UNIVERSITÀ DEGLI STUDI DI MACERATA
UNIVERSITÀ DEGLI STUDI DI MACERATA
DIPARTIMENTO DI GIURISPRUDENZA
CORSO DI DOTTORATO DI RICERCA IN SCIENZE GIURIDICHE
CICLO XXXII
TITOLO XXXXX XXXX
INNOVATION AND PLANT VARIETY PROTECTION IN THE EUROPEAN UNION: THE CASE OF CEREAL VARIETIES.
AN EMPIRICAL LEGAL STUDY
RELATORE DOTTORANDO
Xxxxx.xx Xxxx. Xxxxxxxx Xxxxxxxx Xxxxxxxxx Xxxx.ssa Xxxxxx Xxxxxxx
COORDINATORE
Xxxxx.xx Xxxx. Xxxxxxx Xxxxxxxxxx
ANNO 2020
Innovation and Plant Variety Protection in the European Union: the Case of Cereal Varieties.
An Empirical Legal Study Xxxxxx Xxxxxxx
PREFACE
When Xxxxxxx came to our land, in her wandering after the rape of Xxxx, and, being moved to kindness towards our ancestors […] gave these two gifts, the greatest in the world – the fruits of the earth, which have enabled us to rise above the life of the beasts, and the holy rite, which inspires in those who partake of it sweeter hopes regarding both the end of life and all eternity.
ISOCRATES, Panegyricus
I am in this wretchedness, yoked in these constraining bonds, because I gave privileges to mortals: I hunted for, and stole, a source of fire, putting it into a fennel-stalk, and it has shown itself to be mortals’ great resource and their teacher of every skill. Such is the offence for which I am paying this penalty,
pinned in these bonds under the open sky. XXXXXXXXX, Prometheus Bound
Agriculture and innovation represent the cornerstone of human life as we know it. The path of the humankind changed with the beginning of agriculture, more than
10.000 years ago, allowing men and women of the Neolithic to provide more food with less effort in a permanent place. The predictability of food availability facilitated the population increase, while the settlement enabled the creation of the world’s first villages.
Agriculture represents a social and cultural turning point, as well as a scientific landmark. The existing genetic variability springs from the - ongoing - process of wild plants domestication, started by the first farming communities. This phenomenon involves the selection on a phenotypic basis of the wild crops more suitable for the need of a certain society, and the following cultivation of the selected crop, by the necessary human intervention on the plant and the surrounding environment1.
1 Xxxxx X., Xxxxxxxxx X., 2017, Domestication of New Species, in Pilu R., Xxxxxxx X. (eds.) More Food: Road to Survival, Xxxxxxx Science, Sharjah. The authors state that the domestication process: ‘implies the stable acquisition (and therefore the inheritance by the progeny) of a suite of traits, which are collectively defined as the domestication syndrome, which mark the difference between the crop and its wild ancestors’. It is worth mentioning that crop domestication represents a fundamental transition point in agriculture: when gatherers became farmers. Therefore, beyond its scientific value, this phenomenon has also a great historical and socio- cultural significance. As underlined by the authors: ‘crops are marvelous organism on which we ultimately depend, or have depended, for most of our history, for food, feed, fiber, flower, fuel and fun (consider beverages such as wine, beer, tea or coffee, for instance)’. Although references have been made only to agriculture, domestication is vastly applied in zootechnics as well.
In that human-managed environment, some species of cereals such as einkorn and barley were able to adapt to cultivation, so farmers started to harvest and plant their seed. Slowly, cereals became the basis of the human diet.
In light of this, it does not surprise the worship of gods by ancient religions as personifications of fertility and farming. In particular, the protection of harvests by those divinities was always associated with the cultivation of cereal crops. Indeed, the word ‘cereal’ has its roots, its etymology, in the Roman Myth and it originates from the Latin word Ceres, which is the benevolent goddess of agriculture, fertility, and cereals, the equivalent of the Greek goddess Xxxxxxx. At that time, the category of cereals included wheat, barley, spelt, oats, and millet, but not the unknown maize, from the Americas, or rice, from Asia.
The goddess of agriculture was a central figure in ancient Greek religion and mythology: the Eleusinian Mysteries, the most legendary and secret ritual of ancient Greece, were based on the cult of Xxxxxxx and her daughter Xxxxxxxxxx, also called Xxxx, who was abducted by Xxxxx and could return from the underworld only each spring, for six months, to meet her mother. Those rites celebrated the reunion of Xxxxxxxxxx with her mother Xxxxxxx, and symbolized the eternity of life through the emblem of the buried seeds, whereby the end of life is connected with a new beginning, in an endless circle.
Another key figure of Greek mythology is the Titan Xxxxxxxxxx, who was bound to a rock and sentenced to eternal suffering because he defied Xxxx by stealing the fire and giving it to mankind. Xxxxxxxxxx is the avatar of human progress and innovation, a benefactor for humanity that as a fire-bringer allowed the civilization of society. The fire indeed is not intended in its literal meaning way but as the fire of ‘creative power’.
Those myths show how humans have always cared about agriculture and food production, as well as they cared about progress and innovation, in spite of the possible consequences.
In the current society, the bond between agriculture and innovation, symbolically between Xxxxxxx and Prometheus, is nowadays more discussed than ever. The agriculture of the third millennium is facing new and difficult challenges, and it needs a breakthrough. Innovation may represent a qualitative leap in this field. Overpopulation, scarcity of natural resources, climate changes, biodiversity conservation, and sustainability, are barely some of
the factors to take into consideration during the debate on the role of innovation in agriculture.
In this framework, cereal breeders are required to use their Promethean ‘creative power’ on cereal crops in order to develop new plant varieties, able to improve agricultural productivity and meet the demands of the society.
The present research gravitates towards the role of specific laws in fostering innovation for the benefit of agriculture in the European Union, specifically innovation in the breeding of plant varieties of cereal species. Metaphorically, the research has the purpose of analyzing whether the law could chaperone Prometheus and Demeter for their journey into the third millennium.
List of Abbreviations
Basic Regulation: Council Regulation (EC) No 2100/94 of 27 July 1994 CJEU: Court of Justice of the European Union
CBT: Conventional Breeding Techniques CPVO: Community Plant Variety Office CPVP: Community Plant Variety Protection CPVR: Community Plant Variety Right DUS: Distinctness, Uniformity and Stability EDV: Essentially Derived Variety
EPC: European Patent Convention EPO: European Patent Office
ETGM: Established Techniques of Genetic Modification EU: European Union
EUTM: European Union Trademark
FAO: Food and Agriculture Organization of the United Nations FSS: Farm-saved Seed
GMO: Genetically Modified Organism IP: Intellectual Property
IPR: Intellectual Property Right ISF: International Seed Federation
ISTA: International Seed Testing Association
ITPGRFA: International Treaty on Plant Genetic Resources for Food and Agriculture NBT: New Breeding Techniques
OECD: Organization for Economic Co-operation and Development PBR: Plant Breeder’s Right
PVP: Plant Variety Protection PVR: Plant Variety Right
R&D: Research and Development R&I: Research and Innovation
SMEs: Small and Medium-sized Enterprises
TFEU: Treaty on the Functioning of the European Union
TRIPs: Agreements on Trade-Related Aspects of Intellectual Property Rights UN: United Nations
UPC: Unified Patent Court
UPOV: International Union for the Protection of New Varieties of Plants VCU: Value for Cultivation and Use
WIPO: World Intellectual Property Organization WTO: World Trade Organization
Table of Contents
PREFACE iii
List of Abbreviations vi
Table of Contents viii
INTRODUCTION 1
1. Purpose 1
2. Research question 4
3. Methodology 6
4. Outline 8
CHAPTER 1 10
Overview of the studied context 10
1. Preliminary remarks 10
1.1. Introduction to plant breeding 10
1.2. Definition of terms: innovation in cereal varieties 12
2. Significance of the study 13
2.1. Challenges of the third millennium 13
2.2. The 2030 Agenda for Sustainable Development 16
2.3. The EU cereals sector 20
2.4. Innovation in cereal varieties: a peek to CPVO statistics 22
3. Introduction to plant variety protection 25
3.1. Intellectual property rights over plant varieties 25
3.2. Origins of plant variety protection 26
3.3. Plant variety protection: the hybrid intellectual property regime 30
3.4. Intellectual property rights over plants: patents vs. plant variety rights 32
3.5. The role of plant variety protection in fostering innovation 34
4. Final remarks 36
CHAPTER 2 38
International Legal Framework of Plant Variety Protection: the UPOV Convention 38
1. The International Convention for the Protection of New Varieties of Plants 38
2. Definition of breeder 40
3. Definition of plant variety 41
4. Genera and species 43
5. Conditions of protection 44
5.1. The DUS requirement 44
5.2. The novelty requirement 47
5.3. The variety denomination 49
6. National treatment 51
7. Application for the grant of the breeder’s right 51
8. Scope of the breeder’s right 52
9. Restrictions 55
10. The breeder's exemption 55
11. The xxxxxx'x privilege 57
12. Exhaustion 58
13. Essentially derived varieties 61
14. Duration 64
15. Double protection ban 65
16. Final remarks 66
CHAPTER 3 68
The Community plant variety protection in the European Union 68
1. The Community plant variety protection 68
2. Degree of harmonization 70
3. Alternativeness of the system 72
4. Independence of the system 74
5. Definition of breeder and entitlement to Community plant variety rights 75
6. Definition of plant variety 79
7. Genera and species 80
8. Conditions of protection 81
8.1. The DUS requirement 81
8.2. The novelty requirement 88
8.3. The variety denomination 91
9. Application for the grant of the Community PVR 94
10. Appeals against the decisions of the Office 98
11. Scope of the Community plant variety right 101
12. Restrictions 103
13. Essentially derived varieties 104
14. The xxxxxx'x privilege 106
15. The breeder's exemption 114
16. Exhaustion 115
17. Contractual exploitation rights 117
18. Compulsory exploitation rights 121
19. Duration 128
20. Infringement 129
21. Enforcement 132
22. Final remarks 134
CHAPTER 4 136
The Seed Legislation: Marketing Seeds in the EU 136
1. The EU seed market 136
2. The concept of seed quality and its importance 137
3. Origin of seed marketing laws in Europe 143
4. The two pillars of the EU seed legislation 145
5. Registration of the varieties 149
5.1. Requirements for registration 150
5.2. The VCU requirement for varieties of agricultural species 151
5.3. One key, several doors principle: a perspective de iure condendo 156
5.4. Admission to the EU Common Catalogues 157
6. Certification of the seed lots 159
6.1. The generation system 160
6.2. The paradigm of uncertified farm-saved seed 162
6.3. Derogations for conservation varieties 167
6.4. An overview on cereal seed: Council Directive 66/402/EEC 173
7. Final remarks 179
CHAPTER 5 182
Law in action: the views of EU cereal breeding companies 182
1. Methodological remarks 182
2. Data generation and collection 184
2.1. Data collected via participant observation 184
2.2. Data collected via electronic qualitative survey 186
2.3. Data collected via individual semi-structured interviews 192
3. Data analysis and interpretation 194
3.1. Overview of the analysis 194
3.2. Prevalent themes developed from the data set 195
3.2.1. Innovation in cereal varieties 195
3.2.2. Plant variety protection of cereal varieties 202
3.2.3. Level of awareness of plant variety protection 203
3.2.4. Satisfaction with the Community plant variety protection 205
3.2.5. Shortcomings in the Community plant variety protection 206
3.2.6. Ideal legislation 210
4. Final remarks 213
CONCLUSION 216
1. Summary 216
2. Combination of legal and empirical outcomes 217
2.1. The scope of innovation in cereal varieties 218
2.2. The coexistence of Community and national plant variety protection 219
2.3. FSS and the xxxxxx'x privilege 220
2.4. The relationship between Community plant variety protection and seed legislation in the EU 225
3. Recommendation and concluding statements 228
BIBLIOGRAPHY 233
INTRODUCTION
SUMMARY: 1. Purpose. - 2. Research question. - 3. Methodology. - 4. Outline.
1. Purpose
The purpose of the research is to understand whether and, if so, how Community plant variety protection is nowadays fostering innovation and stimulating plant breeding in the European Union, with regard to varieties of cereal species.
The rationale of Community plant variety protection is to incentive plant variety creation and to stimulate further innovation: this is the social goal of the relevant legislation. The current research aims at assessing whether this legislation achieves its social goal with regard to the EU cereal breeding industry.
In the European Union, innovation in cereal varieties has an enormous relevance: it has an economic and social impact, as well as a scientific and environmental one. Indeed, it is crucial for the competitiveness of the seed, agricultural, and food industry, and it is also fundamental in terms of food security, as well as biodiversity conservation and sustainability in agriculture.
Moreover, cereals represent the basis of the human diet. They are ‘staple foods’ and as such they are globally eaten on a regular basis and they represent the largest part of the human nutrition. Therefore, innovation in cereal breeding is crucial in order to feed the world’s increasing population. Furthermore, in the EU market the main seed production is represented by cereal varieties: the European Union industry has a world-leading role in cereal production, especially wheat.
Considered the importance of the sector, breeders are interested in protecting their new varieties of cereals with intellectual property rights, in order to get a return on investment. In the European Union, a breeder may apply for an EU intellectual property right over their new plant variety on the basis of well-defined requirements: these IP rights are called Community plant variety rights and they are unitary intellectual property rights, not a bundle of rights.
Community plant variety protection is supposed to support the creation of new plant varieties for the benefit of society: Community plant variety rights have an alleged role in fostering innovation on plant varieties, the scope of which is going to be investigated.
In the current study, the role of Community plant variety protection in fostering innovation in cereal varieties is also examined vis-à-vis the EU seed legislation because of the impact the two legislations have on variety creation.
As a matter of fact, new plant varieties are brought onto the market as reproductive material: in the case of cereal varieties, as seeds. In this context, the seed represents both a commercial commodity and a technology carrier2, in which it is impossible to divide the intangible and tangible subject matter. The dual-nature of the seed reflects the two legislations affecting the seed sector: broadly speaking, there are 1. rules regulating seeds as commercial commodities, establishing criteria for their marketing (i.e. the seed legislation), and 2. rules governing the reproductive material as a technology carrier, granting exclusive IP rights to the breeder over a newly bred plant variety (i.e. the plant variety protection). The two legislations are linked to one another because both of them have an impact on the seed sector and may represent an incentive for variety creation. This linkage might be particularly tight with regard to varieties of cereal species, since seed marketing laws do not apply to every plant species but only to a number of them, including cereals. In light of this, the role of Community plant variety protection may be affected by the EU seed legislation: an obstacle to the marketing of a cereal variety may jeopardize the ‘reward’ provided by the relevant intellectual property right, and negatively impact the creation of further varieties.
With this in mind, the purpose of this study is basically to investigate the effectiveness of Community plant variety protection in fostering innovation and stimulating plant breeding in the European Union industry with regard to cereal varieties. The effectiveness of the Community plant variety protection system is investigated both per se and in connection with the EU seed legislation.
It is important to underline that GMO plant varieties are not covered by the present investigation because of their very marginal role in the EU industry and agriculture.
2 Louwaars N., 2002, Seed Policy, Legislation and Law: Widening a Narrow Focus, in Journal of New Seeds, 4, 1/2, p. 2-4.
Cereal breeding companies based in the EU are the target audience of the current investigation, as representatives of the EU cereal breeding industry. For the purpose of this research, ‘cereal breeding companies’ refers to private companies actively engaged in activities of R&D and plant breeding of new varieties of cereal species (thereby excluding public institutions and natural persons), which operate within the Community plant variety protection regime. A large part of those companies is represented by SMEs, as defined in Article 2 of the EU Commission Recommendation of May 6th 2003 concerning the definition of micro, small and medium-sized enterprises3. As a matter of fact, the economic fabric of the seed companies operating within the European Union is mostly made up of SMEs: 90% of the over 7,000 companies are SMEs, operating in research, breeding, production, and commercialization activities4. Also, SMEs have been notably inclined toward the use of the Community plant variety protection systems, refusing the patent one5. The choice of this target audience also has the purpose of overcoming the popular ‘clichéd view’ of the plant breeding industry, as a sector exclusively dominated by multinational enterprises. The view of the industry is sometimes marked by hostility because farmers and plant breeders are seen as contemporary Xxxxx and Goliath, operating in the constant antagonism between peasants and multinational corporations. This approach does not take into consideration the role of SMEs in plant variety innovation and their effort to
develop improved varieties for the benefits of both farmers and consumers.
In light of this, this study also wishes to show the EU breeding industry from a different point of view, taking into consideration the many SMEs engaged in cereal breeding, addressing their challenges, difficulties, and exploring the significant role of the innovations carried on by them, both for farmers and consumers.
3 ‘Article 2. Staff headcount and financial ceilings determining enterprise categories. 1. The category of micro, small and medium-sized enterprises (SMEs) is made up of enterprises which employ fewer than 250 persons and which have an annual turnover not exceeding EUR 50 million, and/or an annual balance sheet total not exceeding EUR 43 million. 2. Within the SME category, a small enterprise is defined as an enterprise which employs fewer than 50 persons and whose annual turnover and/or annual balance sheet total does not exceed EUR 10 million. 3. Within the SME category, a microenterprise is defined as an enterprise which employs fewer than 10 persons and whose annual turnover and/or annual balance sheet total does not exceed EUR 2 million.’
4 Data extracted in 2017, available at xxxxx://xxx.xxxxxxxxx.xx/xxxxxxxxxx-xxxxxxxxxxxxx-xxxxxxxxx- agriculture-without-decreasing-yield
5 Bently L., Vaver D., 2004, Intellectual Property in the New Millennium: Essays in Honour of Xxxxxxxxx X.X. Xxxxxxx, Cambridge University Press, Cambridge, p. 153-154.
2. Research question
One main research question is going to guide the categorization of the research topic. In this way, it is possible to pinpoint the so-called ‘research gap’, which is the problem not yet satisfactorily addressed by existing literature in this field.
Over the years, some attempts have been made to empirically assess the views of European plant breeders on Community plant variety rights6: an important study was carried out in 2001 by the European Union as part of the Fourth Framework Programme (PIP Project). The core aspect of that research has been the assessment of the two systems of intellectual property protection over plants: patents and plant variety protection. In particular, the PIP project aimed at assessing the attitudes towards plant intellectual property (as already said, both patents and Community plant variety rights) within the European plant breeding industry, and at evaluating whether the existing legal framework is both effective and appropriate. Inter alia, the study showed that there is general satisfaction among plant breeders with the plant variety rights system. Some concerns were expressed about the farm- saved seed provisions. The study also showed a lack of awareness of plant breeders about legal issues. It is interesting to note that 60% of the breeders who participated in the second questionnaire ‘felt unable to answer any of the substantive law questions’7.
As regards to the empirical findings, the EU cereal breeding industry has its own peculiarities: hence, the findings obtained by the researches focused on the plant breeding industry as a whole cannot be a general indicator of the views of the cereal breeding sector on the specific intellectual property regime of Community plant variety protection. Furthermore, those studies may be partially outdated.
