Protection of Plant Varieties in Egypt: Law

Transcription

1 Protection of Plant Varieties in Egypt: Law Nadia Kholeif I. Introduction Many countries have not traditionally provided patent protection for living matter plant varieties, microorganisms, and animals. 1 These countries have consistently argued that living matter is part of nature, and as such, cannot be the subject of a patent. Until becoming a member of the WTO on June 30, 1995, 2 Egypt was one of those countries. 3 However, as a member of the WTO, Egypt is required to adhere to the TRIPS agreement, which provides protection for intellectual property rights in general. 4 In line with the concerns of many member countries, Article 27 of TRIPS specifically addresses protection of intellectual property rights of living matter, to the effect that member countries may exclude plant varieties from patent protection, so long as an effective sui generis system is established. TRIPS does not outline what an effective sui generis system entails. Therefore, each country may fashion a system that takes into consideration the concerns and circumstances specific to the country. Because of its previous reluctance to recognize the patentability of living matter, Egypt elected the sui generis alternative and enacted Law in June Book Four of Law grants protection to plant varieties. This e-brief will consider the elements of Law and the protections offered by the law as well as how these aspects of Law Valentina Tejera, Tripping Over Property Rights: Is it Possible to Reconcile the Convention on Biological Diversity with Article 27 of the TRIPS Agreement?, 33 New Eng. L. Rev. 967, 970 (1999). 2 World Trade Organization, Member Information: Egypt and the WTO, at (last visited March 7, 2005). 3 McCabe, Kevin W., The January 1999 Review of Article 27 of the TRIPS Agreement: Diverging Views of Developed and Developing Countries Toward the Patentability of Biotechnology, 6 J. Intell. Prop. L. 41, 44 (1998). 4 Agreement Establishing the WTO, Article II Paragraph News & Information, Egyptian Patent Office, at (last visited March 7, 2005). 1

2 compare to the provisions of other international agreements on protection of plant varieties, such as the various UPOV conventions and the International Treaty on Plant Genetic Resources for Food and Agriculture. II. Elements of Law Article 189 of Law provides that protection shall be granted to plant varieties. The plants may be derived internally or abroad and may be developed through biological or nonbiological methods. This allowance follows the requirements of TRIPS, which prohibits discrimination based on the nationality of the developer. 6 Allowing for development through biological or non-biological means mirrors the early UPOV conventions allowance for artificial or natural origin. 7 This recognizes the development of new varieties through selective propagation as well as genetic engineering. In order to obtain protection, a breeder must file an application describing the plant variety with the Office of Plant Variety Protection. The Office of Plant Variety Protection examines applications based on compliance with Law The basic requirements for granting protection include a showing that the new plant varieties are distinct, uniform, stable, and subject of a denomination. While Egypt is not currently a member, these are the same criterion that all three of the International Union for the 6 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments--Results of the Uruguay Round vol. 31, art. 1.3, 33 I.L.M. 81 (1994), at (last visited March 7, 2005). 7 International Convention for the Protection of New Varieties of Plants, Dec. 2, 1961, art. 6, 33 U.S.T. 2703, 815 U.N.T.S. 89, available at (last visited March 7, 2005) [hereinafter UPOV 1961]. International Convention for the Protection of New Varieties of Plants, Dec. 2, 1961, art. 6, 33 U.S.T. 2703, 815 U.N.T.S. 89, as Revised at Geneva on Nov. 10, 1972, on Oct. 23, 1978, available at (last visited March 7, 2005) [hereinafter UPOV 1978]. 2

