[Senate Executive Report 105-15]
[From the U.S. Government Publishing Office]



105th Congress                                               Exec. Rpt.
                                 SENATE

 2d Session                                                      105-15
_______________________________________________________________________


 
                 CONVENTION FOR THE PROTECTION OF PLANTS

                                _______
                                

                 June 19, 1998.--Ordered to be printed

_______________________________________________________________________


          Mr. Helms, from the Committee on Foreign Relations,

                        submitted the following

                              R E P O R T

                   [To accompany Treaty Doc. 104-17]

    The Committee on Foreign Relations, to which was referred 
The International Convention for the Protection of New 
Varieties of Plants of December 2, 1961, as revised at Geneva 
on November 10, 1972, on October 23, 1978, and on March 19, 
1991, and signed by the United States on October 25, 1991, 
having considered the same, reports favorably thereon with one 
reservation, two declarations, and one proviso, and recommends 
that the Senate give its advice and consent to the ratification 
thereof as set forth in this report and the accompanying 
resolution of ratification.

                               I. Purpose

    The principal purpose of the proposed treaty is to enhance 
the protection afforded to breeders of new plant varieties not 
only in the United States and other member states, but also in 
states which may join in the future where patent protection for 
plant varieties is not now obtainable, or in present and future 
member states where protection of plant breeders' rights is 
either weak or unavailable for a significant number of plant 
species and genera.

                             II. Background

    The proposed treaty was signed by the United States on 
October 25, 1991, but was not submitted to the Senate for its 
advice and consent to ratification until September 5, 1995. 
Currently, the United States is a party to the 1978 
International Convention for the Protection of New Varieties of 
Plants, which was concluded in October 23, 1978, and entered 
into force on November 8, 1981. The 1991 Treaty would expand 
the protections provided by the 1978 Treaty.

                              III. Summary

                               a. general

    The International Union for the Protection of New Varieties 
of Plants (UPOV) was created by the original 1961 International 
Convention for the Protection of New Varieties of Plants to 
promote the protection of the rights of plant breeders in new 
plant varieties. Subsequently, several member nations enacted 
laws for the same purpose. In the United States, the Plant 
Variety Protection Act (PVPA) was enacted particularly in order 
to promote the development of new varieties of agricultural 
grain crops, without which the U.S. agriculture business would 
be at a disadvantage compared to its counterpart in other 
countries with new plant variety protection policies.
    In the United States there is a legal framework in place to 
provide these protections for plants. There are basically three 
types of plant protection possible under U.S. federal law:

   the standard utility patent available under the 
        Patent Act of 1952 (codified as amended at 35 U.S.C. 
        Sec. Sec. 101 et seq.) which is administered by the 
        Patent and Trademark Office in the U.S. Department of 
        Commerce,
   plant patents available under the Plant Patent Act 
        of 1930 (codified as amended under 35 U.S.C. Sec. 161 
        et seq.), which is administered by the Patent and 
        Trademark Office in the U.S. Department of Commerce; 
        and
   certificates of protection available under the Plant 
        Variety Protection Act of 1970 (PVPA, codified as 
        amended at 7 U.S.C. Sec. 2401 et seq.), which is 
        administered by the Plant Variety Protection Office in 
        the U.S. Department of Agriculture.

In addition, protection may be available under State trade 
secrets laws. Until relatively recently, utility patents were 
not available for plants because they were considered products 
of nature; however, a U.S. Supreme Court decision changed this 
assumption and made possible the granting of utility patents 
for plants. (Diamond v. Chakrabarty, 447 U.S. 303 (1980)).
    Currently, the UPOV has 35 members who have ratified the 
Convention through either the 1972 or 1978 amendments, that is, 
the Act of 1961/1972 or the Act of 1978. The proposed 1991 
Treaty has not yet entered into force. The 1991 Treaty was 
signed by sixteen nations, including the United States, and has 
been ratified, accepted or approved by four nations. In 1994, 
the United States became the first nation to enact implementing 
legislation which brought U.S. law into compliance with the 
1991 amendments.

                           b. key provisions

    The key provisions of the 1991 UPOV Convention include:

    Article 1--Defining Breeder and Variety. In addition to 
these major changes, there are other new features in the Act of 
1991. A new definitions section is provided in Article 1, 
including most significantly, definitions for ``breeder'' and 
``variety,'' with the latter making the distinction between 
what constitutes a variety per se and a variety which satisfies 
the conditions for protection under the Convention. The Act of 
1991 eliminates the provision under Article 2 of the Act of 
1978 which permits member States to limit the application of 
the Convention within a genus or species to varieties with a 
particular manner of reproduction or multiplication, or a 
certain end-use.

