May 21 2012
Much has been written on the question of whether a breeders' exemption should be introduced into patent law. Such an exemption essentially allows a breeder to use plant material from a protected variety for the purpose of breeding other varieties. Under the plant variety rights regime, material from new varieties can then be commercialised unless:
Most patent laws do not contain such a comparable provision because, unlike plant variety rights law, patent law is based not on independence, but on dependence - products that incorporate a patented invention (ie, depend on it) cannot be commercialised without the patent holder's consent.(2)
This position is often considered unfair.(3) In a number of countries, legislative action has already been taken to mitigate the allegedly harsh effects of patent law in this respect. Thus, French, Swiss and German patent laws(4) now contain a statutory exemption for breeding new varieties; however, this exemption covers only the act of breeding, not the subsequent commercialisation of the new variety. In the Netherlands, the introduction of a breeders' exemption into Dutch patent law is still being debated, but it appears that the exemption will be limited too.
Apart from the more general question of whether such initiatives are desirable or even necessary, is a similar initiative required in Belgium? It appears not. The aforementioned legislative changes and proposals were triggered by the fact that in the countries in question, a relatively restrictive research exemption is in place. The research exemption under the relevant patent laws applies only to experiments on - not with - the patented subject matter; in the Netherlands, the research exemption will apply only to activities carried out exclusively for experimental purposes.
Therefore, the rationale for the legislative changes was to allow the use of patented material to create new varieties (ie, research with the patented invention) without the need for a licence.
In Belgium, the situation is different: the research exemption is comparatively broad. Article 28(1)(b) of the Patent Law 1984 states that "the rights conferred by a patent do not extend to acts that are committed on and/or with the subject matter of the patented invention for scientific purposes". The scope of this provision is close to that of the specific breeders' exemptions introduced in France, Switzerland and Germany. Although the term 'for scientific purposes' is not defined in the law, there seems to be a consensus(5) that it should not be interpreted too narrowly, to mean "for purely scientific purposes" (ie, with a view to developing knowledge or testing a hypothesis). Rather, it should be understood broadly, in the sense of "for combined scientific and commercial purposes" (ie, with a view to developing new products). The fact that the results of an experiment are subsequently commercialised would not render the experiment 'unscientific'. Moreover, the term "on and/or with" indicates that the patented invention may be used as a tool to develop new products without requiring a licence from the patentee. In terms of plant breeding, this provision thus allows a breeder to use patented material for the purpose of breeding new varieties.
On this basis, access to germplasm is guaranteed - addressing the argument that the lack of germplasm makes the absence of a breeders' exemption in patent law unfair. Given the principle of dependence in patent law, the breeder of the new variety would be unable to commercialise plant material of that variety to the extent that it still contains the patented traits. However, this is similar to the situation under plant variety rights law, where the principle of independence has been substantially eroded since the introduction of the concept of 'essentially derived varieties'. This provides that a new variety whose phenotype "conforms essentially" to that of the variety from which it derives still infringes the plant variety certificate for the initial variety. Therefore, the research exemption under Belgian patent law seems to be as close as possible to the implementation of a breeders' exemption in plant variety rights terms. It can be concluded that Belgian patent law does not need a separate breeders' exemption.
(2) For a more detailed discussion, see the 2002 green paper on plant variety protection by CIOPORA, the international community of breeders of asexually reproduced ornamental and fruit varieties, at www.ciopora.org.
(3) See, for example, the recently updated European Seed Association position paper on IP protection for plant-related inventions, which states that "as the current European patent system does not provide for a breeder's exemption, this blocks access to biological material for further breeding, which material otherwise would be free for such purposes" under plant breeders' rights.
(5) See Van Overwalle, Intellectuele Rechten - Droits Intellectuels, 2004, page 357, paragraph 38; Remiche and Cassiers, Droit des Brevets d'Invention et du Savoir-Faire, 2010, pages 310 and 311; Van den Bulck and De Puydt, ICIP, 2006, pages 34.
An earlier version of this update first appeared on the EPLAW Patent Blog on April 14 2012.
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