3 Protection of New Varieties of Plants (UPOV) conventions use to determine whether a plant variety is eligible for protection. 8,9 A variety is considered new if it has not previously been sold or traded by or with the consent of the breeder for more than a year prior to filing an application for protection. Varieties of trees or vines that were traded outside of Egypt must not have been circulated for more than six years while other crops must not have been traded for more than four years. Additionally, a variety will only be considered new if there has been some inventive step contributed to the naturally occurring plant that brought about the current variety. A new application of a previously known plant variety will not suffice to meet this requirement. In order to be distinct, a new variety must be distinguishable from other known varieties and must keep its distinguishing characteristics after propagation. A variety is deemed to be a known variety, under UPOV 1991, when an application is filed in any member country. Law provides that a variety is uniform when the relevant characteristics that define the new plant variety remain within permissible limits after propagation. The law does not require absolute uniformity, such as would be achieved through asexual propagation, but rather allows for a range of inconsequential variations. 10 Closely associated with the requirement of uniformity is the requirement that a new variety be stable. A variety is considered stable if the plant s characteristics remain unchanged after multiple propagations. 8 International Union for the Protection of New Varieties of Plants, Nov. 9, 2004, 33 U.S.T. 2703, 815 U.N.T.S. 89, available at (last visited March 7, 2005). 9 Seed Industry Needed to Combat Hunger and Malnutrition Senegale Minister of Agriculture, Congress Dakar, Senegal March 2002, at (last visited January 26, 2005). (Egypt is in the process of acceding to UPOV). 10 Law on the Protection of Intellectual Property Rights, Law (2002), art. 192 (Egypt) [hereinafter Law ]. 3

4 In addition to meeting these requirements, a breeder must disclose the genetic source relied upon to develop the new variety. 11 That source must have been obtained through legitimate means under Egyptian law. Article 200 explicitly provides that a breeder may legitimately rely on traditional knowledge and experience accumulated among local communities in obtaining the genetic source. 12 However, while Article 200 allows breeder to rely on traditional knowledge and community experience in developing new varieties, the breeder must give credit to these sources, and where possible, share profits. This requirement addresses the concern that local peoples are not adequately recognized for their role in developing plant varieties. This explicit mandate follows the tradition of Egyptian legislation in that it places special emphasis on the importance of labor in the development of the state. This provision also recognizes Egypt s obligation to comply with the International Treat on Plant Genetic Resources for Food and Agriculture (IPGRFA), which Egypt signed in 2002 and ratified in 2004, which provides for recognition of local contributions to the development of plant genetic resources. 13 While the recognition of traditional knowledge is intended to result in a sharing of profits with the interested party, also in conformity with IPGRFA, the onus remains with the breeder to recognize the contributions of the community. Presumably, the relevant competent administrative authorities would be some assistance in granting credit where credit is due in this situation. 14 III. Protections 11 Law , supra note 10, art Id. 13 International Treaty on Plant Genetic Resources for Food and Agriculture, Nov. 3, 2001, pt. III, art. 9.2, [hereinafter IPGRFA]. 14 Law , supra note 10, art

5 Once these conditions are met, the Office of Plant Variety Protection is required to issue a breeder s right certificate. The protection of breeder s rights is in line with the purpose of UPOV to safeguard the interests of breeders. 15 This certificate may be granted to natural persons or legal entities. However, Article 201 allows an interested party to challenge certificate decisions. This includes the right for a breeder to oppose the decision to reject an application for the protection of a plant variety. 16 In such case, the breeder has 15 days from the date of notification to seek an appeal, following the procedures established in the Regulations. Additionally, Article 201 provides that an interested party may oppose the decision to grant a breeder s right certificate for the protection of a plant variety. 17 However, Law does not define who is meant by interested party. The parties qualifying as an interested party may be limited to the breeder seeking a certificate and the Ministry officials or may include any party seeking to challenge the breeder s ability to meet the requirements necessary to obtain a certificate of protection. A more expansive definition of interested party may include any party who may challenge the breeder s rights under Articles 196, 198 or 199 for public policy and health reasons. Additionally, some countries have allowed non-governmental organizations (NGOs) to qualify as interested parties and challenge certificates. 18 The Regulations to Law prescribe the rules and procedures for all challenges. The breeder s right certificate provides 25 years of protection for new tree varieties and 20 years of protection for all other crops. 19 This period of protection matches the minimum 15 UPOV 1961, supra note 7, Preamble 16 Law , supra note 10, art Id. 18 For clarification of this issue, one should consult the Regulations to Law and additional decisions rendered by the Egyptian government, as these Regulations were not available to the author for purposes of this paper. 19 Law , supra note 10, art