    Article 2--Flexibility in Choice of Form. The proposed 
treaty eliminates the restriction under Article 2 of the 1978 
Treaty, which prohibited a member State from providing more 
than one form of protection for the same genus or species where 
patent protection as well as breeder's rights are both 
available in the member State. Thus, under the Act of 1991, a 
member State has the flexibility and freedom of providing 
either or both forms of plant protection for the same genus or 
species.

    Article 3--Extension of Protection for Genera and Species. 
The scope of the genera and species protected under the UPOV is 
extended to include all plant genera and species, within five 
years after the date upon which a member State becomes bound by 
the Act of 1991 and within ten years after a new member joins 
the UPOV under the Act of 1991 (Article 3). Under the Act of 
1978, member States of the UPOV were only required to extend 
protection to at least twenty-four genera or species within 
eight years of becoming bound by the Act of 1978.

    Articles 5-9--Defining Conditions for Protection. Articles 
5 to 9 essentially rewrite and reorganize the provisions in 
Article 6 of the 1978 Treaty defining these conditions for 
protection so that the provisions are clearer. Article 5 states 
concisely at the beginning that the conditions are that the 
variety be new, distinct, uniform and stable. Articles 6, 7, 8, 
and 9 elaborate on each of those conditions respectively. With 
regard to the novelty requirement in Article 6, the proposed 
treaty makes mandatory the optional one-year grace period in 
the 1978 Treaty, providing that a variety must not have been 
sold or marketed in a member State of the UPOV with the consent 
of the breeder more than one year prior to the date of filing 
for protection in that State. With respect to distinctiveness, 
the requirement in Article 6(1)(a) of the 1978 Treaty, that a 
variety must be ``distinguishable by one or more important 
characteristics from any other variety'' whose existence is 
common knowledge, is eliminated because of the ambiguity 
concerning whether ``important'' is synonymous with 
``economically significant.''

    Articles 11 and 13--Changes to Right of Priority. There are 
several changes affecting the right of priority. Article 11 of 
the proposed treaty continues the right of priority for an 
application in one Contracting Party based on an application 
for protection in another Contracting Party made twelve months 
before the former application. This article differs from 
Article 12 of the 1978 Treaty by specifying that a claim of 
priority can only be made in an application for a breeder's 
right. However, the earlier application on which the claim of 
priority is based does not have to be an application for a 
certificate of a breeder's right, but may be an application for 
a patent or other type of variety protection available in that 
Contracting Party.
    The 1991 Treaty further permits a Contracting Party to 
require that, within three months of the filing of the 
subsequent application, the breeder must submit samples proving 
that the variety claimed in the earlier and the subsequent 
applications is one and the same, in addition to requiring 
certified copies of the earlier application. The 1978 Treaty 
required the submission of certified copies but did not require 
that samples be submitted within three months.
    The 1978 Treaty allowed the breeder a period of four years 
after the expiration of the period of priority in which to 
submit additional documents and material required by the laws 
of a Contracting Party, except where the earlier application is 
rejected or withdrawn, in which case, the Contracting Party may 
require submission of additional materials and documents within 
an ``adequate'' period. The proposed treaty reduces the period 
to two years, and permits a Contracting Party to require the 
submission of additional documents and materials within an 
``appropriate'' period where the earlier application has been 
rejected or withdrawn.
    Article 13 of the proposed treaty makes mandatory the 
provisional protection for plant varieties in the period 
between the filing or publication of an application and the 
grant of a breeder's right. Article 7(3) of the 1978 Treaty 
merely made such protection optional. However, the proposed 
treaty permits Contracting Parties to provide such protection 
only with respect to infringers whom the breeder notified of 
the application for breeder's rights.

    Articles 14-19--Extension of Scope of Property Rights. The 
scope of property rights granted to plant breeders in protected 
varieties is extended, with appropriate exceptions and 
limitations (Articles 14-19). Under the 1978 Treaty, activities 
which currently require the prior authorization of the breeder 
included the production for purposes of commercial marketing, 
the offering for sale and the marketing of propagating material 
of a protected variety. Under the proposed treaty, additional 
activities requiring the permission of the breeder include 
exporting, importing, conditioning for the purpose of 
propagation, and stocking for any of the aforementioned 
activities of the propagating material.

    Article 14--Extended Breeder Rights for Harvested Material. 
Subject to certain exceptions, the permission of the breeder is 
also required for activities mentioned in the previous 
paragraph with respect to harvested material obtained through 
the unauthorized use of the propagating material of a protected 
variety and, at the option of each Contracting Party, may also 
be required for these activities with respect to the products 
of such harvested material (Article 14(2)(3)).

