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The following 20 questions are designed to demonstrate key points about patents (see Top 10
things to know about patents) in a contextual framework. It is by way of encounters with real-life
situations that the facts and theory of patent law and procedures are learned.
These particular questions focus mainly on patent standards and minimum requirements as set
out in the Trade Related Intellectual Property Aspects Agreement, better known as TRIPs, an
international treaty acceded to by over 140 countries. Implementation of the standards and
requirements occur by legislation in member countries, and as such, patent law varies somewhat
among the members. Historically, the patent law system of the United States exhibits some
substantial differences to the system of Europe and many other countries. Because the United
States has one of the largest and most established patent systems, some of the questions are
designed to illustrate these differences.
The original recipients of this quiz were enthusiastic about it as a learning tool. We hope you
enjoy it, learn from it, and improve your own skills.
Question A:
A patent gives the owner the right to:
1. make her invention
2. commercialize her invention
3. publish the results of tests using the invention
4. keep others from making her invention
5. collect a monetary award from the government
6. 1 and 2
7. all of the above
Answer
Question B:
A policy (or policies) behind the patent system is:
1. to encourage an inventor to disclose an invention by granting exclusive rights over the
invention to the inventor.
2. to benefit the public by limiting the scope and term of the exclusive rights granted to an
inventor.
3. to benefit the public through encouraging innovation by publishing a full disclosure of
the technical details of the invention.
4. to benefit the public through guaranteeing that the inventor can commercialize his/her
invention
5. 1 and 2
6. 1, 2 and 3
7. 2, 3 and 4
Answer
Question C:
The minimum requirements for obtaining a patent are that the invention must be:
1. novel
2. non-obvious or include an inventive step
3. useful or capable of industrial application
4. 1 and 2
5. 1 and 2 and 3
Answer
Question D:
An inventor was awarded a patent in the U.K. on a method for selecting transformed plants and
has practiced the mentioned method only in the U.K. Six months later, another person who
independently invented the same method in Australia wants to obtain a patent in Australia. She:
1. could do it without major problems
2. would not be able to do it because the granted patent was published in the U.K.
3. would not be able to do it because the method is used in the U.K.
4. 2 and 3
5. none of the above
Answer
Question E:
The method mentioned above was not patented or published anywhere but has been used in the
U.K. and only in the U.K. since 1997. Another person who independently invented the same
method in Australia in 2001 wants to obtain a patent in Australia. She:
1. could do it without major problems
2. would not be able to do it because the invented method has been used in the U.K.
3. could do it only if the method has not been described in a written publication anywhere in
the world
4. 1 and 3
5. none of the above
Answer
Question F:
A patent application is filed on 1 January 1999. The application is published 18 months later on 1
July 2000 and granted on 30 May 2001. The patent is valid until:
1. 30 May 2021; 20 years from the grant date of the patent
2. 1 July 2020; 20 years from the publication date of the application
3. 1 January 2019; 20 years from the filing date of the application
4. some other date
Answer
Question G:
A patent awarded by the patent office in Japan is valid in:
1. Indonesia and its territories
2. Japan and its territories
3. All ASEAN countries
4. All countries that adhere to TRIPS
Answer
Question H:
Assuming an applicant has indicated a desire to have a patent valid in all European countries and
elects to have the application examined by the European Patent Office, a regional patent office,
the patent that is ultimately granted is valid:
1. automatically in all countries that are members of the European Patent Office
2. automatically in all European countries, regardless of whether they are member
3. upon registration in each country that supports the European Patent Office
Answer
Question I:
An international patent:
1. is the result of an international application filed under the international Patent
Cooperation Treaty (PCT)
2. is valid in all member countries of the PCT
3. is valid only in the PCT countries designated by the applicant upon filing the application
4. 1 and 2
5. 1 and 3
6. there is no such thing as an international patent
Answer
Question J:
You have a granted patent in the United States and in Australia on using GUSPlus, a very
sensitive detection system for identifying transformed plants. A couple of colleagues of yours
are working at an Australian non-profit research institute and another is working at Cornell
University in the United States, and they want to use the GUSPlus system for research purposes
to identify transgenic plants. They can:
1. use it freely without the need to tell you
2. use it, but they should tell you first
3. use it only if they get a license or some other form of permission from you
4. cannot use it at all
Answer
Question K:
You are a farmer growing Bt-transgenic soybeans in Argentina and Humongous Company, a
very large multi-national agricultural company, has a valid patent in the United States, but not in
Argentina, that claims Bt-transgenic soybeans. You will be:
1. infringing Humongous' patent rights by growing Bt-transgenic soybeans in Argentina
2. infringing Humongous' patent rights by growing Bt-transgenic soybeans and saving seeds
for next sowing season in Argentina
3. infringing Humongous' patent rights by exporting Bt-transgenic soybeans to the U.S.
