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SELECT COMMITTEE ON AGRICULTURE, FOOD AND THE MARINE debate -
Wednesday, 24 Jun 1998

Vol. 1 No. 4

Plant Varieties (Proprietary Rights) (Amendment) Bill, 1997: Committee Stage.

I welcome the Minister to the Committee. The business for today is the Committee Stage of the Plant Varieties (Proprietary Rights) (Amendment) Bill, 1997.

Amendments Nos. 1 and 18 are consequential on amendment No. 17. Amendments Nos. 1, 17 and 18 can be taken together. Is that agreed? Agreed.

SECTION 1.

I move amendment No. 1:

In page 3, subsection (1), between lines 25 and 26, to insert the following definition:

" 'information notice' has the meaning assigned to it by section 20,".

This section applies to any civil proceedings for the infringement of plant breeders' rights as respects harvested material of the protected variety. The main purpose of this section is to address problems that breeders of ornamental plants have in enforcing their rights. Rights are in the first instance to be enforced against propagating material of the protected variety and can only be extended to harvested material. Where the breeder's right has been infringed and he has not had a reasonable opportunity to act against the infringement he or she cannot establish whether material has been obtained from an authorised propagation unless they know the source of that material. This section enables breeders to exercise their rights more effectively by tracing material through the supply chain, as in subsection (1).

The section provides for an information notice to be served by the holder to establish from where the harvested material of his variety has been obtained. If the person on whom the notice has been served does not supply the information requested subsection (2) provides for certain presumptions. Subsection (3) applies where the holder of rights proves, in proceedings for infringement, that any material to which the proceedings relate has been the subject of an information notice given to the defendant and the defendant has not provided the information requested in the notice within the period specified - 21 days from service of the notice. The presumptions apply until the contrary is proved, or unless the defendant shows he has a reasonable excuse for not providing the information.

The presumptions are that the material to which the notice relates was obtained through an unauthorised source or through propagating material, and the breeder did not have reasonable opportunity, before the harvested material was obtained, to exercise his rights in respect of the unauthorised use of propagating material.

The holder-breeder must prove the link between the harvested material which is the subject of the information notice and the harvested material which is the subject of the infringement proceedings to activate the presumption. The Minister will prescribe, by regulations, the form an information notice must take and the particulars which the notice must contain to meet the specification in subsection (2).

Subsection (4) provides that where a holder of plant breeders' rights obtains information pursuant to an information notice under subsection (2), he owes an obligation of confidence to the person who supplies the information. This does not restrict disclosure of the information for the purposes of, or in connection with, establishing whether plant breeders' rights have been infringed or any infringement proceedings.

Subsection (5) is standard in relation to the serving of official documents in court proceedings on persons. Action for infringement of plant breeders' rights, that is Article 30(1)(i) of the UPOV Convention, states that contracting parties shall provide for appropriate legal remedies for the effective enforcement of breeders' rights.

The infringements are: performing acts in relation to the protected variety without having obtained the authorisation of the holder - section 17; using a designation which resembles a registered variety denomination - section 12(3)(b) of the Principal Act; failing to use a registered variety denomination whose use is obligatory - section 19(3)(a) of the Principal Act; or performing acts in relation to the variety during the period of provisional protection pending grant of rights - section 7.

Section 20 provides the basis for holders of plant breeders' rights to enforce these rights in the courts if they are infringed. The same remedies as exist for other proprietary rights are available. Under section 18 of the Principal Act, the plaintiff in infringement proceedings may claim damages in respect of such an infringement or an account of profits derived by the defendant but not both.

Subsection (2) provides that in proceedings for infringement of plant breeders' rights involving the offering for sale of harvested material of a protected variety the presumptions, section 20(3), shall apply where the holder of rights proves that any material to which the proceedings relate has been the subject of an information notice under section 20(2) served on the defendant; and the defendant has not provided the information requested in the notice within the period specified - 21 days from service of the notice. The presumptions apply unless the contrary is proved or unless the defendant shows he has a reasonable excuse for not providing the information.