The legal literature on the topic has often looked at Community plant alongside patents on biotechnologies, in the framework of what may be identified as the regimes of ‘intellectual property over plants’. The interface between plant variety rights and patents, as well as advantages and disadvantages of both systems of protection have been overviewed and extensively analyzed by the relevant literature.
6 Those studies have been properly analyzed and summarized by Xxxxxxxx X., Xxxxxx M, 2006, European Plant Intellectual Property, Xxxx Publishing, Oxford, pp. 397-454.
7 Xxxxxxxx X., Xxxxxx M, 2006, European Plant Intellectual Property, Xxxx Publishing, Oxford, p. 453.
It was not possible to find any empirical legal study specifically focused on Community plant variety protection over cereal varieties. One might assume that legal scholarship has not yet focused on the relationship between innovation in cereal varieties and Community plant variety protection in the European Union. The choice of a specific crop sector, i.e. cereal, where to investigate the effectiveness of the Community plant variety protection regime is based on the idea that each crop sector has its own peculiarities and regulations, thereby the legislation may have different impacts.
In the current study, the effectiveness of the Community plant variety protection system in not merely analyzed in the framework of ‘intellectual property law’, but also in its dialogue with the seed legislation affecting the marketing of seeds of cereal varieties. In light of this, the current research does not exclusively lie in the intellectual property law arena but it refers to further fields of law, in particular the agricultural law.
Therefore, the research gap that the current study wishes to address is represented by the focus on a specific crop sector in the framework of both intellectual property law and agricultural law. The research topic is considered worthy of study for the reasons illustrated in the first chapter of the current study.
Given the foregoing considerations, the main research question explored by the current study is the following one:
1. Nowadays, is Community plant variety protection fostering innovation in cereal varieties in the European Union industry?
Through this question, the research aims at evaluating the effectiveness of that system. In order to provide a complete answer, the research is going to be lead by other sub- questions:
a. What is plant breeding?
b. What is the relevance of plant breeding in cereal varieties?
c. What is plant variety protection?
d. Which is the international legal framework on plant variety protection?
e. How is plant variety protection regulated in the European Union?
f. How is seed marketing regulated in the EU?
g. In this context, how is cereal seed marketing regulated?
h. What is the relationship between Community plant variety protection and seed legislation?
i. What are the views of the EU cereal breeding companies on the effectiveness of Community plant variety protection?
j. What are the advantages and shortcomings of the current system?
Those sub-questions are both leading the investigation and designing the structure of the following chapters, in order to provide the basis for the final answer.
3. Methodology
This study originates from a combination of academic and applied research carried out at the University of Macerata, at the Xxx Xxxxxx Institute for Innovation and Competition, and within an Italian SME named Agroservice spa, engaged in activities of research, testing, development, multiplication and commercialization of seeds for agriculture, especially cereals.
The synergy of studying law in the books and law in action8 deeply affected the choice of the research methodology. The approach underpinning the formation of this research project is interdisciplinary, since the normative legal investigation is coupled with empirical one, based on a qualitative method, in order to develop an ‘empirical legal research’.
Normative research is based on the analysis of primary sources, judicial precedents, textbooks, academic papers. Therefore it should be qualified as ‘library-based’9. Whereas, empirical research10 in law aims at studying and understanding how the law operates in a specific social context and its effects within that context: it mixes what the law says to what the law does11 in order to provide a ‘critique of the law’.
8 Legal theory firstly developed in 1920 by Xxxxxx Xxxxx, one of the major representatives of legal realism, in the article ‘Law in Books and Law in Action’, published in the American Law Review, 44, 12-3, where he underlined the importance of how the law is applied in the society.
9 XxXxxxxxxx M, Xxxx Xxxx X. (ed.), 2007, Research Methods for Law, Edinburgh University Press, pp.47. 10 In the last 20 years the use of empirical data and empirical research methods in legal research have highly increased. See Xxxxx X. X., 2017, Methodology in Legal Research, in Utrecht Law Review, 13, 3 and Xxxxxxxxxx T., Duncan N., 2012, Defining and describing what we do: doctrinal legal research, in Deakin Law Review, 17, 1. Moreover, the role of empirical research is believed fundamental because “if laws are intended to produce certain results, questions about whether they do produce the expected results, whether they produce other results, and whether the identifiable results are as consistent with the reason for law as one might have anticipated, are all important to examine”. Xxxxxxxxxx L. E., 1985, An Overview of Law and Social Research, in Journal of Legal Education, 35.
11 Xxxxxxx X., Xxxxx X., 2003, Empirical Research in Law, in Tushnet M. and Xxxx P. (ed.), The Oxford Handbook of Legal Studies, pp. 880-899. Xxxxxxx and Xxxxx said that empirical legal researchers intend to emphasize ‘the disparity between textbook and everyday reality’.
The empirical legal approach allows the researcher to use more than one research technique to study a certain context and it may be more reliable than a single-method approach12: the convergence of the data collected, both legally and empirically, determines the level of consistency of the regime.
Empiricists aim at describing and explaining social phenomena and, in doing that, they borrow research methods from the social sciences13, so as to choose between qualitative and quantitative approaches14. The choice of a qualitative method over a quantitative one for the current study relies on its closeness to traditional legal research, since it prioritizes interpretation and meaning. It is also appropriate for lawyers with no training in quantitative research15. In addition, the current investigation does not depend on statistical quantification and it does not involve any measuring. Instead, it wishes to identify and understand a certain legal context in an exploratory, and not explanatory, manner: in this sense, qualitative research is more suitable for the purpose of the research.
The combination of legal and empirical findings in a single system allows to ascertain the supposed so-called ‘external effectiveness’ of the law. This means analyzing whether the existing legal rules are effective in real life, if they achieve their social goals16.
12 Nielsen X., 2003, The need for Multi-method approaches in Empirical Legal Research, in Cane P., Xxxxxxx H., (eds.), The Oxford Handbook of Empirical Legal Research, Oxford University Press, p. 953. In order to examine the categories of legal research, see Xxx Xxxxxx M. (ed), 2011, (ed.), Methodologies of Legal Research – Which Kind of Method for What Kind of Discipline?, Oxford and Portland, OR: Xxxx Publishing. 13 Legal scholars believe that a pure application of the social sciences empirical methods could not be suitable for legal scholarship. In social sciences, the research question embodies the causal relationship, whereas in legal arena the causal relationship is an argument for answering the research question. The legal rule is supposed to have a social purpose therefore observation of the phenomena per se is not enough: the legal scholar aims at postulating a different interpretation or a new rule in order to achieve that purpose. Therefore, empirical studies are crucial to identify whether there is a social problem and if normative intervention could mitigate it but, still, it is fundamental that the core of the research remains normative. See Xxxxx C., 2017, Empirical Methods for the Law, in Xxx Xxxxxx Institute for Research on Collective Goods Preprint, Bonn, 7, available at: xxxxx://xxxx.xxx/xxxxxxxxx0000000 or xxxx://xx.xxx.xxx/00.0000/xxxx.0000000
14 Empirical content has become crucial for some legal papers. See Xxxxx X. X., 2017, Methodology in Legal Research, in Utrecht Law Review, 13, 3 and Xxxxxxxxxx T., Duncan N., 2012, Defining and describing what we do: doctrinal legal research, in Deakin Law Review, 17, 1. Moreover, the role of empirical research is believed fundamental because ‘if laws are intended to produce certain results, questions about whether they do produce the expected results, whether they produce other results, and whether the identifiable results are as consistent with the reason for law as one might have anticipated, are all important to examine’. Xxxxxxxxxx L. E., 1985, An Overview of Law and Social Research, in Journal of Legal Education, 35.
15 Xxxx X. X., The Contribution of Empirical Research to Law, in The Journal Jurisprudence, 29, 2016, 29-49.
16 Xxxxxxx X., 2011, How to carry out interdisciplinary legal research. Some experiences with an interdisciplinary research method, in Utrecht Law Review, 7, 1. The author defines external effectiveness as following: it ‘refers to the external consistency of the legal system with the context and culture in which it functions. […] External effectiveness evaluates the difference between the legal reality and the real reality’.
To this end, the pure legal standards are coupled with empirical non-legal data and insights from other disciplines, i.e. socio-economics and life sciences, collected via qualitative research methods. The purpose is to outline the addressed context, to provide the legal debate with facts and arguments, and, ultimately, to answer the questions leading the current research. The interpretation of the collected data uses thematic analysis methods17. The raw data are not published because they include sensitive data.
The design of this interdisciplinary research is based on a unilateral method, which means that the problem lies in the legal arena, and the legal analysis is supported by empirical data18. As already said, the legal arena where the problem lies consist of intellectual property law and agricultural law.
4. Outline
In order to offer an answer to the research question, this study is structured in six parts. The first introductory chapter provides an overview of the topic and its historical background. It addresses key concepts such as plant breeding and plant varieties protection,
and it describes the relevance of cereal breeding in the EU.
The second chapter addresses the international legal framework on plant variety protection, i.e. the International Convention for the Protection of New Varieties of Plants (UPOV Convention), which is the first internationally recognized multilateral convention on plant variety protection. The third chapter focuses on the current Community plant variety protection system in the European Union. i.e. the applicable law. An overview of the system is provided and the most critical provisions are analyzed. Both chapters are based on a normative research approach, where the main form of information is provided by the primary sources of law along with the relevant judicial decisions and legal literature concerning the chosen field of investigation (method known as ‘black letter law’).
The same normative research approach could also be found in the fourth chapter, which deals with the EU seed legislation, i.e. the legislation regulating the marketing of seeds in the EU. The analysis of the relevant Directives is deeply related with Community
17 For further insights, see: Xxxxx X., Xxxxxx X., 2006, Using thematic analysis in psychology, in Qualitative Research in Psychology, 3, 2, pp. 77-101.
18 Schrama X., 2011, op. cit.
plant variety protection: points of critical connection between the two legislations are explored, in order to evaluate whether there may be an influence on the effectiveness of Community plant variety protection. Special emphasis is put on the rules governing the marketing of cereal seeds. The materials analyzed are: primary sources of law, judicial decisions, legal academic writings, and also life science literature.
The fifth chapter is empirically driven and it focuses on the data collected during the three-years of study. The chapter also explains the methodology used for data collection and data analysis. Data collection entailed three methods, used in combination, usually referred to as triangulation19: participant-observation20, surveys, and semi-structured interviews. Data interpretation has been based on the method of thematic analysis21 to identify and report patterns and prevalent themes within the collected data set, which is crucial for the interpretation of findings. Thematic categorization has not involved the use of computer- assisted analysis.
The final chapter draws the conclusion combining the legal outcomes and the empirical thematic categories developed from the data set, in order to provide an answer to the main research question.
19 Nielsen L., 2003, The need for Multi-method approaches in Empirical Legal Research, in Cane P., Xxxxxxx H., (eds.), The Oxford Handbook of Empirical Legal Research, Oxford University Press, p. 953.
20 The author acted as privileged observer of the chosen context because of the role played within Agroservice. 21 Xxxxx X., Xxxxxx X., 2006, Using thematic analysis in psychology, in Qualitative Research in Psychology, 3, 2, pp. 77-101.
CHAPTER 1
Overview of the studied context
SUMMARY: 1. Preliminary remarks. - 1.1. Introduction to plant breeding. - 1.2. Definition of terms: innovation in cereal varieties. - 2. Significance of the study. - 2.1. Challenges of the third millennium. - 2.2. The 2030 Agenda for Sustainable Development. - 2.3. The EU cereals sector. -
2.4. Innovation in cereal varieties: a peek to CPVO statistics. - 3. Introduction to plant variety protection. - 3.1. Intellectual property rights over plant varieties. - 3.2. Origins of plant variety protection. - 3.3. Plant variety protection: the hybrid intellectual property regime. - 3.4. Intellectual property rights over plants: patents vs. plant variety rights. - 3.5. The role of plant variety protection in fostering innovation. - 4. Final remarks.
1. Preliminary remarks
1.1. Introduction to plant breeding
Plant domestication, as well as the development of new plant varieties, are primordial phenomena22, based on the constant work of generations of farmers23. Plant breeding is a time-consuming science and it needs a large amount of economic, natural and human resources to be carried out efficiently.
Before the discovery of the Mendelian Laws by the Augustinian world-renowned monk Xxxxxx Xxxxxx Xxxxxx00 during the second half of the 19th century, crop improvement was solely performed by farmers25, in an informal and unscientific26 manner. Thanks to the
22 As already illustrated, the phenomenon of creation of new plant varieties started more than 10.000 years ago, during the Neolithic era, when cultivators started to domesticate wild plants.
23 Another tool of improvement was and is time: over the millennia, a lot of invisible crop improvements have been made. XXXX, 1983, Genetic Engineering and Plant Breeding, Geneva, p. 10.
24 He is unequivocally recognized as the ‘father of genetics’.
25 Xxxxxxxxxx X., 2009, Evolution, plant breeding and biodiversity, in Journal of Agriculture and Environment for International Development, 103, 1-2, pp.131-145.
26 The crop improvements were driven by mythology and aesthetics, not science. Also, they took place under leisure experiments, not under necessity or urgency. See: Padwa D. J., 1983, Genetic Engineering: a new tool for plant breeders, in Genetic Engineering and Plant Breeding, UPOV Publication N. 340(E). By way of
dissemination of Xxxxxx’x genetic laws, plant breeding became a business based on a formal and scientific approach, and it turns out to be a prerogative of the so-called ‘breeders’: scientists, geneticists, and biologists whose job purpose is to bred, or discover and develop new plant varieties. Consequently, companies started to invest in research and development (R&D), in order to create crops having the desirable traits and characteristics, capable of meeting the nutritional needs of the society.
As stated by the International Union for the Protection of New Varieties of Plants, known as UPOV27, investments for modern plant breeding are required every year. They consist of scientific manpower with great skills and knowledge, land, and specialized equipment (e.g. growth xxxxxxxx and laboratories). The expenditure of work and energy must go on over the years: surely enough, it takes a long time to find and develop new plant varieties, sometimes up to fifteen years.
On top of that, the outcomes are not always positive: at the end of the testing and developing period, scientists could obtain unsatisfactory results. The reasons are several: the new plant varieties could not have the long-awaited characteristics, or the market demands could have changed during the years, making the commercialization of the new variety a failure. Either way, a negative result could certainly jeopardize the possibility of a return on investment.
At the same time, since a new variety is not an inert product and it is naturally self- replicating, other subjects could effortlessly reproduce it thus taking away the possibility, for the original breeder, to commercially exploit the achieved results. In this context, private companies carrying out plant breeding activities have to balance the profits with the expected return of those investments. As already stated, those activities are worth the time and the effort made only if the breeder can, at least, recover costs sustained for the development of those value-added innovations. Otherwise, plant breeding would be not remunerating and, therefore, no business would have pursued it.
illustration, the author mentions the use of pumpkins: ‘Let us not forget that the pumpkin was used ad a musical instrument, as a rattle, long before it was used as a foodstuff’.
27 UPOV, 2003, Introduction to Plant Variety Protection under the Upov Convention, p. 2, xxxx://xxx.xxxx.xxx/xxxxx/xxxxx/xxx/xx/xxxx_xx_xxx_xx_00/xxxx_xx_xxx_xx_00_00-xxxx0.xxx
Despite the common belief that plant breeders are modern ‘sorcerers’ apprentices’28, the society benefits from the gargantuan improvements carried out by breeders over the years, although sometimes it does not realize it.
In the case of plant varieties for agricultural purposes, those improvements mainly concern agricultural production, which is very valuable to society. In this context, the development of new cereal varieties has significant social, environmental, scientific, and economic impacts, because of their crucial role in the EU agriculture and economy.
1.2. Definition of terms: innovation in cereal varieties
Innovation is the Zeitgeist of contemporary society, especially in advanced economies, but it does not have any particular legal meaning. Innovation applies to ideas, processes, and products in countless businesses and it is often related to the concepts of originality and more efficiency.
Since innovation is related to a particular place and a particular time, what is deemed to be an innovation in the European Union in 2020, may not be considered the same in another country or in another period. Therefore, for the purpose of the research, the scope of this ‘innovation’ is limited to the contemporary context of the European Union.
Innovation in cereal variety is broadly considered the creation of new varieties of cereal species. For the purpose of the current investigation, the cereal species taken into consideration are the ones listed in Article 2 of Directive 66/402/EEC on the marketing of cereal seed, as lastly amended29. It is worth noting that minor cereal crops, such as Triticum monococcum, are not listed in Article 2.
With regard to the scope of innovation, newness does not necessarily mean ‘improvement’ because, in this context, varieties are deemed to be improved only when they
28 Reference is made to the poem ‘The Sorcerer's Apprentice’ (in the original German version: ‘Der Zauberlehrling’), written by Xxxxxx Xxxxxxxx xxx Xxxxxx in 1797. The rationale behind the reference is on the widespread opinion considering plant breeders as hazardous scientists and futuristic ‘wizards’, playing with Mendelian Laws and genetics on biological material, incapable to properly control the ‘spirits that they called’ (‘Die Xxxxxxx, die ich xxxx’), i.e. the effects of crop improvement on the environment and human health.
00 Xxxxx nuda L., Avena sativa L., Avena strigosa Schreb., Hordeum vulgare L., Oryza sativa L., Phalaris canariensis L., Secale cereale L., Sorghum bicolor (L.), Sorghum sudanense, xTriticosecale Wittm., Triticum aestivum L., Triticum durum, Triticum spelta L., Zea xxxx L.
are characterized by ‘improved productivity’. However, the importance of innovation in cereal varieties is not only tied to productivity and food security, as important as it is, but also related to safety, sustainability and fight against genetic vulnerability. In this framework, an innovation in cereal variety is worth of promotion when it is either productive, resistant, or adaptable to low input conditions. In terms of genetic vulnerability, innovation is worth of promotion also when a new variety is constituted, as different from the existing ones, because the existence of numerous genetic characteristics in some geographical area decreases the loss of flexibility in the plants, hence the genetic vulnerability thereof. In this sense, it does not represent an innovation the plagiaristic practice on plant varieties known as ‘cosmetic breeding’. It is worth highlighting that innovation in cereal varieties does not only concern the novelty per se but also the breeding methods used.
In light of this, for the purpose of this study innovation in varieties of cereal species is considered the creation of new plant varieties of cereal species, having scientific relevance (hence, it is not plagiarism) and meeting the society’s needs in terms of food security, food safety, biodiversity protection, and sustainability.
2. Significance of the study
2.1. Challenges of the third millennium
Achieving food security30 is going to be one of the biggest global challenges over the next few years, in response to the expected growth of the world’s population, ergo the increase of food demand.
According to the data collected by the Food and Agriculture Organization of the United Nations (FAO)31, by 2050 there are going to be almost 10 billion mouths to feed and there will be a rise in agricultural demand by 50 percent, compared to 2013. Therefore,
30 The concept of ‘food security’ is constantly evolving. Suffice it to say, in 1974 the World Food Summit focused the definition only on the volume and stability of food supply whereas in 2001 the State of Food Insecurity emphasized the importance of food demand, safety and access for vulnerable groups. See: FAO, 2003, Trade and Food Security: Conceptualizing the Linkages, Rome, p. 25 et seq.