4. none of the above
Answer
Question L:
A published patent specification:
1. is always a granted patent and is enforceable
2. is always an application for a patent and is not enforceable
3. is always an application for a patent and is enforceable
4. could be either a granted patent or a patent application
Answer
Question M:
A PCT publication is:
1. always a granted patent
2. sometimes a granted patent
3. always a patent application
Answer
Question N:
If you want to know what is actually covered by a granted patent, you will look at:
1. the title
2. the title and the abstract
3. the abstract
4. the detailed description of the invention and the drawings
5. the detailed description of the invention and the claims
6. the claims
Answer
Question O:
A published application in Brazil describes the cloning of glycosyltransferases, enzymes that
transfer sugar moieties, from five different bacteria including Staphylococcus, Pneumococcus,
Arthrobacter, Clavibacter, and Thermobacter, and teaches how to obtain genes encoding the
same enzymes from other bacterial genera. The only claim recites:
"An isolated DNA sequence encoding a glycosyltransferase isolated from Staphylococcus".
You need a license before you can use DNA encoding the following in Brazil:
1. a glycosyltransferase from Staphylococcus
2. a glycosyltransferase from Haemophilus
3. a glycosyltransferase from Pneumococcus
4. 1 and 3
5. none of the above
Answer
Question P:
The publication mentioned above is a Brazilian granted patent. You need a license before you
can use DNA encoding the following in Brazil:
1. a glycosyltransferase from Staphylococcus
2. a glycosyltransferase from Haemophilus
3. a glycosyltransferase from Pneumococcus
4. 1 and 3
5. none of the above
Answer
Question Q:
Two independent inventors come up with the same patentable invention and each of them
decides to file a patent application in Canada, Germany and the United States. Who would get
the patents?
1. in each country, the first one to file the patent application
2. in Canada, the first to file the patent application, and in Germany and the United States,
the first to invent the invention
3. in Germany, the first to file the patent application, and in Canada and the United States,
the first to invent the invention
4. in Canada and Germany, the first to file the patent application, and in the United States,
the first to invent the invention
5. in each country, the first to invent
Answer
Question R:
If you infringe a patent:
1. you go to jail if caught
2. you pay a large fine to the government
3. the owner of the patent will sue you in a court
4. nothing may happen
5. 2 and 3 are both possible
6. 3 and 4 are both possible
Answer
Question S:
You and a couple of colleagues are the inventors of a new drug that successfully tackles stomach
cancer and has few unwanted side effects. Your colleagues decide to publish the methodology
used to develop the drug in a prestigious scientific journal. The article is published in January
2001 and the research results are presented in two international conferences in March 2001 with
great success. In the meantime, your team realizes that it would be worthwhile obtaining a patent
for the new drug. A patent specification is diligently prepared and filed in the United States and
with the European Patent Office in April 2001. Which of the following scenarios is the most
likely:
1. because the invented drug fulfills the criteria for patentability, your team is awarded the
patent in both jurisdictions.
2. because the invention was published before the filing of the patent application, your team
is denied a patent in both jurisdictions.
3. because the invention was published within one year of the filing of the patent
application, your team is allowed a patent in both jurisdictions.
4. because the invention was published within one year of the filing of the patent
application, your team is denied a patent in Europe, but granted in the United States
Answer
Question T:
A patent on a method to heal wounds using turmeric has been granted in both Europe and in the
U.S. in January 2001. You, as a person not involved at all in the alleged invention, have written
evidence proving that the method was well-known not only in the mentioned places, but also in
other parts of the world. You find out about the patent in August 2001. In the present
circumstances you could:
1. file an opposition against the granted patent before the patent offices in both the United
States and in Europe alleging lack of novelty
2. file an opposition against the granted patent before the United States patent office
alleging lack of novelty
3. file an opposition against the granted patent before the European patent office alleging
lack of novelty
Answer
Question U:
The following is a good reason to search for patents and patent applications with the CAMBIA
Patent Lens search:
1. for scientific information
2. for information on freedom to operate
3. to see if your idea is patentable (novel and non-obvious)
4. to see what your competitor is up to
5. 2, 3, and 4
6. all of the above
Answer
Back to Patent Tutorials
There are "international applications" called PCT applications that need to be converted into
national applications within a period of maximum 30 months in order to obtain a patent. Each
country in which a national application is lodged has its own process and criteria for
patentability.
