Abstract: 1. Introduction. 2. The sui generis protection system. 3. Article 27.3 (b) of TRIPS. 4. UPOV. 5. Terms for signature and ratification of or accession to UPOV 1991. 6. Coexistence of two different texts. 6.1. Accession to UPOV 1978. 6.2. Right to Development. 7. Evolution of protection of new varieties of plants in Brazil. 8. Accession to UPOV 1991. 9. UPOV Convention: Act of 1991 and the pre-draft of bill on new varieties of plants – intersections and sensitive points. 9.1. Definitions. 9.2. Features, implementation and extension of protection. 9.3. National treatment, reciprocity and technical criterion. 9.4. Forms and terms for request of exclusive rights and right of priority. 9.5. Extension of protection. 9.6. Exceptions to the Breeder’s right. 9.7. Essentially derived varieties and exception for experimental purposes and purpose of breeding other varieties. 9.8. Restrictions and exhaustion of Breeder’s Right. 9.9. Period of Protection. 9.10. Nullity of Breeder’s Right. 9.11. Relations between Contracting Parties and States bound by earlier acts. 9.12. Breeding in the Act of 1991. 10. A New Bill on new varieties of plants: a new sky-line.
Abraham Lincoln, in Speeches and Writings 1859/1865, Library of Americas, Washington DC, 1989, pp. 99-100, wrote:
“Não conheço nada tão reconfortante para a mente como o descobrimento de algo que seja novo e valioso de uma só vez; nada que suavize e torne mais agradável uma tarefa árdua, como a esperançosa busca da descoberta. E quão vasto e variado é o campo da agricultura para tal descoberta. A mente, já treinada para pensar, na escola rural, ou na universidade, não pode deixar de encontrar uma fonte inesgotável da proveitosa satisfação. Até a mais microscópica grama pode ser objeto de estudo; e fazer crescer duas, onde no solo havia apenas uma, é ao mesmo tempo um benefício e um prazer. E não apenas a pastagem, como também os solos, sementes e estações do ano; as cercas vivas, os fossos e cercados, a drenagem, as secas e a irrigação – os arados, a enxada e o rastelo; a colheita, o transporte e a debulha; a preservação das colheitas, as pragas das colheitas, a prevenção contra as mesmas e a cura para o problema; os implementos, utensílios, maquinário, seus méritos relativos e como melhorá-los; os suínos, eqüinos e bovinos; os ovinos, os caprinos e as aves; as árvores, arbustos, frutas, plantas e flores; os milhares de coisas das quais estes são espécimes…cada um, um mundo de estudo em si mesmo.”
It is a fact that the 1997 Brazilian Law on New Varieties of Plants emerged pressured between the accession of Brazil to the TRIPS and the deadline of accession to the UPOV 1978.
There was a fear that UPOV 1991, a more protective and extensive version of UPOV, could be harmful to a developing country. But the fact is that, concerning agriculture, Brazil cannot be considered as a “developing” anymore, keeping high standards comparable to Europe and United States.
Therefore, the experience of a little more than a decade with the protection of new varieties issue has been vanishing the fears related to intellectual property on the countryside and opened grounds for new voices rising and claiming the accession to a more extensive and updated UPOV.
In Brazil, the protection of new varieties of plants is regulated by Law nº 9.456, dated of April 25, 1997, which established the Law for Protection of New Varieties of Plants, regulated afterwards by Decree nº 2.366, dated of November 5, 1997. This law launched a specific regimen for protection of new varieties in the national territory, not being subjected such protection to the patents treatment.
The option for building up a specific protection system for new plant varieties, not including this category under the patents law, was a result of several years of discussions in Brazil in different sections of society, including players from a range of areas, such as scientists, companies, farmers, among others, ending up with the elaboration of the aforesaid Law and the accession of Brazil to the group of UPOV.
Nevertheless, when such Law was drafted, the option was not limited only to whether or not to have a regulatory framework for the production of new varieties of plants, but also how to do it. And among such choices, there should have been made a decision on drafting a bill compatible with the most spread rules on plant varieties (in this case, the UPOV), or not; and in case of a positive answer for the UPOV, if should be adopted the regulatory level of the Act of 1978 or Act of 1991, and, moreover, under the patents or sui generis system, or even a mix of both systems, according to the options included in such Treaty. Then, Brazil opted for the sui generis system, based on the UPOV 1978, and the Brazilian Law of Protection of New Varieties of Plants was prepared.
In the year of 2009, notwithstanding, a pre-draft of bill was presented before Congress, suggesting new parameters for regulation of protection to new varieties of plants in the country, aiming to promote Brazil to a higher stage of protection to new varieties of plants, taking our law to the levels established by UPOV 1991. Therefore, in order to clarify all terms and levels of regulation involving the protection of new varieties of plants, hereunder we go through some relevant aspects of the present law on cultivated varieties, and on the perspectives to be reached by the changes suggested for a new regulatory framework in Brazil, according to the UPOV 1991.
2. The sui generis protection system
“Sui generis” is a latim expression which means “unique, singular”. In the case of a “sui generis protection system”, the expression is used to identify unique systems, which do not have a pair, odd. In the sense used in this text, referring to an intellectual property protection system, it indicates that the protection system qualified as sui generis does not follow pre-established patterns of a well-known system, with stiff borders, but a system with more flexible structure, malleable content, and which provides more options to its formation, allowing the State which is drafting the law to adhere to minimum levels of protection required, and then organize a certain category of intellectual property as it wishes.
This system for intellectual property protection is foreseen in the TRIPS Agreement, in Article 27.3 (b), where it is explicit the exception to the patents system for the protection of some specific types of invention. Such Article establishes that plants and animals are not subject to the patent protection in countries members of the WTO (we must avoid the controversy here on whether or not microorganisms are plants or animals, and all other ramifications of such debate), and also determines the exceptions to this rule and the possibility of protection of plant varieties, giving the following options to structure the protection system, which are: i) the patent system; ii) the sui generis system; and iii) a mixed system of the first two.
3. Article 27.3 (b) of TRIPS
The text of 27.3 (b) determines explicitly:
3. Members may also exclude from patentability:
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.
