11 Plants and intellectual property rights in the US,
Japan, and Europe
Muriel Lightbourne(*)

On June 29, 2004, the international treaty on plant genetic resources for food and agriculture of the United
Nations Food and Agriculture Organization (FAO) entered into force. Thus there is an urgent need to find ways
to conciliate its implementation together with that of the Agreement on Trade-Related Aspects of Intellectual
Property (TRIPs) and the UPOV Convention for the protection of plant varieties (UPOV).
Rights protecting plant varieties were not provided for by the Paris Convention for the protection ofindustrial property. On the one hand, the UPOV Convention was later specifically designed, in 1961, to protect
such subject matter, and subsequently modified several times. The adoption of this convention aimed at allowing
the breeder (who could be a farmer) to forbid the marketing of his plant varieties without his authorization. This
protection was initially covering the seeds obtained by applying methods of selection of specified autogame plants,
i.e. those whose flowers are fertilized by their own pollen (coleseed, wheat, barley...). The 1991 version of thisconvention has broadened the rights conferred to breeders, applies to all plant genera and species and does nolonger exclude double protection of plants by plant breeders’ rights and patents.
On the other hand, Article 27 (3) of the TRIPs Agreement states that “Members shall provide for theprotection of plant varieties either by patents or by an effective sui generis system or by any combination thereof (…)”
In this context, it seems necessary to understand and compare the reach of breeders’ rights and of patents inthe agricultural field in the United States of America, Japan, and Europe, and to assess the“freedom-to-operate” in future breeding programmes. These rights will be compared as to 1) coverage, and 2)
conditions of exercise of rights.
Moreover, for some biotechnological inventions in the field of agriculture, like for other applications ofbiotechnologies, patent pools may be relevant. The treatment of patent pools under American, Japanese andEuropean antitrust regimes thus has to be rapidly addressed.

Ⅰ Breeders’ rights in the US, Japanand Europe
1

Coverage of breeders’ rights in the US,
Japan and Europe(1) In the US
In the U.S., whereas until 1924, farmers
were receiving seeds from the Government(*1), a
specific regime of property rights had beendrafted in 1930 for asexually reproducing plants,
excluding tuber-propagated plants, and, later,
another specific regime for sexually reproducing
plants in 1970. In 1994, the PVPA was modified inorder to comply with the 1991 version of the
UPOV Convention. Thus, tuber-propagated plants
and F1-hybrids (hybrids of first generation) wereadded to the list of eligible plants.
(i)

Criteria for protection
Pursuant to the UPOV Convention, thecultivar (i.e. “cultivated variety”) must be new,uniform, stable and distinct from other cultivars.
To be considered new, a plant variety must nothave been sold or disposed of in the United States
for more than one year prior to the filing of theapplication, or for more than four years in aforeign country (six years in the case of trees andvines).
The US PVP Office does not carry out trials
to ascertain that the cultivar fulfils therequirements for protection. The applicant must
thus identify the cultivar most similar to the one
applied for, and then contrast the two cultivars as
to their genetic backgrounds and morphologies.
(ii) Protection of plant variety denominations
The applicant must propose a denomination
for the plant variety in the application file; suchdenomination has to be cleared by the relevant
authorities. In the case of vegetables and crops ofinterest for agriculture, which may be governedby the Federal Seed Act, this authority is theSeed Regulatory and Testing Branch, located in(*) Research Scholar, Queen Mary Intellectual Property Research Institute, University of London(*1) In 1897 (high point of this policy), over 20 million packages of seeds were distributed to farmers. See J.E.M. Ag
Supply, Inc. v. Pioneer Hi-Bred International Inc. decision, II-A paragraph 12. Available at
http://supct.law.cornell.edu/supct/html/99-1996.ZS.html