More information
More information
Patent examiners assess an invention against the relevant prior art publicly available in the
field of the invention to determine whether it fulfills the patentability criteria. The
requirements for patentability are not the same as the criteria used for publishing research
results in a scientific journal. They may appear to be more lenient, or much stricter. The most
important criteria for patenting generally are whether the invention is enabled by the
description submitted, and whether it appears to have been described or obvious from what
was already in the public domain before filing (the subject for a publication may be quite
impactful without fulfilling the patentability criteria).
More information
Patents are commercially tradeable assets, and the patent rights can be assigned or licensed to
third parties, acquired in mergers etc. The holders of licenses or assignments, i.e. the actual
rights to use the patents, are typically not listed in the national patent databases. In addition,
the patent owner may have changed since the patent published, although because ownership
(assignment) is typically recorded at patent offices the current owner can be determined. If
you want to use a patented technology, it is a good idea to look in the patent office on-line
records to establish the name of actual rights-holder.
More information
In most countries now, a patent lasts for 20 years from the date of filing, provided required
maintenance fees are paid. This period is the monopoly period granted to the owner of the
patent.
More information
Patents are granted by the government of a country or jurisdiction and the rights are valid
only within its territorial boundaries.
More information
More information
These rights and limits are not defined by the titles, not the abstract, not the detailed
description of the invention, not the examples and figures.
More information
As is the case for any tradeable asset, a patent can be promoted, offered in the market and
commercialized actively in order to generate income for its owners. Many patents do not
generate any income, and if this is the case, sometimes owners choose to allow them to lapse
early. If you are interested in using the technology described in a patent, it is a good idea to
check whether the patent is still in force before contacting the owner for a license.
More information
Patent rights can be used to stop other parties from using, making, selling, offering to sell,
and importing the protected invention if the other parties do not have authorization from the
holder of the patent rights. They don't necessarily give a right to use the technology if other
patents or laws prevent it.
More information
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United States
(published on or after 2 Jan 2001)
“A” patent
Europe
Europe follows WIPO standard ST.50 for corrections.
B1 granted patent
B9 correction of application;
*The “W” codes are printed on the front page of the document. As they are confusing,
hypothetical examples follow:
The following events occur in the order listed.
A patent application is published as EP 999999 A1
An error is discovered in the front page data.
The front page is republished in paper and on CD as an A8 type of publication and the front page
shows EP 999999 A8; in the field (15) Corrected information, the code W1A1 is shown.
Errors are discovered in the claims.
The entire specification is republished in paper and on CD as an A9 type and front page shows
EP 999999 A9; in the field (15) Corrected information, the code W2A1 is shown.
WIPO (encompasses PCT applications)
An application filed at WIPO (World Intellectual Property Organisation) is published 18 months
after the earliest related patent application is filed in the home country.
A Patent Examiner at the WIPO receiving office performs a prior art search and sends a search
report to the applicant. The search report is also published, either as an attachment to the patent
application document or separately – depending on whether or not the search report is ready at
the time of publication of the application.
Republications
If an application is re-published to make corrections or amendments on the first page, in the body
of application, or in the claims, the kind codes (A1, A2, A3) are appended with further
designators.
Note that in the PCT Gazette (www.wipo.int/ipdl/en) publication of an A3 document is
considered to be a republication and is marked as such in the results list.
A corrected application will have the mark CORRECTED VERSION at the top of the first page
of the publication. It will also note on the front page where information can be found about the
corrections. See for example, WO 2001/073119.
R1 Amended claims
R5
R7
R8
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EXAMPLE
While bushwalking, Amy discovers a plant which nobody has ever previously seen or
documented. Can Amy obtain a patent for the plant?
No. Amy can not patent the plant as it is natural source material and is not novel (see below).