6 allowable periods of protection provided for in the 1991 UPOV Convention. 20 Egypt has elected not to create longer periods of protection, as allowed by UPOV. This follows the common distrust that developing countries, including Egypt, have toward providing any protection at all. The certificate allows the breeder exclusive rights to the commercial exploitation of the new variety for the term of protection. This includes any attempt to produce, propagate, circulate, sell, market, import, or export the new variety in any form. 21 The protections offered to breeders in Law are similar to those required by Article 14 of UPOV The strong protection of breeder s rights, however, is somewhat tempered by the recognition of farmer s rights in Law , to be discussed below. These breeder protections are to be offered to all persons or legal entities who file for protection in Egypt and meet the requirements, regardless of place of domicile. This national treatment clause, as discussed below with regards to UPOV, guarantees protection to breeders so long as they are a citizen of Egypt, a WTO Contracting Party, or a country that grants reciprocal plant variety protection to Egypt. 22 Breeders are also offered some limited protection by Law during the application process. A temporary protection period begins on the date the application is filed and is valid until final action is taken on the application. Importantly, the breeder is entitled to compensation from a party exploiting the new variety if the party has notice from the breeder that a breeder s certificate is pending. This provision is identical to Article 13 of the 1991 UPOV convention International Convention for the Protection of New Varieties of Plants, Dec. 2, 1961, ch. V, art. 19(2), 33 U.S.T. 2703, 815 U.N.T.S. 89, as Revised at Geneva on Nov. 10, 1972, on Oct. 23, 1978, and on Mar. 19, 1991, available at (last visited March 7, 2005) [hereinafter UPOV 1991]. 21 Law , supra note 10, art Law , supra note 10, art UPOV 1991, supra note 20, ch. IV, art. 13 6

7 IV. Farmers Rights In recognition of the wariness with which Egyptian law has regarded the granting of protection for plant varieties, Law grants a fairly expansive farmers privilege in Article 195. The farmer s privilege significantly reduces the control that a breeder has over disbursement and propagation of a new plant variety. As a member of the IPGRFA, Egypt committed itself to protecting and promoting farmer s rights. 24 In contrast, UPOV seeks to limit the extent of farmer s rights. Article 195 (1) of Law allows farmers to use the new plant variety on their own property for private purposes. 25 Thus, while a farmer may not grow the new variety for sale without authorization, he may grow the variety without limitation, in quantity or time, for private usage. This is one of the major benefits reserved under the sui generis system and is a right recognized in both the UPOV conventions 26 and in IPGRFA. 27 Additionally, a research clause permits the use of the new plant variety for research and scientific purposes. 28 Again, this can be a fairly significant exception to the breeder s right. UPOV 1991 also recognizes, in very limited language, an exception to breeder s rights for experimental purposes. 29 Third, Article 195 grants an exception to breeder s rights for development of new plant varieties. 30 Anyone may use the otherwise protected variety for the purpose of breeding, crossbreeding and selection of an additional new variety without seeking authorization from the 24 IPGRFA, supra note 13, pt III, art Law , supra note 10, art. 195 (1) 26 UPOV 1991, supra note 20, ch. V, art 15(1) and (2) 27 IPGRFA, supra note 13, pt III, art Law , supra note 10, art. 195 (2) 29 UPOV 1991, supra note 20, ch. V, art 15(1)(ii) 30 Law , supra note 10, art. 195 (3) 7