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Beltsville, Maryland.
For ornamental plants, not covered by theFederal Seed Act, the SRTB does not maintainany names database. Thus, applicants are only
advised to follow the requirements of the Federal
Seed Act. The American Seed Trade Association
also proposes some guidelines on naming andmay act as a clearing agency, when the cultivar is
not designated as a certified seed(*2).
(iii) Rights conferred/restricted acts
The plant certificate holder may exclude, for
20 years (25 for trees and vines) from the date ofissuance, others from selling, offering for sale,marketing, conditioning or stocking the cultivar,
or reproducing, importing or exporting it, or
using it to obtain a hybrid. Anyone actively
inducing another to perform these acts would also
be held liable for infringement. Essentiallyderived cultivars and indistinct cultivars arecovered as well. The PVP certificate also covers
harvested materials obtained through theunauthorised use of propagating material of aprotected variety, unless the owner of the variety
has had a reasonable opportunity to exercise therights provided under this Act with respect to the
propagating material(*3). This so-called “cascading
principle” has been introduced by the 1991
version of the UPOV Convention.
(2) In Japan
A law regarding seeds and seedlings,
protecting 467 plant varieties(*4), was passed in
1978. The 1978 law was modified in October 1998,
so as to be in compliance with the 1991 version of
the UPOV Convention. It is now named the Seeds
and Seedlings Law no 83 of May 29, 1998.

(ii) Protection of plant variety denominations
In Japan, during the examination of an
application, a denomination can be modified
pursuant to Section 12 of the Law; after
registration, Section 41 applies. Section 41
addresses the issue of the necessary coordination
between plant variety denominations and trade
marks. Accordingly, trade marks are usuallyregistered within 6 months in Japan, whereas it
generally requires three years for plant varieties.
Thus, during the formality examination, theMinistry of Agriculture, Forestry and Fisheries(hereafter “MAFF”) consults the Japanese Patent
Office (“JPO”) about possible prior application orregistration of trade marks for denominations
under consideration.
(iii) Rights conferred/restricted acts
The Seeds and Seedlings Law reflects theextension of the coverage of breeders’ rights
introduced by the 1991 version of UPOV, as wellas the “cascading principle”. Thus, breeder's
rights now consist not only of the production, thesale or offering for sale of the propagating
material of the variety, as was the case under
UPOV 1978 – still applicable in member countries
that have not joined the latest version - but alsoof the conditioning for the purpose of propagationof said material, its stocking for any of the
purposes aforementioned, its importing orexporting. Consequently, plant breeders’ rights
cover acts of re-import into Japan of fruit
produced from protected harvested material.
Apart from the registered variety itself,
breeders’ rights also cover (pursuant to Sec.
20):(i) Species covered
The new law protects all plant genera andspecies, for a 20-year period – 25 years for trees(as compared with the previous 15-year one – 18
years for trees). The term of “variety” is defined
under Sec. 2 (2) of the law, and means “a plantgrouping which can be distinguished from anyother plant grouping by all or parts of importantcharacteristics and which can be propagated while
maintaining the entire characteristics”. There isno specific mention in this law of the UPOV
notion of “taxon of the lowest known rank”. Sec.
3 enumerates the conditions for registration ofplant varieties. These are the conditions set forth
by the UPOV Convention.

– Varieties which are not distinguishable fromthe registered variety as to theircharacteristics;– Varieties which are bred by changing somecharacteristics of the registered variety
while retaining the essential characteristics
of it by selection of a variation, backcrossing,transformation by genetic engineering orother methods and which are clearly
distinguishable from the said registeredvariety as to the characteristics,– Varieties whose production requires therepeated use of the registered variety.

(*2) For more details, see J. Waltrip Nomenclature in the North American Seed-Trade, and Janice M. Strachan Plant Variety
Protection in the USA, in Taxonomy of Cultivated Plants – Proceedings of the Meeting Held in Edinburgh, Scotland,
20-26 July 1998, Edited by Susyn Andrews, Alan Leslie and Crinan Alexander, Published by the Royal Botanic
Gardens, Kew, 1999, pp. 53-56 and pp. 67-72.
(*3) 7 U.S.C. 2541 (c)(4).
(*4) Figure quoted by Judge Tomoyuki Tobisawa in Japan’s New Plant Variety Protection System, in CASRIP Newsletter –Spring/Summer 1998, Volume 5, Issue 2.
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(3) In Europe(i)

