Understanding Breeders' Rights

Introduction

Generally, the law of intellectual property regulates the legal rights over certain kind of property which are developed by the exertion of the creative intellect. Traditionally, intellectual property law deals mostly with the laws of copyright, patents, trademarks, and industrial designs However, in this modern age, the legal circumference of intellectual property has transcended beyond this traditional quadruplicity. Today, a discussion of intellectual property will normally involve topics like geographical indications, trade secrets, utility models, artificial intelligence, and more recently, plant varieties.

Until 2021, Nigeria did not have any specific law on plant varieties. At best, the only mention of plant varieties under Nigerian law was the provision of Section 1(4) of the Patents and Designs Act 1971 which totally disqualified plant varieties from patent protection. The alternative source of law would be international law on the subject, as codified in the International Convention for the Protection of New Varieties of Plants 1991 (the "Convention"). Unfortunately, Nigeria is not a signatory to the Convention as of date. This dearth of law created a growing concern for legal protection of plant varieties in Nigeria.

However, with the enactment of the Plant Varieties Protection Act of 2021 (the "Act"), these concerns were substantially laid to rest. The Act, which draws heavily from the provisions of the Convention, heralds a new regime especially for botanists, scientists and other agriculturists who desire some legal protection for developing unique varieties of plants in Nigeria.

Nature of Plant Varieties

According to Section 56 of the Act, a variety is a plant grouping within a single botanical taxon of the lowest rank, which grouping, irrespective of whether the conditions for the grant of breeder's rights are fully met, can be:

1. defined by the expression of the characteristics resulting from a given genotype or combination of genotypes;
2. distinguished from any other plant grouping by the expression of at least one of the said characteristics; and
3. considered as a unit with regard to its suitability for being propagated unchanged.

This definition may appear esoteric having been couched in some technical language, but its purport is very plain. Perhaps a little background will explain the point sought to be made in that section.

Generally, living things are classified using a scientific system of taxonomy. All plants and animals therefore have taxonomical classes. Plants are classified using a botanical taxon while animals are classified using a zoological taxon. The system of taxonomy predominantly used today for classifying living things was developed in the 1700s by a Swedish scientist called Carolus Linnaeus (the "Linnean System").

The Linnean System has seven ranks for all organisms which in descending order are: (i) Kingdom; (ii) Phylum; (iii) Class; (iv) Order; (v) Family; (vi) Genus; and (vii) Species. The Specie is therefore the lowest rank while the Kingdom is the highest rank. Two organisms of the same specie are scientifically deemed to be identical in material respects. Thus, when the Act refers to a plant grouping within 'a single botanical taxon of the lowest rank', it simply refers to two plants of the same specie.

A plant variety is therefore any plant grouping within a specie which have certain unique characteristics distinguishing them from other plants in that same specie. Such plant grouping must also be capable of being propagated unchanged¹ . This means that the unique characteristics of the plants within that grouping must be a consequence of their genotype² and not by external factors, such that upon reproduction, they have the capacity to produce offsprings which exhibit those same characteristics. It goes without saying that unique characteristics exhibited by plants, not because of genotype, but due to the acts of external agents, do not qualify such plants as varieties under the Act.

Creation of Plant Varieties

A variety could be created in several ways. By Section 29(6) of the Act, this could be done by genetic engineering, somaclonial variation, or backcrossing. These techniques shall be discussed briefly.

1. Genetic Engineering: This is a very complex scientific process which uses technology to alter the DNA makeup of an organism. Put differently, it is the artificial manipulation of the genes of an organism to make it exhibit a characteristic which ordinarily it is not capable of. This process is widely used in many fields especially agriculture and medicine. When used positively, genetic engineering can promote human life and yield very positive results. On the other hand, it can also be catastrophic if used negatively. Hence, there are some ethical concerns around the practice especially as regards to 'gene editing' and 'human genetics' ³.
   