8 breeder. 31 While Law does not go as far in defining the extent of this right, the provision is similar to language in UPOV UPOV 1991 allows a party to utilize the protected variety for purposes of breeding other varieties. 33 However, breeder s rights continue to require the breeder s authorization for the production, propagation, sale, marketing, exporting or importing of a variety that is essentially derived, not clearly distinguishable, or a variety whose production requires repeated use of the protected variety. 34 Thus, a party may use the protected variety for purposes of developing a new variety but must provide compensation to the breeder once a new variety is established. Depending on the manner in which Article 195(3) is interpreted, the breeder s rights may be significantly enhanced or reduced. For if a third party may develop a new variety based upon a protected variety without ever compensating a breeder for the use of the protected variety, the breeder s rights will be much less expansive than envisioned under UPOV Fourth, if the new variety is used for teaching or training purposes, the user need not obtain authorization from the breeder to utilize the plant. 35 While no provision in UPOV 1991 expressly allows for the use of a protected variety without authorization for educational purposes, one could argue that education falls under the exception for non-commercial purposes. 36 Finally, Law Article 195 (5) provides a significant exception to breeder s rights. Article 195 (5) allows for the use, sale, and consumption of the protected variety, in whole and in part, by a third party without seeking authorization from the breeder. This provision goes 31 Id. 32 UPOV 1991, supra note 20, ch. III, art 5(i) and (iii) 33 UPOV 1991, supra note 20, ch. V, art 15 (1) (iii) 34 UPOV 1991, supra note 20, ch. V, art 14 (1) and (5) 35 Law , supra note 10, art. 195(4) 36 UPOV 1991, supra note 20, ch. V, art (1)(i) 8

9 beyond the scope of UPOV 1991 s exceptions to breeder s rights. UPOV 1991 provides an optional exception allowing a farmer to use the product of the harvest for propagating purposes on his own land. However, Article 195 (5) allows for the use, sale and consumption of crop material, prime and intermediate material and finished products, which are made or derived directly or indirectly from the crop material, whether the crop material is an entire plant or part thereof. 37 While both this provision and UPOV 1991 limit the breeder s rights to a single generation of usage, the Egyptian provision allows farmers to make commercial use of the product of these future generations of the protected variety without providing compensation to the breeder. In other words, once a third party has obtained a single authorization from a breeder to use a protected variety, the third party may utilize the variety with no time or future usage limitations. V. Public Interest Exception In addition to the farmer s rights, Law provides an exception for the protection of the public interest and for purposes of regulating commerce within Egypt. 38 The Egyptian statute provides exceptions to the breeder s rights when necessary to safeguard the public interest and where the breeder fails to produce the variety on his own, declines to authorize exploitation of the variety by a third-party, or engages in unfair competition. These exceptions to restrict the exercise of breeder s rights comply with UPOV s allowance of narrow exceptions for public interest and for purposes of regulating commerce. 39 The protection of the public interest with regard to plant varieties is vested in the Minister of Agriculture and a ministerial committee appointed by the Prime Minister. In instances when the public interest is harmed, the Minister of Agriculture may issue non-voluntary licenses to 37 Law , supra note 10, art. 195(5) 38 Law , supra note 10, art UPOV 1991, supra note 20, ch. V, art 17 and 18 9

10 third-parties. The third-party may then use the protected variety without the consent of the breeder. However, the third party is restricted from assigning the non-voluntary license or otherwise prejudicing the rights of the breeder during the term of the temporary license. 40 Additionally, the breeder remains entitled to compensation during the existence of the non-voluntary license. Compensation shall take into consideration the economic value of the variety. 41 In this Law conforms to UPOV 1991 s requirement that the breeder receive equitable remuneration. 42 The third-party s rights terminate at the end of the period designated in the non-voluntary license or if the third-party breaches the terms of the license. Furthermore, the Minister of Agriculture and ministerial committee, may limit some or all of the rights of the breeder, without granting non-voluntary licenses, for the purpose of protecting the public interest if the protected variety has harmful effects on the natural environment, the safety of biological diversity, the agricultural sector, the life or health of humans, animals or plants in Egypt. 43 These protections are similar to those encouraged by IPGRFA, for contracting parties to develop sustainable uses of plant varieties that take into account the particular social, economic and ecological conditions. 44 Article 199 also provides that the Minister may limit the rights of the breeder if it appears that the new variety has harmful effect economic or social effects, hampers local agricultural activities, or it appears that its use is incompatible with the values and beliefs of the community. 45 With these provisions, the expansive breeder s rights granted by Law are greatly reduced in terms of the government s possible level of interference. 40 Law , supra note 10, art Law , supra note 10, art UPOV 1991, supra note 20, ch. V, art Law , supra note 10, art IPGRFA, supra note 13, pt II, art Law , supra note 10, art 199(2) 10