    Article 14--Inclusion of ``Essentially Derived Varieties''. 
Breeders' rights are expanded so that a protected variety is 
deemed to include ``essentially derived varieties'' (Article 
14(5)). This ends the undermining and dilution of breeders' 
rights under the 1978 Treaty by the practice of using protected 
varieties to develop new varieties, which share certain 
essential characteristics with the protected varieties from 
which they were derived and yet have been considered distinct 
from the latter and even eligible for separate protection, 
because of superficial cosmetic changes that distinguish them 
from the latter.

    Article 15--Recognition of ``Farmers' Privilege''. The 
exception to breeders' rights commonly referred to as the 
``farmers' privilege'' or ``crop exemption'' is explicitly 
recognized but also partially eliminated. Under Article 15(2), 
Contracting Parties to the proposed treaty are permitted to 
make an optional restriction to breeders' rights to permit 
farmers to use ``saved seed'' from the harvest of crops grown 
on their holdings from a protected variety in order to plant a 
new crop on their own holdings. However, contracting Parties 
may not permit farmers to make ``brown bag'' sales of ``saved 
seed'' to other farmers. The proposed treaty did not explicitly 
recognize the ``farmers' privilege,'' merely providing under 
Article 9(1) that the breeder's rights may not be restricted 
other than for reasons of public interest (and requiring under 
Article 9(2) that equitable remuneration be ensured for the 
breeder).

    Article 19--Extension of Period of Protection. The period 
of protection is lengthened from not less than fifteen years 
from the date of the grant of the breeder's right to not less 
than twenty years, except for trees and vines, for which the 
period of protection is lengthened from not less than eighteen 
years to not less than twenty-five years.

    Article 26--Role of Intergovernmental Organizations. The 
Act of 1991 makes changes to the organization of the UPOV as 
well as to the substantive requirements concerning breeder's 
rights. The most significant change for the UPOV is the 
recognition of intergovernmental organizations. Article 34 
permits such organization to become parties to the proposed 
treaty. Consistent with this provision, the voting procedures 
in Article 26 (6) provide that any Contracting Party that is an 
intergovernmental organization may exercise the rights to vote 
of its member States that are members of the UPOV when all such 
member States do not exercise their rights to vote in the 
Council. Conversely, if any such member States exercise their 
rights to vote in the Council, the intergovernmental 
organization may not exercise any right to vote.

                  IV. Entry Into Force and Termination

                          a. entry into force

    The proposed treaty enters into force one month after five 
states parties have deposited their instrument of ratification, 
provided that at least three of the parties are also party to 
the 1961/1972 or the 1978 Treaties. After the treaty has 
entered into force, the obligations shall apply to a Party one 
month after the deposit of the instrument of ratification. Upon 
the entry into force of the proposed treaty, accession to the 
1978 Treaty will no longer be possible, with certain exceptions 
applicable only if the 1991 Act had entered into force before 
December 31, 1995. The proposed treaty entered into force on 
April 24, 1998.

                             b. termination

    A Party may terminate its obligations under the treaty by 
notifying the Secretary General of the International Union for 
the Protection of New Varieties of Plants. Obligations shall 
terminate at the end of the calendar year following the year in 
which notification was received. Termination of the 1991 Treaty 
also has the effect of terminating earlier UPOV Treaties.

                          V. Committee Action

    The Committee on Foreign Relations held a public hearing on 
the proposed treaty on Wednesday, May 13, 1998. The hearing was 
chaired by Senator Hagel. The Committee considered the proposed 
treaty on Tuesday, May 19, 1998, and ordered it favorably 
reported by voice vote, with the recommendation that the Senate 
give its advice and consent to the ratification of the proposed 
treaty subject to one reservation, two declarations, and one 
proviso.

