cell)

20 Trans Pacific Partnership (TPP) Requires all 12 TPP countries to join UPOV 1991 Canada, U.S., Japan, Australia, Peru, Malaysia*, Vietnam, New Zealand*, Chile*, Singapore, Mexico*, and Brunei*. *not yet members of UPOV 91