From the date that a patent is granted, the patent holder has the exclusive right to exploit the
invention or authorize another person to do so until the patent expires. Patent rights are
considered personal property and may be assigned to other parties.
A utility patent grants the owner the right to exclude others from:
1) making,
2) using,
3) selling or offering for sale or
4) importing
the protected invention for a 20 year period* from the earliest file date.
*If a patent application was filed prior to June 8, 1995, the patent term of protection in the
United States is 17 years from the date of issuance.
EXAMPLE
John is the sole owner of a patent for herbicide resistant corn plants. He becomes aware that his
former co-worker Julie is making and selling the same patented corn plant. What can John do?
John, as the patent owner has the exclusionary right to stop others from making and selling his
invention. Julie is therefore infringing John's patent, and John can bring a lawsuit for
infringement or ask that Julie take out a llicense.
v) Exemptions
Exemptions to patent infringement that are relevent to patenting of plants are provided in some
jurisdictions.
In United States case law, an 'experimental use exception' to patent infringement was thought
to exist which allowed researchers free access to the invention in order to use it for experimental
purposes. However, based on the decisions in recent cases the doctrine certainly no longer exists
and it is highly doubtful whether the doctrine ever actually existed.
In Australia, limited exemptions are defined within the legislation. The 'prior use' exemption
allows someone who was utilizing the patented product or process before the priority date of a
claim to continue using the patented product without infringement. The use of a patented product
on board a foreign vessel that accidentally comes into the patent area is also exempted from
infringement.
The EU Directive 98/44/EC provides a 'farmer's privilege'. Under the Directive, farmers are
allowed to use patent protected seeds freely for their own use and the resulting plant material is
free from protection. Farmers are not permitted however, to re-sell the patented seed. Member
States are able to define their own exemptions to patent infringement (see, for example, Patents
Act 1977 (UK), s60 (5))
Although not an exemption per se, in the United States but not in Australia or Europe, an
inventor has a grace period allowing for retrospective application for a patent. Patent rights are
not automatically foregone by public disclosure, such as publication or commercialisation,
provided that a patent is applied for within 12 months of the disclosure. Note that other countries
(e.g., Japan) have a limited grace period, and other countries are considering instituting one.
EXAMPLE
Tom, a U.S. resident, was the first person to extract oil from sunflower plants. He presents his
findings at a biotechnology conference. It is not until after his presentation he realises that his
sunflower oil may be of commercial significance. Is it too late for him to patent his invention?
Tom can still obtain a patent in the United States provided he applies within twelve months of the
conference and the oil or its method of extraction meets the requirements for patentability.
B. Plant Patents
Specific plant patents are only available in very few countries.
The Plant Patent Act was enacted by US congress in 1930. It was introduced primarily to benefit
the horticulture industry by encouraging plant breeding and increasing plant genetic diversity.
i) Limited types of plants are eligible for protection
The Plant Patent Act 1930 (35 U.S.C. 161) provides for:
Plant patents encompass newly found plant varieties as well as cultivated spores, mutants,
hybrids and newly found seedlings on the proviso that they reproduce asexually. Asexual
reproduction is defined as any reproductive process that does not involve the union of individuals
or germ cells. It is the propagation of a plant to multiply the plant without the use of genetic
seeds. Modes of asexual reproduction in plants include grafting, bulbs, apomictic seeds,
rhizomes and tissue culture.
Specifically excluded from protection under the Plant Patent Act are tuber-propagated plants and
plants found in an uncultivated state.
ii) Patentability requirements are less stringent for plant patents
The requirements that must be fulfilled in order to obtain a Plant Patent are the same as those for
utility patents (see Patents (iv) above). However, the IMPLEMENTATION of these
requirements is LESS STRINGENT.
For example, the Plant Patent Act provides that plant patents will not be rejected or invalidated if
the plant is not fully described or enabled. It does however, require that the new variety is
described as complete as reasonably possible.
It is also not necessary to deposit the claimed plant at an official depositary.
The ordinary test of 'non-obviousness' is not applied to plant patents. This is primarily due to the
fact that it is extremely challenging to develop a new plant variety that is stable and can be
preserved by asexual reproduction.
iii) Plant patents confer an exclusionary right
A plant patent gives the patent holder the right to:
exclude others from asexually reproducing, using, selling, offering for sale or importing into the
United States the reproduced plant (or any of its parts)* for a period of 20 years.