The presumptions are that the material to which the notice relates was obtained through unauthorised use of propagating material and the breeder did not have reasonable opportunity, before the harvested material was obtained to exercise his rights in respect of the unauthorised use of propagating material. The holder-breeder must prove the link between the harvested material which is the subject of the information notice and the harvested material which is the subject of the infringement proceedings to activate the presumption.

It will be a matter for the courts to decide what is a "reasonable excuse". If, for example, a person can show he has lost all his records in an accident, e.g. a fire - as we had last night - that would be a reasonable excuse for not complying with the information notice.

Commercial confidently would not appear to be a reasonable excuse in light of the obligation of confidence imposed on the holder for information received on foot of an information notice issued under section 20(4).

I am not an expert on that part of the legislation but a number of breeders have mentioned this matter since Second Stage. The Minister of State has gone as far as possible but how can one prove that somebody has not stolen his patent or product? How can one get the evidence that will stand up in court? I assume it will have to go through the whole retail chain in so far as ornamental rights are concerned. One would need Solomon and all his glory to link up the breeder who started its life with the material that is sold at the end of the supply line.

How is it proposed technically to link the two? In other words, if one saw a rose bush how would you know who bought it?

Whoever originally propagated the rose would know his own rose because it is a particular brand.

He would if he could find it.

The Deputy and I may not be expert or enthusiastic gardeners but the people who make a living from this would be very intense about the plants they owned.

Breeders have told me everyone would know the source of stock - there is no trouble with that because it is very distinctive - but they are able to cross breed them in every shape and form. There are also hybrids of other varieties, and how could one trace them?

One does not have to because that would be a different plant.

Surely the original breeder would have some say in the rights of that hybrid?

I am advised there could be a technical examination of that. One must remember that people from the industry will use this discipline, particularly those cultivating roses. Department officials will not do it, but people from the industry will use their own methods, just as IMRO or any other organisation does.

Is there much activity in this business? Have cases been brought to court over the past ten or 20 years arising out of somebody actually stealing a patent?

No, I understand there have not been such cases because breeders have not had the law on their side to bring cases to court. The purpose of the Bill is to update the law and give breeders rights. We have seen recently that the Celtic tiger is affecting garden centres. When people build a £150,000 or £200,000 house they do not want to wait for a garden to grow, they want it installed immediately. There is a huge growth in that area and I imagine there are many infringements on the rights of individuals for pure profit. In recent years profits have grown hugely in the horticultural sector, which now accounts for 14 per cent of total employment in agriculture.

We should make it very clear that the industry will monitor this matter because I cannot see how the Department could do so.

No, it could not. It would be unfair to ask Department officials, who are already overstretched in these areas, to do that.

Unless one had the Army at it, one could not do it anyway.

That is true. I understand that the association of rose growers employs an individual to deal with this matter. Maybe this sort of sale would happen not so much in the recognised areas involving people who are legitimate, but more so with roadside sellers or people starting off in a back yard.

The few breeders who contacted me were very concerned about that. They think the proposal is not workable. I do not know whether they are right or wrong, but that is their view. At least the Bill goes a step further than before.

The only other way possible way of dealing with this is if the Department enforces the legislation. That would mean we would have Department officials traipsing all over the country. It would be a waste of time because it would be an impossibility for them. However, the people from the industry will be most enthusiastic in enforcing and protecting their own rights.

May we take it that we are giving them an opportunity to do that?

Exactly; we are giving them legal rights.

Recently an EU directive on the legal protection of biotechnological inventions passed into our law. Is the Bill now compatible with that legislation or will it have to be amended at some stage?

That is a separate issue and will be the subject of a separate Bill.

I am aware of that. I will return to it again when preparing amendments.

It is compatible with it.

Amendment agreed to.
Section 1, as amended, agreed to.
Sections 2 to 4, inclusive, agreed to.
SECTION 5.

Amendment No. 2 is a drafting amendment and amendments Nos. 2, 4 and 5 may be discussed together.