31 FAO, 2017, The future of food and agriculture - Trends and challenges, Rome, p. x.
agriculture must be able to boost and improve productivity as well as high-quality harvests while facing climate change and scarcity of natural resources to be used in a sustainable manner (so-called, ‘resource efficiency’). Specifically, as stated by the FAO reports, the current agricultural system based on resource-intensive methods is causing massive soil consumption, deforestation, water shortages, high levels of CO2 emissions and, yet, almost 800 million people are nowadays suffering from hunger32.
For that reason, society needs an innovative approach to agriculture, that has to be sustainable while increasing agricultural productivity and food nourishment.
Within this context, research and innovation in the plant sector are playing a key role. In particular, one of the major research contributions lies in plant breeding. The activity of developing new plant varieties is carried out by breeders - whether natural or legal persons
-, in order to respond, primarily, to the above-mentioned increase of food demand.
The aims of breeders are multiple: 1. enhancing productivity of plants; 2. obtaining better pests and diseases resistance; 3. decreasing the pressure of agricultural activities on the environment (i.e. sustainable use of soil, water, biodiversity); 4. increasing the nutritional content of the new varieties; 5. achieving a better adaptation to climatic stress. Consequently, plant breeding is crucial not only to food security, because of the larger productivity and the higher nutrition of new varieties, but also to sustainability, because of the lower use of chemical products - linked to the improved resistance - and the better resource efficiency - related to the lower impact on the surrounding environment. Low-impact farming is deemed necessary for the agriculture of the third millennium.
In addition, innovation in plant breeding is fundamental to reduce crop genetic vulnerability. This phenomenon is defined by FAO as ‘the condition that results when a widely planted crop is uniformly susceptible to a pest, pathogen or environmental hazard as a result of its genetic constitution, thereby creating a potential for widespread crop losses’33. The gene diversity drop represents a significant threat to agricultural production. According to FAO, this event roots in the massive presence of monocultures in agriculture that leads to loss of variability and, therefore, loss of flexibility due to the great presence of only a few
32 Ibid., p. xi.
33 FAO, 2010, The Second Report on the State of the World’s Plant Genetic Resources for Food and Agriculture. Rome, p. 15.
genetic characteristics in some geographical areas. That happens because only a wide range of unique traits allows plants to face the changing conditions of the environment34.
It goes without saying that the phenomenon of genetic vulnerability could also bring to catastrophic losses in terms of biodiversity. For that reason, the fundamental role of plant breeding is frequently stressed by scientists and researchers because, through the development of new varieties starting from existing ones, it provides value and increases genetic diversity.
As a matter of fact, breeders need biodiversity, and they require nothing but access to plant genetic diversity in order to fulfill their tasks: the more traits, the more possibilities to breed new varieties. Therefore, the breeding activity hardly follows the Schumpeterian process of ‘creative destruction’ because new plant varieties cannot be created from scratch35.
The report of FAO gives concrete examples of countries that put into practice effective measures to tackle genetic vulnerability, mainly through the promotion of breeding programs and the introduction of a broader number of plant varieties (e.g. Thailand, Cuba), underlining in this way the vital function of plant breeding against genetic erosion and, therefore, its role for biodiversity protection36.
With this in mind, the role of plant breeding in the specific sector of cereal varieties has to be highlighted. First of all, the largest amount of global agricultural production is made up of cereals (e.g. wheat, rice, barley, corn, rye, oats, millet, etc.), which represent the foundation of the human diet. Suffice it to say, FAO estimated that just 150 of the global crops are aimed at food consumption and 80 percent of human nutrition is provided by 12 of them, with rice, wheat, corn and potato alone providing 60 percent37. In addition, some of the cereals made up the so-called ‘flex crops’, meaning that they could be used not only for
34 FAO, 2004, Biological diversity is fundamental to agriculture and food production,
xxxx://xxx.xxx.xxx/xxxxxx/000/x0000x/x0000x00.xxx
35 See: Xxxxxxxxxxx X., 2016, Promoting Sustainable Innovations in Plant Varieties, Springer, Berlin & Heidelberg. The author believes that innovation in plant varieties ‘is a vicious cycle of innovation (creation) leading to destruction (both natural and unnatural) and calling for (even) more ‘destructive creation’.’ The author believes that improved seeds, pesticides and fertilizers leads to further degradation of land/soil and the lost of old varieties and biodiversity in general.
36 FAO, 2010, The Second Report, cit., p. 15.
37 Northoff E., 2007, International plant gene pool becomes operational, in FAO Newsroom, xxxx://xxx.xxx.xxx/xxxxxxxx/xx/xxxx/0000/0000000/xxxxx.xxxx
food but also for feed, fuel, fiber or industrial material38. As a result, the world cereals consumption has highly increased: FAO reported a rise of 1.8 percent a year in the first decade of the twenty-first century39. Considering this large production and consumption of cereal crops, it goes without saying that reaching a high, efficient, and sustainable production of cereals could both improve food security and increase sustainability, whereas an inadequate and unsustainable production could lead to serious problems.
Also, in relation to genetic vulnerability, the same FAO reports that there is an alarming global trend towards the genetic vulnerability of cereals: at least 30 countries have reported genetic erosion of these crops in the last years, followed by vegetables, fruits and nuts and food legumes40. Therefore, plant breeding in cereal varieties seems fundamental in order to maintain cereal genetic diversity and avoid losses in terms of biodiversity.
In light of this, there are no doubts regarding the central role played by plant breeding and constant innovation in the cereal seed sector for the benefits of the society and the environment, in order to achieve global food security, food safety, sustainability, and to contrast the genetic vulnerability of cereal crops.
2.2. The 2030 Agenda for Sustainable Development
Fostering innovation for agricultural purposes is strictly connected to the implementation of the 2030 Agenda for Sustainable Development41. The Agenda addresses the threefold economic, social, and environmental dimensions of sustainable development by setting 17 goals42, whose implementation and success rely on countries’ own policies and
38 See: Xxxxxxxxx X., Xxxxxx Jr., Xxxxxxxx X. Xxxxxx et al., 2016, The rise of flex crops and commodities: implications for research, in The Journal of Peasant Studies, 43, 1.
39 See: FAO, 2015, Statistical Pocketbook. World food and agriculture, Rome, p. 31; FAO, 2017, The future of food and agriculture - Trends and challenges, Rome, p. 35.
40 FAO, 2010, The Second Report, cit., p. 16.
41 During the 2015 UN Sustainable Development Summit, more than 150 world leaders adopted this new sustainable development agenda. It incorporates follow-up from the Rio+20 Conference on Sustainable Development. The 2030 Agenda aims to promote globally shared prosperity and well-being for all over the next 15 years. The effort should be made to tackle poverty, inequalities and climate change. Source: United Nations website, xxxx://xxx.xx.xxx/xxxxxxxxxxxxxxxxxxxxxx/xxxxxxxxxxx-xxxxxx/
42 Particularly, the 2030 Agenda wishes to: 1. end poverty in all its forms everywhere; 2. end hunger, achieve food security and improved nutrition and promote sustainable agriculture; 3. ensure healthy lives and promote well-being for all at all ages; 4. ensure inclusive and equitable quality education and promote lifelong learning opportunities for all; 5. Achieve gender equality and empower all women and girls; 6. ensure availability and sustainable management of water and sanitation for all; 7. ensure access to affordable, reliable, sustainable and
programs. The Agenda is characterized by its universality: it strives for its application to all countries, at all levels of development.
Even though the Sustainable Development Goals of the 2030 Agenda are not legally binding, the European Union is making a positive contribution to achieving the 17 goals stated in the Agenda43. Indeed, the EU has played a leading role, not only in shaping the global 2030 Agenda44 but also in the implementation of its ambitious goals45. Thus, in November 2016, the European Commission issued a communication46 to the EU Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions entitled ‘Next steps for a Sustainable European Future - European action for sustainability’. In the document, the European Commission underlines how sustainability, in its threefold dimension, represents a core value of the EU project and is consistent with its vision.
Nowadays, the European Union is facing several challenges and sustainability concerns, so it is fundamental to preserve the EU social model and social cohesion while tackling those issues. In order to do that, the EU promptly answered the 2030 Agenda call to action through two work streams: the first one is based on the full integration of the goals in the EU current policy framework; the second one on developing a long-term vision and implementation. The Commission considered that those goals should be pursued in a collective way and in order to turn them into opportunities. In particular, the Commission
43 Source: European Union website, xxxxx://xx.xxxxxx.xx/xxxxxxxxx/xxxxxxxx/xxxxxxxx-xxxxxxxxxxx- policy/2030-agenda-sustainable-development_en
44 Through public consultations, dialogue with our partners and in-depth research. Source: European Union website, xxxxx://xx.xxxxxx.xx/xxxxxxxxx/xxxxxxxx/xxxxxxxx-xxxxxxxxxxx-xxxxxx/0000-xxxxxx-xxxxxxxxxxx- development_en
45 Ivi.
46 The Communication of the European Commission is available at the following website: xxxxx://xx.xxxxxx.xx/xxxxxxxxx/xxxxx/xxxxx/xxxxx/xxxxxxxxxxxxx-xxxx-xxxxx-xxxxxxxxxxx-xxxxxx- 20161122_en.pdf
stated that ‘for these challenges to become opportunities for new businesses and new jobs, a strong engagement in research and innovation is needed’47, enhancing the role of Research and Innovation (R&I) in order to reach sustainable development. The importance of R&I is particularly emphasized when mapping the EU main actions contributing to the implementation of the 2030 Sustainable Development Goals.
For example, with regard to the goal n. 9 posed by the Agenda and focused on fostering innovation, the Commission underlined how R&I are playing a crucial role in the EU since they are largely funded through the Horizon 2020, the EU Framework Programme for Research and Innovation.
Also, in order to achieve sustainable development, the Commission believes that innovation is not only important per se but also as related to the accomplishment of the goal
n. 2 of the 2030 Agenda. This goal aims at putting an end to hunger, achieving food security and improved nutrition, and promoting sustainable agriculture.
With this in mind, the reformed Common Agricultural Policy (CAP) of the European Union has been complemented by FOOD 2030 - Research & Innovation for Tomorrow's Nutrition & Food Systems48-, an action on the role of research and innovation within the EU to future-proof the nutrition and food systems. The action addresses four priorities: nutrition, environmental sustainability, circularity and resource efficiency, and innovation. The drivers of this action are the following: research breakthroughs, innovation and investment, open science, and international cooperation. Interestingly, in this action, innovation is both a driver and a priority, as if to say that innovation generates innovation. Innovation should support agriculture and food production, in a virtuous circle of innovation.
In this context, innovation in plant varieties for agricultural purposes, especially the varieties playing a key role in food production, such as cereals, is essential to achieve the goals of the Agenda.
47 EU Commission, 2016, Next steps for a Sustainable European Future. European action for sustainability - SWD (2016) 390 final, p. 2.
48 Within the action Food 2030, Research & Innovation for Tomorrow's Nutrition & Food Systems, a high- level event was held in Belgium, Brussels, on October 2016. It provided a platform for dialogue aimed at building a coherent research and innovation policy framework for Food and Nutrition Security. The background document sets out how the EU Research and Innovation policy contributes to the major global challenge of ensuring food and nutrition security. See: European Commission, 2016, European Research & Innovation for Food & Nutrition Security, Brussels, xxxxx://xx.xxxxxx.xx/xxxx/xxxxx/xxxx/xxxxx/xxxxxxxxxxx/xxxx0000_0000/xxxx0000_xxxxxxxxxx_xxxxxxxxxx.xxx
In this framework, the role of plant breeding in tackling the challenges of the 2030 Agenda has been recently addressed by the International Union for the Protection of New Varieties of Plants (UPOV), an intergovernmental organization based in Geneva, Switzerland, established by the International Convention for the Protection of New Varieties of Plants (UPOV Convention). During its fifty-first ordinary session, UPOV set out the connection between an effective system of plant variety protection, aimed at the development of new and improved varieties for the benefit of the society, and the 2030 Agenda49. The UPOV Council believes that the vision of the Agenda, and especially its goals
n. 1, 2, 9, 12 15, 17, are strictly linked to UPOV’s mission. That is because new plant varieties ‘are an important means of responding to the challenges of a growing and increasingly urbanized population, climate change, parallel demands for food and energy production and evolving human needs50’. When developing a new plant variety for agriculture, the purpose of plant breeders is primarily to obtain larger yields, better climatic adaptation, improved resistance to pests and diseases, decreased pressure of agricultural activities on the environment, and increased nutritional content; and these targets play a crucial role in the achievement of the 2030 Agenda goals.
In this context, only a broad range of plant varieties might tackle those imperative challenges. In this regard, the plant variety protection systems, unlike other IP systems, ensure the so-called ‘breeder’s exemption’ for breeding purposes, whose objective is to promote the development of improved varieties by facilitating the access to protected plant varieties.
In this way, plant breeding programs and innovation in plant varieties are encouraged in a sort of ‘open science’ system. Therefore, there is a specific linkage between fostering innovation in plant varieties for agricultural purposes, such as cereal varieties, and the implementation of the UN Sustainable Development Goals set out in the 2030 Agenda.
49 UPOV Council, 2017, Xxxxx to UPOV Press Release 112,
xxxx://xxx.xxxx.xxx/xxxxx/xxxxxxxxx/xx/xxxx_xx_000.xxx
50 Ibidem.
2.3. The EU cereals sector
The EU cereals sector is facing several challenges: uncertainties in the world agricultural markets due to increased volatility, use of the new breeding techniques, global demand, climatic changes, increasing competition from outside the EU.
The cereals sector in the European Union regards both the seed industry and agricultural sector because it represents the third biggest agricultural sector in terms of output value after the vegetable/horticultural plant sector and the dairy sector and all Member States produce cereals51.
As already stated, the seed is not only a technology carrier but also a commercial commodity52 whose market plays a decisive role worldwide and especially in developed countries. Suffice to say that, in 2014, the seed market had an estimated value of around USD 52 billion53.
The European Union commercial seed market is highly competitive: in 2013, it represented the largest exporter with a value of EUR 4.4 billion at a global level, which is more than 60% of worldwide export54. After five years, in 2018, it reached the value of EUR
7.4 billion55, involving almost 1000 seed companies, whose majority are SMEs56. Globally, the sector is highly concentrated, but SMEs provide an important contribution to conventional seed production and organic crop production.
In order to better understand the importance of these data, it is worth noting that the EU is the third-largest seed market worldwide after the USA and China, representing more than 20% of the total global market for commercial seed. France, Germany, Italy, Spain, and
51 Xxxxx X., 2019, The EU cereals sector: Main features, challenges and prospects, European Parliamentary Research Service.
52 Louwaars N., 2002, Seed Policy, Legislation and Law: Widening a Narrow Focus, in Journal of New Seeds, 4, 1-2, p. 2-4.
53 OECD, 2018, Concentration in Seed Markets: Potential Effects and Policy Responses, XXXX Xxxxxxxxxx, Paris, p. 25
54 In 2013, the EU commercial seed market had a value of approximately 6.8 billion Euros. European Commission, 2013, Executive Summary of the Impact Assessment. Accompanying the document Proposal for a Regulation of the European Parliament and of the Council on the production and making available on the market of plant reproductive material (plant reproductive material law), SWD (2013) 163 final, Brussels, available at xxxxx://xxx-xxx.xxxxxx.xx/xxxxx-xxxxxxx/XX/XXX/XXX/?xxxxXXXXX:00000XX0000&xxxxxXX
55 Source: European Seed Certification Agencies Association (ESCAA) website, xxxx://xxx.xxxxx.xxx/xxxxx/xxxxxx/xxxx/xx/0/xxxxx/xxxx-xxxxxxxxxx-xx-xx---0000
56 Source: European Seed Association (ESA) website, xxxxx://xxx.xxxxxxxxx.xx
the Netherlands are the leading seed producers in the EU: they collectively account for two- thirds of the EU market57.
As regards the crops produced, the main seed production in EU is represented by cereals with 1,053,200 ha (wheat is the first species produced), ahead of forage species with 505,230 ha, maize with 139,620 ha, oilseeds with 132,670 ha, and potatoes with 119,615 ha58: thus, in EU the value of cereal seed production outweighs all the other crops.
It is interesting to notice that the ranking above, provided by the European Seed Certification Agencies Association, divides cereal crops from maize, even though the relevant legislation otherwise provides: Zea xxxx L. lawfully belongs to the cereals sector according to Council Directive 66/402/EEC. However, it is not uncommon to find similar approaches, in particular by international organizations or seed associations: indeed, maize has an idiosyncratic position in the global seed market and, as such, it is often individually examined. Suffice to say that, of an estimated value of around USD 52 billion in 2014, almost 40% consists of maize itself59. Moreover, commercial maize seed is mainly represented by hybrid varieties: since the 1950s, maize plant breeding shifted from open-pollinated varieties to hybrids, which significantly boosted its productivity60. Consequently, maize varieties are less subject to the practice of farm-seed saving, unlike other cereals, since hybrids do not propagate unchanged. Therefore, the use of farm-saved seed could result in nonuniform yields and unprofitable crops, representing an economic loss for the farmer. Also, unlike other cereal varieties, the global maize seed production is driven by GM varieties: in 2014, 32% of hectares planted with maize are planted with a GM variety, making up almost 60 million hectares worldwide61. In light of this, it should not surprise that maize MON 810 is still the only GMO that has been authorized for cultivation in the EU62. Nevertheless, only
57 France itself represents almost one-third of the EU total. See, OECD, 2018, Concentration in Seed Markets: Potential Effects and Policy Responses, XXXX Xxxxxxxxxx, Paris, p. 27.
58 Source: European Seed Certification Agencies Association (ESCAA) website, xxxx://xxx.xxxxx.xxx/xxxxx/xxxxxx/xxxx/xx/0/xxxxx/xxxx-xxxxxxxxxx-xx-xx---0000
59 OECD, 2018, Concentration in Seed Markets: Potential Effects and Policy Responses, XXXX Xxxxxxxxxx, Paris, p. 27.
60 Source: Euroseeds website, xxxxx://xxx.xxxxxxxxx.xx/xxxxxx/xxxxx/xxxxxxxxxxxx/xxxxx. Last access: April 2019
61 Ibidem, p. 28. GM maize production is led by the USA.
62 Source: EU Register of authorized GMOs, xxxxx://xxxxxxx.xx.xxxxxx.xx/xxxx/xx_xxxxxxxx/xxxxx_xx.xxx. Last access: September 2019.
when maize is considered as being a cereal crop, the data reflects the actual cereal seed production in the EU.
With regard to cereal crops, it is worth noting that the European Union is one of the world’s leaders in cereal production: as highlighted by FAO in its biannual report on global food markets63, in 2019 the statistics forecast an EU cereal production of 311.4 million tonnes (mt) of cereal, making it the third-largest global producer of cereal after China (546.6 mt) and USA (446.9 mt). According to those statistics, the EU is going to confirm its leadership in global wheat production, with a forecasted production of 149.5 million tonnes for the year 2019, followed by China (132.0 mt), India (99.6 mt) and Russian Federation (82.0)64.