In contrast to utility patents, plant patents only protect a single plant or genome and the
protection conferred is quite limited. It does not protect the plant characteristics, mutants of the
patented plant nor technologies associated with its cultivation. Because plant patents are granted
on the entire plant, it follows that only one claim per plant patent is permitted.
U.S. courts have held that a twelve month grace period also applies to plant patents (35 U.S.C
�102(b)) whereby a disclosure of a new plant variety or a granted patent of the new variety in a
foreign jurisdiction does not destroy patentability provided that the disclosure or foreign patent
occurred less than 12 months prior to the plant patent application being lodged in the U.S. If
publication has occurred in any other country prior to the 12 month grace period, the plant patent
application will be refused (Ex parte Thomson, 25 USPQ 2d 1618 (BPAI 1992)). This
interpretation of the law has met with proposals to increase the grace period to 10 years on the
basis that often times plants from foreign jurisdictions are held in quarantine by the USDA for a
period of more than 12 months, thereby nullifying patentability. To date this idea remains a
proposal.
*The Plant Patent Act was amended on 27 October 1998 to extend the exclusive right to plant
parts obtained from protected varieties but it is not applied retroactively.
iii) Dual protection is allowed
A utility patent and a plant patent can both be obtained to protect the same plant.
It is possible to obtain protection for the same plant under both a utility patent and a plant patent
in the United States at the same time, provided that the requirements for patentability for both
types of patents are fulfilled.
EXAMPLE
Marc and Crystal want to obtain protection in the U.S. for their new variety of asexually
reproducing plant. They also wish to protect a special aluminum device that contains specific
amounts of hormones and other nutrients needed to ensure the plants survival. What types of
protection are available?
Marc and Crystal can obtain a plant patent for the new variety plant provided they meet the
requirements for patentability. However the device required to guarantee survival of the plant is
unable to be protected by this system. Utility patents would provide protection to BOTH the
special device and the plant variety provided the criteria for patentability are fulfilled.
The requirements for protection under UPOV require distinctness. The variety must be
distinguishable from any other variety which is publicly known at the time of filing the
application. The variety must have predictable characteristics and be able to be reliably
reproduced. The additional requirement under the 1991 Convention states that the variety must
be 'new'. The word 'new' is held to mean that the variety has not been sold or otherwise disposed
of by the breeder for commercial purposes prior to filing for protection. However, similarly to a
utility patent, natural source material is not protectable. The UPOV Convention does allow a 12
month 'grace period' for sales of the new variety before protection is no longer available (Article
6(1b)).
The latest Convention protects all plant varieties including those that are 'essentially derived' i.e.
plants which require the protected variety for their production. The protection offered to the plant
variety is an exclusionary right.
However, the protected plant can be used for non-commercial acts (provided they are done
privately) and for experimental purposes without infringement.
Considering that many UPOV members are also bound to the TRIPs agreement (due to their
WTO membership), UPOV provides a framework by which countries can implement a
protection system that generally fulfills the TRIPs requirement of providing 'an effective sui
generis system' (see s2A).
C. Plant protection mechanisms provided by sample countries
*Any variety which was protected prior to the 1994 amendments is subject to the original Plant
Variety Protection Act (1970) which only provides 18 years of protection for non-woody plants.
However, applications submitted prior to April 4, 1995 (effective amendment date) may be re-
submitted in order to secure the extended term of protection provided by the amendments.
ii) Plant Breeder's Rights (Australia)
Similarly to the U.S., Australia is both a WTO and UPOV member and has implemented the
UPOV protection system as a mechanism for complying with TRIPs. Australia is signed onto the
1991 Convention. As a result, plant varieties are protected in Australia by a Plant Breeder's Right
(PBR) under the Plant Breeder's Rights Act (1994).
The requirements, term and rights conferred by the UPOV Convention are implemented under
the Plant Breeder's Rights Act.
In Australia, a PBR is obtained from and administered by the Plant Breeder's Rights Office, in
contrast to patents which are granted by IP Australia. Recently the Plant Breeder's Rights Office
was brought within IP Australia.