Article 27.3 (b) establishes which kind of invention shall not be subject to patenteability, also previewing some exceptions to such rule. Some of the words used in the text of 27.3 (b) have created big controversies regarding its lack of precision and low definition of the real meanings of the text.
Not only the need for a higher precision of terms, but also because of its content, in the last few years there have been meetings among members of TRIPS, besides the collaboration of other institutions, such as WIPO and UPOV itself, in order to discuss the review of Article 27.3 (b) of TRIPS, having as a starting point the impossibility of protection of animals and plants, and essentially biological processes for the production of plants and animals, under patent system, and the understanding of all terms included therein.
The UPOV (from the French “Union Internationale pour la Protecion des Obtentions Végétales”) is an international organization which has as main scope to promote and unify systems of plant breeding protection all over the world. UPOV is an independent institution, a legal entity with headquarters in Geneve, Switzerland, and has as its members States from all continents, besides the European Community, as an intergovernmental organization with international legal status.
The remote origins of UPOV are in the fifties, when took place in Europe, mainly in France and Germany, a movement to stimulate the creation of an entity to protect new plant varieties, in a worldwide range. Historically, such interest is justified by the fact that, those times, these countries were already owners of considerable technology on plant varieties, and therefore needed protection worldwide for their technology. Then UPOV was founded in 1961, and from its assemblies three Acts have arisen: first, the Act of 1961, which final version was not well accepted by the signing members and others that meant to adhere to it, and because of it was amended in 1972, resulting in a mixed text; the Act of 1978, proposing a big chance in the text; and the Act of 1991, which created new instruments to fulfill the demand of a dynamic market, which, even after all the changes to meet the expectations, took a long period to entry into force, because of a low number of accessions and ratifications.
The creation of UPOV resulted directly from the pressures of breeders and sectors related to commerce and production of new varieties of plants in the international market, because of the understanding that the patent system had deficiencies and did not provide the appropriate protection for new plant varieties, and did not meet all specific needs of this intellectual property field.
Between the last two versions of UPOV – the Act of 1978 and the Act of 1991 – there is a significant difference of commands and rules regarding the protection of new plants, considering that, during the drafting of Act of 1991, the most important requests motivating the changes of text were related to the update of regulation inserted in the Treaty, and its adequacy to the new social-economic dynamics of globalized world, facing a growing interaction of countries and other international organizations in the foreign commerce, and the reflexes of such interactions inside economies of the playing countries, mainly in the countries owners of technology, which considered themselves exposed and vulnerable under the existing regulation of plant varieties, and this request had as main core the previous experiences of member countries under the Act of 1978.
The first version of UPOV, Act of 1961, entered into force only in the year of 1968, when the requisites for its enforceability were fulfilled. Such version was revised and amended by the text of 1972, when some aspects relating to the structure and bureaucratic features inside the Treaty were reformed, including finances and ways of decision making inside the organization.
Second version of UPOV, Act of 1978, in which the terms of Convention were completely revised and modified, entered into force on November 11, 1981, when the accession to the Act of 1961, amended by the 1972 text, was closed to any State. The Act of 1991 entered into force only in the year of 1998, when the items demanded for its enforceability were met.
This last version had a low rate of adherence of members, in a first moment, as a result of more complex and extensive protection, added to a more severe system imposed to the members of the Union, with regard to the protection of breeder’s rights and guarantees awarded to them. As a consequence of such low adherence in this first moment, and the delay, by the signing countries, in ratifying the Act of 1991, it entered into force only in 1998. Therefore, all other providences included in the text, and which had specific dates to enter into force, were delayed as well, such as the deadlines of accession to the Act of 1978 to non-member countries after the entry into force of the Act of 1991: this deadline, at first, for countries considered as “developing countries”, would be until the last day of year 1995, and for other countries, until December 31, 1993. Nevertheless, since the Act of 1991 only entered into force in 1998, such deadlines were changed as well.
Considering the above said, we may state that UPOV was created to protect the rights of breeders, aiming not only the establishment of standards of protection regarding such rights, but also the exceptions, allowing the breeder, before a legal breach of exclusive rights regarding plant varieties by any other member country, to know the reason of such breach previously, allowing the calculation of risks before the introduction of a new variety in a given market of any member of UPOV. The security and protection of breeder’s rights would be, then, guaranteed, and specific values would be preserved by such given exception mechanisms.
The Act of 1991 brought changes in the level of protection granted to plant varieties, as well as modifications in the extension of exceptions were made. But one of the most important points, to which we may pay attention to in here, and that expresses a new direction in relation to the original purposes of UPOV, is the exception to the obligation of accession to the text of 1991, once a developing State could make the option to be bound to UPOV by the Act of 1978.
At this moment UPOV modifies the focus of protection, not contemplating only the rights of breeder anymore, and gives room, in its structure, to values such as the right to food and to development, beside others. Even considering that the previous versions of UPOV – Act of 1961/72 and Act of 1978 – were lighter regarding the rights protected, they did not have similar devices giving such importance to the values inserted in Act of 1991. We may affirm then that UPOV recognizes the difference between developing countries and developed countries, between levels of protection that may be granted, between control mechanisms available in these countries to protect such rights, the need of new varieties for the development of agriculture and of people, the importance of access to new plant varieties by farmers. All these values, among others, are contemplated in its text, because when the exception allowing the accession to the Act of 1978, even after the Act of 1991 entered into force, all the changes of content between these two versions were evident, bringing with them their meanings before the previous text (mostly regarding the exceptions contemplated therein), from a social and economic point of view.
5. Terms for signature and ratification of or accession to UPOV 1991
There must be noticed that in both texts – Act of 1978 and Act of 1991 – there are deadlines for the signature of such Acts. According to their texts, the version dated of October 23, 1978 could be signed until October 31, 1979, not only by the States already members of the Union, but also by those States which had representatives in the Assembly which drafted the Treaty, but were not members yet; and the version dated of March 19, 1991 could be signed until March 31 1992, but this one only by States already members of the Union.
Although there was a deadline for the signature of both Acts, expressly in their texts, it was also included in both Acts the right of other States request the accession to the respective Act, the 1978 or the 1991. On this regard, the 1991 text brought a new aspect, in harmony with the tendencies of its days, and expressly allowed that intergovernmental organizations to join the Union, by accession to the Act, since requisites provided therein were attended in order to do so.