Criteria for protection
The situation in Europe is characterised by
the coexistence of national laws and regulations
on the one hand, and of a community regime ofprotection of plant breeders’ rights on the otherhand. The Council Regulation EC 2100/94
implements the 1991 version of the UPOV
Convention and is administered by the CPV
Office, located in Angers, France.
Community plant variety rights (hereafter“CPVRs”) have a uniform effect over theCommunity territory, once granted, but also when
they are transferred or cancelled. It is notpossible to hold simultaneously CPVRs andnational plant variety rights or patents for thesame variety. In situations where a national rightpre-existed, such right is suspended until theterm of the CPVR.
Varieties of all botanical genera and species
are entitled to protection. A plant grouping isdefined as consisting of entire plants or parts ofplants as far as such parts are capable ofproducing entire plants. The criteria of protection(DUS and novelty tests) are laid down by Art. 5
and 6 of Regulation 2100/94 and correspond to
those defined by the UPOV convention.
After issuance, the duration of a CPVR is 25
years (30 years for vines and trees).
(ii) Protection of denominations
Art. 63 of the Regulation 2100/94 sets out
detailed rules in this respect. The use within the
territory of the Community of the proposed
denomination must not be precluded by the priorright of a third party, confusing or misleading as
to the characteristics, value or identity of theplant variety, or as to the identity of the breeder,or contrary to public policy in one Member State.
Art. 66 indicates how to proceed to theamendment of the plant variety denomination,
which may be made ex officio by the CPVO, after
giving the right holder an opportunity to make aproposal of amendment.
(iii) Rights conferred/restricted acts
These are detailed in Art. 13 of the EC
Regulation. They are tantamount to those
protected in Japan by the Seeds and Seedlings Law,
and by UPOV 1991, in terms of restrictedactivities, and of definition of the ambit of theprotection granted (varieties which are not distinct

from the protected variety, essentially derived
varieties and hybrids). The originality of the EC
Regulation relates rather to the exercise of rights.
2(1) In the US(i)Assignments and licences
Assignments shall be made and exclusive
licences, granted, by an instrument in writing.
Additionally, assignments and licences shall be
void as against any subsequent purchaser or
mortgagee unless it “is filed for recording in
the Plant Variety Protection Office within one
month from its date or at least one month prior
to the date of such subsequent purchase or
mortgage.”(*5)
A breeder who releases seed or otherreproducible or tuber propagable plant material
for testing only, with notice thereof, retains
ownership with respect to such plant material.(*6)(ii) Limitations of breeders’ rights
Acts done privately and for non-commercial
purposes are exempted. Researchers may use andreproduce the protected variety in a breeding
programme, and farmers may save seeds of theprotected variety for use on their own farm.
Moreover, a “bona fide sale for other than
reproductive purposes, made in channels usual
for such other purposes, of seeds produced on a
farm either from seed obtained by authority of theowner for seeding purposes or from seedproduced by descent on such farm from seedobtained by authority of the owner for seeding
purposes shall not constitute an infringement.” (*7)
Any of the restricted acts may be performed,
even where a protected variety is multiplied
other than sexually, if such acts are performed inpursuance of a valid United States plant patent.
A person who has developed and produced avariety more than one year prior to the effective
filing date of an application by another person fora certificate on the same plant variety is entitled
to reproduce or sell this variety (“grandfather
clause”) (*8).
Finally, any person may, within five years
after the issuance of a certificate of plant variety
protection, ask for the reexamination of suchplant certificate(*9).

(*5) 7. U.S.C. 2531 (d).
(*6) 7 U.S.C. 2532.
(*7) 7 U.S.C. 2543.
(*8） 7 U.S.C. 2542.
(*9) 7 U.S.C. 2501.