   A very famous instance of a plant variety developed by genetic engineering is the Arctic Apple which was developed by Okanagan Specialty Fruits ("OSF"), a biotechnology company based in British Colombia, Canada in the early 2000s. Usually, when one cuts an apple, it turns brown immediately. This is because of the presence of an enzyme known as polyphenol oxidase which is responsible for browning in apples. However, by genetic engineering, OSF was able to suppress this enzyme and developed the Arctic Apple which under ordinary circumstances will not turn brown even after two weeks after cutting⁴. In addition to this, the Arctic Apple also has a more aesthetic appeal and nutritional qualities. In 2015, the United States Department of Agriculture approved it for commercial production and in 2017, it became commercially available to consumers in the United States.
   
   Another instance is the Golden Rice which was engineered in the 1990s by Ingo Potrykus and Peter Beyer to help improve human health. Golden Rice produces an enzyme known as beta-carotene which when ingested by humans produces Vitamin A. It was created to improve the production of Vitamin A which is essential for vision and immune function in humans. Although there have been critics, large organizations like the Rockefeller Foundation, United States Agency for International Development and the Bill & Melinda Gates Foundation have all supported the project. In 2021, Golden Rice was approved for commercial production by Philippines⁵.
   
   Other examples of plant varieties created by genetic engineering include BT Corn, Rainbow Papaya, Innate Potatoes, Herbicide-Tolerant Canola, etc.
   
   
2. Somaclonial Variation: Unlike genetic engineering that deals with internal alteration of the genetic makeup of an organism, somaclonial variation is purely an external process. It is a genetic variation that occurs when plant tissues are subjected to certain conditions or grown in a controlled laboratory environment i.e cultured in vitro. During this process, the conditions of growth are varied. For instance, the plant may be subjected to altered nutrient levels, hormones,sunlight, or other physical conditions. These factors may induce genetic mutations or chromosomal rearrangements in the cells of the plant which can then be passed on when those cells are used to regenerate new whole plants.
   
   This technique has widely been used across the world to improve the quality of plants. It is particularly useful for the improvement of banana which has shown to be difficult to improve by conventional breeding due to its lack of genetic diversity. In 2022, it was reported that researchers in Queensland University of Technology, Australia had successfully grown the world first banana which tested resistant to the Panama disease⁶ . The team led by Prof. James Dale were able to achieve this by somaclonial variation, having cloned the genes of the popular Cavendish Banana, the dominant banana variety for global production.
   
   
3. Backcrossing: Backcrossing is simply the mating of a hybrid organism with one of its parents, or another organism genetically similar to its parent. Take for instance, two different plants, A and B, were mated to produce C. C is therefore a hybrid organism, having been produced from two genetically unlike parents (A & B). Backcrossing occurs when C is mated with either A, B, or any other plant similar to A or B. It is called backcrossing because it involves crossing an offspring 'back' with its parent. It is a very effective two-generation breeding protocol for transferring desirable genes to a desired specie.
   Backcrossing has proved to be an effective method for creation of plant varieties. For instance, in the late 1960s, papaya crops in Hawaii came under threat of extinction by a virus known as the 'Ringspot Virus'. The situation was so bad that the State of Hawaii set up a committee known as the Papaya Administrative Committee ("PAC") to handle the situation. In 1987, a team of scientists led by Dr. Dennis Gonsalves at the US Department of Agriculture began researching on how to produce a variety resistant to the virus. After series of genetic engineering and backcrossing, the scientists finally created the variety now known as the 'SunUp Papaya' which tested negative to the virusin 1991. Because the technology used by Dr. Gonsalves and his team was patented, the PAC had to obtain licenses from the owners of the patent before using it. In 1997, the PAC finally completed their review and approved the SunUp Papaya for commercial production and release⁷.
   The above methods are however not exhaustive as there are other methods of creating plant varieties not covered under the Act. This will include methods such as crossbreeding⁸, selection, apomixis, mutation breeding etc.