The Act of 1991 establishes that there will be no possibility of reserves regarding its regulations, when a State is adopting its rules, with only one exception: those States bound to UPOV by the Act of 1978, and which provide a protection system of varieties reproduced asexually by an industrial property title other than a breeder’s right shall have the right to continue to do so limited to those varieties, since it notifies UPOV about such reserve. Then, an exception to the Article 3(1) is made, regarding the terms and conditions conferred to States for the implementation of rules of Act of 1991.
6. Coexistence of two different texts
6.1. Accession to UPOV 1978
It is important to point out about the Act of 1991, and what creates doubts in the international scene, the permission of coexistence of two Acts regulating rights of breeders in the world: the regimen of UPOV 1978 and regimen of UPOV 1991.
According to Article 37 of UPOV 1991, this version would enter into force one month after five States, at least, have deposited their instruments of ratification, acceptance, approval or accession before the Secretary-General of UPOV, and since at least three States were already members of UPOV, bound by the Acts of 1961/72 or 1978. And these States, particularly, would be bound by the UPOV 1991 one month after the deposit of the abovesaid instrument.
Notwithstanding, the item (3) of Article 37 establishes that any instrument of accession to the text of 1978 could be deposited after the Act of 1991 entered into force, as described above, with only one exception: the States considered by United Nations as developing countries could access UPOV 1978 until the date of December 31, 1995, and that any other States could deposit their instruments of accession to the Act of 1978 until December 31 1993 (what was changed afterwards, allowing States to access UPOV 1978 until the year of 1999, including later exceptions made by the Council of UPOV, allowing accessions by other countries to UPOV 1978).
According therewith, an opportunity was granted to countries which were not members of UPOV, since the conditions set up in the Treaty were fulfilled, and which intended to be part of the Union, but still did not have the conditions to undertake and implement the obligations contained in Act of 1991, allowing them to access UPOV 1978. The main reason for that, although the UPOV 1978 had lighter regulation, regarding the protection granted to breeders, was to insert in the accessing country protections conferred to breeders in the relations between members of UPOV, even though in a lower level, but bound by different texts, as regulated in the Treaty.
6.2. Right to Development
It is not possible to argue that the possibility of accession to the text of 1978 was a step back, as one would like to say, by keeping open until 1999 the possibility of option for a regulation considered ancient, including even some exceptions made later then, once there was a new revised text in force. But it shall be acknowledged a big step towards the evolution of protection of new varieties of plants as an instrument of development of societies, stating the social importance of new varieties of plants as a transforming element of society.
Obviously, in such argumentation, we may not disregard that, also, one of the purposes of such exception would be to introduce and prepare a level, even lower, of protection, in order to make a path for a later higher level, creating therefore “degrees” towards a high level of effective protection.
Since the purpose of UPOV is exactly the “effective” protection of rights on new varieties of plants, in this sense the differences among nations and their people, the different needs of each State were acknowledged, and therefore the access to different levels of protection and to new plant varieties protected under the UPOV agreement were allowed, but always in harmony with the reality of each State.
For that reason we may state that such permission included in UPOV 1991, granting access to UPOV 1978 to States considered as developing countries, applies to the reality the principle of equality, treating as different the different ones, proportionally to their difference. Such statement is in agreement with the words of Franco Montoro, ipsis literis::
The right to development, stated in the preamble of (United :Nations Declaration of Human Rights) Act of 1948, and affirmed by United Nations General Assembly as a worldwide target for the 1960’s and 1970’s (the “decade of development”), fulfilled its plenitude of meaning in the concept of Populorum Progressio: the development is the new name of peace.
The second right, connected to the aforementioned, is the one entitled by every single man of participating actively in the process of development. It does not stand only for receiving the benefits from the progress of nation, but taking part in the decision making process and in the efforts for its accomplishment. Instead of being treated as an object of the paternal attention of power deterrents, the man has the right to be considered a conscious and responsible person, able of being a player and agent in the process of development.
The admission to the UPOV is undeniably benefic for any nation, for several reasons, among them the access to technology by farmers, and facilitating and possibly creating increment in the commercial flow. But even more important was the granting of access to UPOV 1978 to countries considered developing countries, allowing several countries to be part of UPOV (once the UPOV 1991 had more complex mechanisms of protection and more extensive rights protected by the Treaty), and acknowledging the differences among States and their levels of development.
As pointed out by Amantya Sen, when commercial and technological liberalization among nations is not playing the role of stimulating the economic and human development, the human development, even as a consequence of the first, this liberalization is not collaborating with the accomplishment of the main goal searched by nations, which is the welfare of people, or, in the words of the author, the freedom from deprivation.
7. Evolution of protection of new varieties of plants in Brazil
Brazil has a particular history regarding the protection of intellectual property Law. Since the Portuguese Royal Family arrived in these lands (1808), after Napoleon invaded Portugal, until the Industrial Property Law and the Law for Protection of New Varieties of Plants in force nowadays, among others, along the Brazilian history certain values were inserted in the legal system, values which include the protection to intellectual property itself, until the concepts of access to inventions and compulsory licenses, based on social values and according to dominant social dynamics in every history cycle in the country.
In Brazil, the present Law for Protection of New Varieties of Plants was the climax of discussions taking place along decades. Among the existing options to Brazil we can point out the choice for the prohibition of patent protection to live beings, exception made for transgenic microorganisms, and the preference for a sui generis protection system for plant varieties.