11 VI. Termination of Breeder s Rights Article 198 provides that if a breeder who has obtained protection of a variety in Egypt offers that variety for unrestricted circulation outside of Egypt, the period of protection will terminate in Egypt. This reflects the Egyptian legislature s belief that Egyptian farmers should not be restricted in their access to agricultural products if those same products are available more cheaply elsewhere. While breeders should not be able to exploit Egyptian farmers by seeking protection in Egypt while allowing other countries unfettered access to the same product, similarly third parties are restricted from exporting the variety to a country that lacks protection for the purpose of cultivating the variety freely in violation of the breeder s rights. Therefore, the breeder has the authority to deny the right to export the variety to any third-party if the breeder has reason to believe the variety will be exploited in a country where protection is not offered. Although stated differently, this provision is largely similar to the provision for exhaustion of breeder s rights under UPOV A breeder s certificate may also be cancelled if a variety loses one of the conditions necessary for the granting of the breeder s right. 47 If the Office of Plant Variety of Protection finds, in accordance with the rules promulgated by the Minister of Agriculture, that the variety is no longer stable or uniform, the breeder s right certificate will be deemed null and void. Likewise, if the Office makes a finding that the original certificate was granted in violation of Law , such as for failure to prove newness, distinctness, or failure to provide a legitimate genetic source, the breeder s certificate shall be cancelled. These limited grounds upon which a 46 UPOV 1991, supra note 20, ch. V, art Law , supra note 10, art

12 breeder s certificate may be cancelled conform to the strict limitations for cancellation in UPOV Once a decision has been made by the Minister of Agriculture to cancel a certificate of protection, the breeder must be notified of the decision and may then appeal the decision within 15 days from the date of notification. 49 The rules and procedures governing the appellate process are established by the Minister of Agriculture. VII. Penalties In the event that the breeder believes his rights under the breeder s certificate are being infringed upon, he must file a petition with the competent court. 50 Article 204 also provides that other concerned parties may bring a case before the competent court. Law fails to provide who may bring suit as a concerned party. Similar to Article 201, concerned party may be interpreted very narrowly to include only the breeder and government officials or may include any party affected by the public interest provisions, including NGOs. The court will then render a decision regarding the existence of infringement, the extent of the infringement, and may authorize the confiscation of all violating products. 51 Article 206 provides that the Minister of Justice will designate law enforcement officers to assist in inventorying and seizing violating materials. 52 Additionally, the court may appoint an expert to assist in all aspects of the proceedings. Once the court has issued a decision, a concerned party may appeal within thirty days. The court is then free to reconsider the order and may confirm or revoke the order totally or 48 UPOV 1991, supra note 20, ch. VI and VII, art 21 and Law , supra note 10, art Law , supra note 10, art Id. 52 Law , supra note 10, art

13 partly, in accordance with the rules and procedures provided for under the law of civil and commercial proceedings. 53 If the court finds that there has been a violation of the rights granted to the breeder, the Egyptian legislature has authorized punishment, including fines and/or imprisonment for deliberate violations of the certificate. 54 Initial violations are subject to punishment by fines between 10,000 Egyptian pounds and 50,000 Egyptian pounds. Repeat violations may subject a violator to imprisonment for a period between three months and one year, as well as fines. In order to provide protection of the variety, Article 203 mandates confiscation of all incriminated seeds and propagating materials. 55 Law does not address the possibility of private infringement claims by a breeder in order to recover damages. However, as part of the enforcement under Law , the breeder may be required to post a bond with the court for the purpose of compensating an improperly charged third-party Law , supra note 10, art Law , supra note 10, art Id. 56 Id. 13