                         VI. Committee Comments

    The Committee on Foreign Relations recommends favorably the 
proposed treaty. On balance, the Committee believes that the 
proposed treaty is in the interest of the United States and 
urges the Senate to act promptly to give its advice and consent 
to ratification. Several issues did arise in the course of the 
Committee's consideration of the treaty, and the Committee 
believes that the following comments may be useful to Senate in 
its consideration of the proposed treaty and to the State 
Department, who share jurisdiction over the treaty.

                     a. monitoring and enforcement

    The United States exports over $6 billion in seed each 
year, largely in the form of cereals, such as corn, wheat, 
oats, and other important food plants such as potatoes 
developed by agricultural and biotechnology companies. Under 
this treaty UPOV member countries agree to protect the 
intellectual property represented in these varieties by 
providing laws that prohibit the unauthorized use or 
reproduction of plant varieties.
    In non-UPOV countries, farmers freely sell harvested grain 
as seed to others, in effect competing with plant breeders by 
taking unfair and free advantage of their efforts in developing 
new plant varieties. This seriously erodes the ability of firms 
to recoup their investment in research and development of new 
advanced strains. This has a chilling effect on the prospects 
for developing advanced varieties and on research and 
development of new strains for local markets. Currently, many 
non-UPOV countries do not have access to the latest, most 
productive U.S. products.
    Enforcement of the obligations created under this treaty, 
however, will rest on the will of each Party to the Treaty to 
enact and enforce tough laws. In a question for the record, the 
Administration stated:

        Private parties may seek all remedies available through 
        the domestic legal system of a country not in 
        compliance with its UPOV commitments. Sovereign 
        entities may be able to seek implementation of a WTO 
        member's TRIPs obligations under Article 27 to provide 
        ``protection of plant varieties either by patents or by 
        an effective sui generis system or by any combination 
        thereof'' through the WTO Dispute Settlement Mechanism.

The Committee therefore cautions that this agreement by itself 
should not be viewed as a guarantor of U.S. interests in 
protecting the rights to new plant varieties. Parties to the 
treaty must fully carry out their obligations. Although the 
need for protection of intellectual property represented in 
these seed varieties cannot be understated, nor should the 
willingness of some countries to fully implement and enforce 
the treaty obligations be overstated. The Committee expects 
that the Executive will continue to monitor the implementation 
and enforcement of the treaty commitments and regularly inform 
the Committee of the results of its monitoring. The Committee 
also encourages U.S. industry to regularly inform the Committee 
of their experiences with compliance under this treaty.

         b. reservation for ``asexually reproduced varieties''

    In his letter of transmittal accompanying the proposed 
treaty, the President requested one reservation to the treaty 
under Article 35(2), which allows parties to the existing 
Convention to retain their present patent systems for certain 
varieties of plants. The reservation makes clear that the 
United States will continue to provide protection for 
``asexually reproduced varieties'' through an industrial 
property title--not a breeder's certificate as called for in 
the treaty.
    Under U.S. law a standard utility plant patent is available 
under the Patent Act of 1952 (codified as amended at 35 U.S.C. 
Sec. Sec. 161 et seq.) for such varieties. Such patents are 
administered by the Patent and Trademark Office in the U.S. 
Department of Commerce. No change in this law will be required 
if the United States become party to the proposed treaty. A 
similar but less comprehensive reservation is already contained 
in Article 37 of the 1978 UPOV Convention.

                     c. limited reservations clauses

    Article 35 of the treaty limits the reservations which a 
State may take to the treaty. The State Department, in response 
to a question for the record, had this to say about its 
agreement to restrict reservations under the treaty:

        The United States is the world's largest exporter of 
        seed grains and other agricultural exports that would 
        qualify for protection under the UPOV Convention. 
        Negotiators felt that the revisions deepening and 
        strengthening protection that are incorporated in the 
        1991 UPOV Convention were advantageous to the United 
        States. As such, a ``no reservations'' clause secures 
        the protection in these revisions for the United States 
        by prohibiting UPOV Convention members from 
        implementing only those revisions that were felt to be 
        that member's economic interests.

While the Committee recognizes that an abuse of reservations 
can be detrimental to enforcement of the conditions agreed to 
during a treaty negotiation, the Committee continues to be 
concerned by the increasingly common practice of agreeing to 
such ``no reservations'' clauses, which impinge upon the 
Senate's prerogatives. The Committee questions whether there is 
any substantive evidence that other Parties would place 
numerous or burdensome reservations on the treaty so as to 
undermine U.S. interests.
    The Committee's recommended Resolution of Ratification 
contains a declaration that it is the Sense of the Senate that 
such a ``limited reservations'' provision can inhibit the 
Senate in its Constitutional obligation of providing advice and 
consent, and approval of this treaty should not be read as a 
precedent for approval of other treaties containing such a 
provision.
    Although the Committee has determined that this treaty is 
beneficial to the interests of the United States and should be 
approved notwithstanding Article 35, the Committee will 
continue to object to the inclusion of such provisions in U.S. 
treaties. The Committee repeatedly has expressed in report 
language its concern that such ``no reservations'' provisions 
are problematic to Senate ratification, yet there has been no 
apparent decline in the inclusion of such provisions in 
treaties signed by the United States.