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(2) In Japan(i)

Limitations of breeders’ rights
In order to assess the “freedom-to-operate”
in breeding programmes, it is necessary to focus
on limitations to breeders’ rights. These aredescribed in Sec. 21 and consist of:– The exploitation for the purposes ofexperiment and research including breedinga new variety,– The production of the seeds and seedlings ofthe protected variety by the rightholder of apatent for the process of breeding theregistered variety,– The right to use the product of harvest on
their own holdings (“farmers’ privilege”),
unless there is a contractual waiver of suchright.
The Seeds and Seedlings Law (sec. 28) also
provides for a non-exclusive right where:– A registered variety has not been adequately(emphasis added) exploited continuously
during a period of 2 years or more in Japan,or– There is a special public interest in the
exploitation of a registered variety.
In case no agreement can be found with thebreeder or holder of an exclusive exploitationright, arbitration by the Ministry of Agriculture,
Forestry and Fisheries can take place.
(ii) Other limitation
Sec. 35 of the Seeds and Seedlings Law
provides for a presumption of negligence, which
can be rebutted. In instances of cross-pollinating,if such a rebuttal is admitted, infringement may
be found.

(ii) Farmers’ privilege
For the purpose of safeguarding agricultural
production, farmers are authorised to use forpropagating purposes, on their own holding, theproduct of the harvest which they have obtainedby planting, on their own holding, propagating
material of a variety other than an hybrid orsynthetic variety, which is protected by a CPVR.
However, this faculty applies only in relation to aset of 22 varieties, listed under Art. 14 of the EC
Regulation. As a counterpart to this right,
farmers shall pay breeders an “equitableremuneration”, pursuant to the Commission
Regulation EC 1768/95 of 24 July 1995(*10). Thisobligation does not apply to small farmers.
(iii) Exhaustion of rights
Art. 16 of the EC Regulation is an intricate
provision, as can be seen hereunder:“ The Community plant variety right shallnot extend to acts concerning any material of theprotected variety, or of [a hybrid or a non-distinct
or essentially derived] variety, which has been
disposed of to others by the holder or with his
consent, or any material derived from the said
material.”
However, there shall be no exhaustion ofrights where the protected variety is subject tofurther propagation, unless such propagation was
intended when the material was disposed of. The
second exception to the general rule ofexhaustion concerns exports of constituents of aprotected plant variety into third countries that
do not protect varieties of the plant genus or
species to which the protected variety belongs,
unless such exports are intended for final
consumption purposes.

Ⅱ Patent protection for plants in
the US, Japan and Europe
1(3) In Europe
Art. 13.8 of the EC Regulation 2100/94
posits a general caveat concerning the rights
conferred by CPVRs. Without prejudice tofarmers’
privilegeandcross-licensing
arrangements, the exercise of CPVRs shall not be
contrary to public order, or to the protection ofhealth and life of humans, animals or plants, or of
the environment, or of industrial or commercial
property, or to the safeguarding of competition
and agriculture production.
(i)

Limitations of breeders’ rights
These are similar to those existing in Japanand defined by the UPOV Convention.

Patentable plant-related inventions in
the US, Japan and Europe(1) In the US(i)

Plant patents
The Plant Patent Act, which can be foundunder Title 35 of the United States Code, and isadministered by the US Patent and Trademark
Office, refers to the general requirements ofpatentability - in particular non-obviousness –more stringent than those of the UPOV
Convention.
Similarly, naming conditions are more
specific: the name of the claimed plant must fallwithin the International Code of Nomenclature(*10) OJ L173, 25/07/1995, pp. 14-21.