The options made by Brazil had the TRIPS Agreement as basis, mainly Article 27.3 (b). The TRIPS Agreement only provides rules which give a wide framework for development of national legislation, and therefore its interpretation and orientations coming therefrom are essential for harmonization of international commerce and transfer of technology among countries. Brazil is having an active role in discussions taking place before TRIPS Council, in WTO, regarding understandings and regulation concerning Article 27.3 (b). Such path of development of regulation regarding plant varieties in Brazil includes Decree-Law n. 7.903, dated August 27, 1945, which stated in its Article 3 that “the protection of industrial property is made through: a) concession of privileges on: invention patent; utility model; industrial design or models and new varieties of plants”. Although the referred regulation on rights concerning plant variety protection has never been made, over the years took place debates among sectors of society – mainly farmers and breeders – including multinational companies and government, regarding the effective drafting and implementation of legislation on plant varieties in Brazil, which had a peak with the elaboration of the present Law for Protection of New Varieties of Plants. According to Paulo Eduardo Velho, the major players in such discussions, over the previous decades before the present law, were the Centro Nacional de Recursos Genéticos – Cenargem (National Center for Genetic Resources) of Embrapa (Brazilian Company for Agriculture and Cattle Research), the Instituto Agronômico de Campinas – IAC (Campinas Agronomic Institute), Agroceres, Abrasem (Seed Brazilian Association), Copersucar (association of producers of sugar), the Ministry of Agriculture and the IPB (International Plant Breeders).
The main arguments used in the discussions along the drafting and final approval of the Law for Protection of New Varieties of Plants were (i) the importance of such Law as a measure to protect the breeders, and consequently attract private companies to raise its investments in research in the country; (ii) incentive for the increase of investments in research by government, through its institutions; (iii) contribution for the increase and development of plant varieties available for farmers; and (iv) the impact of legislation on the control, exchange and use of scientific germplasm. In addition, we also may point out the political effects, in international scale, of being part of a group, represented by UPOV, and, even with all the reservation, insert in its legal system the values arising out of a multilateral treaty.
8. Accession to UPOV 1991
The pre-draft of bill of the new Law for Protection of New Varieties of Plants intend to rise up Brazil to a higher and wider new level of protection. This is made by the insertion of concepts and principles brought from the UPOV 1991 into the Brazilian legal system. The impact on economy may be deep, mostly as a response to the increase of extension of rights (including rights on products made directly from harvested materials) and changes on the exceptions to the breeder’s rights (compulsory license and restricted public use), what can increase or decrease the production of certain products in national territory, and modify the flow of capital, in and/or out of the country; in other words, a social and economic impact.
In case Brazil plans to be officially recognized as a country which follows the UPOV 1991 before the international community, first of all it must be enacted a national law which includes the principles established by this version of UPOV. In order to access nowadays the Act of 1991, the country also has to submit its national law to the analysis of the Council of UPOV, so such Council can check if it is in conformity with the terms and conditions included in the Treaty. In case it does not comply with the terms of UPOV 1991, the Council shall say which are the inconsistencies, allowing the amendment of legislation.
If the national law is found in accordance with the terms of UPOV 1991, the submitting State may deposit the instrument of accession to UPOV before the Secretary-General of the Union. Then, the applying party shall be officially considered member of UPOV, version of 1991, and as consequence it shall be understood that its internal legislation attends to all commands and criterion inserted in the UPOV 1991.
9. UPOV Convention: Act of 1991 and the draft bill on new varieties of plants – intersections and sensitive points
The Act of 1991 of UPOV was more severe on the protection of plant varieties, introducing changes in the conditions, extension and periods of protection of varieties.
The text of 1991 clearly express in Article 2 its purpose, determining that “each Contracting Party shall grant and protect breeders’ rights”, which stands for an active attitude of the ones who elaborated the agreement. Differently, the Act of 1978 stated that the member States “may recognize the right”. This is emblematic, and defines clearly the differences between the two versions: the Act of 1978 recognizing rights; and the Act of 1991 working actively for the grant and protection of rights.
Using good technique, the Act of 1991 defines in the beginning of the text the meaning of key-words used in the Act, avoiding, at first, margin to misinterpretation or confusion related to the words and terms defined therein, what limits the content and mitigates understandings not wanted by the ones who elaborated the Treaty. Also the Brazilian law and the new pre-draft object of our study adopted such technique for their texts.
In the definition of right for a new variety of plant, differently from the present Law for Protection of New Varieties of Plants, the pre-draft does not state that such right is equivalent to a right on a movable good. Nevertheless, in Brazil rights equivalent to real estate rights are numerus clausus; in other words, duly expressed in the law, and all the other rights are not equivalent to real estate rights (incurring in all legal implications coming therefrom). Although there may be a confusion when taken into consideration the terms of Article 79 of Brazilian Civil Code (“all that may be incorporated to the ground” is equivalent to real estate), the plants incorporated to the land, as understood by the doctrine, is a movable asset by anticipation (they shall be harvested in the future, detached from the land, and then fulfill its main purpose). And the rights for indemnification in case of unauthorized use of transgenic technology may persist, not only because they are rights for “indemnification” (royalties are only paid in case of authorization, the other hypothesis are related to indemnification), as well as the pre-draft, once approved, would be a specific law, which would derogate the generic law (the Civil Code), because of its specificity.
From such difference come all other consequences related to movable or immovable goods, mainly the ones related to guarantees, apprehension, transfer of property, inheritance, and all the others.
9.2. Features, implementation and extent of protection
At first, as a way to strengthen the protection system, the Act of 1991 allows the contracting Parties to protect the rights of breeders through a patent system, a sui generis system, or by a combination of both previous ones. In other words, it is permitted by the Act of 1991 the protection by one of the three possibilities. Brazil, despite all the options presented, keeps the sui generis system in the pre-draft.
9.3. National treatment, reciprocity and technical criterion
The concepts regarding national treatment were kept, clarifying, whatsoever, that “nationals means, where the Contracting Party is a State, the nationals of that State and, where the Contracting Party is an intergovernmental organization, the nationals of the States which are members of that organization”. Such definition is contemplated in the pre-draft of bill as well.
9.4. Forms and periods for request of exclusive right and right of priority
The term for remittance of further information and additional documents to be required by State organs, related to the request of exclusive rights, according to the Act of 1991, has been changed from four to two years, counting from the end of priority term. This change was included as well in the Brazilian pre-draft.
The form of request of exclusivity and the right of priority were kept. But the deadline for the delivery of documentation in the case of request of exclusivity after the first request, aiming to obtain the benefit of priority, changes from up to three months to not less than three months (Article 11(2)) in the Act of 1991, as well as the delivery of samples of the variety object of protection, establishing, therefore, a minimum term as a parameter for national legislations, to establish a term for accomplishment of legal formalities required, making feasible the delivery of information before the State organ. In Brazilian pre-draft the term of three months is kept the same (Article 33, par. 2).