Grant of Breeder's Right

Breeder's right is simply the bundle of legal rights and protection granted to a person who creates a plant variety (the "Breeder"). However, the creation of a plant variety does not automatically entitle the Breeder to breeder's right. Section 13(1) of the Act provides four requirements to be satisfied before such a grant will be made. These are discussed below:

1. Novelty: Before breeder's right can be granted under the Act, the variety must be new. By Section 14(1) of the Act, a variety is new if at the date of filing the application for a breeder's right, the propagating⁹ or harvested material¹⁰ of a variety has not been sold or disposed to any person with the consent of the breeder for purposes of exploitation of the variety;
   1. in the case of Nigeria, within one year before the date of filing the application; and
   2. in the case of a territory other than Nigeria, within four years, or six years before that date if the variety is a tree or vine.
   In the case of Nigeria, any sale or disposal that occurred more than one year before the date of application for breeder's right will not count against the novelty of the variety. Such sale or disposal will only count if it happened within one year from the date of application. The same goes for a sale or disposal in territories other than Nigeria mutatis mutandis.
   Not every sale or disposal of a variety will however result in the loss of novelty. For instance, a sale in consequence of the display of a variety at an officially recognized exhibition, or a sale without the consent of the Breeder will not result in loss of novelty¹¹
2. Distinctness: A plant variety must also be distinctive. This means that it must be clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of filing the application for breeder's right. If a variety cannot be distinguished from other varieties, it loses the element of distinctness¹²
3. Uniformity: A plant variety is deemed to be uniform if subject to any variation that may be expected from the peculiar features of propagation, it is sufficiently uniform in all relevant characteristics. This means that the variety when compared with other plants of the same variety are similar in all relevant respects. However, any differences between plants of the same variety resulting from the 'peculiar features of propagation' i.e the differences caused by the method of creating the variety and not necessarily because of genotype, will not count for this purpose¹³.
4. Stability: This means that after repeated propagation i.e reproduction of the variety, the offsprings of the variety retain the same characteristics as their propagating material. The use of the word 'repeated propagation' in the Act implies that stability cannot be decided by a one-off propagation¹⁴.

Generally, once the above conditions are satisfied, a variety qualifies for the grant of breeders' right. An application for the grant of breeders' right is made to the Plant Variety Protection Office (the "Office") by filing an application to that effect. An Applicant for breeders' right is also entitled to a right of priority if such applicant has at the date of application in Nigeria, already filed an application for the protection of the variety in any of the members of an international organisation dealing with plant breeders' rights¹⁵. One of such international organisations is the Union Internationale Pour la Protection des Obtentions Végétales ("UPOV") which was established under the Convention.

An applicant is also required to submit all the necessary documents required by the Act to facilitate the grant of the application. After the application is submitted, the Registrar of the Office is required to publish a notice of the application in the Federal Gazette or in two daily newspapers of wide circulation. This is to enable persons who may have an objection to the grant of the application to oppose it. If an objection is received, the Registrar must also notify an applicant. When there is no objection, or an objection is determined in favour of an applicant by the Registrar, the Registrar will then issue a Certificate of Registration as proof of the grant of breeders' right to the applicant. The Registrar shall also enter the variety in the breeders' rights register ("the "Register") and publish a notice of the grant in the Federal Government Gazette¹⁶.

Nature of Breeders' Rights

Breeders' right is a bundle of rights which entitle its holder (the "Holder") to do certain acts in relation to the protected variety. Once granted, the Holder has the exclusive right to do any of the following in relation to the propagating and harvested material of a variety:

1. production or reproduction (multiplication);
2. conditioning for the purpose of propagation;
3. offering for sale;
4. selling or marketing;
5. exporting;
6. importing; and
7. stocking for any of the above purposes.