              d. delay in submittal of treaty to the senate

    The Committee notes that the President did not submit the 
UPOV Convention to the Senate for its advice and consent until 
September 5, 1995, nearly four years after the United States 
signed the Agreement. This delay is inexplicable, particularly 
given that the Administration sought legislation to bring U.S. 
law into compliance with the treaty two years prior to 
submitting the treaty for the Senate's advice and consent to 
ratification. This apparently casual attitude to the advice and 
consent process is troubling.
    In its response to a question for the record regarding the 
reason for the delay, the State Department replied:

        The delay in submission of the treaty package was 
        directly linked to uncertainty as to whether 
        implementing legislation would be passed by the 
        Congress. Certain provisions of the implementing 
        legislation--notably, language prohibiting farmers from 
        selling protected seeds--were controversial at the 
        time. The 1995 Supreme Court decision in Asgrow Seed 
        Co. v. Winterboer laid to rest any uncertainty in this 
        area. Implementing legislation entered into effect in 
        April, 1995, and the treaty package was transmitted 
        shortly afterwards.

The Executive appears to misunderstand that its request for 
legislation to implement treaties prior to seeking the Senate's 
advice and consent prejudges the will of the Senate in giving 
advice and consent to ratification.
    As a general matter, the Committee wishes to express its 
concern with this recent trend to delay submission of treaties 
to the Senate for many years, even as the United States 
participates in the activities of the organizations established 
under some of the treaties. Of the four treaties--including 
this one--considered by the Committee during its May 19 
business meeting, each was submitted to the Senate more than 
two years after signature by the United States. This case, in 
which the Administration advanced legislation to bring U.S. law 
into compliance with the treaty two years prior to a request 
for advice and consent to the treaty, appears particularly 
egregious. The Committee believes this trend undermines the 
Senate's legal role in the advice and consent to ratification 
of treaties. The Committee may need to consider legislation to 
redress this issue should this trend continue.

                  VII. Explanation of Proposed Treaty

    For a detailed article-by-article analysis of the proposed 
treaty, see the technical analysis accompanying the letter of 
submittal from the Secretary of State, which is set forth at 
pages VII-XV of Treaty Doc. 104-17.

              VIII. Text of the Resolution of Ratification

    Resolved, (two-thirds of the Senators present concurring 
therein), That the Senate advise and consent to the 
ratification of The International Convention for the Protection 
of New Varieties of Plants of December 2, 1961, as revised at 
Geneva on November 10, 1972, on October 23, 1978, and on March 
19, 1991, and signed by the United States on October 25, 1991 
(Treaty Doc. 104-17), subject to the reservation of subsection 
(a), the declarations of subsection (b), and the proviso of 
subsection (c).
    (a) RESERVATION.--The advice and consent of the Senate is 
subject to the following reservation, which shall be included 
in the instrument of ratification and shall be binding on the 
President:

            PROTECTION FOR ASEXUALLY REPRODUCED VARIETIES.--
        Pursuant to Article 35(2), the United States will 
        continue to provide protection for asexually reproduced 
        varieties by an industrial property title other than a 
        breeder's right and will not, therefore, apply the 
        terms of this Convention to those varieties.

    (b) DECLARATIONS.--The advice and consent of the Senate is 
subject to the following declarations:

            (1) LIMITED RESERVATIONS PROVISIONS.--It is the 
        Sense of the Senate that a ``limited reservations'' 
        provision, such as that contained in Article 35, has 
        the effect of inhibiting the Senate in its exercise of 
        its constitutional duty to give advice and consent to 
        ratification of a treaty, and the Senate's approval of 
        this treaty should not be construed as a precedent for 
        acquiescence to future treaties containing such a 
        provision.

            (2) TREATY INTERPRETATION.--The Senate affirms the 
        applicability to all treaties of the constitutionally 
        based principles of treaty interpretation set forth in 
        Condition (1) of the resolution of ratification of the 
        INF Treaty, approved by the Senate on May 27, 1988, and 
        Condition (8) of the resolution of ratification of the 
        Document Agreed Among the States Parties to the Treaty 
        on Conventional Armed Forces in Europe, approved by the 
        Senate on May 14, 1997.

    (c) PROVISO.--The resolution of ratification is subject to 
the following proviso, which shall be binding on the President:

            SUPREMACY OF THE CONSTITUTION.--Nothing in the 
        Treaty requires or authorizes legislation or other 
        action by the United States of America that is 
        prohibited by the Constitution of the United States as 
        interpreted by the United States.

                                
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