According to Eurostat65, 57 million hectares of the 110 million hectares of arable land in the EU are dedicated to the cultivation of cereals. Also, the harvested production of cereals in the EU in 2016 was around 301 million tonnes66, representing about 11.6 % of global cereal production67. Nearly 65% of the cereals produced are intended for feed and almost 32% for human consumption; the remaining part, only 3%, is allocated for biofuel68.
Therefore, the key role played by cereal varieties in the European Union seems indisputable, especially by wheat, both for the seed industry and the agricultural sector.
2.4. Innovation in cereal varieties: a peek to CPVO statistics
The cereals sector plays a key role in the EU economy and agriculture.
In this context, one might wonder whether the high seed production and crop cultivation rate, shown in the previous paragraph, goes hand in hand with a high innovation
63 FAO, 2019, Food Outlook. Biannual report on global food markets, Rome, p. 108.
64 Xxxxxx, p. 110.
65 Data extracted in January 2017, available at xxxx://xx.xxxxxx.xx/xxxxxxxx/xxxxxxxxxx- explained/index.php/Main_annual_crop_statistics#Further_Eurostat_information
66 Data extracted in November 2017, available at xxxx://xx.xxxxxx.xx/xxxxxxxx/xxxxxxxxxx- explained/index.php/Agricultural_production_-_crops#cite_note-1. This information is part of a set of statistical articles based on Eurostat, 2016, The Agriculture, forestry and fishery. Statistical book, which is an online Eurostat publication presenting a summary overview of recent European Union (EU) statistics on agriculture, forestry and fisheries.
67 According to Eurostat, France (18.0 %), Germany (15.1 %) and Poland (9.9 %) together contributed to 43% of the EU total. Spain was the next largest cereal producer.
68 Source: EU Agriculture and Rural development website, available at: xxxxx://xx.xxxxxx.xx/xxxxxxxxxxx/xxxxxxx_xx
rate in cereal varieties. This aspect is pivotal for two reasons: 1. innovation increases the competitiveness of the EU breeding and seed industry; 2. as abovementioned, new plant varieties are necessary to tackle the challenges of agriculture in the third millennium.
Undoubtedly, innovation may concern different aspects of cereals, such as breeding, production, and cultivation. For example, innovation may concern new breeding techniques, innovative plant protection products, more efficient methods of production, high technology farming, etc. Nevertheless, for the purpose of the current investigation, the focus is exclusively on new plant varieties of cereal species, being the subject matter of plant variety protection.
The question concerning the innovation rate in cereal variety cannot be simply answered. Indeed, there is not an official list of ‘new plant varieties of cereal species’ in the EU that could be analyzed. However, in order to provide a partial answer to that question, the statistics made by the Community Plant Variety Office should be taken into consideration. It is worth noting that those CPVO statistics concern the new plant varieties which have been the subject matter of an application for Community plant variety rights. Therefore, innovative cereal varieties for which an application for Community plant variety protection was not fulfilled69 are not taken into account. Those applications have been examined because an application for Community plant variety rights entails an innovative effort made by the breeder to develop a new plant variety, showing whether the sector is innovatively active or not.
From the data, it is possible to note that innovation in cereal varieties is very active in the EU. The applications for Community plant variety rights received by the Office are divided into four crop sectors: ornamental, agricultural, vegetable, and fruit sectors. The total number of applications received from 1995 until 2018 is 65,067. The main species represented in the agricultural crop sector are cereals: the number of plant variety protection applications received by CPVO for said agricultural species since 1995 regards mainly
69 A breeder may decide not to apply for Community plant variety protection because they believes that protection is not needed, or that only national plant vaeity protection is sufficient. The analysis of the national plant variety rights could not be carried out because of the language-related difficulties and, also, because the relevant databases are not always available online.
cereals, with maize, common wheat and barley ranking among the top five70. Regarding the total number of applications, in 2018, the ornamental sector is the one where applications are filled the most (35,580), followed with significant distance by agricultural (16,119), vegetable (9,088) and fruit sectors (4,280).
Despite the significant relevance of cereal crops in EU agriculture, the number of applications received by the CPVO for the agricultural sector, where cereals belong, has fluctuated over the last few years. In 2014, the applications received by the CPVO in the agricultural sector have been 1,026, whereas in 2017 they turned out to be only 81871 : almost 20% less over three years. Those applications notably increased during 2018: they reached the amount of 101372.
In light of this brief analysis, innovation in cereal varieties seems actively carried on in the European Union, even though innovation in the agricultural sector does not reach the peak of ornamental varieties73. Also, the high number of applications shows the undeniable value of Community plant variety protection in the EU. However, those fluctuations related to the agricultural sector applications may be the symptom of lack of steadiness in the innovation activities of the cereal breeding industry. In this framework, it is essential to analyze whether the relevant legislation has a role in fostering and stimulating the breeding of new varieties of cereals, or not at all.
70 Until 2018, xxxxx received the highest number of applications among all the crop sector (4,788), common wheat received 2,024 applications and barley 1,366. Source: CPVO annual statistics on 31/12/2018, updated on 13/02/2019, data available at xxx.xxxx.xxxxxx.xx
71 In 2015 and 2016 there have been comparable numbers: the applications were, respectively, 933 and 939. Source: CPVO annual statistics, updated on 18/01/2018, data available at xxx.xxxx.xxxxxx.xx
72 Source: CPVO annual statistics on 31/12/2018.
73 According to Xxxxxxxx X., Xxxxxx M, 2006, European Plant Intellectual Property, Xxxx Publishing, Oxford,
p. 242: ‘the difference in numbers between the ornamental applications and applications in respect of other species is not surprising given the ease with which it is possible to copy most ornamental varieties - it also shows that the textual changes contained within the Regulation (with a greater emphasis on the various aspects making up the variety as opposed to merely the grouping itself) makes the right more attractive to ornamental breeders. Also related to this was the fact that in the period from April 1995 to July 2003 the largest number of applications filed came from the Netherlands (which has the highest incidence of ornamental plant breeders) followed by Germany, France, Denmark and the UK’.
3. Introduction to plant variety protection
3.1. Intellectual property rights over plant varieties
Intellectual property refers to the ownership of an exclusive right to intellectual creations, usually for a certain period of time. Those creations of the mind may result from any industrial, scientific, literary, or artistic production. The intellectual property system aims at balancing the public interest and the interests of creators, for the benefit of the society. Indeed, new creations of the mind are valuable for the society because they allow economic as well as intellectual development.
The rationale behind intellectual property lies in its capacity to encourage progress and further innovation in order to improve the quality of life and well-being of the society: the main social purpose of IP is to reward and encourage the creations of the mind.
According to the World Intellectual Property Organization (WIPO), intellectual property rights ‘are like any other property right’ and ‘allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation’74. Their purpose is to ‘reward creativity and human endeavor, which fuel the progress of humankind’75.
The first international recognition of intellectual property was provided in 1883 by the Paris Convention for the Protection of Industrial Property, and in 1886 by the Berne Convention for the Protection of Literary and Artistic Works: none of them mentioned ‘plant varieties’.
As a matter of fact, the self-replicating nature of plant reproductive material was seen as an obstacle to intellectual property: plants were not considered as ‘patentable’ subject matter76. However, in the first half of the twentieth century, the rise of innovation in plant varieties opened the door to intellectual property rights on plant varieties, by the creation of ad hoc legal instruments capable of securing a source of revenue for breeders.
74 WIPO, 2004, What is Intellectual Property?, WIPO Publication No. 450(E), Geneva, p. 3.
75 Ibidem, p. 4.
76 Xxxxxxx S., 2013, Le risorge fitogenetiche per l’alimentazione e l’agricoltura nel dibattito sui global commons, in Rivista critica del diritto privato, III, pp. 433-464.
3.2. Origins of plant variety protection
During the twentieth century and after the dissemination of the Mendelian laws, the economic interest in breeders’ achievements increased and it was associated with the request for effective legal protection of the biological inventions.
The massive investments made by plant breeders were not properly safeguarded by the existing legal instruments77: once the plant was placed on the market, the sales price fell at the fastest rate78. The reason for the price decrease lies in the intrinsic self-replication capacity of the plant: as a living material, the inherent aptitude for reproduction makes it possible for third parties to reproduce the biological creations for a countless number of times once they had first access to to the genetic resources.
However, in order to carry on innovation in agriculture, the research and development (R&D) outcomes had to be profitable. The sale of the new organisms obtained through plant breeding had to guarantee the return on investment and to improve the companies’ competitiveness. Therefore, breeders needed to be entitled to claim for remuneration against the use of their new plant varieties. Indeed, the grant of a financial reward is a significant incentive to stimulate innovations.
Due to the increasing pressure of plant breeding companies demanding proper protection for new plant varieties, ad hoc legal instruments began to be implemented by some western countries, in order to protect the new biological inventions and to xxxxxx the innovation in agriculture79. This is the moment when the complex relationship between agriculture and intellectual property started.
The first European country to tackle the problem was France, where the French Conseil International Scientifique Agricole emphasized the urgency for the government to recognize remuneration claims to breeders, in case of third parties’ use of their
77 Since plant varieties were not patentable, breeders had no appropriate protection for their inventions.
78 Xxxxxxx X., 2013, Le risorge fitogenetiche per l’alimentazione e l’agricoltura nel dibattito sui global commons, in Rivista critica del diritto privato, III, pp. 433 – 464.
79 Valletta M., 2005, La disciplina delle biotecnologie alimentari. Il modello europeo nel contesto globale, Xxxxxxx, Milano.
achievements80. Despite the attempt of legislative regulation of the matter, a proper intellectual property right for the breeder was not introduced81.
The very first plant variety protection by way of intellectual property regimes was developed in the U.S. in 1930 through the Xxxxxxxx-Xxxxxxx Plant Patent Act82. The system provided patent-like83 protection to plant breeders, for the purpose of incentive innovation and stimulate research84. It was indeed necessary to recognize plant breeders as inventors of new plant varieties but the existing utility patent system was not suitable for products of nature such as plant genetic resources. Even though the Plant Patent Act was part of the Patents Code, the sui generis plant protection system differed from the utility patent regime because it recognized the peculiarities of the biological subject matter85. For example, the patentability of plants was limited to asexually reproduced varieties, because sexually reproduced varieties were considered to lack stability, and it excluded tuber propagated plants (i.e. potatoes) for a twofold reason: 1. the homogeneity between reproductive material and food material could lead to lack of enforceability of the plant patent; 2. the fear of monopolies, especially regarding those plant varieties which are essential for food and agriculture86. Also, the plant had to be distinct but a definition of this requirement was not provided by the law87. Furthermore, one of the requirements for a utility patent was the supply of a written form by the applicant: the form had to indicate the disclosure of the invention, which should be made through a sufficient description of the subject matter in the
80 Xxxxxxxxxxxx X., 2017, Protection of plant innovation, in Xxxxxx X., Xxxxxxx X., (eds.), Research handbook on intellectual property and the life sciences, Xxxxxx Xxxxx Publishing, Northampton, p. 121.
81 The first attempt was by means of “Le Décret” in 1922. Xxxxxxxxxxxx G., Xxx Xxx Kooij P., Xxxxxxx B., Xxxxx M., 2015, European Union Plant Variety Protection, Oxford University Press, p. 2
82 The current U.S. plant patent system developed from the Xxxxxxxx-Xxxxxxx Plant Patent Act and very few changes have been made since then. See, Xxxxx X., Xxxxxx X., Xxxx R., 2014, Intellectual Property Law of Plants, Oxford University Press, pp. 183-235.
83 Considering the peculiar nature of the inventions as living organisms, plant patents could not be fitted within the utility patent scheme existing at the time.
84 The U.S. Congress believed that, as a consequence, the agricultural sector and the public in general would benefit from the plant patent system. The legislation aimed at achieving plant varieties resistant to diseases, more productive and nutritious, with the effect of securing food supply for the entire country. See, Xxxxx X., Xxxxxx X., Xxxx R., op. cit.
85 For those reasons, the Plant Patent Act system has been considered ‘a sui generis system which anticipates in many respects the UPOV Convention’. See, UPOV, 1991, Seminar on the Nature of and Rationale for the Protection of Plant Varieties under the UPOV Convention, Geneva, p. 20.
86 UPOV, 1991, op. cit., p. 21
87 Nevertheless, a definition was provided by the Senate Committee report accompanying the Act, as follows: ‘in order for a new variety to be distinct it must have characteristics clearly distinguishable from those of existing varieties’. See, Xxxxxxxx X., 2004, Xxxxx and Plant Breeding in an IPR-led World, 4th International Crop Science Conference Brisbane, 26 September to 1 October 2004.
sense that it might allow a person of ordinary skills and knowledge to realize the invention. This kind of disclosure was believed to be not possible for plants and living organisms in general88. Therefore, the Plant Patent Act lightened the requirement of ‘sufficient patent disclosure’.
In Europe, the first country to recognize an embryonic breeder’s right were the Netherlands through the 1941 Breeders Ordinance89. This text introduced two different kinds of exclusive breeders’ rights, depending on the classification of the varieties to protect: if the varieties were subject to mandatory cataloging90, the right concerned only the first generation of seed; in case the new variety was not subject to cataloging, an exclusive right to market the seed for 25 years was recognized to the breeder91.
The Dutch Breeders Ordinance was followed by the German Seed Law, which partially represented the background of the UPOV Convention92. The law was preceded by the draft of the Seeds and Seedlings Law, which was presented to the German Parliament in 1930. Even though the draft never became law, it contained a set of definitions of legal terms and introduced new concepts that were later adopted by the UPOV Convention, such as the requirement of distinctiveness, the need for seed testing, the issues concerning the essentially derived varieties. The German Seed Law on the Protection of Varieties and the Seeds of Cultivated Plants was adopted on 27 June 1953 and its goal was to xxxxxx the innovation in plant varieties. In order to be protected, the new plant variety had to be individualized (as meaning ‘distinct’) and stable; also, food plants should be of agronomic value. The breeder of a new plant variety had the exclusive right to produce them for the purposes of trade, to offer them for sale and to market them. The law allowed third parties to produce and market derived seed upon payment of a remuneration to the breeder; it also permitted the use of the protected variety by third parties for the creation of new ones, anticipating the so-called
88 This aspect has been interestingly highlighted by Xxxxxxx X., Xxxxxxx X., 2018, Finding a place for agriculture in intellectual property law, in IIC International Review of Intellectual Property and Competition Law, 49, 7, pp. 759-762. The authors draw attention to the idiosyncrasy of the biological material subject to intellectual property protection. With mechanical creations, it is possible to divide the intangible and tangible form of the subject matter and that is the reason why, in case of patents, it is possible to reduce the invention to a disclosure in writing.
89 Published on July 5, 1942.
90 Those varieties could be market only after being tested and officially cataloged, under a registered denomination.
91 UPOV, 1991, Seminar on the Nature of and Rationale for the Protection of Plant Varieties under the UPOV Convention, Geneva, p. 28.
92 Ibidem, pp. 26-27.
breeder’s exception. Also, the law established the compulsory use of the variety denomination in case of marketing93.
The demand for protection of breeder’s right started to gain a certain weight also at the international level in light of the growing international trade of biological material. In particular, during its congress held in Semmering, Austria, in 1956, the International Association of Plant Breeders (ASSINSEL)94 passed a motion calling for a diplomatic conference to discuss the adoption of a plant varieties protection system. The Association highlighted the necessity of an international agreement recognizing appropriate protection for new plant varieties through a sui generis system, instead of adapting utility patent rights to the biological subject matter95.
Even though the 1883 Paris Convention for the Protection of Industrial Property established that industrial property shall also apply to agricultural products96, it was considered as to include only ‘end products’, not the plant variety from which those products derived97. For example, the provision is interpreted as referring to ‘grain’ as the end product derived from the harvest, not as a new variety of cereals. Therefore, plant varieties did not seem included in the provision.
Also, breeders believed that the proprietary rights regime applicable to plant varieties should differ from the patent system in light of the idiosyncrasies of the innovation in question, which is biological material able to reproduce itself, unlike industrial inventions. Furthermore, there was the necessity to balance farmers’ and breeders’ rights. The request was accepted by the French government which, in 1957, called for an international conference on the subject. The invitations were sent to a few European countries98, on the
93 Ibidem.
94 ASSINSEL was founded in Amsterdam in 1938, to represent the request of the breeding companies for plant varieties protection. In 2002, ASSINSEL merged with the International Seed Trade Federation (FIS), forming the International Seed Federation (ISF), which combines together their two areas of expertise, i.e. plant breeding and seed trading. Source: xxxxx://xxx.xxxxxxxxx.xxx, accessed February 2019.
95 Xxxxx X., Xxxxxx X., Xxxx R., 2014, Intellectual Property Law of Plants, Oxford University Press, p. 70.
96 Article 1 (3) of the Paris Convention stated that: ‘Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers and flour’.
97 Xxxxxxxx X., Xxxxxx M, 2006, European Plant Intellectual Property, Xxxx Publishing, Oxford, p. 11.
98 The following countries were invited by France: Austria, Belgium, Denmark, Finland, Federal Republic of Germany, Italy, the Netherlands, Norway, Spain, Sweden, Switzerland, the UK. See, Blakeney X., 2004, Xxxxx and Plant Breeding in an IPR-led World, 4th International Crop Science Conference Brisbane, 26 September to 1 October 2004.
basis that they shared the same concern as France on the topic. The first session of the conference took place in Paris, in May 1957. The discussion went on for few years and conducted to the 1961 Paris Diplomatic conference, where the International Convention for the Protection of New Varieties of Plants (so-called UPOV Convention) was adopted on 1 December 196199.
3.3. Plant variety protection: the hybrid intellectual property regime
As already said, plant varieties as the subject matter of intellectual property rights have peculiar characteristics. Unlike other protectable material, plant varieties could be easily copied because of the self-replicating nature of the relevant biological material.
This is the reason why the UPOV introduced the existing concept of plant variety protection as a sui generis intellectual property system. Indeed, during the Diplomatic Conference held in 1961, it was stated that ‘des discussions précédentes, il ressort que le droit de l’obtenteur présente des particularités xxxxxx qu’il ne correspond exactement à aucun droit existant. […] Le Comité d’experts est d’accord pour reconnaitre que le droit porte sur un objet immatériel, résultat du travail du cerveau humain et qu’il entre par conséquent dans le domaine de la propriété intellectuelle’100.
The Contracting Parties agreed to create a sui generis system for plant variety protection because, as the Experts Committee highlighted, plant variety protection as an intellectual property regime does not correspond to any other existing intellectual property rights, especially to the dominant legal paradigms which protect ‘inventions’ and ‘artistic works’.
Customarily, intellectual property rights encompass two categories of rights101: 1. industrial property, as the protection of inventions and distinctive signs (it includes patents for inventions, trademarks, industrial designs, and geographical indications); 2. copyright, which covers original artistic and literary works.
99 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., op. cit., p. 3. The Convention officially came into force on August 10, 1968, following the ratifications of the U.K., Germany and the Netherlands.
100 UPOV, 1972, Actes des Conférences Internationales pour la Protection des Obtentions Végétales 1957- 1961, UPOV/PUB/316, Geneva, p. 36.