It will therefore constitute an infringement of breeders' right to do any of those acts without authorisation from the Holder. One could obtain this authorisation by executing a license agreement with the Holder. The terms of the license needs to stipulate the nature and extent of the authorisation granted, the term, territory and conditions of the license. It is therefore very important for a Holder to consult an expert who is trained and skilled to prepare the licensing agreement and provide general advice on the transaction. Failure to do so may result in a total assignment of the breeders' right to a third party.

The above protection offered to a plant variety also extends to a variety which is essentially derived from the protected variety. This means that if another variety is created from a protected variety in such a way that the new variety retains the essential characteristics of the protected variety, the rights of the Holder over the protected variety will apply to the new variety as well¹⁷. This provision dispenses with the need to apply for a separate breeders' right when a new variety is created from a protected one registered by the Holder. It also entitles a Holder to legally proceed against an infringer who creates a new variety from the Holder's protected variety without authorisation.

Transfer of Breeders' Rights

Just like other forms of intellectual property, breeders' right could be assigned or otherwise transferred to third parties¹⁸. This could either be by way of an outright assignment or a mere license. Whatever be the case, the parties would need to execute the proper instrument of transfer. By section 49(1) of the Act, the contents of the instrument are statutorily confidential unless the parties permit access to a third party. However, the Holder must notify the Registrar of the transfer within sixty (60) days of the transaction and a copy of the instrument of transfer must also be submitted to the Registrar. In cases where the right is totally transferred to a third party i.e assignment, the recipient must notify the Registrar for the purpose of rectifying the Register.

Limitation to Breeders' Rights

The Act however provides some exceptions to breeders' rights. For instance, any act done privately and for non-commercial purposes will not amount to an infringement of breeders' right. Also, experimental uses of a protected variety do not qualify as infringement under the Act.

Interestingly, section 30(1)(c) of the Act contains a curious provision to the effect that a person may use a variety for the purpose of breeding another variety. This is however subject to the condition that the new variety sought to be bred (i) does not retain the essential characteristics of the protected variety; (ii) is clearly distinguishable from the protected variety; and (iii) does not involve a repeated use of the protected variety. Aside these qualifications, one can lawfully use a protected variety to breed another variety¹⁹.

Breeders' right may also be limited when it is in the public interest to do so²⁰.

Duration of Breeders' Rights

Breeders' rights generally enure for a period of twenty (20) years from the date of grant, except in the case of trees and vines which expire after twenty-five years (25) from the date of grant. In both cases, the rights may be renewed for a further period of five years, provided the application for renewal is received within at least six (6) months to the expiration of the right²¹. Once the life span of breeders' right expires, the right falls into public domain and anyone could exercise the exclusive rights of the Holder without legal consequences.

Enforcement of Breeders' Rights

Breeders' rights can be enforced both by civil and criminal action. Section 47(1)(j) of the Act provides that any person who violates breeder's rights commits an offence and is liable upon conviction to a fine of One Million Naira (N1,000,000) in the case of a first offender under the Act. For subsequent convictions, the punishment could be Two Million Naira (N2,000,000) or imprisonment for a term of at least two years, or both. An infringement may also be punished under any other law, provided the infringement constitutes an offence under such other law²². This will however be subject to the rule against double jeopardy under Section 36(9) of the 1999 Constitution of the Federal Republic of Nigeria (as amended) (the "Constitution"), as one cannot be convicted under the Act and another law on the same set of facts.

A Holder may also institute civil action against any person who infringes his right. The proper court with jurisdiction to hear such claims would be the State High Court pursuant to Section 272 of the Constitution.

Termination of Breeders' Rights

Under the Act, there are three ways by which breeders' rights could be terminated, namely:

1. Declaration of Nullity,
2. Cancellation; and
3. Surrender.

These shall now be discussed briefly

Nullity of Grant²³

Nullity of breeders' right simply means that the right granted is void in law, ab initio. This means that in the eyes of the law, there was no grant in the first place. It is deemed never to have existed. A grant is null when the variety, at the time of grant, did not meet any of the requirements of distinctness, novelty, uniformity or stability. Also, a right granted to a person who is not entitled to it is null. Thus, when a person, not being the breeder of a variety, surreptitiously obtains the grant of breeders' right, the actual breeder may apply to the Registrar for a declaration that the previous grant is void and that the right be granted to him instead.