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for cultivated Plants, 1980(*11).
As to rights conferred, the Plant Patent
Amendments Act of 1998 makes it clear that title
35 U.S.C. protects the owner of a plant patent
against the unauthorised sale of plant parts takenfrom plants illegally reproduced. Thus, “the grantshall include the right to exclude others from
asexually reproducing the plant, and from using,offering for sale, or selling the plant so
reproduced, or any of its parts, throughout theUnited States, or from importing the plant so
reproduced, or any parts thereof, into the UnitedStates.” (*12) These rights are granted for a periodof twenty years from filing (and not from issuance,
as in the case of plant variety certificates).
Mutants of a protected plant are not covered by
the PPA granted on this plant.
(ii) Utility patents
The availability of utility patents forplant-related inventions was not obvious, until
the USPTO Board of Appeals’ decision in reHibberd in 1985(*13). This decision had to be
confirmed by the Supreme Court, which wasachieved in the J.E.M. Ag Supply, Inc. v. Pioneer
Hi-Bred International Inc. decision, rendered
December 10, 2001. The ruling of this latter
decision, adopted with two Justices dissenting, isbased on the 1980 Chakrabarty decision,according to which “the relevant distinction was
not between living and inanimate things, but
between products of nature, whether living or not,and human-made inventions”. However, following
the dissenting judges, in Diamond v. Chakrabarty
the Court considered whether the language of 35
U.S.C. section 101, “manufacture or compositionof matter”, included such living things asbacteria; it was not concerned with the “generalcoverage for matters to which the special plantstatutes do refer (namely, plants)” (*14). The Court
recalls that it has in the past given effect to two
overlapping statutes, so long as each reaches
some distinct cases, and that both the 1930 Plant
Patent Act (PPA) and the 1970 Plant Variety

Protection Act (PVPA) contain no statement of
exclusivity. While section 101 “is a dynamic
provision designed to encompass new andunforeseen inventions”, “[p]lant patents under
the PPA thus have very limited coverage and lessstringent requirements than section 101 utility
patents”(*15).
(2) In JapanIn 1975, the Japanese patent law no 121 ofApril 13, 1959, was amended in order to allow
chemical compounds and microorganisms to beprotected as such. This amendment was followed
by a dramatic rise of the R&D investments in thepharmaceutical and agrochemical fields(*16). It waslater specified that plants also might be protectedby patents.
Revised “Examination Guidelines for Patentand Utility Model” were released on Dec. 28, 2000.
Pursuant to these Guidelines, undifferentiatedplant cells and plant tissue cultures are treatedas microorganisms. Thus, Sec. 27 bis and ter ofthe Regulation under the Patent Law may apply:
they consist in the deposit of a microorganism
when it is impossible to describe it, so as tofulfill the enablement requirement; and incertain conditions of access to the deposit forthe purpose of tests or experiments.
As to plants per se, the Guidelines give someexamples where patent protection cannot be
secured. In particular, a mere combination of thecharacteristics of publicly known plants within
the species to which the plant belongs (plants
obtained by mere crossing) lacks inventive step.
So far, the only decision – as far as thisauthor knows - adopted by the Supreme Court ofJapan concerning plant protection is dated 29
February 2000(*17). This decision clarified that the“possibility of repetition in the process ofbreeding in an invention for a ‘method of breeding
and multiplying new breed of a plant’ (…) is
sufficient, if people in the same business are able
to reproduce the plant in a scientific way, and do
not have to have a high probability of(*11) The International Code of Nomenclature for Cultivated Plants was first adopted in 1953 and last revised in 1995 (6thedition), and is subordinate to the International Code of Botanical Nomenclature. The rule is that the first validly
published name for a particular plant is the one designating this plant. For details, see Chris Brickell and Piers
Trehane The Royal Horticultural Society Advisory Panel on Nomenclature and Taxonomy in The New Plantsman 4(2):115-119, 1997, available at http://www.rhs.org.uk/research/APONAT1.asp, visited January 7, 2005(*12) 35 U.S.C. 163.
(*13) For an analysis of the decision, see The American Society of Agronomy International Property Rights Associated with
Plants (1989). The claims were concerned with the isolation and manipulation of a particular corn mutant derived
from cultured tissue of a particular hybrid corn line that possessed the advantages of regenerability and heritability,and directed to “mutant monocot seed” including seed of a “cereal crop” (later restricted to maize).
(*14) J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International Inc. Dissenting opinion, I – paragraph 5. Available at
http://supct.law.cornell.edu/supct/html/99-1996.ZS.html(*15) Ibid. Decision, II – A, paragraphs 5 and 9.
(*16) Cf. Hiroshi IWATA in AIPPI Journal March 1994, p. 56.
(*17) Case no 1998 (Gyo-tsu) 19. Japanese Supreme Court decisions can be retrieved from http://courtdomino2.courts.go.jp