9.5. Extension of protection
In the version of 1991 of UPOV, there was a change regarding the extent of the rights protected, comprising the production or reproduction (multiplication), conditioning for the purpose of propagation, offering for sale, selling or other marketing, exporting, importing, and stocking for any of the purposes mentioned above (Article 14, UPOV 1991).
Such rights, as of the text of 1991, are extended to the harvested materials, including the entire plants and its parts, obtained through the unauthorized use of propagating material of the protected variety, according to the law. And as per item 3 of Article 14, the protection is extended to certain products made directly from harvested materials (primary products) protected by the Treaty, obtained without the previous authorization of the breeder. Such provisions do not apply to the cases of exception to the breeder’s rights and in case of loss of rights by the breeder. Such measures do not apply, however, when the breeder has had reasonable opportunity to exercise his right in relation to the said propagating material, but did not act as such.
In other words: in case the owner of the exclusivity has the knowledge of the use in agriculture of the plant protected, and do not take any measure towards the protection of his rights in certain local or country, and, in other moment and place, at his sole discretion, measures are taken for the exercise of its rights, such measures shall be contested, once the opportunity for protection of rights has already existed, and nothing was made. Then, it is not allowed to the owner of right of exclusivity not to claim the protection for his rights, and decides when he may find suitable to request such protection, including the protection under other legal systems, choosing the place and moment to request indemnification for the unauthorized use of the plant variety, since this is not the main reason for the guarantee given. It is salutary such understanding, since this position confers legal security also to other relations regarding plant varieties, and the opportunity for the settlement of consolidated relationships.
The determinations abovesaid, from UPOV 1991, were included in the Brazilian pre-draf of bill as well, in its Article 8. The wording used in the draft of such Article are different from those included in the UPOV 1991, but, according to our understandings, the content is the same, and include, in the present pre-draft, all the activities that may relate to plant varieties and products originated therefrom, and which are included in the English text of UPOV.
The provisions referred hereinabove are also applicable to essentially derived varieties from the plant variety protected; to varieties which are not clearly distinguishable from the protected variety, based on the criterion contained in the Treaty; and to varieties whose production requires the repeated use of the protected variety, as referred in the UPOV 1991, are also in the Brazilian pre-draft of bill.
Besides such regulations, the pre-draft of bill brings in its text a mechanism which excludes third parties liabilities when, acting in the commercial chain, this third party acts on good faith. Therefore, this third party which, unaware of the harm to the rights of the breeder, and acting in the commercial chain, acquires with good faith agricultural or processed goods, for commercial purposes, and such goods are originated from a protected plant variety, shall not be deemed liable for the infraction of rights, and cannot stand as a party in case of a lawsuit, even in case of an indemnification law suit based on the unauthorized use of the plant variety, since the law itself excludes its liability.
9.6. Exceptions to the breeder’s rights
It is important to be clear the rights of protection of new varieties of plants and the limits conferred by the Act of 1991, because of all the considerations about the previous Act of 1978, taken as unsatisfactory on the protection of rights, what has caused the restructuring of terms of UPOV, besides several discussions taken in institutions and organs related to the international commerce and new varieties of plants around the world, mainly in the WTO.
The Act of 1978, according to some entities involved in the chain of exploration of plant varieties, was lacking on the protection of the rights conferred therein. Then, in the Act of 1991, are given possibilities for each member State to set up different limitations to the breeder’s rights. UPOV 1991 includes, in its Article 15, exceptions (compulsory and optional) to the rights of breeders, and moreover institute obligations to the member States related to the rights to be protected.
The compulsory exceptions have as main reason the guarantee of access by the scientific community to the existing knowledge, with non-commercial and experimental purposes, and for the creation of new plant varieties, considering, nevertheless, the protections referred in Article 14 (5), which protects essentially derived varieties from the protected variety; varieties which are not clearly distinguishable from the protected variety, based on the criterion contained in the Treaty; and to varieties whose production requires the repeated use of the protected variety.
Considering the abovesaid, in Article 15.2 of UPOV 1991, it is granted to each contracting party, in the production relations which involve plant varieties, the choice of determining, with the salutary parsimony, the right of farmers to save the goods from his production, for purposes of reproduction or multiplication, in their own lands. On this item specifically, there is a recommendation coming from UPOV itself, which determines that such privilege (farmer’s privilege) do not be extended to sector of agriculture production which usually do not get such privilege from the country where it has its production. We may understand, from that point, that when a country only award the privilege of reproducing material production to little farmers, it would not be, as a consequence of UPOV 1991, that such privilege should be awarded to big farmers and companies, once such Act set up the possibility – or not – of granting such privilege, being at the State’s sole discretion the choice of including it or not, and which extent to do so, in the country’s legal system.
To member States is granted the possibility of restriction to the rights of breeders regarding the payment of royalties for the reproduction of plant varieties on which they may have the right of exclusivity, according to the conditions stipulated above, and considering the recommendation of UPOV itself.
Therefore, each member State may determine, by its national legislation, which privileges shall be granted to the farmers, being, therefore, a political and strategic decision. In this sense, it excludes the understanding on the matter as an obligation taken by the Treaty signing countries, and acknowledges this as an option of each one of them in a internal level, including there also the extension of such privilege. It is also allowed for the contracting States to make its legislation suitable to its reality, without, however, establishing rules which may challenge the determinations of the Treaty, contracted by the State.
Consequently, in Brazil, in its pre-draft of bill, there were included the compulsory exceptions as well as the optional exception. Nevertheless, regarding the compulsory exceptions, the national option was not to use the terms “acts done privately and for non-commercial purposes” (Article 15, 1 (i)), opening such option in several itens. Then, in the pre-draft of bill there is the possibility of use of plant varieties as food for own consumption, limiting, in a certain way, the content of the exception set up in the Treaty. Certainly such option may be questioned, since, if Brazil is really interested in access the Act of 1991, it shall submitt the new national legislation to the analysis of the Council of UPOV, which may ask Brazil to explain such point, or request its adequacy to the Act of 1991, even suggesting a different wording.