101 WIPO, 2004, What is Intellectual Property?, WIPO Publication No. 450(E), Geneva.
Briefly, patents are a form of industrial property rights that are basically granted for inventions offering a new technical solution to a problem. Patents are secured after the file of a patent application, including a detailed description of the invention. The scope of protection of the patent is assessed on the basis of that description. Conversely, copyright concerns the exclusive right of the holder to authorize or prohibit certain acts related to an artistic or literary work, such as its reproduction in all forms, i.e. the copying, hence the name copyright. Copyright is obtained automatically, without any registration or formalities. Within this framework, neither of the two traditional paradigms of intellectual property could suit plant varieties.
Plant variety protection is indeed a legal hybrid102 between patents and copyrights, with its own idiosyncrasies due to the nature of the protected biological material, which is automatically able to duplicate itself.
Similarly to patents, plant variety protection refers to an invention and, similarly to copyrights, it aims at protecting the right holder against the unauthorized copying of the protected material. However, unlike copyrights, for plant variety protection a specific application must be filed and, unlike patents, the variety description does not allow a person of ordinary skills and knowledge to realize the invention.
As a matter of fact, the biological material cannot be reduced to a disclosure in writing: for plant varieties, the intangible and tangible forms of the subject matter cannot be divided. The intangible part of the plant variety can be replicated by having access to the tangible incorporation of the invention. Therefore, when dealing with new plant varieties, both the intangible as well as the tangible biological material play a central role in intellectual property protection103.
The peculiar nature of plant variety description as compared to patent claims has also been highlighted by the Board of Appeal of the Community plant variety office, during the Case A 007/2007 (Xxxx Xxxxxxxx v. CPVO). In that occasion, the Board of Appeal stated that ‘the unique nature of the plant variety right is reflected by the fact that the emphasis is on the physical material, the plants themselves, and not on the description of the variety. In
102 Xxxxxxxx X., 1994, Legal Hybrids between the Patent and Copyright Paradigms, in Columbia Law Review, 94, 2432.
103 Xxxxxxx S., Xxxxxxx X., 2018, Finding a place for agriculture in intellectual property law, in IIC International Review of Intellectual Property and Competition Law, 49, 7, pp. 759-762.
other words, both the evaluation is to grant and also decisions relating to infringement of registered plant variety rights are also made by reference to the actual plants concerned. […] Variety descriptions of plant varieties do not have the same legal value as patent claims. Whereas the scope of protection of patents is assessed on the basis of the plant claim, the assessment of a plant variety is general conducted in a trial (technical examination and technical verifications) and not on the basis of the variety description. The variety description is nothing more than a “snapshot” of the plant variety right when that right was tested’.
In addition to the foregoing considerations, plant variety protection exclusively concerns ‘breeding achievements in the area of plant breeding’, differently from patents which may be considered as ‘technology-neutral’, 104. Not even animal breeding is included in plant variety protection: plant variety protection has been designed to be ‘technology- specific’.
Furthermore, innovation in plant varieties heavily relies on access to existing germplasm. New plant varieties cannot be created from scratch. Therefore, the relevant protection systems, unlike other IP systems, was required to ensure facilitated access to biological material. This is the purpose of the so-called ‘breeder’s exemption’ for breeding purposes, not envisaged by the patent system.
The foregoing considerations lead to the inescapable conclusion that plant variety protection clearly represents a sui generis intellectual property system, a legal hybrid between patents and copyrights that was specifically designed for plant varieties, taking into consideration their self-replicating nature and the need to maintain a robust access to existing germplasm, in order to safeguard innovation in this field.
3.4. Intellectual property rights over plants: patents vs. plant variety rights
The 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights, also referred to as TRIPs Agreement, addresses the topic of intellectual property over plants. Article 27 (3) (b) thereof states that ‘Members may also exclude from patentability: […] (b)
104 Xxxxxx X., 2012, Plant Variety Protection, in Xxxxxx Xxxxxxx et al. (ed.), The Xxx Xxxxxx Encyclopedia of European Private Law, vol. 2, Oxford University Press, Oxford, pp. 1281-1285.
plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof’.
In light of this, the Contracting States might decide to exclude, inter alia, plants as such from patentability; however, they shall recognize protection for plant varieties (1) either by a sui generis system; (2) or by a patent; (3) or by both titles. Nowadays, the most widespread sui generis system to protect the rights of the breeders on their new plant variety is the plant variety protection system provided for by the UPOV Convention.
In the European Union, the protection of plant varieties, as the biological creation of a new plant variety, rules out patent protection: patents cannot exist alongside plant variety protection for the same subject matter. This principle is enshrined in Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions, also called ‘Biotech Directive’.
Directive 98/44/EC deals with the patentability of biotechnological inventions within the EU, in particular it addresses those inventions which are (1) new, (2) involve an inventive step, and (3) are susceptible of industrial even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used. The term ‘biological material’ indicates any material containing genetic information and capable of reproducing itself. Even biological material which is isolated from its natural environment may be patentable, no matter if it previously occurred in nature.
In this context, Article 4 of Directive 98/44/EC specifically states that plant and animal varieties, as well as essentially biological processes for the production of plants or animals, shall not be patentable105. In particular, inventions which concern plants or animals are patentable, provided that the application of the invention is not technically confined to a single plant or animal variety, as specified in Recital 29 of the Biotech Directive.
105 A similar exception is present in the European Patent Convention (EPC), whose Article 53 (b) excludes plant or animal varieties from patentability, except when they are the result of microbiological processes or the products thereof. Therefore, the EPC does not provide that plant varieties are excluded from patent protection as such.
This exception is identical to the one provided by Article 92 of the Council Regulation (EC) No. 2100/94 of 27 July 1994 on Community plant variety rights, also referred to as Basic Regulation. According to Article 92, any variety which is the subject matter of a Community plant variety right shall not be the subject of any patent for that variety.
Therefore, a patent may concern the component to be implemented into plants of different varieties or species, whereas plant variety protection concerns only specific varieties106. In this sense, there may be an overlap of intellectual property rights over a certain plant: the plant variety could be protected by Community plant variety rights, while a specific component can be patented.
The possibility for those intellectual property rights to overlap has been considered by the relevant legislation. This is the reason why some significant provisions, such as the provisions on the compulsory license, have been coordinated between the Biotech Directive and the Basic Regulation.
3.5. The role of plant variety protection in fostering innovation
One may wonder why plant variety protection should have a role in fostering innovation in plant varieties. The linkage between plant variety protection and fostering innovation lies in the very nature of the plant variety rights, as intellectual property rights. As stated above, the rationale of intellectual property is to incentive the creation of new inventions and ideas: the ‘reward’, given in the form of public recognition and/or temporary monopoly on the protected material, is supposed to stimulate further innovation.
In this context, the connection between plant variety protection and innovation has also been officially underlined both by the International Union for the Protection of New Varieties of Plants and the Community Plant Variety Office.
The benefits for the society deriving from plant breeding activities have been internationally recognized only during the second half of the twentieth century. In 1961, the International Convention for the Protection of New Varieties of Plants (UPOV Convention) stated in its Article 1 that the purpose of the Convention is to ‘recognise and to ensure to the breeder of a new plant variety, or to his successor in title, a right the content and the
106 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., op. cit., p. 10.
conditions of exercise of which are defined hereinafter’. The main ambition of UPOV is to support the development of new plant varieties, for the benefit of the society, through the promotion of an effective system of plant variety protection (PVP) by granting breeders an intellectual property right, the so-called breeder’s right. The breeder’s right, which is the equivalent of the plant variety right, is an exclusive right granted to the breeder in order to protect their new plant variety. The purpose is to reward the inventor for the high investments made during the breeding activities. The breeder’s right as laid down by the UPOV Convention is going to be analyzed in the second chapter.
The UPOV believes that, other than PVR, there are other tools to encourage plant breeding, like growth in public funding, facilitated access to genetic resources, and support to public-private partnerships107. However, the focus is on the role of breeder’s right in fostering innovation because this measure is supposed to guarantee important benefits and higher economic returns, compared to other instruments.
In particular, the UPOV believes that plant variety protection is associated with:
(a) increased breeding activities,
(b) greater availability of improved varieties,
(c) increased number of new varieties,
(d) diversification of types of breeders (e.g. private breeders, researchers),
(e) increased number of foreign new varieties,
(f) encouraging the development of a new industry competitiveness on foreign markets,
and
(g) improved access to foreign plant varieties and enhanced domestic breeding
programs108.
From the list made by UPOV, it clearly appears that plant variety protection is deeply linked to innovation, in the form of increased breeding activities, greater availability of improved varieties, and increased number of plant varieties.
107 See: UPOV website, FAQ section, ‘Why is plant variety protection necessary?’, xxxx://xxx.xxxx.xxx/xxxxx/xx/xxx.xxxx#XX00
108 See: UPOV website, FAQ section, ‘What are the benefits of plant variety protection and UPOV membership?’, xxxx://xxx.xxxx.xxx/xxxxx/xx/xxx.xxxx#XX00
The same association between PVP and innovation is also displayed by the Community Plant Variety Office (CPVO)109. The CPVO is the EU agency responsible for the management of the EU Plant Variety System established by Council Regulation (EC) No. 2100/94 of 27 July 1994, which is based on the 1991 Act of the UPOV Convention. The system, which is going to be examined in the third chapter, aims at granting plant variety rights, as unitary IP rights valid throughout the European Union, for plant varieties meeting specific requirements. The mission of CPVO is ‘to deliver and promote an efficient Intellectual Property Rights system that supports the creation of new plant varieties for the benefit of Society110’.
Therefore, an efficient IPRs system for new plant varieties shall promote innovation in the plant sector and support the creation of new varieties. Indeed, the exclusive right granted to the breeder facilitates a return on investments through which further breeding activities can be funded, creating a virtuous circle of innovation.
In light of the foregoing considerations, it seems that plant variety protection has a paramount role in increasing the creation of new plant varieties.
4. Final remarks
Creating a virtuous circle of innovation in cereal varieties is necessary for the benefit of farmers, consumers, and the society in general. The role of Community plant variety protection in fostering innovation in the European Union has been generously illustrated, as well as the importance of promoting innovation in cereal varieties.
The first section of the chapter provided an overview of the research, useful to state the research problem and to highlight the significance of the research; whereas the second part introduced the key concept of plant variety protection.
Interestingly, agriculture and intellectual property have always had a tricky relationship, especially with regard to seed ‘privatization’. The risks connected to the privatization of seeds, as one of the most important agricultural inputs, fed the dominant narrative describing the plant breeding industry.
109 CPVO is taken into account for a specific reason: the chosen contest of the current research is the European Union and, specifically, the Community plant variety protection.
110 See CPVO website, Our mission, xxxx://xxxx.xxxxxx.xx/xx/xxx-xxxxxxx.
In particular, this narrative describes the breeding industry as exclusively governed by multinational enterprises, which monopolize the global seed market: those companies patent their seed-related innovations in order to prevent farmers from saving and re-using their seeds. This narrative is especially focused on the privatization of those crops highly used in agricultural production and customarily subject to the practice of farm-saving: in particular, cereal seeds.
This research does not aim at denying the existence of this phenomenon. However, it wishes to demonstrate that this narrative, when translated into the European Union agricultural framework, does not take into consideration the role of SMEs in the breeding industry, the need to xxxxxx their innovations in cereal varieties, the challenges those enterprises face both when innovating and when marketing their varieties, as well as the idiosyncrasies of Community plant variety protection in the intellectual property context such as the ‘breeder’s exemption’ and the ‘xxxxxx’x privilege’, which are going to be analyzed in the third chapter.
For the benefit of the research outcomes, it is important to frame the research in ways that are not conditioned by the dominant narrative. This is the reason why, in the current study, the Community plant variety protection is not only studied ‘in the books’ but also ‘in action’, taking into account its dialogue with the EU seed legislation governing the marketing of plant reproductive material. This approach is supposed to represent the best fit in order to offer a response to the research question that is not affected by the dominant narrative or by the initial researcher’s expectations.
CHAPTER 2
International Legal Framework of Plant Variety Protection: the UPOV Convention
SUMMARY: 1. The International Convention for the Protection of New Varieties of Plants. -
2. Definition of breeder. - 3. Definition of plant variety. - 4. Genera and species. - 5. Conditions of protection. - 5.1. The DUS requirement. - 5.2. The novelty requirement. - 5.3. The variety denomination. - 6. National treatment. - 7. Application for the grant of the breeder’s right. - 8. Scope of the breeder’s right. - 9. Restrictions. - 10. The breeder’s exemption. - 11. The xxxxxx’x privilege.
- 12. Exhaustion. - 13. Essentially derived varieties. - 14. Duration. - 15. Double protection ban. -
16. Final remarks.
1. The International Convention for the Protection of New Varieties of Plants
The 1961 International Convention for the Protection of New Varieties of Plants (so- called ‘UPOV Convention’) has been the first international agreement to introduce a legal framework for plant breeders’ rights (also called plant variety rights) and to introduce and govern the sui generis plant breeder’s protection system111 by granting inventors of a new plant variety an intellectual property right, the so-called breeder's right.
Regarding the territoriality of the breeder’s right, it is worth highlighting that the UPOV Convention does not recognize a pan-jurisdictional right valid throughout the UPOV members and enforceable by the UPOV Office, but rather a national right that is restricted to the country of the grant and that is enforceable only on a national basis112.
The UPOV Convention has established an intergovernmental organization called Union for the Protection of New Varieties of Plants, also referred to as UPOV, with headquarters in Geneva, Switzerland, that aims at promoting an effective system of plant
111 Also known as plant variety right system.
112 The only plant breeder’s right having a unitary effect, which is valid and enforceable in all the relevant Member States, is the one recognized in the European Union in accordance with the Regulation (EC) No 2100/94. Indeed, the EU system was created ‘on the simple idea of treating the whole Community for the purposes of plant breeders’ rights as if were a single Country’, see: Obst D., 1986, Developments in the Field of a ‘European Community Plant Breeders’ Rights’, Utrecht).
variety protection. XXXX plays a central role in international policy since it is the main body that addresses the issue of protecting and developing new plant varieties. Although it has been established more than 50 years ago, UPOV is still broadly criticized; in particular, its legitimacy has been frequently questioned. Concerns have been raised regarding its lack of fairness, accountability, transparency and public debate. Also, XXXX is accused of ignoring the need of developing countries and taking into account only industrial agriculture, which is a prerogative of developed countries113.
The Convention was revised in 1972, 1978 and, lastly, in 1991114, as provided for in Article 27 of the 1961 text115. The revision of 1972 did not modify substantive provisions of the Convention and, currently, nearly all the UPOV members are party either to the 1978 or to the 1991 version of the agreement. Substantial differences shall be noticed between the 1961/1978 texts and the 1991 one, since the latter version introduced some significant changes.
The Preamble to the 1961/1978 text remarks the rationale behind the adoption of the Convention, which consists in the awareness of: 1. the importance to protect new plant varieties both for the development of agriculture and for safeguarding the breeders’ interests;
2. the limitations the public interest might set to the free exercise of the breeder’s right; 3. the need for uniform and clearly defined principles. However, some uniform and clear definitions were not provided until 1991.
113 These are the reasons why some developing countries, e.g. India and Thailand, have not become UPOV members yet, opting for a sui generis national protection system. See: Xxxxxxxxx X., 2017, Plant, People and Practices. The Nature and History of the UPOV Convention, Cambridge University Press, Cambridge. The author claims the legitimacy of UPOV, also underlining the merit of the Union as follows: it recognized plant variety protection; it regularized and normalized numerous practices concerning plant varieties; it identified and defined new scientific and legal concepts such as ‘Essentially Derived Varieties (EDVs)’; it created useful databases like PLUTO (that is a compilation of data supplied by 61 UPOV members and 2 intergovernmental organizations; the data collected concerns plant breeder's rights, plant patents or national listings); it provided information and guidelines about plant denomination, for a better identification of the variety, and so on.
114 Nowadays, 75 countries are members of the of the International Union for the Protection of New Varieties of Plants. Source: xxxxx://xxx.xxxx.xxx, accessed February 2019.
115 According to article 27 (1) thereof, the UPOV Convention had to be reviewed periodically in order to improve the working of the Union.
2. Definition of breeder
In accordance with Article 1 of the 1961/1978 texts, the purpose of the Convention is to ‘recognise and to ensure to the breeder of a new plant variety or to his successor in title, a right’ under the conditions therein described. However, in the 1961/1978 versions, it is possible to notice the problematic absence of a fundamental notion: the texts did not provide a definition of the notion of breeder.
In order to understand the significance and the consequence of such lacuna, it is worth noting that the figure of the plant breeder was rapidly evolving: the traditional breeder in the field, selecting plant varieties outdoor, started to work alongside the modern breeder in the laboratory, dealing with biotechnologies. Also, the increasing events of biopiracy116 called for a clarification of whom was entitled to be recognized as the breeder of a certain variety: for example, the person who sic et simpliciter discovered a wild variety, shall be considered the breeder of that variety? Also, shall be considered as the breeder of a variety the person who identified a variety used in a specific country and simply brought it to another country, where such crop is neither used nor known? The implications of this lack in the 1961/1978 UPOV texts were numerous, and that is why this absence was ‘seen as a contributing factor’ to plant piracy117. Furthermore, a definition was necessary in terms of the relationship between the UPOV Convention and other legal instruments118.
The lacuna was filled by the 1991 Convention, which stated in its Article 1 (iv) that:
‘Breeder’ means
- the person who bred, or discovered and developed, a variety,
- the person who is the employer of the aforementioned person or who has commissioned the latter’s work, where the laws of the relevant Contracting Party so provide, or
- the successor in title of the first or second aforementioned person, as the case may
be.
116 Biopiracy is considered as the unlawful appropriation and consequent commercial exploitation of biological materials from a certain territory, without providing a fair remuneration to the entitled subjects. For further insights on biopiracy, Xxxxx X., 1998, Biopiracy: The Plunder of Nature and Knowledge, Green Books.
117 Xxxxxxxxx X., 2017, op. cit., p. 95
118 Ibidem, p. 96
This definition finally clarified that the mere discovery of an indigenous plant does not make the discoverer a breeder under the 1991 UPOV Convention: there should be a development, a human activity aimed at changing and/or improving the characteristics of the crop. Therefore, plant breeders’ rights shall not be granted to an existing variety that a person merely discovered and propagated in an unaltered manner.
Notwithstanding the progress made, the definition of breeder still has a gap. Indeed, the content of the breeding notion is nevertheless unclear: Article 1 (iv) provides a mere tautological definition of breeder as ‘the person who bred’, without specifying what the acts of breeding shall entail. The Explanatory Notes119 simply state that there is no restriction to the methods or techniques that the breeder might use to create a new variety: therefore, the act of breeding is not limited to conventional breeding techniques. Nothing more has been said on the subject.
However, the same Explanatory Notes have the merit of clarifying that the term person in Article 1 refers both to physical and legal persons and that there is no restriction on who can become a breeder: it could be, inter alia, an agronomist, a farmer, a research center, a breeding enterprise, an amateur horticulturist, et cetera. In this way, the Notes answered the question of whether a farmer might be considered a breeder under the UPOV Convention.