I move amendment No. 2:

In page 6, to delete lines 3 to 6, and substitute the following:

"Plant breeders'

rights.

"4.-(1) In this Act 'plant breeders' rights' means all proprietary rights in relation to any variety of any plant genus or species which has been independently bred or discovered and developed.".

This is a technical drafting amendment.

I raised a point on Second Stage about the expression of essential characteristics. I hoped an amendment would be included to clarify whether phenotypic or genotypic characteristics are being defined. It is crucially important to clarify this because two plants could be phenotypically similar but become phenotypically different as a result of genetic engineering. They may have been modified for some other form of production. Is the expression of the essential characteristics genotypic or phenotypic? Must it come from the plant itself or does it relate to its genetic make up?

Section 17(c) of the legislation relating to the EU directive states that if an invention consists only of genetically modifying a particular plant variety, it shall be excluded from patentability. In comparing that legislation to the Bill, it appears it will be necessary to amend the Bill at a later date. I ask the Minister to clarify this issue. I may table amendments to section 5 on Report Stage.

The Deputy's first question is very technical, probably arising from his background. My advice is that it is essential to include the phenotypic characteristics. Although modern technology is coming into play in the genotypic area, it is essential that the phenotypic characteristics are included.

There appears to be a conflict between the directive on biotechnological inventions and the Bill in relation to the protection of rights.

The Deputy is referring to a very technical detail. Perhaps he could consult me later and we can then consider if an amendment on Report Stage is necessary.

That is fine.

Amendment agreed to.

I move amendment No. 3:

In page 6, line 25, to delete ", or" and substitute "or".

Amendment agreed to.
Section 5, as amended, agreed to.
SECTION 6.

I move amendment No. 4:

In page 7, paragraph (f), lines 18 and 19, to delete "breeder's" and substitute "breeders' ".

Amendment agreed to.

I move amendment No. 5:

In page 7, paragraph (f), line 25, to delete "breeder's" and substitute "breeders' ".

Amendment agreed to.
Section 6, as amended, agreed to.
Sections 7 to 9, inclusive, agreed to.
SECTION 10.

I move amendment No. 6:

In page 9, paragraph (a), line 45, to delete "the grant of".

Amendment agreed to.
Section 10, as amended, agreed to.
Sections 11 to 14, inclusive, agreed to.
SECTION 15.

Amendments Nos. 7, 8, 10 and 12 are related and may be discussed together. Is that agreed? Agreed.

I move amendment No. 7:

In page 12, subsection (4)(a), line 46, to delete "30" and substitute "40".

This amendment relates to the duration of breeders' rights. I note the Minister has tabled amendments in this regard also. I tabled the amendment because it was suggested to me by scientists that under certain conditions the royalties from successful products would expire too soon and the small amount of money left over would no longer be available for research and development.

I am told this does not happen often but if a good breed of potato was developed that stood the test of time, the royalties from the patent would expire after 25 years but the variety would still be successful. The scientists suggest there should be a longer timeframe and that, on balance, this would not upset other aspects of the legislation. My amendment states that under certain conditions, the plant breeders' rights should be set at 40 years for trees, potatoes and vines rather than 30 years as proposed in the Bill. The Minister's amendment suggests 35 years.

That is correct.

My amendment No. 8 relates to other species. The Minister obviously considered this matter since Second Stage. It should be taken seriously. It is the only part of the Bill with which I found fault and I note the Minister has moved some distance on it. I cannot say whether my figures or his are right, but the people to whom I spoke said 40 years and 35 years were correct.

Other people suggest it should be 50 years; it depends on their angle. It is considered that 25 or 30 years would be sufficient time to recoup one's research and development costs given that the Bill gives people an entitlement to protect their rights.

Article 19 of Council Regulation 2100/94 provides that the Council of Ministers may extend the terms of protection for certain varieties for a further five years. The Bill makes similar provision under subsection (10). This is in line with the rest of Europe.

Is that included in the Minister's amendment?

Yes. The position will be almost the same in all European countries.