Though, the exceptions regarding the small farmers, family agriculture and traditional communities are extremely regulated in the text of the pre-draft, going further than what establishes the Treaty itself, or even than what was inserted in the previous legislation on new varieties of plants in Brazil, making clear the meaning of several terms and concepts included in the text of the previous article of the pre-draft, as well as requisites to be considered small farmer for the purposes of the law, besides the limits of land owed, what is extremely positive in order to apply the legislation.
9.7. Essentially derived varieties and exception for experimental purposes and purpose of breeding other varieties
Concerning the accessibility to the technology for the development of new plant varieties (essential derivation), Article 14.5 establishes which are the conditions of protection for the use of plant varieties, as follows:
14.5. [Essentially derived and certain other varieties]
(a) The provisions of paragraphs (1) to (4) shall also apply in relation to
(i) varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety,
(ii) varieties which are not clearly distinguishable in accordance with Article 7 from the protected variety and
(iii) varieties whose production requires the repeated use of the protected variety.
(b) For the purposes of subparagraph (a)(i), a variety shall be deemed to be essentially derived from another variety (“the initial variety”) when
(i) it is predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety,
(ii) it is clearly distinguishable from the initial variety and
(iii) except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety.
(c) Essentially derived varieties may be obtained for example by the selection of a natural or induced mutant, or of a somaclonal variant, the selection of a variant individual from plants of the initial variety, backcrossing, or transformation by genetic engineering.
The UPOV 1978 allowed the access by scientists and researchers to the plant varieties protected for the development of essentially derived varieties of plants, as referred herein, without granting any guarantee to the breeder of the initial variety. Nonetheless, UPOV 1991 states differently in its text, in response for the propagation of methods that use other protected varieties for the creation of new varieties, and has guaranteed the rights of breeders of the initial variety, turning mandatory that the scientist who develops an essentially derived variety request previous authorization from the initial breeder to explore such derived variety.
The exception for use of the variety as an initial source of variation for the purpose of creating other varieties or for the marketing of such varieties, as stated in the Act of 1978, was suppressed, and on the other hand the guarantee of initial breeder’s rights on essentially derived varieties was increased. That means a decrease between differences of systems of plant variety protection, the patent system and the sui generis system, considering that the last one is known as more independent and flexible than the patent system.
The version of pre-draft of bill incorporates literally such concepts to its text, and Article 14 (5)(a), items (i), (ii) and (iii) of Act of 1991 are reproduced in paragraphs 4, items (I), (II) and (III) of Article 8, and the item 14(5)(b), items (i), (ii) and (iii) are replicated in Article 3, items V, items (a), (b) and (c).
9.8. Restrictions and exhaustion of Breeder’s Right
The breeder’s rights guaranteed by the Act of 1991 do not apply to propagation materials, plants or parts of plants, or products derived directly from the protected varieties, when they are commercialized by the breeder himself, or with his consent. The protection applies, however, when the material obtained is used for the multiplication of the variety, or in the case of exporting to a country which does not provide the variety protected, except in the case of the product is used for final consumption. Such rules are replicated in the pre-draft of bill, in one article and one paragraph.
The exhaustion of the breeder’s rights inserted in Article 16(1) of UPOV 1991, first of all, says the obvious when it states that such rights shall not extend to certain acts (goods sold or otherwise marketed) performed by the breeder or with his consent. The authorization of the breeder regarding the marketing of the product, when the breeder himself makes the initial act of selling the good, is implicit to his act. And the consent given to a third party regarding the marketing of the protected variety may be understood as an explicit authorization (there is no implied authorization, according to our understandings, regarding the commerce of plant varieties). It is important to point out that such statements were included in the chapter called “exhaustion of rights”, and therefore we may understand also that, once an authorization is given to a third party, or marketed the product by the breeder himself, there is an exhaustion of protection rights related to such plant variety being marketed, individually considered, what forbid the breeder, afterwards, to claim for protection.
But the same chapter of the Act of 1991 affirms that it shall be granted protection to the breeder’s right in case of acts involving new propagation of materials, or when there is exporting of protected varieties to a country that dos not offer protection to the breeder’s right, with the possibility of propagation of the variety, but if such exporting is for consumption purposes.
The Article 16(2) of UPOV 1991 defines that the protection shall be extended to propagating material, to the harvested material, including entire plants and parts of plants, and to products made directly from the harvested material.
As a consequence of the peculiar characteristics of each plant variety, and considering that the word is generic, referring to a whole range of plants, which are reproduced in different ways, the expression “consumption purposes” may create controversies. While, in the case of grains, the final product of the protected variety is the propagating material itself, the idea of final consumption purposes is clearer (the product is consumed when it ends, as food or to feed animals, and not when it is used to means of new propagation or as raw material for other products); in other cases, as the cotton, the consumption of the product is its use as raw material for the textile industry, in other words, it is not the final destination of the product in the commercial chain. And so on, with so may other plant varieties, which are used in the creation of medication or furniture, among other purposes. If the social relevance of the destination of the plant variety is the thermometer to the understanding of the concept of “final consumption” (as in the case of food), it may be applied to other “non-eatable” goods as well, as a matter of fairness.
It is relevant to point out that always that we refer herein to a cultivated variety, we are making reference to it individually, considering time and volume or quantity, and not only genre, for matters of authorization. Therefore, a third party authorized by the breeder, and once paid the royalties, introduces a plant variety into the market in a certain volume, or for a certain time, is legally authorized to do so; but another third party, which puts into circulation in the market the same amount of product, without the authorization of the breeder, shall not be considered legally regular, and will have a debt before the breeder, being legally subject to civil and criminal lawsuits, because of the lack of authorization for the use of the protected plant.
9.9. Period of Protection
The periods of protection were altered in the Act of 1991, compared to the ones contained in the Act of 1978, and were inserted in the Brazilian pre-draft of bill as well. For the annual varieties, the period was extended from fifteen years to twenty years; and for trees and vines, from eighteen to twenty five years.