3. Definition of plant variety
Differently from the notion of ‘breeder’, Article 2 of the 1961 UPOV Convention provided a definition of plant variety, that is ‘any cultivar, clone, line, stock or hybrid which is capable of cultivation and which satisfies the provisions of subparagraphs (1)(c) and (d) of Article 6’, provisions that refer to the sufficient homogeneity and stability of the crop.
The definition was amended by the 1991 UPOV Convention in its Article 1 (vi), where the notion variety acquired a more specific meaning, such as:
‘a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be:
119 UPOV, 2013, Explanatory Notes on the Definition of Breeder under the 1991 Act of the UPOV Convention,
Geneva, UPOV/EXN/BRD/1, pp. 4-5.
- defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,
- distinguished from any other plant grouping by the expression of at least one of the said characteristics and
- considered as a unit with regard to its suitability for being propagated unchanged’.
The amendment was necessary to clarify the issues arisen from the former definition of plant variety: for example, the 1991 UPOV text specified that neither a single plant nor a trait shall be considered a variety. As provided for by said Article, a plant grouping within a single botanical taxon of the lowest known rank forms a plant variety, where the word taxon identifies a taxonomic unit (i.e. a unit used in biological classification) arranged in a hierarchy to classify the plant kingdom: a certain taxon includes several taxa of lower rank (e.g. a genus includes several species, a species includes several varieties).
Furthermore, from the sentence ‘irrespective of whether the conditions for the grant of a breeder’s right are fully met’ should be extrapolated that the definition of plant variety provided by the 1991 Act is broader than the notion of protectable variety. Thereby, an ancient wheat variety, which could not be covered by a PBR because of its lack of novelty, or a new variety, after the expiration of the plant breeder’s right, could be semantically put in the same ‘variety’ basket but not in the ‘protectable variety’ one.
Furthermore, even if they are not explicitly listed, the reference to the ‘combination of genotypes’ may allow hybrids in the 1991 UPOV notion of variety120. Even if there is not an internationally recognized legal definition of hybrid, hybrids might be defined as the offspring of a crossbreeding process between genetically dissimilar parents (e.g. between plant parents of different species)121.
A clear definition of plant variety was deemed to be necessary to easily define the scope of application of breeders’ right, especially in relation to patent claims over plant genetic components. The identification of what is included and what is excluded from plant breeder’s protection plays a vital role, particularly for those countries that are also Member States of the European Patent Organisation. Indeed, Article 53 (b) of the Convention on the Grant of European Patents (European Patent Convention, EPC) of 5 October 1973, deals
120 UPOV, 2010, Explanatory Notes on the Definition of Variety under the 1991 Act of the UPOV Convention, Geneva.
121 Source: xxxxx://xxx.xxxxxx.xxx/xxxxxxxx/xxxxx-xxxxxxxxxxxxx. Latest access: April 2019
with exceptions to patentability and it states the following: ‘European patents shall not be granted in respect of: […] (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof’. Consequently, it was warmly desirable to have a common definition in both fields, in order to avoid inconsistency between the UPOV system and the European patent protection. A different and inconsistent definition of plant variety could have resulted in conflicting claims over the same genetic resource, which might have been deemed patentable on the one side, and protectable with the breeder’s right on the other.
That being said, the current definition of variety provided by Article 1 (vi) of the 1991 UPOV Convention literally reproduces the Rule 26 paragraph 4 of the Implementing Regulations to the Convention on the Grant of European Patents. Therefore, for the purpose of consistency, such definition is so far undisputed.
The only discrepancy concerns the interpretation of the last condition of the plant variety definition, i.e. the ‘suitability for being propagated unchanged’. In particular, some have read in this condition a reason to not include hybrids in the notion of plant variety. Indeed, hybrids do not propagate unchanged and both the UPOV and the EPC definitions of variety - differently from the definition provided by the Regulation(EC) No 2100/94 in its Article 5 - do not explicitly make reference to ‘hybrids’. The Technical Board of Appeal of the European Patent Office argued in its decision of 07 January 2008 (Case T-0788/07) that hybrids shall not be considered plant varieties. Consequently, they are deemed to be patentable by the European Patent Office122.
4. Genera and species
Article 4 of the 1961 UPOV Convention allowed Member States to apply the Convention to all botanical genera and species based on the ‘principle of progressive implementation’, which means that the adoption of the necessary measures by UPOV
122 For further insights, see Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., pp. 33- 34 and Xxxxxxx B., 2011, Do hybrids fall within the scope of the definition of a plant variety?, Angers, available at the following website: xxxxx://xxxx.xxxxxx.xx/xxxxx/xxxxxxx/xxxxx/xxxxxxxxx/xxxxxxxx/XX_Xxxxxxx_xx_xxxxxxx_%00xxxxx_Xxxx_0000.xx f
members could be progressive, aimed at including the largest possible number of genera and species over the years.
The Contracting States of the 1961 Convention had to apply the provisions to at least five of the thirteen genera named in the list annexed to the Convention123 at the moment of the entry into force in its territory, and the number of protected species had to increase progressively.
Article 4 of the 1978 Act slightly differed from the previous version of the Convention: it eliminated the list of genera subject to compulsory protection.
Differently, Article 3 of the 1991 Convention has a less loose approach: according to it, the UPOV provision shall be applied to all plant genera and species at the latest by the expiration of a period of five years after the entry into force of the Convention in the territory of the Member State. This amendment was necessary because the progressive implementation principle left many breeders from numerous countries without any protection for their varieties. Indeed, such principle has been regarded from the very beginning as ‘one of the basic flaws of the UPOV system’ that was perpetuating ‘the existence of the so-called infringement paradise countries’124.
Therefore, the 1991 Act require Member States to put efforts into extending protection to all plant genera and species at an early stage, in order to effectively recognize plant breeder’s rights to all crops, to harmonize the plant variety protection system and to promote seed trade among UPOV members.
5. Conditions of protection
5.1. The DUS requirement
In order to be protected with PBRs, a plant variety shall comply with the following conditions: 1. novelty; 2. distinctiveness; 3. uniformity (also referred to as homogeneity); 4.
123 The annex to the Convention listed the species to be protected in each of the thirteen genera enumerated: wheat; barley; oats or rice; maize; potato; peas; beans; lucerne; red clover ryegrass; lettuce; apples; roses or carnations.
124 Statement of Xx. Xxxxx, representing CIOPORA. See, UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, UPOV/PUB/346, pp. 221-222
stability. A suitable denomination shall also designate the variety under the conditions established by the Convention125.
The requirements were already established in Article 6 of the 1961/1978 UPOV Convention126, however the 1991 text offered a specification of these notions, dedicating a
125 The need to develop a harmonized description system of new varieties is the rationale behind the numerous ‘Explanatory Notes on Variety Denominations under UPOV Convention’ adopted by the Union over the years. Source: xxx.xxxx.xxx. The main purpose of the Notes is to ensure that the designation of protected varieties is the same in all members of the Union. Therefore, the Notes are necessary for a uniform interpretation of the provisions regarding variety denominations: they will aid national authorities and breeders during the examination and selection of a suitable denominations. Variety denominations are important because they enable the identification of the variety and they should not lead to confusion on the value or the characteristics of the crop and the identity of the breeder.
126 Article 6 (1) of the 1961 UPOV text, entitled ‘Conditions Required for Protection’, provides that : ‘(1) The breeder of a new variety or his successor in title shall benefit from the protection provided for in this Convention when the following conditions are satisfied: (a) Whatever may be the origin, artificial or natural, of the initial variation from which it has resulted, the new variety must be clearly distinguishable by one or more important characteristics from any other variety whose existence is a matter of common knowledge at the time when protection is applied for. Common knowledge may be established by reference to various factors such as: cultivation or marketing already in progress, entry in an official register of varieties already made or in the course of being made, inclusion in a reference collection or precise description in a publication. A new variety may be defined and distinguished by morphological or physiological characteristics. In all cases, such characteristics must be capable of precise description and recognition. (b) The fact that a variety has been entered in trials, or has been submitted for registration or entered in an official register, shall not prejudice the breeder of such variety or his successor in title. At the time of the application for protection in a member State of the Union, the new variety must not have been offered for sale or marketed, with the agreement of the breeder or his successor in title, in the territory of that State, or for longer than four years in the territory of any other State. (c) The new variety must be sufficiently homogeneous, having regard to the particular features of its sexual reproduction or vegetative propagation. (d) The new variety must be stable in its essential characteristics, that is to say, it must remain true to its description after repeated reproduction or propagation or, where the breeder has defined a particular cycle of reproduction or multiplication, at the end of each cycle.
(e) The new variety shall be given a denomination in accordance with the provisions of Article 13’. Article 6
(1) of the 1978 UPOV Convention specified the novelty criteria referred to in subparagraph (b), as follows: ‘(b) At the date on which the application for protection in a member State of the Union is filed, the variety (i) must not—or, where the law of that State so provides, must not for longer than one year—have been offered for sale or marketed, with the agreement of the breeder, in the territory of that State, and (ii) not have been offered for sale or marketed, with the agreement of the breeder, in the territory of any other State for longer than six years in the case of vines, forest trees, fruit trees and ornamental trees, including, in each case, their rootstocks, or for longer than four years in the case of all other plants. Trials of the variety not involving offering for sale or marketing shall not affect the right to protection. The fact that the variety has become a matter of common knowledge in ways other than through offering for sale or marketing shall also not affect the right of the breeder to protection’.
specific article to each of the four conditions: Article 6 for novelty127, Article 7 for distinctness128; Article 8 for uniformity129; Article 9 for stability130.
The last three conditions are known as DUS requirements, since the new variety has to be distinct (D) on a phenotypical level from other existing and known varieties, sufficiently uniform (U) in its expressed characteristics within a population, and stable (S) after repeated propagation. These three requirements form the basis of the so-called DUS Test, an examination carried out on the basis of Article 7 of the 1961/1978 Acts and Article 12 of the 1991 text. Those Articles state that protection for new varieties is granted only after an examination showing that the variety meets the requirements set out by the Convention. In particular, the DUS Test is based on growing trial usually conducted in the field and performed by the competent national authorities aimed at investigating whether the variety complies with the DUS requirements131. The outcome of the examination is a description of the variety through its relevant characteristics132.
127 Article 6, Novelty: ‘(1) [Criteria] The variety shall be deemed to be new if, at the date of filing of the application for a breeder’s right, propagating or harvested material of the variety has not been sold or otherwise disposed of to others, by or with the consent of the breeder, for purposes of exploitation of the variety
(i) in the territory of the Contracting Party in which the application has been filed earlier than one year before that date and (ii) in a territory other than that of the Contracting Party in which the application has been filed earlier than four years or, in the case of trees or of vines, earlier than six years before the said date. (2) [Varieties of recent creation] Where a Contracting Party applies this Convention to a plant genus or species to which it did not previously apply this Convention or an earlier Act, it may consider a variety of recent creation existing at the date of such extension of protection to satisfy the condition of novelty defined in paragraph (1) even where the sale or disposal to others described in that paragraph took place earlier than the time limits defined in that paragraph. (3) [“Territory” in certain cases] For the purposes of paragraph (1), all the Contracting Parties which are member States of one and the same intergovernmental organization may act jointly, where the regulations of that organization so require, to assimilate acts done on the territories of the States members of that organization to acts done on their own territories and, should they do so, shall notify the Secretary-General accordingly’.
128 Article 7, Distinctness: ‘The variety shall be deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the filing of the application. In particular, the filing of an application for the granting of a breeder’s right or for the entering of another variety in an official register of varieties, in any country, shall be deemed to render that other variety a matter of common knowledge from the date of the application, provided that the application leads to the granting of a breeder’s right or to the entering of the said other variety in the official register of varieties, as the case may be’.
129 Article 8, Uniformity: ‘The variety shall be deemed to be uniform if, subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics’.
130 Article 9, Stability: ‘The variety shall be deemed to be stable if its relevant characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle’.
131 UPOV, 2002, General Introduction to the Examination of Distinctness, Uniformity and Stability and the Development of Harmonized Descriptions of New Varieties of Plants, Geneva.
132 By way of illustration: plant height, leaf shape, time of flowering.
One of the most important documents adopted by UPOV concerning the DUS testing is the General Introduction to the Examination of Distinctness, Uniformity and Stability and the Development of Harmonized Descriptions of New Varieties of Plants133, which identifies the principles to use in the DUS examination in order to conduct an harmonized procedure throughout the UPOV members. The purpose is to facilitate cooperation among Contracting parties and to provide effective protection for new plant varieties.
Over the years, the Union has provided more than 300 documents specifying Test Guidelines Procedures (so-called TGP documents)134, associated with the General Introduction. These guidelines for the examination of the DUS criteria are prepared for each relevant species135 and sorted by botanical name136. The mission of the documents is to set out the principles used in the examination of the DUS conditions. The documents are supposed to be a practical guidance for the harmonized examination of individual species or variety grouping by members of the Union.
These documents do not contain binding obligations for Members, unlike the text of the UPOV Convention, so they shall be interpreted consistently with the relevant Act of the Convention adopted by each Contracting Party.
5.2. The novelty requirement
The fourth requirement, i.e. the novelty, which could not be examined through growing test, unlike the DUS requirement, introduced a limited period of grace in which time a candidate variety might be marketed by or with the consent of the breeder in order to evaluate its performance before applying for a Community PVR.
The novelty requirement had an interesting evolution over the years: according to 1961 UPOV Act, a variety is deemed to be new under the Convention whether, at the date of the
133 UPOV, 2002, General Introduction to the Examination of Distinctness, Uniformity and Stability and the Development of Harmonized Descriptions of New Varieties of Plants, TG/1/3, Geneva.
134 The Test Guidelines are prepared by the relevant Technical Working Party, working in the field of each specific species. The draft made by the Technical Working Party is sent to the appropriate international professional organizations for the species concerned. On the basis of the comments and observations received, the Technical Working Party finalizes the draft and presents it to the UPOV Technical Committee for the final adoption and publication.
135 Although, in some cases, the Test Guidelines are covering a wider or narrower grouping of varieties.
136 Source: UPOV website, xxx.xxxx.xxx. Last access: February 2019
application, such variety has not yet been marketed or offered for sale with the consent of the breeder in the territory of the State where the application is submitted or it has been marketed/offered for sale for no longer than four years in the territory of any other State. Then, the 1978 UPOV version allowed the market or offer for sale for no longer than one year in the State where the application is presented, at the time of the filing. In case of another State, the market or the offer for sale should have taken place for no longer than six years in the case of vines, forest trees, fruit trees and ornamental trees, or for no longer than four years in the case of the other species. Also, according to the 1978 Act, the right of the breeder is not affected where the variety has become a matter of common knowledge through means different from offering for sale or marketing.
However, these definitions left room for several misinterpretations. The problems concerned: the effect of the the disposals other than sale and offer for sale on the novelty requirement; the reference to the propagating or to the harvested material, or even to both; the relevance of the purpose of the sale (e.g. in case of breeding purposes). These doubts were put to rest by the 1991 Convention, which unambiguously articulated the novelty requirement by making explicit reference to either propagating or harvested material of the variety that has not been sold or otherwise disposed to others for exploitation purposes, by or with the consent of the breeder for the same period of time indicated in the 1978 Act.
In this context, ‘exploitation’ means ‘commercial exploitation’, so acts done for non- commercial purposes do not jeopardize the novelty requirement of the candidate variety.
It is worth highlighting that in plant variety protection there is a significant difference between the notion of distinctness and the notion of novelty, unlike other IP laws. As underlined by Xxx Xxx Xxxxx, in plant variety protection distinctness deals with the comparison among varieties, whereas novelty concerns the marketing of the variety before the date of application for plant breeders’ rights. Contrarily, the notion of new in patent law has a meaning similar to distinct in plant variety protection.137
137 Xxx Xxx Xxxxx P.,1997, Introduction to the EC Regulation on Plant Variety Protection, Kluwer Law International, p. 15.
5.3. The variety denomination
A condition of notable importance for the grant of plant variety protection is the appropriate denomination of the new variety for identification purposes. The variety denomination should be suitable as generic designation and should allow the identification of the variety, without misleading or causing confusion about the characteristics, value or identity of the new variety or the identity of the breeder (Article 13 of the 1961/1978 Act and Article 20 of the 1991 Act).
The denomination shall not consist solely of figures, such as a denomination containing numbers only, except where this is an established practice for designating varieties, e.g. for particular variety types - like hybrids - or for particular varieties used by a limited number of specialists.
According to the UPOV provisions, there exists an obligation to use the denomination: indeed, the use of the variety naming is mandatory for any person who markets propagating material of the protected variety, even after the expiration of the breeder’s right. The UPOV Member States should ensure that the free use of the denomination in connection with the variety is not hindered by other rights, even when the protection expires.
Therefore, the plant naming submitted by the breeder should differ from others denomination used to identify existing varieties of the same or a closely related botanical species, in any of the UPOV Member States, and shall not affect prior rights of third parties. Whether the proposed denomination does not satisfy such requirements, the national authority for the protection of new varieties of plants shall refuse to grant the right and shall require the breeder to propose another suitable denomination within a given period of time. It is important to underline that, when applying for protection of a specific variety in different Member States of the Union, the breeder shall use the same denomination in all Contracting Parties. Moreover, the denomination shall be registered at the same time when the breeder’s
right is granted.
The last paragraph of Article 13 in the 1978 Act and Article 20 of the 1991 Act concern the relationship between variety denomination and trademark: according to it, it is allowed ‘to associate a trademark, a trade name or other similar indication with a registered variety denomination’. With reference to the use of trademarks, it is extremely interesting to observe
what Xxx Xxx Xxxxx noticed138: in some plant catalogues is it possible to find the trademark symbol after variety denominations. However, this symbol is often wrongly used. Some companies mistakenly add the trademark symbol after the plant naming not to indicate that such plant name has been registered as trademark, but to imply that the relevant plant variety is protected by a breeder’s right. In light of this, the author suggested that a specific symbol for PBRs shall be introduced at the international level, in order to easily indicate whether a variety is protected by plant breeder’s right or not139.
The importance of giving a suitable variety denomination has been emphasized by UPOV, especially through its Explanatory Notes aimed at ensuring uniform interpretation and application by all Member States of the ‘broadly worded provisions’140 set up in the Convention, an explanation that could assist both national authorities and breeders during the naming process and in their choice of variety denominations141. Indeed, UPOV normalized relevant concepts and established an effective system of plant naming at the international level, embraced by scientists, lawyers, and plant breeders142.
The implementation of such system has been also supported by the creation of databases by UPOV, e.g. the PLUTO database. This plant variety database, whose name stands for PLant varieties in the Upov system: The Omnibus, collects the data supplied by the competent national authorities of the Members of the Union and by the intergovernmental Organization for Economic Cooperation and Development (OECD) regarding plant breeder's rights, plant patents and national listing143. As regards variety denomination, one of the main aspects of the PLUTO database is to provide information on plant naming denominations, to analyze variety denomination and to permit denomination search for similarity.