A choice is usually made between the two protection systems depending on the level of
protection sought and the ability to satisfy the necessary requirements. PBRs are generally
obtained much faster than a patent due to the lack of examination and are also much cheaper to
obtain. They are therefore desirable where protection is required in a short period of time and
there is no need to acquire rights over the use of the variety for non-commercial purposes. Where
comprehensive exclusive rights are desired, protection under the patent system would be more
suitable.
iii) Community Plant Variety Rights (European Union)
Plant variety protection in the European Union is a result of the European Convention
(Regulation 2100/94/EC), which is based on the 1991 UPOV Convention. It was introduced in
order to harmonise and streamline the method of plant variety protection available throughout
Europe.
The Community protection of plant varieties (CPVR) enables applicants, on the basis of one
application, to be granted a single intellectual property right which is operative throughout all
countries that are members of the European Union. A CPVR can only be transferred or ceased
within the EU Community on a uniform basis. That is, a CPVR can only be valid (or cancelled)
across all EU countries, not selected individual countries.
The CPVR exists alongside individual European countries' national plant protection legislation
as an alternative form of protection. As a result, it is not possible to hold protection for the same
plant variety under both the Community and a national system at the same time. Where a CPVR
is granted in r elation to a variety for which a national right has already been granted, the
national right is suspended for the duration of the CPVR.
The CPVR confers protection to all 'new' botanical genera and species, including their hybrids,
provided that the varieties meet exactly the same requirements as outlined under the UPOV
Convention. A CPVR is issued by the Community Plant Variety Office in Angers, France.
EXAMPLE
George wishes to obtain a CPVR for his new plant variety in Germany. He is unsure as to
whether his CPVR will provide protection in Italy and Switzerland.
The CPVR obtained by George will confer protection to George in ALL European Union
countries. There is no need to register individually in each country. George will automatically be
granted protection in Italy, however not in Switzerland as Switzerland is not a member of the EU.
3. Trade Secrets
A. A trade secret is confidential information
A trade secret is commonly regarded as:
any formula, pattern, device, or compilation of information that is used in a business and gives
that business an opportunity to obtain advantages over competitors.
The information is kept from the public and from competitors, usually by the use of
confidentiality agreements with employees. These agreements confer an obligation on the
employees to keep the information secret. These agreements can be enforced by the court.
Generally for a trade secret to exist there must have been:
Secrecy: in the form of a confidentialtiy a greement or covenant. External forms of protection
such as security systems etc also impart the necessary requirement of secrecy.
Novelty: The subject of the secrecy must have been novel.
Value: The subject of the trade secret must be of some value or give some advantage over
competitors.
For a breach of a trade secret to occur, there must have been an improper taking. That is there
must have been a breach of the secrecy whether by theft or the breaking of a confidentiality
agreement.
One advantage of using trade secret law to protect an invention is the unlimited time for
protection. Some disadvantages however are that trade secret protection does not prevent
competitors from legally reverse engineering a product to determine the secret or from
independently duplicating the information. Inventions involving the use of DNA are now
unlikely to be protected by trade secrets due to the ability to reverse engineer.
B. Trade Secret laws can be used to protect plants
Plants can be protected provided that reasonable efforts have been made to keep the plant variety
confidential, secret and out of the public domain. In the United States, trade secrets have been
used for decades to protect parental lines of hybrid corn.
Recently a United States court recognized that "genetic messages" of inbred plant varietal lines
may be protected by trade secret law subject to the provision that reasonable effort has been
taken to preserve the secrecy of the gene sequence (Pioneer Hi-Bred case). In the Pioneer Hi-
Bred case it was held that the accidental inclusion of inbred seed in bags of commercially
available first generation seed by Pioneer Hi-Bred was not enough to destroy the secrecy
surrounding its "genetic message". Reasonable precaution had been taken to keep the "genetic
message" contained in the inbred seed out of the public domain.
Under Australian law it is theoretically possible that specific varieties of plants may be afforded
protection under the doctrine of confidential information or trade secrets, however to date, no
cases involving the doctrine and plant varieties have been brought before the courts. As a result it
is currently unclear as to the extent of protection available under the doctrine of trade secrets.
4. Genetic Mechanisms
A. Hybrids
In some cases, specialized plant breeding can present an alternative to intellectual property
protection.
Breeders often select individual plants that display beneficial or attractive traits such as a fast
growth rate in comparison to other plants or an increase in either herbicide or disease resistance
etc. The breeder then crosses these plants with individual plants of different varieties that also
demonstrate attractive traits. The resulting progeny are called hybrids.
Seeds resulting from hybrids show an extremely poor ability to reliably reproduce the trait of
interest in their progeny or next generation.
It therefore becomes necessary for the farmer to purchase new seed for subsequent plantings.
Hybrid selection therefore becomes a way for the plant breeder to protect their varieties from
exploitation as they are safe in the knowledge that the farmer or purchaser can only access the
trait reliably for one generation. Farmers and others must obtain more seed from the breeder if
they wish to continue to use the same hybrid plants.
Hybridisation therefore serves as a way of not only creating new plant varieties with attractive
traits but ensuring some sort of protection for new commercial plant varieties. Although this
method of protection is inexpensive and is not subject to legal requirements or restrictions, the
breeder has no enforceable remedy available to him/her, except under trade secret law (see
above) or by contractual agreement.
B. Genetic Use Restriction Technologies (GURTs)
Genetic Use Restriction Technologies (GURTs) is technology that allows the control of gene
expression of an organism, further allowing constraints or restrictions on the use of the organism
or trait. The term GURT was developed by the Lead Author (CAMBIA's CEO) of the first study
commissioned by the United Nations Convention on Biological Diversity (CBD).
There are two main types of GURTs: variety-level GURT (v-GURT) and trait- level GURT (t-
GURT).
v-GURT causes the seeds of the affected plant variety to be sterile in contrast to t-GURT which
results in the expression of a selected trait. t-GURT introduces a mechanism for trait expression
into the variety which can only be turned on, or off, by treatment with specific chemical
inducers. The gene of interest can thus be expressed at particular stages or generations of the
crop.
In addition to intellectual property rights, plant breeders in principle are able to use GURTS to
strengthen the protection of newly developed plant varieties. The use of v-GURTs requires
farmers to buy seeds from the breeder each season and therefore could be used as a way of
avoiding the farmers privilege exception to patentability that exist in Europe. However, in some
situations v-GURTS are advantageous to farmers as they reduce the need for tillage and do not
sprout inappropriately. t-GURTs require the farmer to purchase chemical inducers from the
breeder in order for the farmer to be able to make use of the specific traits of the variety ie
herbicide resistance.
It should be emphasized that at the time of editing (2007) there are no commercial example of
GURTs known anywhere in the world. The initial example, dubbed Terminator by a Civil
Society Organization, was from a prophetic patent application that had not reduced the
technology to commercial practice.
5. Contracts
The following types of agreements are all governed by contract law as opposed to intellectual
property law. There are no international agreements that regulate the law of contracts.
A. Material Transfer Agreements
Material Transfer Agreements (MTAs) are legal agreements made between a provider and a
recipient party when research material is being transferred between institutions.
Material most often transferred includes plant varieties, transgenic plants, cell lines, germplasm,
vectors, chemicals, equipment or software.
The MTA itself contains a written description of the material to be transferred and any limits on
the material that the provider wishes. For example some providers may limit the use of the
transferred material to non-commercial situations or to a specific field of research. In some cases
where publication of results occurs which involve the material it may be necessary to
acknowledge the source of the material.
The terms and conditions of the MTA also usually outline the ownership rights, confidentiality
provisions and any third party transfer restrictions that the provider of the material wishes to
impose.
The agreement acts as a contractual agreement that is often used to protect the rights of
ownership of the provider and also to protect the material from unauthorized use.
B. Bag Labels
Bag label contracts are another form of legal protection which can be applied to plants,
especially seeds. An explicit contract is described on a bag label which is normally sewn into the
seal of a bag. By opening the bag and breaking the seal, the purchaser agrees to comply with the
contract.
These contracts are similar to what is commonly known as "shrink wrap licenses" in software.
As yet the strength of protection conferred by the bag label is not firmly established.
C. Technology Use Agreements
A technology use agreement is an agreement most commonly between technology suppliers and
farmers which usually controls the right to plant a given seed on a specific area of land often for a
certain period of time.
The agreement provisions can also include restrictions on the use of proprietary traits in the
creation of new varieties and also gives permission for the technology supplier to access the
farmers property to check for violations.
This form of property right enforcement has been implemented by producers of agronomic traits
in the U.S. and other countries. In some cases, the producers reserve the right to inspect the field
of the contracting farmer and to take samples to ensure the compliance of the farmer with the
TUA.
A breach of a Technology Use Agreement gives rise to a claim for damages if a breach of
contract occurs.