9.10. Nullity of Breeder’s Right
With regards to the nullity of rights granted to breeder, the UPOV 1991 establishes a new possibility in comparison to the previous Treaty, concerning the nullity of register of exclusivity by a person which is not entitled to the right registered. Therefore, it forbids the free appropriation of a right, by third parties, referring to a plant variety developed by other person.
In the Brazilian pre-draft of bill, wisely, and in harmony with comments made to the present Brazilian Law for Protection of New Varieties of Plants, besides the inclusion of a new hypothesis of nullity regarding the breeder’s right (concession of a right to third party not entitled to it), the text clarifies that such nullity shall be declared in the administrative sphere in the cases listed hereinabove. Instructions regarding administrative process, its beginning, legal capacity and terms were also included in the pre-draft, as a complementary and orientating element, but briefly.
9.11. Relations between Contracting Parties and States bound by earlier acts
As a consequence of two existing versions of UPOV in force nowadays, and because of the necessity for regulation of relations between signing States of UPOV, we shall make clear the outlines of relationships between contracting parties, bound by different versions of the Treaty, and how such relations are regulated, according to the act of 1991.
- Relationship between States bound by earlier versions of the UPOV, but not the UPOV 1991: they shall be regulated by the terms of Act of 1978;
- Relationship between States bound by the UPOV 1991: they shall be regulated by UPOV 1991, only;
- Relations between States bound by UPOV 1991, and which were signing parties in earlier acts (version of 1961/72 or version of 1978): they shall follow the rules of UPOV 1991, only;
- Relationship between contracting party not bound by the Act of 1991 and a member bound only by the Act of 1991: may be applied the rules from the latest version by which such party is bound to UPOV (version of 1961/72 or version of 1978), but since this party notifies the Secretary-General of UPOV concerning the intention of applying these rules on such relations; however, when the relationship is the opposite way (in other words, when the active party in the relationship is the signing States bound only by the 1991 version), this party shall comply with the rules of UPOV 1991, when it maintains relations with the UPOV 1991 non-signing State. Therefore, there may be considered, as a rule regulating the creation or not of obligations related to plant varieties, the law of the country where the facts take place, in order to check the existence of obligations, and in which extension this obligation may happen. In other words: in a State adopting UPOV 1991 as base for its national law, it cannot be claimed, by the State or nationals of the State, the exceptions included in the law of a State bound by UPOV 1978, even if the law of the country which the relations may be established is bound by Act of 1978, because the producer shall follow the law of its country, and of the location of production (criterion of territory).
The Act of 1991 does not regulate the relationships between States not bound by the Act of 1991 and States bound by UPOV 1991, but which have had been bound also by earlier acts, in other words, by versions of 1961/72 or 1978. By analogy, considering item (2) of Article 31 of UPOV 1991, we may conclude that shall be applied the terms of the last version to which the non-signing party of UPOV 1991 is bound. However, there would be still a conflict of regulation, once there are two other versions of UPOV before the Act of 1991: the Act of 1961/72 and the Act of 1978.
As an example: a country which is bound by the version of 1978 could have some kind of commercial relationship with a country bound by Act of 1991, and has been bound before only by the Act of 1961/72. In this case, neither the Act of 1978 nor Act of 1991 dictates rules regarding such circumstance, once they are specific on what they establish.
In case Brazil chooses to be bound by UPOV 1991 before UPOV, the State relations with other signing parties of the Treaty may be regulated by the rules referred herein.
9.12. Breeding in the Act of 1991
During the draft of Act of 1991, there was the inclusion of the definition of breeder into the text of UPOV 1991, where it was made clear that UPOV also conferred protection to varieties which had been object of discovery. By then, the parties were aware that discoveries were an important source of varieties improvement. Therefore, UPOV 1991 inserted, in Article 1(iv), the notion of breeder, defining it as an individual who obtained, or discovered and developed, a variety. The reference to the origin (natural or artificial) contained in UPOV 1978, Article 6(1)(a), was no longer in the text. Therefore, discovery is officially considered activity of “selection within natural variation” while “development” refers to the process of “propagation and evaluation”.
The UPOV 1991 establishes, when refers to the concept of breeder:
(a) Article 1(iv):
For the purposes of this Act:
(iv) “breeder” means
- the person who bred, or discovered and developed, a variety,”
(vi) “variety” means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be
- defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,
- distinguished from any other plant grouping by the expression of at least one of the said characteristics and
- considered as a unit with regard to its suitability for being propagated unchanged;
(b) Article 7: Distinctness
The variety shall be deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the filing of the application.
(c) Article 15(1)(iii):
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 (4) in respect of such other varieties
As stated by UPOV, it was suggested that the idea of development refers to a discovered plant that, subsequently, is subject to a change in some way. Therefore, the simple propagation of a variety unchanged would not correspond to development, requiring also that the selection itself (as is expected, and as the term expressly suggests) demonstrate development. This understanding, continues UPOV, “cannot be correct since selection in the progeny would constitute “breeding”. This approach would also deny protection to most mutations, since the mutation is usually propagated unchanged”.
10. A New Bill on New Varieties of Plants: a new sky-line
A new law for protection of plant varieties for Brazil according to the frame contained in UPOV 1991, by itself, will generate several changes not only in the regulation of the rights related to plant varieties, but also in a social and economic level. The mechanisms included in the Brazilian pre-draft of law on protection of plant varieties shall require more control and monitoring from the government administration and also from private institutions, aiming the management and inspection of flows and dynamics of plant varieties, and also guarantee the rights of breeders as well as the rights of small farmers, scientific community, and other groups allowed to explore plant varieties by the law.
The option for officially access UPOV 1991, in case it happens (as we may understand from the elaboration of a pre-draft of bill), will cause considerable impact in the economy of the country, mainly related to the extension of protection conferred by the law (the rights on the protection are extensive to the products originated directly from the protected variety), as well as with regards to the treatment between contracting parties bound to UPOV, because of all different versions. Not only Brazil will have a full level of reciprocity with other contracting parties bound by UPOV 1991 (among them we can point out several developed countries, where are located the headquarters of the most important companies, deterrent of technology on plant varieties in the world), as well as having to accept the treatment based on UPOV 1978 towards other countries bound by Act of 1978.