138 Van Der Kooij P., 2002, Defending PBR: P, B, or R?, in European Intellectual Property Review, 24, 1.
139 The author suggests the adoption of the letter B notice.
140 UPOV, 2012, Explanatory Notes on Variety Denominations under the UPOV Convention, Geneva, UPOV/INF/12/4, p. 2.
141 Sets of rules aimed at governing at an international level the denomination of plants have also been provided by groups of botanists and taxonomists, e.g. through the International Code of Botanical Nomenclature in 1867 and the International Code of Nomenclature for Cultivated Plants in 1953. However, this Codes are not legally binding and they have been open to ‘disregard and misuse by plant breeders, traders and marketers’. See, Xxxxxxxxx X., 2017, Plant, People and Practices. The Nature and History of the UPOV Convention, Cambridge University Press, Cambridge, p. 72.
142 Xxxxxxxxx X., 2017, Plant, People and Practices. The Nature and History of the UPOV Convention, Cambridge University Press, Cambridge, p. 73.
143 According to the UPOV website, nowadays data from over 800,000 documents is available in the PLUTO search system. Source: xxxxx://xxx.xxxx.xxx/xxxxx/xxxx/xxxxxxx.xxx
In conclusion, it goes without saying that the effort of the UPOV on such aspect clearly underlines the importance of an appropriate variety denomination for plant variety protection and, therefore, this requirement shall not be overlooked by breeders during the application process, since the lack of this requirement might lead national authorities to decline the registration of the relevant plant variety.
6. National treatment
The UPOV Convention, in whichever version considered, explicitly recognizes the principle of national treatment, respectively in Article 3 of the 1961/1978 Acts and Article 4 of the 1991 version. National Treatment is considered to be a basic principle of the UPOV system, whereby nationals and residents of a Member of the Union shall get the same treatment accorded to the nationals of all other Members of the Union144. Therefore, the Union Contracting Parties are required to draft a provision on national treatment in their laws in accordance with the UPOV Convention. However, a specific national treatment provision is not necessary when the national law does not restrict the protection for new varieties on the basis of the nationality145 of the applicant146.
7. Application for the grant of the breeder’s right
Pursuant to Article 11 (1) of the 1961 UPOV Convention, the breeder has the right to freely choose the UPOV Member State where to file the first application for the protection of their new variety. The second paragraph of the Article stipulates that, in order to apply in other Contracting Parties of the Union for subsequent applications, the breeder may not wait for the grant of PBR by the State where they made the first application. This provision is
144 Specifically, according to the 1991 UPOV Convention: ‘nationals of a Contracting Party as well as natural and legal persons resident and legal entities having their registered offices within the territory of a Contracting Party shall, insofar as the grant and protection of breeders’ rights are concerned, enjoy within the territory of each other Contracting Party the same treatment as is accorded or may hereafter be accorded by the laws of each such other Contracting Party to its own nationals, provided that the said nationals, natural persons or legal entities comply with the conditions and formalities imposed on the nationals of the said other Contracting Party’.
145 Also interpreted as place of residence of natural persons or place of registered offices for legal entities.
146 UPOV, 2009, Explanatory Notes on National Treatment under the 1991 Act of the UPOV Convention,
Geneva.
connected to the principle of independence of protection, laid down in the last paragraph of Article 11, according to which the protection granted in the different UPOV Member States shall be independent of the protection obtained for the same variety in other countries, whether such countries are UPOV members or not. It follows that a Member State shall not refuse or limit protection for a new plant variety on the basis that another State has not granted a PBR for the same variety or the title has therein expired. The same provisions might be found in Article 10147 of the 1991 Act of the UPOV Convention, entitled Filing of Application.
The moment when an application is filed is significant for the exercise of the right of priority recognized to the applicant. Indeed, according to Article 12 (1) of the 1961 UPOV Convention and Article 11 (1) of the 1991 UPOV Convention, from the date of filing the first application in one of the UPOV Member States, the breeder enjoys a right of priority for a period of twelve months for the purposes of filing in the other Contracting parties of the Union. The Article makes reference to the act of duly filing, therefore it might be assumed that the period shall run from the date when a valid application has been filed.
The 1991 Act included a specific provision regulating the examination of the application, i.e. Article 12, which stipulates that the breeder may be required to provide all the necessary documents or material and that, during the examination for compliance with the conditions of protection, the relevant authority might grow the variety or carry out other text or also take into account the results of other trials already performed.
8. Scope of the breeder’s right
Regarding the scope of protection of the breeder’s right, the UPOV texts had a noteworthy evolution over the years. Under the 1961/1978 Act, the acts that shall require the prior authorization of the breeder were the following: 1. production for purposes of
147 The cited Article states the following: ‘(1) [Place of first application] The breeder may choose the Contracting Party with whose authority he wishes to file his first application for a breeder’s right. (2) [Time of subsequent applications] The breeder may apply to the authorities of other Contracting Parties for the grant of breeders’ rights without waiting for the grant to him of a breeder’s right by the authority of the Contracting Party with which the first application was filed. (3) [Independence of protection] No Contracting Party shall refuse to grant a breeder’s right or limit its duration on the ground that protection for the same variety has not been applied for, has been refused or has expired in any other State or intergovernmental organization’.
commercial marketing, 2. offering for sale, and 3. marketing of the reproductive or vegetative propagating material.
Under the 1991 Act, the list of acts requiring the prior authorization of the breeder was extended and, also, a specification was made regarding the category of material concerned: according to Article 14, for propagating material of the protected variety the prior authorization was required for the following acts: 1. production or reproduction (multiplication); 2. conditioning for the purpose of propagation; 3. offering for sale; 4. selling or other marketing; 5. exporting; 6. importing; 7. stocking for any of the purposes abovementioned148. For harvested material, the said acts shall require the authorization of the breeder only when such material was obtained by means of unauthorized use of propagating material of the protected variety and unless the breeder had a reasonable opportunity149 to exercise their right in relation to the said propagating material. Unlike the 1961 Act, the 1991 Convention does not limit the scope of protection to propagating material and to commercial marketing, thereby granting broader protection to the plant varieties rights holder.
The extension of the scope of protection beyond the propagating material of the new plant variety is known as cascade principle150. However, this principle does not have an absolute extent since it is limited by the reasonable opportunity to exercise the breeder’s right at an earlier stage, over the propagating material, by the owner of the protected variety. Therefore, in case the breeder had the chance to exercise their right over the propagating material but they decided not to, they is no longer entitled to it on the relevant harvested material.
Nevertheless, the 1991 Convention does not provide a definition of harvested material: a clue could be extrapolated by Article 14 of the 1991 Act when stating ‘[..] harvested
148 Without prejudice to the possibility for each Contracting Party to include additional acts, as provided for in Article 14 (4) of the 1991 Act.
149 Concerns have been raised regarding the interpretation of “’reasonable opportunity’, since no definition is provided by the UPOV Convention. The concerns regard the degree of uncertainty of this legal concept, which could increase the number of legal disputes. For further insights on the notion of ‘reasonable opportunity’, see: Xxxxxxxxx J., 2017, op. cit., pp. 183 - 204. The author cited the ‘Xxxxxxx’ case and the relevant German Federal Supreme Court decision (14.2.2006, X ZR 93/04) which addressed the interpretation of ‘reasonable opportunity’. The case concerned a plant variety, protected in Germany, which was unlawfully reproduced in a third country where the same plant variety protection was not recognized. Later, the variety was brought back to Germany as harvested material. The German Supreme Court stated that in this case the breeder did not have a reasonable opportunity to exercise their right at an earlier stage, over the reproductive material.
150 Xxxxxxxxx X., 2017, op. cit., p. 193. The cascading principle was opposed by the U.S.
material, including entire plants and parts of plants’ thereby denoting that the definition of harvested material is embracing both entire plants and parts of plants, meaning that at least some forms of harvested material could be potentially used for propagating purposes151.
When harvested material is used for propagating purposes, a question arises on how it should it be considered. In order to avoid an overlapping of notions between harvested material and propagating material, the emphasis should be on the purpose, the destination underlying the use and commercialization of the material: when reproductive purposes are not concerned, it shall be considered harvested material. Therefore, its use and commercialization shall not require the authorization of the breeder when it has been lawfully obtained from propagating material of the protected variety.
According to the cascade principle, the 1991 Act also recognized the possibility for Contracting Parties to extend the scope of protection of the breeder’s right to products made directly from harvested material of the protected variety, through the unauthorized use of the said harvested material, unless the breeder has had reasonable opportunity to exercise their right in relation at an earlier stage, i.e. to the said harvested material. Such possible extension has been questioned during the Diplomatic Conference for the revision of the UPOV Convention152: concerns have been raised about the excessive broadening of the breeder’s right and the extreme complexity to exercise this right in practice.
Reference is made to the burden of proof and the related difficulties to bring evidence that a protected variety formed the basis of the product concerned. In particular, the Polish delegation highlighted that the identification of the material would be likely impossible since most of the varietal differences tend to disappear during the industrial processing153. Differently, the Dutch delegation believed that such provision was necessary for complete protection for the breeder’s right, even if evidence could be brought only in a limited number of cases. For the Swedish delegation, there was also a defining issue about the notion of products made directly from harvested material had a certain degree of uncertainty154. In light of those concerns, the Conference decided to adopt a facultative provision.
151 UPOV, 2013, Explanatory Notes on Acts in respect of Harvested Material under the 1991 Act of the UPOV Convention, Geneva.
152 UPOV, 1992, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, UPOV Publication No. 346 (E), Geneva.
153 Ibidem, p. 406.
154 Ibidem, p. 407.
9. Restrictions
A limitation to the exercise of the breeder’s right is set up by the UPOV Convention and it concerns the emblematic public interest restriction, according to which the public interest is the only interest that could prevail over the breeder’s right to enjoy the exclusivity of the plant variety protection.
Pursuant to Article 9 of the 1961/1978 Acts and Article 17 of the 1991 Act, the exercise of the right of the owner of the protected plant variety could be restricted by Contracting Parties only for reasons of public interest. A definition of ‘public interest’ is not provided by the Convention, ergo it is possible that each member of the Union would give the criterion a different meaning.
In this case, a third party is authorized by means of a compulsory license to perform those acts for which the owner’s authorization is required. However, according to paragraph 2 of the abovementioned Articles, the compulsory license shall not be granted for free: an equitable remuneration shall be ensured to the right holder by the Contracting party.
10. The breeder's exemption
In addition to securing the breeder’s right, the UPOV Convention emphasized the importance of stimulating innovation in breeding through unrestricted access to protected varieties for the development of new ones. This provision is known as breeder’s exemption or as principle of independence155, and it is considered to be a cornerstone in the plant variety protection system156, representing one of the main divergences between PBRs and patents. The principle of independence contrasts with the patent rights system principle of dependence, according to which a patent is dependent to another patent where the latter has been used for the development of the former. In the case of plant varieties, the UPOV Members unanimously decided to opt for the ‘independent status’ of new plant varieties,
155 Xxx Xxx Xxxxx P.,1997, Introduction to the EC Regulation on Plant Variety Protection, Kluwer Law International, p. 39.
156 International Seed Federation, 2012, ISF View on Intellectual Property, Rio de Janeiro, available at xxxxx://xxx.xxxxxxxxx.xxx/xx-xxxxxxx/xxxxxxx/0000/00/Xxxx_xx_Xxxxxxxxxxxx_Xxxxxxxx_0000.xxx
meaning that a new variety is not considered dependent from all the varieties used during the breeding activities. This principle relies on the intrinsic nature of breeding: new plant varieties cannot be created from scratch, they are the product of recombination of genes from existing varieties157. The different scope of these rights is one of the reasons why patents rights are perceived as stronger and less flexible than breeders’ rights158.
The relevance of the breeder’s exemption for the plant variety protection system shall be extrapolated by the circumstance that it was already established by the 1961 Act. Pursuant to Article 5 of the 1961 Convention, the authorization by the breeder was not needed either for the ‘utilization of the new variety as an initial source of variation for the purpose of creating other new varieties or for the marketing of such varieties’. In the 1991 Act, the exceptions to breeder’s rights are laid down in Article 15. In particular, the breeder’s exception is specified in Article 15 (1) (iii) which provides an exemption for ‘acts done for the purpose of breeding other varieties’ and for the commercialization of the new varieties obtained, except where the provisions of Article 14 (5) apply, i.e. to essentially derived varieties (EDVs).
In addition to the breeder’s exemption, Article 15 (1) established that the breeder’s right shall not extend as well to ‘(i) acts done privately and for non-commercial purposes’ and ‘(ii) acts done for experimental purposes’. Therefore, the production or reproduction of propagating or harvested material of the protected variety for, e.g., (i) private gardening and
(ii) scientific research led by a university, are considered non-infringing activities.
In conclusion, the highly remarkable value of the breeder’s exemption has to be underlined: it represents a fundamental and distinctive aspect of the UPOV system and the plant variety protection system in general, neglected by the patent system, which explicitly recognizes the need for breeders to rely on the latest crop improvements and the importance of access to new varieties for the development therefrom and for carrying on innovation in the breeding sector, for the benefit of the society.
Some years ago, a seed association has argued that the current scope of the breeder’s exemption is too liberal: an initial predetermined period of exclusivity, where the exemption is not available, should be recognized to plant variety owners in order to permit a return on
157 Ibidem.
158 Xxxxxx V., 2015, The Breeder’s Exception to Patent Rights. Analysis of Compliance with Article 30 of the TRIPs Agreement, Springer International Publishing, p. 63.
investment159. However, such suggestion has not gained relevant support so far: perhaps, the unrestricted access to protected plant varieties by other breeders is perceived by plant variety owners neither as a threat to their breeder’s right nor an obstacle to further innovation.
11. The xxxxxx'x privilege
Although the 1961/1978 Acts of the UPOV Convention recognized the breeder’s exemption, they did not explicitly state anything regarding the possibility to exclude the act of seed saving from the scope of the breeder’s right: only the 1991 Act took into consideration the traditional farmers’ practice of saving harvested material for further propagation (farm-saved seed or FSS).
An optional exception has been provided by Article 15 (2) of the 1991 UPOV Convention, which allows Contracting Parties to ‘restrict the breeder’s right in relation to any variety in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety’. This provision laid down the so-called xxxxxx’x privilege. The reference is explicitly made to the use for ‘propagating purposes’ and ‘on their own holdings’, meaning that the members of the Union shall not extend this provision neither to the act of seed saving for commercial purposes nor the act of transferring the saved seeds to other farmers160. Indeed, the States have the duty to reasonably limit the xxxxxx’x privilege and to safeguard the legitimate interests of the breeders.
In light of this, it is not surprising that the Diplomatic Conference indicated that such provision should be optional: this exemption has never been regarded as a fundamental aspect of the UPOV system161. Specifically, during the Diplomatic Conference that led to the 1991 Act, while discussing about the xxxxxx’x privilege, the Dutch Delegation underlined that ‘the main goal of the revision of the UPOV Convention was to strengthen the position of the breeder in relation to varieties developed by him and protected under the plant
159 Xxxxx X., Xxxxxx X., Xxxx R., 2014, Intellectual Property Law of Plants, Oxford University Press, p. 86. The authors cited the position paper of the American Seed Trade Association on Intellectual Property Rights for the Seed Industry.
160 World Intellectual Property Organization, 2017, Introduction to Intellectual Property. Theory and Practice. Second Edition, Kluwer Law International, pp. 261-262.
161 Xxxxx X., Xxxxxx X., Xxxx R., 2014, op. cit., p. 86.
breeders' rights system’162. Nevertheless, such delegation also highlighted that the xxxxxx’x privilege had been already recognized in numerous States and this process was ‘probably not reversible’163: the inescapable consequence had to be the coexistence between the practice of farm-saving seeds and the breeders’ rights.
A limitation to the FSS practice was deemed necessary because farmers are the first buyers and users of protected plant varieties and an excessive extension of the xxxxxx’x privilege could lead to inadequate protection of the breeder’s right. The solution proposed relies on the payment to the breeder of an equitable remuneration by the farmer using such privilege. However, this aspect represented a vexed question that could not reach the consensus among the Member States: therefore, the Diplomatic Conference chose to leave the decision on the equitable remuneration on each Member of the Union. Thus, each State has the possibility to decide whether a payment is due to the breeder by the farmer who is saving and reusing the harvested material of a protected variety, according to the obligation to safeguard the legitimate interests of the breeder, pursuant to Article 15 (2).
Furthermore, for the purpose of this research, it is interesting to notice that, according to the Dutch and French Delegations, this exception should be limited to those crops that have been traditionally subjected to such practice, meaning self-pollinating plants i.e. cereals and especially small-grained cereals. However, the Diplomatic Conference faced some difficulties in specifying a numerus clausus list of species in an international Convention164, so it left the choice to the Contracting Parties.
12. Exhaustion
The principle of exhaustion of intellectual property rights was first developed in German patent law around the beginning of the XX century165. According to the exhaustion doctrine (also called first sale doctrine), when a protected good is marketed for the first time
162 UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, p. 352.
163 Ibidem.
164 Issue underlined by the UK Delegation. See, UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, p. 353.
165 The relevant theory of the Zusammenhang der Benutzungsarten”was formulated by Xxxxxx Xxxxxx. See, Schovsbo X., 2012, Exhaustion of Rights and Common Principles of European Intellectual Property Law, in Xxxx A., Common Principles of European Intellectual Property Law, Xxxx Xxxxxxx, Tübingen, pp. 169-188.
by the right owner or with their consent, they loses the right to control the subsequent circulation of the relevant good. That means that the holder of the IP right loses the resale right on that specific item: ergo, their rights are exhausted.
The rationale of the exhaustion principle lies in the necessity to limit the distribution right of the IPR holder and to avoid that an unending control over the distribution of the protected goods might affect commercial relations and free movement of goods. The exclusive right of the IPR owner concerns the exploitation of the intangible good, not the physical item incorporating it, which could be re-marketed after the legitimate first sale.
The principle of exhaustion is common to intellectual property law and it applies also to breeders’ rights. In this case, the purpose of the rule of exhaustion is to ensure that the breeder’s right holder can exercise their right and be remunerated in the first propagation stage. Also, exhaustion in plant variety protection aims at guaranteeing the right of the breeder to forbid further or unauthorized propagation of the protected variety166.
The right to prohibit further propagation required for an adaptation of the principle of exhaustion from the patent law paradigm to the plant variety protection one. Indeed, exhaustion doctrine in patent law ‘protects the purchaser from interference in the use of the purchased patented item and in its disposition or sale’167, whereas in plant variety protection it is necessary to take into consideration that the protected organisms are automatically able to duplicate themselves, so a limited interference might be allowed in order to protect the right holder.
In light of the above, the 1991 Act provided for a specific provision concerning the exhaustion of the breeder’s right, i.e. Article 16 (1) and (2) which states that:
166 The role of the exhaustion doctrine in avoiding the further and unauthorized propagation of protected plant material has been addressed by the Supreme Court of the United States in the well-known Monsanto x. Xxxxxx judgment. In this patent infringement case, occurred in 2013 and filed by Monsanto against Xxxxxx, the Court stated that a purchaser of a patented crop might resell the patented material, consume it himself or use it to feed their animals, but there is a limit. The Supreme Court held that: ‘the exhaustion doctrine does not enable Xxxxxx to make additional patented soybeans without Monsanto’s permission’. In other words, even if the patented material is naturally able to replicate itself, the purchaser does not have the right to use such copies. In case an unauthorized replication occurs, the right of the holder is deemed to be not exhausted. For further insights see: Xxxxxxxx X., 2016, Agricultural Innovation: Patenting and Plant Variety Rights Protection, in Xxxxxx X. and Xxxxx X. (eds.), International Food Law and Policy, Springer International Publishing, pp. 149-
150. See also: Xxx X., 2014, The Exhaustion Doctrine and Genetic Use Restriction Technologies: A Look at Xxxxxx v Monsanto, in The Journal of World Intellectual Property, 17, 5-6.