In the alternative, the Act provides that in place of applying for nullity of the grant, the actual breeder may obtain a transfer of the right to him from the Holder. Usually, the parties will execute a Deed of Assignment which when executed will transfer the whole of the rights previously held by the Holder to the actual breeder. However, although the Act recognizes this option, it raises some serious legal issues. If a Holder's right is null because he was not the proper person entitled to the grant, then it is difficult to conceive what the Holder can transfer to the actual breeder. Since the right is null, then there is no right in law to be transferred. The rule of nemo dat quod non habet may be invoked. One cannot give title when one does not have title.

Notwithstanding this concern, it is doubtful that this construction will be put on this provision of the Act by the courts. In any case, to avoid legal problems, it may be tidier for the actual breeder to obtain a declaration of nullity of the existing grant from the Registrar, and then file an application for a fresh grant in his own name.

Cancellation of Grant²⁴

Cancellation of Breeders' right deals with a situation when a valid right already granted is revoked by the Registrar. This is mostly the case when the conditions for the grant, though existing at the time of grant, have ceased to exist. Thus, when a Holder fails to provide the Registrar with the necessary information and/or materials required to verify the maintenance of a variety, the Registrar may cancel the Holder's right. Failure to pay the statutory fees required maintain a right is also a ground for cancellation.

Surrender of Grant²⁵

Surrender of Breeders' right covers the voluntary relinquishment by the Holder of his rights. This is done by giving notice to the Registrar of the intention to surrender the right. Upon receiving such notice, the Registrar may terminate the right by publishing a notice in the Federal Government Gazette.

Conclusion and Recommendations

Although the Act empowers the Registrar to make guidelines and Regulations (in the latter case with the consent of the Minister for Agriculture) to give effect to the provisions of the Act, as of date, no guidelines or Regulations have been made²⁶. It is recommended that the Registrar makes the guidelines and Regulations to fill the existing gaps in the Act.

However, the enactment of the Act opens a new world of legal protection for key players in the agricultural and research industry by affording them legal protection for the creation of plant varieties. If utilised effectively, plant varieties could push the boundaries of science and create a source of revenue for breeders as a reward for their intellectual efforts.

Footnotes

1 Sec 56(c) of the Act

2 Sec 56(a) of the Act

3 Britannica 'Genetic Engineering" https://www.britannica.com/science/genetic-engineering

4 Kenong Xu, "An Overview of Arctic Apples: Basic Facts and Characteristics" https://nyshs.org/wp-content/uploads/2016/10/Pages-8-10-from-NYFQ-Book-Fall-2013-4.pdf

5 Marci Baranski, "Golden Rice" https://embryo.asu.edu/pages/golden-rice

6 A devastating disease caused by soil inhabiting fungi which affects bananas.

7 College of Tropical Agriculture and Human Resources, University of Hawaii at manoa, 'Production Requirements of the Transgenic Papayas 'UH Rainbow' and "UH SunUp" https://www.ctahr.hawaii.edu/oc/freepubs/pdf/nph-2.pdf

8 Also known as hybridization

9 The plant or part of a material used for multiplication; See Section 56 of the Act

10 The plant created from the propagating material

11 See generally Section 14(2) of the Act

12 Section 15 of the Act

13 Section 16(a) of the Act

14 Section 16(b) of the Act

15 Section 21(1) of the Act.

16 See generally Part V of the Act.

17 Section 29(5) of the Act

18 Section 39 of the Act.

19 Section 30 of the Act

20 Section 40 of the Act

21 Section 32 of the Act.

22 Section 33(1) of the Act.

23 See Section 35 of the Act

24 See Section 36 of the Act

25 Section 38 of the Act

26 Section 55 of the Act

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.