It is difficult to argue with that point. Some of the people to whom I spoke were hot under the collar about this matter. They were referring to varieties which stood the test or time. At the end of the 25 years when one would expect to receive reasonable royalties, they were then cut off. It was a reasonable point.

Five years has been added to it.

In that case I will withdraw my amendment in favour of the Minister's.

Amendment, by leave, withdrawn.
Amendment No. 8 not moved.

I move amendment No. 9:

In page 13, subsection (4), line 2, after "each" to insert "such".

It is a drafting amendment.

Amendment agreed to.

I move amendment No. 10:

In page 13, between lines 3 and 4, to insert the following subsection:

"(5) Subject to subsection (10), the maximum period for which plant breeders' rights may be exercised by a holder shall-

(a) in respect of trees, vines and potatoes, be 35 years, and

(b) in respect of all other varieties, be 30 years.".

Amendment agreed to.

I move amendment No. 11:

In page 13, lines 9 and 10, to delete subsection (6) and substitute the following:

"(6) The Minister may make regulations for the purpose of giving effect to this section.".

It is a drafting amendment.

Amendment agreed to.

I move amendment No. 12:

In page 13, between lines 24 and 25, to insert the following subsections:

"(9) The Controller, when making a grant of plant breeders' rights, shall not include a maximum period for the exercise of such plant breeders' rights unless the plant variety concerned belongs to a plant genus or species in respect of which an order under subsection (11) has been made.

(10) The Minister may by order specify the maximum period for the exercise of plant breeders' rights of a plant genus or species.".

Amendment agreed to.
Section 15, as amended, agreed to.
SECTION 16.

I move amendment No. 13:

In page 13, subsection (1)(a), line 28, to delete "state of" and substitute "State by".

It is a drafting amendment.

Amendment agreed to.
Section 16, as amended, agreed to.
Section 17 agreed to.
SECTION 18.

I move amendment No. 14:

In page 15, subsection (4), line 10, to delete "section" and substitute "Act".

It is a drafting amendment.

Amendment agreed to.
Section 18, as amended, agreed to.
SECTION 19.

I move amendment No. 15:

In page 15, subsection (2), line 28, to delete "by order".

I tabled this amendment because the Minister wants to have the power to specify by order species such as cereals, fodder plants, oil, potato plants, fibre plants, etc., and will lay down the regulations concerning the necessary arrangements to enable the farm saved seed exemptions to operate. I cannot understand why the Minister did not include it in this legislation. I take this opportunity to speak for a moment about the farm saved seed exemption, an issue which arose on Second Stage. I know about the exemptions which exist already for farmers who save seed and sow it the following year. Is it the case that with potatoes, for instance, royalties must be paid on anything more than six hectares?

Will the Minister indicate the royalties or is that a matter between the breeder and the farmer? Has it been laid down in legislation by the Department?

No. It is a matter of private negotiation.

There is a great deal of concern about the farm saved seed. A number of people have suggested that with the new system of scientific technology farm saved seed will be a huge problem in the future. It would appear there will come a time when the farm saved seed cannot even be used and there will be a need for new seed every year. Has the a Minister view on that? I assume this Bill will meet the current needs but if that were the case, this legislation would not apply.

The normal procedure is that the Department uses a regulation, which it can implement at any time on foot of changes which occur as circumstances change. Council regulations may change from time to time and the Minister can keep up to date with Community provisions by amending Irish regulations without having to come back to Parliament every time. Because the principle is agreed, it is just a matter of adjusting them to the best interests of the breeders in each case.

Does that mean in effect that this would be an ongoing thing, that the Minister would have the power by regulation to change this as circumstances change?

That is the intention. The Department usually avails of a regulation to change it rather than having to return to Parliament to pass new legislation. That is done regularly in many Departments.

With the advent of genetically modified products in the seed area, it is being suggested that people will not be allowed use the seed of one crop for the new crop the following year. That may or may not be the case. How does all that gel with this Bill?

