Managing Intellectual Property, October 2012, 75

 

PATENT OFFICE FOLLOWS CANADA ON PLANT PATENTABILITY

 

Since the enforcement of TRIPs compliant patent law of Pakistan – the Patents Ordinance 2000, the PK-PO approach towards determination of the question of patentability against genetically modified plants cum plant varieties related applications remained overly-narrow and strict. According to the PK-PO as plants are excluded generally from the scope of patentable inventions, the scope of exclusion extends to “transgenic plants and their parts”

Section 7(4)(b) of the 2000 Ordinance exactly corresponds to Article 27(3)(b) of the TRIPs which at one hand allows the members to exclude from the scope of patentable inventions ‘plants and animals and essentially biological processes from the production of plants and animals’; yet on the other hand it does mandate the protection of ‘plant varieties’ either by patents or by an effective sui generis system or by a combination thereof. TRIPs thus draws a distinction between a claim reading on a ‘plant’ and a ‘plant variety’. Whilst in the ordinary sense of the words, a ‘plant’ is a naturally occurring product (a wild-type) as distinct from a ‘transgenic plant’ (a genetically manipulated plant) and a ‘plant variety’ (a plant grouping within a single botanical taxon of the lowest known rank) yet absence of any legal definition has invited controversies. Admittedly, section 7(4)(b) specifically excludes “plants” from the scope of patentable inventions but it does not say that “plant varieties” are not patentable.

Toeing on this imaginary line of approach, PK-PO had been placing plant cells and plant parts (such as seeds, pod, ovule etc.) in the same category of excluded subject matter as plants ‘per se’. Until recently, some leading biotechnology companies have strongly resisted against this improper exclusion of plant varieties as well as transgenic plants from the scope of patentable inventions. As a consequence thereof, the PK-PO has allowed claims drawn on transgenic plant cells and DNA introgressing in the resulting plants increase resistance to insects, for instance.

Though PK-PO is still reluctant to grant claim to plants ‘per se’, their progeny and parts but allowance of claim to transgenic plant cells and/or isolated DNAs is in line with the approach adopted by the Canadian court of appeal in Monsanto vs Schmeiser (2004). In this case, the Canadian Court of Appeal had ordained that “grant of a patent to plant cells ultimately extends to plant and their parts”. If continues, this flexibility in approach towards assessment of biotechnological patents will ultimately add to Pakistan’s efforts towards convergence of a unified international approach.