There are still other sensitive points in the pre-draft of bill which are not related directly to the UPOV 1991, as the ones related to the changes in compulsory licenses and restrict public use, and the exclusion of special regimen for sugar-cane, but such changes are political options of the Brazilian lawmaker, which may be evaluated based on the previous law, in an internal level.
This increase of level of protection for plant varieties is a pioneer step in Latin America. Until October 22, 2009, only Dominican Republic and Costa Rica in the region were bound to UPOV 1991. All other Latin American States were bound by the Act of 1978. We may conclude, then, that among the American countries which have a relevant agriculture production, Brazil would be the first to adopt such regulation.
The motivation and real consequences of this increase of protection cannot be fully evaluated at the moment, but they can be related to several factors, as has happened before: abroad pressure from technology owners, internal pressure from different classes of society, the real intent of being a pioneer on a higher level of protection to plant varieties, playing the role of a regional leadership and example for third parties. We may only wonder here about the reasons, but the panorama certainly may change in the case of approval of such pre-draft of bill and the implementation of such regulations, not only in national level, but also in regional and world level, mainly if the accession to the Act of 1991 before UPOV happens afterwards.
In sum, we may conclude that the text brings great changes to the national law, considering internal and international effects, affecting society, economy and foreign commerce, the flow of capital (including taxes) and institutional relations. However, it must be clear that all modifications in the legal text are not enough to bring the full and real changes, but they have to be implemented in the day-to-day life, what may require a bigger effort by government than the one put into the elaboration of the law itself.
It is interesting to say that, related to the abovesaid, the UPOV 1991 determines, in Article 18, that the rights of the breeder are independent (or are not subject) from the regulating actions of the local authorities towards the production, certification and marketing of material of varieties or the importing or exporting of such material in internal level, and such measures do not affect the application of the Treaty.
Apparently, with such affirmation, what the UPOV 1991 means is that the breeder’s rights may be guaranteed even before national regulation that tends to mitigate or suppress dispositions of UPOV 1991, or even when effective measures towards the protection of breeder’s rights are not taken by authorities. Therefore, the Treaty stands for a positive action of authorities, trying to guarantee the effectiveness of the provisions contained in the text.
For that reason we may state that what really matters, in fact, is the effective protection of technology, even considering the exceptions inside the Treaty. Then, to meet the scope of UPOV 1991, there will be necessary more than rules, but actions.
BORÉM, Aluízio. Melhoramento de espécies cultivadas. Viçosa: UFV, 1999.
DEL NERO, Patrícia Aurélia. Propriedade intelectual: a tutela jurídica da biotecnologia. São Paulo: Editora Revista dos Tribunais, 1998.
HOUAISS, Antônio; e VILLAR, Mauro de Salles. Minidicionário Houaiss da língua portuguesa. Rio de Janeiro: Objetiva, 2001.
MONTORO, André Franco. Estudos de filosofia do direito. 2ª Ed. São Paulo: Saraiva, 1995.
SEN, Amartya. Desenvolvimento como liberdade. São Paulo: Companhia das Letras, 2000.
SILVEIRA, Newton. Propriedade intelectual: propriedade industrial, direito de autor, software, cultivares. 3ª Ed. rev. e ampl. São Paulo: Manole, 2005.
VELHO, Paulo Eduardo. Análise da controvérsia sobre a lei de proteção de cultivares no Brasil: implicações socioeconômicas e os condicionantes políticos para seu encerramento. Campinas: Unicamp, São Paulo, 1995. 273 f. Tese (Doutorado em Ciências Sociais) – Instituto de Filosofia e Ciências Humanas, Universidade Estadual de Campinas.
WÜRTENBERGER, G.; VAN DER KOOIJ, P.; KIEWIET, B.; EKVAD, M.. European Community Plant Variety Protection. New York: Oxford University Press, 2006.
 HOUAISS, Antônio; VILLAR, Mauro de Salles. Minidicionário Houaiss da Língua Portuguesa. Rio de Janeiro: Objetiva, 2001.
 VELHO, Paulo Eduardo. Análise da controvérsia sobre a lei de proteção de cultivares no Brasil: implicações socioeconômicas e os condicionantes políticos para seu encerramento. Campinas: Unicamp, São Paulo, 1995. 273 fls. Tese (Doutorado em Ciências Sociais) – Instituto de Filosofia e Ciências Humanas, Universidade Estadual de Campinas.
 VELHO, Paulo Eduardo. op. cit.
 VELHO, Paulo Eduardo. op. cit.
 Article 34, UPOV 1991.
 MONTORO, André Franco. Estudos de filosofia do direito. 2 ed. São Paulo: Saraiva, 1995.
 SEN, Amartya. Desenvolvimento como liberdade. São Paulo: Companhia das Letras, 2000, p. 18.
 Industrial Property Law, Law n. 9.279/96: Article 18. Are not patenteable:
I – (…);
II – (…) ; and
III – the whole or parts of living beings, except for transgenic microorganisms which fulfill the three requisites of patenteability – novelty, inventive activity and industrial usefulness – according to article 8 and they are not only a discovery.
Sole Paragraph. For the matters of this Law, transgenic microorganisms are organisms, except the whole or part of plants or animals, which express, through direct human intervention in its genetic composition, a characteristic usually not acceptable by the specie in natural conditions (free translation).
 Free translation.
 Article 15, (1), (iii).
 Article 15 – Exceptions to the Breeder’s Right
(1) [Compulsory exceptions] The breeder’s right shall not extend to:
(i) acts done privately and for non-commercial purposes,
(ii) acts done for experimental purposes and
(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 (4) in respect of such other varieties.
 Recommendation included at the end of text of UPOV 1991. Available at: <www.upov.int>.
 WÜRTENBERGER, G.; VAN DER KOOIJ, P.; KIEWIET, B.; EKVAD, M.. European Community Plant Variety Protection. New York: Oxford University Press, 2006, p. 145.
 WÜRTENBERGER, G.; VAN DER KOOIJ, P.; KIEWIET, B.; EKVAD, M.. op.cit., p. 145
 SILVEIRA, Newton. Propriedade intelectual: propriedade industrial, direito de autor, software, cultivares. 3ª Ed. rev. e ampl. São Paulo: Manole, 2005, p.