May we include the issue of genetic material in the discussion afterwards?

If we feel it is necessary we will introduce an amendment.

The Minister would want to have more information than I have on the subject. Of all the Bills which have gone through the House, few vested interests for whatever reason have taken an interest in this Bill. A few scientists suggested certain changes which we have tabled here which by and large the Minister accepted. As the matter progresses over the next couple of years, there will be major changes in this area. I do not know whether we will be able to improve the regulations to meet the needs and I am not sure anybody else knows either.

That is the question, but we would be delighted to discuss those matters with the Deputy afterwards.

We may table an amendment on Report Stage to deal with the issue to which Deputy Connaughton referred. The only species at present which involves a terminator gene is sugar beet. It is being tested at present and it is quite controversial. I do not think there is a need for a terminator gene because other individuals are terminating it for them. In that regard, there is a huge risk. A few small companies control much of the seed. If they include terminator genes, it could restrict this scheme. I will discuss this with the officials afterwards, but I want to give notice that we may table an amendment on the matter on Report Stage.

Amendment, by leave, withdrawn.

I move amendment No. 16:

In page 15, subsection (5), line 40, to delete "Subsection (4)" and substitute "The obligation to pay the remuneration referred to in subsection (4)".

Amendment agreed to.
Section 19, as amended, agreed to.
NEW SECTION.

Amendment No. 17 was discussed already with amendment No. 1.

I move amendment No. 17:

In page 16, before section 20, to insert the following new section:

"20.-(1) Where-

(a) a holder has reasonable grounds for believing that harvested material of a protected variety is being offered for sale, and

(b) an authorisation has not been granted for the carrying out of-

(i) any act specified in section 18(1) in respect of the propagating material of the protected variety, or

(ii) any act specified in section 18(2) in respect of the unauthorised harvest material of the protected variety,

the holder may request a person who sells or offers for sale such harvested material to furnish information, in accordance with this section, in respect of such harvested material.

(2) A holder may serve a notice (in this Act referred to as an 'information notice') on a person referred to in subsection (1) which shall be in the prescribed form and, without prejudice to the generality of the foregoing, shall-

(a) state the denomination and species of the plant variety so offered for sale and the name and address of the holder,

(b) specify the harvested material of the plant variety so offered for sale and to which the information notice relates,

(c) require the person to whom it is addressed to provide-

(i) the name and address of the producer, the supplier and any prior owners of the harvested material of the plant variety so offered for sale, and

(ii) information concerning the quantity of the harvested material of the plant variety so offered for sale that was produced, ordered and delivered to that person, and

(d) require the person to whom it is addressed to furnish the information to the holder within 21 days of the service of such information notice.

(3) Where an information notice has been served in accordance with this section and the person on whom such information notice has been served has not furnished or has failed to adequately furnish the information so requested, for the purposes of proceedings for an infringement of plant breeders' rights concerning the offering for sale of the harvested material of the plant variety specified in the information notice, it shall be presumed that-

(a) the harvested material of the plant variety so offered for sale was obtained by means of an unauthorised use of the propagating material of the protected variety, and

(b) the holder did not have a reasonable opportunity before the harvested material was obtained to exercise plant breeders' rights in relation to the unauthorised use of the propagating material,

unless the contrary is proved or there are reasonable grounds for not supplying or for failing to adequately supply the information.

(4) A holder shall not use any information furnished pursuant to an information notice for any purpose other than-

(a) establishing that there has been an infringement of plant breeders' rights of the protected variety referred to in the information notice, or

(b) use in proceedings for infringement of plant breeders' rights of the protected variety referred to in the information notice.

(5) An information notice shall be addressed to the person concerned and served on or given to such person in one of the following ways-

(a) by addressing it to the person by name and delivering it to that person,

(b) by leaving it at the address at which the person ordinarily resides or carries on any trade or business or, in a case in which an address for service has been furnished, at that address, or

(c) by sending it by post in a prepaid registered letter addressed to the person at the address at which that person ordinarily resides or carries on any trade or business.".