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reproduction”.
(3) In Europe
Until recently, the situation within Europe
was quite murky. Since the entry into force of theEuropean Patent Convention (EPC) in 1978, it
was generally admitted that patents could notcover plant varieties, pursuant to Art. 53(b) of
this Convention(*18). The latter is the
reproduction of Art. 2(2) of the Strasburg
Convention, adopted in 1963 but whose wording,at least regarding the aforementioned provision,
was already quasi in its final version as ofDecember 1961(*19). Whereas the Strasburg
Convention left the option open, the Munich
Convention (EPC) precluded the possibility ofpatent protection for plant varieties. The
rationale for this choice was the adoption of the
UPOV Convention in 1961, which prohibited
double protection for a given variety. However,the UPOV Convention did not exclude plantvarieties of the scope of patent protection in
general. Nevertheless, as plant breeders’ rights
were not available in all EPC member States andthe principle of uniform patent protection within
the EPC territory had to be respected, it wasconsidered simpler, for housekeeping reasons, toadopt such a ban when implementing both the
UPOV and the Strasburg Conventions(*20).
The line could no longer be drawn so easily
after the European Community adopted in an E.C.
Regulation the contents of the 1991 version of the
UPOV Convention, which allows the concurrent
protection of a plant variety by breeders’ rights
and by patent.
The Novartis decision of December 20, 1999
of the Enlarged Board of Appeal of the European
Patent Office partly clarifies the issue. The
Enlarged Board first reminds that “the term plantvariety in Article 53(b) EPC had the same

meaning as in the UPOV Convention and theexcluding provision should only apply if suchvarieties were claimed per se” (*21) (in a productpatent). Moreover, according to established caselaw, “the protection conferred by a process patentis extended to the products obtained directly by
the process, even if the products are notpatentable per se”. Thus, like in the U.S., thepatent protection and plant breeders’ rights may
overlap(*22). Effectively, the ruling of the Enlarged
Board is that a “claim wherein specific plantvarieties are not individually claimed is not
excluded from patentability under Article 53(b)EPC, even though it may embrace plantvarieties”. The Enlarged Board specifies that theexclusion applies irrespective of the way in which
the plant varieties are produced and that thus,“plant varieties containing genes introduced into
an ancestral plant by recombinant genetechnology are excluded from patentability”.
This decision, which overrules the previous
position held in the Plant Genetic System case(1995), rapidly refers to two recitals of the E.C.
Directive 98/44 on the protection of inventions
relating to biotechnology(*23) to justify the “morethan one variety approach”. It insists as well as
on Article 12 of same Directive, which takes into
account the interests of the breeder who cannot
obtain or exploit a plant variety right without
infringing a prior patent, and vice-versa (cf. thesituation where an “essentially derived variety”
is obtained). In such a situation, the breeder or
the patent holder is entitled to a compulsory
licence for non-exclusive use, subject to a royalty.
The relations between the two types of title arethus more organised in the European system thanin the U.S. It is also clear from the EPC and theEuropean case law that patents cannot be granted
for essentially biological process, although thisseems to be the practice of the USPTO.