167 Chamber S., 1995, Exhaustion Doctrine in Biotechnology, in IDEA: The Journal of Law and Technology, 35.
‘(1) [Exhaustion of right] The breeder’s right shall not extend to acts concerning any material of the protected variety, or of a variety covered by the provisions of Article 14(5), which has been sold or otherwise marketed by the breeder or with his consent in the territory of the Contracting Party concerned, or any material derived from the said material, unless such acts (i) involve further propagation of the variety in question or (ii) involve an export of material of the variety, which enables the propagation of the variety, into a country which does not protect varieties of the plant genus or species to which the variety belongs, except where the exported material is for final consumption purposes.
(2) [Meaning of ‘material’] For the purposes of paragraph (1), ‘material’ means, in relation to a variety, (i) propagating material of any kind, (ii) harvested material, including entire plants and parts of plants, and (iii) any product made directly from the harvested material’.
The wording of the Article 6 (1) (i) clarifies that the use of any material of the protected variety, put on the market by the breeder or with their consent and subject to further propagating activities, do not exhaust the exercise of their right.
It is interesting to underline that Article 16 (2) put semantically in the same basket propagating material, harvester material and products made directly from the last one. Therefore, no matter in what form the protected variety was set on the market: the use of any material involving further propagation, does not exhaust the breeder’s right.
By way of illustration, when a farmer buys seeds of a protected variety and those seeds produce harvest which is further propagated to produce new seed, the breeder’s right is not exhausted. According to Article 14 (1), the farmer needs the authorization of the breeder, that could be subject to conditions and limitations, such as receiving an adequate remuneration (i.e. royalties), for the further propagation of the protected cereal variety performed by the farmer. Also, this provision applies in case seeds of a protected variety, which are sold as groceries, are used for propagating purposes: in this event, the breeder’s right does not exhaust as well. Consequently, it seems clear that the breeders’ rights shall not apply to acts performed for consumption purposes.
The reference to the further propagation is made necessary by the very nature of plant varieties, which are self-replicating and could effortlessly be reproduced, contrary to other material covered by intellectual property rights: therefore, exhaustion should be limited to acts that do not involve a further production of seed. Indeed, the acts of ‘production or
reproduction’ of new seed of a protected variety, when they are not covered by Article 15 on the exceptions to the breeder’s right, fall under Article 14 (1) (a) and shall require the authorization of the breeder.
13. Essentially derived varieties
Another key concept introduced by the 1991 Act concerns the limited protection accorded for the so-called essentially derived varieties (EDVs). The urgency to address such issue was related to the complaints advanced about cosmetic breeding activities168, i.e. the creation of a plant variety derived from a protected one, characterized by small and insignificant differences therefrom.
The marketing of such altered variety, in competition with the protected one, could be carried on without the possibility for the breeder of the protected variety to claim for liability. The problem arose because in the 1961/1978 UPOV Acts there was a loophole that allowed cosmetic breeding activities, whereas it allowed the initial use of the protected variety for breeding purposes and, at the same time, it limited the protection for infringing acts exclusively to the specific protected variety. Therefore, the development and marketing of a trivially different variety were not explicitly forbidden.
However, the UPOV system is supposed to stimulate breeders to seek protection for varieties that are not a trivial accomplishment in light of the existing protected ones169. That is rooted in the very nature of intellectual property rights because ‘if the goal of intellectual property law is to encourage costly innovation that might not otherwise occur, its scope should be limited to inventions that require some significant effort’170.
In light of this, it was necessary to strengthen the scope of protection of the breeder’s right to discourage the production of those varieties that are only slightly altered from protected ones. This issue had an impact also on the general principle of independence,
168 The notion of ‘cosmetic plant breedin’g deals with plagiaristic practices aimed at marketing plant varieties that do not constitute proper innovations since they are characterized by irrelevant changes from the protected variety. For further insights, Leskien D., Xxxxxxx X., 1997, Intellectual Property Rights and Plant Genetic Resources: Options for a Sui Generis System, in International Plant Genetic Resources Institute, Issues in Genetic Resources, 6, Rome, p. 60.
169 Xxxxx X., Xxxxxx X., Xxxx R., 2014, op. cit., p. 71.
170 Xxxxxxxxx X., Xxxxxxxx E., 2012, An Introduction to Property Theory, Cambridge University Press, p. 186.
typical of the plant variety protection system: an exception to such principle for essentially derived varieties was introduced. So, in the 1991 Act a principle of limited dependence was introduced for EDVs and exclusively for them. This principle was applied to establish a relationship among initial varieties and derived ones, for the purpose of discouraging plagiarism171.
Even though there was who believed that the EDVs concept was related to exceptions to the breeder's exemption, the notion of essentially derived variety was included in Article 14, dealing with the scope of the rights granted to the breeder. The reason of this choice lies in the what has been considered the cornerstone of the UPOV Convention, i.e. the free access to genetic variability: the concept of EDVs was primarily contemplated as an underpinning to the breeder’s right, not as a limit to such access172.
Consequently, pursuant to Article 14 (5) (a) of the 1991 Act, the provisions of Article 14, paragraphs (1) to (4) shall apply as well in relation to: ‘(i) varieties which are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety; (ii) varieties which are not clearly distinguishable in accordance with Article 7 from the protected variety and (iii) varieties whose production requires the repeated use of the protected variety’. This provision establishes the abovementioned principle of limited dependence for essentially derived varieties, which only exists whenever the breeder’s right has been granted on the initial variety and the initial variety is not itself an essentially derived variety. Basically, dependence can only exist from a protected initial variety.173
During the Diplomatic Conference, the Japanese delegation underlined the importance to lay down, alongside the dependence principle, some common criteria to identify the essentially derived varieties: it was utterly necessary to set a demarcation line between what had to be considered an EDV and what was not, by means of internationally harmonized
171 See, International Seed Federation, 2012, ISF View on Intellectual Property, Rio de Janeiro, where the ISF stated that the introduction of the EDVs concept has drastically reduced plagiarism in plant breeding ‘because all plagiaristic varieties fall under the EDV principle’.
172 UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, p. 339. Also, the International Seed Federation stated in its 2012 View on Intellectual Property that the EDVs concept does not restrict the breeders’ exception.
173 International Seed Federation, 2012, op. cit., p. 22.
rules174. Paragraph (b) of Article 14 (5) addressed this concern, specifying that: ‘For the purposes of subparagraph (a)(i), a variety shall be deemed to be essentially derived from another variety (‘the initial variety’) when (i) it is predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety; (ii) it is clearly distinguishable from the initial variety and (iii) except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety’.
Basically, in relation to an initial variety, the EDV is described by the following three technical aspects: 1. predominant derivation from an initial variety; 2. distinctness and 3. conformity in the expression of the essential characteristics resulting from the genotype. The requirement of predominant derivation denotes that there should not be more than one initial variety. Instead, while distinctness measures the existence of the difference, conformity measures the extent of such difference175. The UPOV Convention does not specify, in case of dispute, who should prove the predominant derivation of the EDV. However, it surely is more challenging for the breeder of the initial variety to be able to demonstrate such a requirement. Therefore, the International Seed Federation suggested that the burden of proof regarding the predominant derivation should be reversed and placed upon the breeder of the alleged essentially derived variety: the owner of the initial variety shall only prove that the distinctness and conformity requirements are fulfilled176.
It is worth highlighting that the conformity requirement shall not be related to the genotype itself but to the expression of the essential characteristics177 of it. The problem of
174 UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, pp. 346-347.
175 Xxxxx X., Xxxxxx X., Xxxx R., 2014, op. cit., p. 83.
176 International Seed Federation, 2012, op. cit., p. 22. Also, ISF developed guidelines to facilitate EDV dispute procedures. They are available at the following website: xxx.xxxxxxxxx.xxx.
177 In its Explanatory Note, the UPOV provided some examples of what might be considered the notion of ‘essential characteristics’: ‘(i) essential characteristics, in relation to a plant variety, means heritable traits that are determined by the expression of one or more genes, or other heritable determinants, that contribute to the principal features, performance or value of the variety; (ii) characteristics that are important from the perspective of the producer, seller, supplier, buyer, recipient, or user; (iii) characteristics that are essential for the variety as a whole, including, for example, morphological, physiological, agronomic, industrial and biochemical characteristics; (iv) essential characteristics may or may not be phenotypic characteristics used for the examination of distinctness, uniformity and stability (DUS); (v) essential characteristics are not restricted to those characteristics that relate only to high performance or value (for instance, disease resistance
how checking the conformity with the genotype was brought to the attention of the Diplomatic Conference178: the Member States decided that the comparison among genotypes was not practical and, therefore, the resemblance among the varieties had to address its expressed characteristics.
A clarification is due: when it has been determined that a variety is an EDV, in accordance to Article 14 (5), such variety stays an essentially derived variety, even when the protection for the initial variety expires. The reason why once a variety has been proven to be an EDV it remains an EDV, lies in the fact that essential derivation is a technical question. Differently, limited dependence concerns the legal aspect and the legal consequences of the essential derivation in plant breeding. Indeed, Article 14 (5) deals separately with the two notions: subparagraph (a) refers to the legal aspect of limited dependence, whereas subparagraph (b) concerns the technical features of essential derivation.
It is worth mentioning that Article 14 (5) (c) of the 1991 Act provides some examples of breeding methods that might be used to obtain EDVs. However, the wording of the provision make it clear that those processes may not necessarily result in an EDV and that essentially derived variety could be obtained in other ways179.
14. Duration
When intellectual property rights are created, the law restricts their use by granting protection only for a fixed and limited period of time. In the case of plant breeders’ rights, this period of time has been modified over the years. Also, different duration of the protection has been provided for some specific varieties.
Pursuant to Article 8 of the 1961/1978 Acts, the breeder’s right shall have a duration of a minimum fifteen years from the date of the issue of the title of protection. In the case of vines, forest trees, fruit trees and ornamental trees, including their rootstocks, the period
may be considered as an essential characteristic when the variety has susceptibility to disease); (vi) essential characteristics may be different in different crops/species’. See, UPOV, 2017, Explanatory Notes on Essentially Derived Varieties under the 1991 Act of the UPOV Convention, Geneva, UPOV/EXN/EDV/2.
178 UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, p. 344.
179 Article 14 (5) (c) of the 1991 UPOV Convention: ‘(c) Essentially derived varieties may be obtained for example by the selection of a natural or induced mutant, or of a somaclonal variant, the selection of a variant individual from plants of the initial variety, backcrossing, or transformation by genetic engineering’.
shall be not less than eighteen years. Obviously, Contracting Parties might guarantee longer periods of protection and they might also differentiate the duration for some classes of plants. However, breeders argued that such minimum period of protection was inadequately short: they claimed to take into consideration the long time needed for both breeding activities and seed production processes, and also the length of the commercial life of their
crops.
So, in the 1991 UPOV Convention a longer minimum period of protection for breeder’s rights was formulated: according to Article 19, the protection shall be granted for at least twenty years from the date of the grant of the breeder’s right. In the case of trees and vines, such period shall be not less than twenty-five years. The special term for trees and vines is justified by the longer time required to develop these varieties before they begin to produce fruits.
15. Double protection ban
The 1961/1978 Acts of the UPOV Convention enshrined in their Article 2 (1) the so- called double protection ban. According to it, each UPOV member shall adopt a form of protection of the breeder’s right established in the Convention by granting either a special title of protection or a patent. In the event that national laws recognized a form of protection under both a sui generis title and a patent, the Member State is required to provide only one of them for one and the same botanical genus or species. Therefore, cumulative protection under both forms was not permitted.
This aspect was intensely discussed after the adoption of the Convention and especially during the Diplomatic Conference that led to the 1991 Convention: some UPOV members argued that the wording of Article 2 (1) would affect patent law and the prerogative of each State to decide which forms of protection shall be afforded to a variety; also, the risk of discouraging new members from joining the UPOV was emphasized. In particular, some UPOV members like Germany, Australia, the United Kingdom and the USA highlighted that the deletion of such provision would permit Contracting parties to decide for themselves
how they want to protect plant breeders’ xxxxxx000. Also, in case a Member State wants to introduce a double protection ban, it could do it at a national level. Hence, a double or cumulative protection ban should not be admitted any longer.
This request, shared by all the UPOV Members with the exception of Denmark and Sweden, led to the elimination of the double protection ban in the 1991 Act, whose Article 2 merely states that ‘each Contracting Party shall grant and protect breeders’ rights’. This wording leaves to Member States the choice of which intellectual system should be used and whether cumulative protection shall be granted, without affecting the possibility of concurrent patentability of plant varieties. Therefore, according to 1991 Act, the national law of the member State might provide for either only one or both forms of protection, leaving the breeder the decision to choose between the two of them or even permitting concurrent protection by both rights.
The new version of Article 2 (1) provided by the 1991 Convention meaningfully complies with Article 27 (3) (b) of the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights, known as TRIPs Agreement, which states that ‘Members may also exclude from patentability: […] (b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non- biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof’. So, according to such provision, Member States might decide to exclude, inter alia, plants as such from patentability but they shall recognize protection for plant varieties, either by a sui generis title, by a patent, or by both titles. It is important to remind that nowadays the most widespread sui generis system used for the protection of breeders’ rights is the plant variety protection system established by the UPOV Convention.
16. Final remarks
The UPOV Convention has been the first international agreement to provide a legal framework for the protection of plant varieties through a sui generis system. It has
180 UPOV, 1991, Records of the Diplomatic Conference for the Revision of the International Convention for the Protection of New Varieties of Plants, Geneva, UPOV/PUB/346, pp. 213-218.
introduced and normalized several concepts concerning plant varieties, while leaving a certain degree of freedom to Member States to adapt such provisions to their national environment.
The UPOV Convention has not been revised after 1991. Surely, some provisions could be clarified and improved but the difficulties to face in order to reach a new agreement on such elements might not be overcome: the interests at stake of the members of the Union are very different and sometimes potentially conflicting. As it has been said, ‘a review could have the character of opening the Pandora’s box’181.
Hence, one could meaningfully assume that, without a review, the responsibility to carry on the harmonization and the implementation of the UPOV system might fall on jurisprudence. Of course, the impact of case law is indissolubly limited to the jurisdiction of the Courts. However, Member States might take into account the interpretation of vague concepts and provisions provided for by the judges of another Contracting Party when addressing the same questions. Indeed, the cooperation among UPOV membership, both on a legal and a technical level, is fundamental for a better implementation of the plant variety protection system and many countries became aware of the benefits of such cooperation.
In this context, it is not surprising that the membership of the Union has experienced a significant evolution over the years: from thirteen States representing only industrialized European countries to seventy-five members, including developing countries and international organizations, such as the African Intellectual Property Organization and the European Union.
It is indeed the implementation by the European Union of this sui generis plant variety protection system to be analyzed and discussed in the following paragraphs.
181 Statement of the pro tempore President of the CPVO, Xxxx Xxxxxxx. See: Xxxxxxx B., 2004, Evolution of the Legal Environment of Plant Breeders’ Rights, Angers, p. 2, available at the following website: xxxxx://xxxx.xxxxxx.xx/xxxxx/xxxxxxx/xxxxx/xxxxxxxxx/xxxxxxxx/XXXXxxxxx0000XX.xxx
CHAPTER 3
The Community plant variety protection in the European
Union
SUMMARY: 1. The Community plant variety protection. - 2. Degree of harmonization. - 3. Alternativeness of the system. - 4. Independence of the system. - 5. Definition of breeder and entitlement to Community plant variety rights. - 6. Definition of plant variety. - 7. Genera and species. - 8. Conditions of protection. - 8.1. The DUS requirement. - 8.2. The novelty requirement. -
8.3. The variety denomination. - 9. Application for the grant of the Community PVR. - 10. Appeals against the decisions of the Office. - 11. Scope of the Community plant variety right. - 12. Restrictions. - 13. Essentially derived varieties. - 14. The xxxxxx’x privilege. - 15. The breeder’s exemption. - 16. Exhaustion. - 17. Contractual exploitation rights. - 18. Compulsory exploitation rights. - 19. Duration. - 20. Infringement. - 21. Enforcement - 22. Final remarks.
1. The Community plant variety protection
The European Union joined the membership of UPOV on 29 July 2005 and became party to the 1991 Act of the Convention. However, even before being a UPOV Member, the European Union modeled its legislation on the rules set out by the UPOV Convention182. Specifically, in 1990 there was a first attempt to regulate plant variety rights within the then European Communities through the draft of a Council Regulation published on 28 September 1990.
During the same period, the UPOV Diplomatic Conference aimed at amending the 1978 Act of the Convention was taking place, so the consultations on the Regulation draft were suspended in order to await the outcomes of the UPOV Conference and modify the draft accordingly183. This draft led to the adoption of Council Regulation (EC) No 2100/94
182 In particular, the Regulation (EC) No 2100/94 states in its Preamble that ‘[…] this Regulation takes into account existing international conventions such as the International Convention for the Protection of New Varieties of Plants (UPOV Convention), […]’.
183 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, European Union Plant Variety Protection,
Oxford University Press, Oxford, p. 4.
of 27 July 1994 on Community plant variety rights, hereinafter referred to as ‘the Basic Regulation’.
It has been noticed that only scarce background documentation exists about the proposal for the Regulation. Three possible reasons have been formulated regarding the absence of such documentation184: 1. the UPOV revision was taking place at the same time as the European Community discussion, which was shaped accordingly, so the European talk did not catch a significant attention; 2. the plant variety right system in the European Union is ‘uncontroversial and of interest to only a specialist few’; 3. patent lawyers, especially the ones who favored patents over plant variety rights, expected that the Community plant variety system was going to ‘wither and die’ in comparison with patent protection, consequently they did not show much interest in the discussion thereof.
The Basic Regulation, which is consistent with the 1991 UPOV Convention and determines all the relevant substantial and procedural rules for plant variety protection, created an autonomous protection system allowing for the grant of a unitary IP right on new plant varieties throughout the European Union, upon a single application and under specific conditions: the right granted is called Community plant variety right (CPVR or Community PVR). Article 1 thereof formally states that the system of Community plant variety rights is the ‘sole and exclusive form of Community industrial property rights’ for plant varieties.
The Community plant variety right has uniform effect within the territory of the European Union, which means that its grant, transfer, and termination shall be on a uniform basis throughout the abovementioned territory, according to Article 2 of the Basic Regulation. The Community xxxxxx000 recognizes an exclusive right to the owner of a certain variety having the characteristics required by the Basic Regulation. This system is alternative and independent from national ones.
It is clear from the Preamble that the purpose of the Basic Regulation is to stimulate the breeding and development of new varieties, given the importance of safeguarding
184 Xxxxxxxx X., Xxxxxx M, 2006, European Plant Intellectual Property, Xxxx Publishing, