The status of patenting plants in the Global South

• Published date: 01 March 2020
• Author: Juan I. Correa,Bram De Jonge,Carlos M. Correa
• DOI: http://doi.org/10.1111/jwip.12143
• Date: 01 March 2020

© 2020 The Authors. The Journal of World Intellectual Property published by John Wiley & Sons Ltd

J World Intellect Prop. 2020;121–146. wileyonlinelibrary.com/journal/jwip

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DOI: 10.1111/jwip.12143

ORIGINAL ARTICLE

The status of patenting plants in the Global South

Carlos M. Correa

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Juan I. Correa

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Bram De Jonge

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1

South Centre, Geneva, Switzerland

2

Centre for Interdisciplinary Studies on

Industrial Property and Economics, University

of Buenos Aires, Buenos Aires, Argentina

3

Law Group, Wageningen UR, Wageningen,

The Netherlands

Correspondence

Bram De Jonge, Law Group, Wageningen

University, Hollandseweg 1, Wageningen

6706 KN, The Netherlands.

Email: bram.dejonge@wur.nl

Funding information

Dutch Ministry of Foreign Affairs, Strategic

Partnership Program

Abstract

Over the last few decades, the number of patents on plants

and plant parts has greatly increased in various parts of the

world. Most research, however, has focused exclusively on

developed countries—the United States and European

Union states in particular—while little is known about the

extent to which plants are being patented in other parts of

the world. This article aims to fill this information gap by

providing an overview of the status of patenting plants in

the developing countries and emerging economies of the

Global South. The research is based on the analysis of legal

provisions, patentability guidelines, court decisions (where

they exist) and a sample of patents granted in the countries

selected for this study. The findings indicate that despite the

flexibilities of the World Trade Organization Trade‐Related

Aspects of Intellectual Property Rights Agreement regarding

the nonpatentability of plants, 60% of the 126 countries in

the Global South for which data were available to allow for

the patenting of plants or parts thereof, and many such

patents have been identified. This situation warrants further

reflection and, potentially, review of existing patent laws as

developing countries search for ways of responding opti-

mally to the needs of feeding a growing population while

adapting to the challenges of climate change.

KEYWORDS

developing countries, Global South, patents, plants, seed

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This is an open access article under the terms of the Creative Commons Attribution License, which permits use, distribution and

reproduction in any medium, provided the original work is properly cited.

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INTRODUCTION

Over the last half‐century, patent law has gradually been extended to cover plants and their parts and components.

Currently, patents are granted in many jurisdictions on the basis of claims relating to phenotypic and/or genotypic

characteristics.

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A wide range of claims are often admitted in relation to genetically engineered plants, including genetic

constructs and/or their components as well as modified cellsand plants. In some countries, plant varieties as such may

also be patented. Plant‐related patents may cover DNA sequences (complete or partial genes), promoters, enhancers,

individual exons, plasmids, cloning vectors, expression vectors, nucleic acid probes, amino acid sequences (proteins),

transit peptides, isolated host cells transformed with expression vectors, plant cells, parent lines and hybrids, seeds, and

processes to genetically modify plants and to obtain hybrids (Balachandra & Ramachandranna, 2010; Blakeney, 2012;

Janis, 2014; Jefferson, Köllhofer, Ehrich, & Jefferson, 2015; Oldham, Hall, & Forero, 2013; Thomas, 2004).

As discussed below, an extensive literature addresses the patentability of plants and plant materials,

particularly in the context of developed countries' legislation. Much of it addresses issues around the patentability

of biotechnology in general, including but not limited to plants (Barton, 1991; Ducor, 1998; United States Congress,

Office of Technology Assessment, 1989). A growing number of scientific publications and books have specifically

addressed issues relating to plants including what could be claimed under utility patents, such as plants derived by

cell culture, plants generated by selective breeding and transgenic plants (Agris, 1999; Parvin, 2009).

Academic interest in the subject was boosted in the United States by three important decisions. In Diamond v.

Chakrabarty (1980), the U.S. Supreme Court ruled that living matter was patentable. Significantly, it did not limit

its decision to genetically engineered bacteria and enunciated a very broad interpretation of “manufacture”

and “composition of matter,”thereby opening up the possibility of obtaining patents on plants. In Ex parte

Hibberd (1985), the Appeal Board of the U.S. Patent and Trademark Office (USPTO) held that plants could be the

proper subject of a patent even though they could be protected under the Plant Patent Act or the Plant Variety

Protection Ac t. In J.E. M. Ag Supply, Inc. v. Pioneer Hi‐Bred International, Inc. (2001), the U.S. Suprem e Court confirmed

for the first time that utility patents could be issued for crops and other flowering (sexually reproducing) plants.

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Several studies found that plant‐related patentshad a wide‐ranging scopeas they could cover all aspectsof transgenic

technology, from selectablemarkers and novel promoters to methods of gene introduction (Dunwell, 2005).

The situation of plant‐related patents has also been thoroughly examined in the context of the European Patent

Convention (EPC) and jurisprudence developed by the European Patent Office. Particular attention has been paid

to the legal treatment of methods that are akin to traditional breeding, hybrid seeds and products obtained by

essentially biological processes, and the viability and effects of introducing a breeders' exemption in the patent

system (Bostyn, 2004, 2013). Discussions on these topics have been ongoing in the European Union (EU) for years

(Llewelyn, 2000) and seem equally alive today (Prifti, 2017; Then, Tippe, & Dolan, 2018).

The possible effects of patents on the further use of plants and plant materials are controversial. A number of

studies have examined the impact of intellectual property rights (IPRs) protection of plants, particularly on seed

supply (Binenbaum, Nottenburg, Pardey, Wright, & Zambrano, 2003; Santaniello, Evenson, Zilberman &

Carlson, 2000), and the ongoing consolidation in the global breeding sector (Jefferson et al., 2015; Louwars

et al., 2009). Some analyses advanced the view that patents on plants and licensing would not inhibit but promote

research and development, both in developed and developing countries (Adams & Adams, 1992; Price, 1992).

However, a study of this issue found that stronger plant‐related IPR protection had apparently not increased the

diversity of plant material available to farmers or enhanced the rate of innovation in plant breeding (Wijk, 1996).

Much of the literature has addressed the implications for countries in the Global South of the biotechnology

industry's expansive interpretation of patent law as applied to genetic resources and genetically engineered living

organisms (McNally & Wheale, 1996). Various studies have found diverging views both in developed and in

developing countries on the patent protection of plants and how it affects the behaviour of and interaction

between the public and private sectors (Harfouche, Meilan, Grant, & Shier, 2012). A recent analysis has found that

IPRs provide scant encouragement for biodiversity and a questionable distribution of support for research

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