Prior Art in Plant Breeding
The number of applications for patents on plant breeding is increasing and ISF members feel patent examiners frequently lack information on prior art in this area. Therefore, ISF has established a non-exhaustive list of books and articles on plant breeding, in addition to other sources of information, that could be used to check claims against prior art (State of the Art in Plant Breeding).
With members spread over 70 developed and developing countries on all continents, ISF represents the mainstream of the world's plant breeders and seed trade community, and serves as an international forum where issues of interest to the seed industry are discussed. In 2003 ISF adopted a multifaceted position on different aspects of Intellectual Property which can be found on the ISF website. Moreover, ISF has also adopted the following position on patent protection of plant-related inventions.
For biotechnological inventions, ISF considers that the most appropriate protection is through patents provided, of course, that the patentability criteria viz. novelty, industrial application and non-obviousness, are fulfilled.
The patent system should provide strong and enforceable protection of claims that are a fair balance between enabling disclosure and prior art. The protection of a biotechnological invention by a patent should not be exhausted when that biotechnological invention inserted in a plant variety is used by others.
Novel plant breeding procedures or genetic engineering methodologies in which the procedures or methodologies are decisive for achieving an inventive result should be eligible for patent protection.
ISF notes that many of the issues that have been raised with respect to the legal protection of biotechnological inventions by patents have been resolved by legislation, examination guidelines, decisions by Courts and Opposition Boards. While these developments are not global and have been only partly implemented, ISF notes with satisfaction the following positive signals:
- Sequences or partial sequences of genes are subject to the same criteria of patentability as in all other areas of technology (novelty, inventive step and industrial application) such that the industrial application (utility) must be disclosed in the patent application as filed.
- In other words, it is accepted that a mere DNA sequence or nucleotide without indication of a function does not contain any technical information and is not a patentable invention
- It is accepted that utility must be specific to the subject matter claimed, that it must be credible for a person of ordinary skill and be practical, meaning attributing a real world value to the claimed invention
- Biological material that is isolated from its natural environment or produced by means of a technical process may be patentable even if it previously occurred in nature
- Protection conferred by a patent on a biological material possessing specific characteristics extends to biological material obtained through propagation or multiplication if possessing the same characteristics
- Protection for a process that enables biological material to be produced and which possesses specific characteristics extends to biological material directly obtained through that process and to its progeny.
ISF is, however, convinced that there is substantial room for improvement in terms of speed and quality of patent examination, opposition and litigation procedures and is concerned that the cost involved in these procedures is often detrimental to the quality and enforceability of patents in general. ISF, therefore, urges governments to give the necessary means in terms of human resources and skills to the patent offices and courts. ISF is also in favor of complete transparency in all steps of the patent examination by giving to anybody full and instant access to the examination file.