(*18) “European patents shall not be granted in respect of: (…);(b) plant or animal varieties or essentially biological processes for the production of plants or animals; thisprovision does not apply to microbiological processes or the products thereof.”(*19) The December 1961 version of the Strasburg Convention on the unification of certain points of substantive law onpatents for invention reads as follows:“Nevertheless, the Contracting States shall not be bound to provide for the grant of patents in respect of plant or
animal varieties or of essentially biological processes for the production of plants or animals”; see S.A. Bent, R.L.
Schwaab, D.G. Gonlin and D.D. Jeffery Intellectual Property Rights in Biotechnology Worldwide – M. Stockton Press
1987.
(*20) See paragraph 3.5 of the Transgenic Plant/Novartis II decision of the EPO Enlarged Board of Appeal of December 20,
1999.
(*21) See decision, respectively paragraph VIII of Summary of facts and submissions and paragraph 4 of Reasons for thedecision. Available in UPOV gazette 87/200, pp. 29-38.
(*22) Note that the protection conferred by the UPOV Convention covers the seeds (“propagating material”), just like
patents do, but not the genes or combination of genes, neither the process.
(*23) The EPC is an international convention and does not pertain to the E.C. legal system; however, the EPO takes into
account the E.C. Directive, as many of its member States have to implement it. In its decision of 16 June 1999, theAdministrative Council of the EPO inserted a new Chapter VI entitled "Biotechnological inventions" in Part II of the
EPC Implementing Regulations and amended the wording of Rule 28(6) EPC – see Notice dated July 1, 1999 in OJ
EPO no. 8-9 of August-September 1999, pp. 545-587.
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2

Articulation between plant breeders’rights and patents(1) In the US
Any of the acts restricted by the PVPA may
be performed, even where a protected variety ismultiplied other than sexually, if such acts are
performed in pursuance of a valid United Statesplant patent. Thus, a plant patent owner will not
infringe a plant variety certificate, as long as, incompliance with the plant patent system itself,such patent owner reproduces the plant variety
asexually. A plant variety may be protected by aplant variety certificate, and covered as well by aplant patent for a cloning method or a mutant of
this variety. This necessary measure ofcoordination between the PPA and the PVPA thus
limits the protection granted through plantvariety certificates, in order to avoid the stiflingof further innovation.
(2) In Japan
In this respect, the Seeds and Seedlings Law
includes an interesting provision. Effectively, Sec.
21 (1) of the Seeds and Seedlings Law states that:“The effects of a breeder’s right shall notextend to the following acts:(…) (ii) Production of seeds andseedlings of the registered variety, by aperson who has a patent for the process ofbreeding the registered variety (including avariety which is not clearly distinguishable
from the registered variety…)”
Thus, breeders cannot oppose the effects ofthe scope of protection of process patents, whereseeds and seedlings of a registered variety (or ofa variety not distinguishable from the protectedone) are obtained by a patented method.
Effectively, under patent regimes, products
obtained through the patented method arecovered by the process patent.

patents). In particular, the applicant must give
evidence of his/her unsuccessful attempt toobtain a contractual license; and the plant varietyor the invention concerned must represent asignificant technical progress of considerable
economic interest.
The Regulation 2100/94 on Community plantvariety rights had to be amended accordingly,
which was achieved by the Council Regulation(EC) 873/2004 that modifies Art. 29 of Regulation
2100/94. The new Regulation specifies theconditions of grant of cross-licenses.
Conclusion
The application to breeding programmes of
the research exemption under the Japanese
Patent Law calls for an interpretation by the
Courts. The solution given to a case where abreeder and a patent-holder need to resort tocross-licenses in order to work their respective
inventions would be of the utmost interest.
Within Europe, the manner in which
dependence situations are going to be solved
through the scheme set out by Art. 12 of the
Directive 98/44 and Art. 29 of Regulation 2100/94
remains to be seen. Likewise, the interpretation
by national courts of research exemption
provisions in national patent laws is of special
interest, in particular with respect to market
harmonisation.
More significantly, there is a need for a broader
research exemption in the United States,
statutorily and at common law. Additionally, therelationship between patents and plant breeders’rights in situations of dependence have to beorganised.

(3) In Europe
In Europe, the Directive 98/44/EC on thelegal protection of biotechnological inventions
contemplates such a situation, and Article 12
designed a cross-licensing scheme between
patents and plant breeders’ rights. The conditions
set forth for such licenses are the following ones:– They must be compulsory licenses,– For a non-exclusive use,
– Giving rise to appropriate royalties.
This provision was inspired by the conditions
listed in Art. 31 of the TRIPs(which isconcerned only with compulsory licenses on

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