Who will serve the information notice?

The Department will define what the section notice must include but the person will serve the information notice through normal court proceedings. The person will have 21 days to reply.

Is that how the mechanism begins?

Amendment agreed to.
SECTION 20.

I move amendment No. 18:

In page 16, between lines 5 and 6, to insert the following subsection:

"(2) Where, in civil proceedings for an infringement of plant breeders' rights concerning an allegation of the offering for sale of harvested material of a protected variety, an information notice has been served in accordance with section 20 and the person on whom it was served did not furnish the information or failed to adequately furnish the information so requested within the 21 day period so specified, it shall be presumed that the provisions of section 20(3)(a) or 20(3)(b) or both shall apply to such proceedings unless, in accordance with that section, the contrary is proved or the court is satisfied that there were reasonable grounds for failing to supply or adequately supplying such information.".

Amendment agreed to.
Section 20, as amended, agreed to.
NEW SECTION.

I move amendment No. 19:

In page 16, before section 21, to insert the following new section:

"21.-(1) Where, before the commencement of this Act, an application has been made to the Controller under section 4 of the Principal Act and a certificate under that section has-

(a) not been issued in respect of that application, or

(b) been issued under that section,

then-

(i) in the case of the application, it shall be deemed to be an application under section 15, and

(ii) in the case of the certificate, it shall, for the remainder of the period of operation, be deemed to have been granted under section 15.

(2) Where, before the commencement of this Act, an infringement of plant breeders' rights occurred and proceedings for such infringement had been issued under section 4(5) of the Principal Act, such proceedings shall be continued as if they had been issued under this section.

(3) Where, before the commencement of this Act, an infringement of plant breeders' rights occurred and proceedings for such infringement had not been issued under section 4(5) of the Principal Act, such proceedings shall, if issued in respect of such infringement, be deemed to be issued under this section.

(4) Notwithstanding any other provision of this Act, regulations made under the Principal Act shall continue in operation and shall be deemed to have been made under this Act and to be capable of amendment or revocation accordingly.".

Amendment agreed to.
Sections 21 and 22 agreed to.
SCHEDULE.

Amendment No. 20 is a drafting amendment and amendment No. 25 is cognate. Therefore, amendments Nos. 20 and 25 may be discussed together by agreement. Is that agreed? Agreed.

I move amendment No. 20:

In page 17, column (3), line 6, to delete "subsection" and substitute subsections".

Amendment agreed to.

Amendment No. 21 is a drafting amendment and amendment No. 29 is cognate. Amendments Nos. 21 and 29 may be discussed together by agreement? Is that agreed? Agreed.

I move amendment No. 21:

In page 17, column (3), line 11, to delete "1997," and substitute "1998".

Amendment agreed to.

I move amendment No. 22:

In page 17, to delete lines 13 to 15.

Amendment agreed to.

I move amendment No. 23:

In page 17, column (3), line 19, before "section" to insert "and".

Amendment agreed to.

I move amendment No. 24:

In page 17, column (3), line 26, to delete "section 4 of this Act" and substitute "section 4,".

Amendment agreed to.

I move amendment No. 25:

In page 17, column (3), line 27, to delete "subsection" and substitute "subsections".

Amendment agreed to.

I move amendment No. 26:

In page 17, column (3), line 34, to delete "subsection (i)" and substitute "subsection (1)".

Amendment agreed to.

I move amendment No. 27:

In page 17, column (3), line 41, to delete "deletion of '4' " and substitute "deletion of '4,' ".

Amendment agreed to.

I move amendment No. 28:

In page 17, between lines 48 and 49, to insert the following:

"14Section 23In subsection (3) the insertion after 'section 4 of this Act' of 'or section 15 of the (Plant Varieties (Proprietary Rights) (Amendment) Act, 1998'.".

Amendment agreed to.

I move amendment No. 29:

In page 17, column (3), line 56, to delete "1997," and substitute "1998".

Amendment agreed to.
Schedule, as amended, agreed.
Title agreed to.
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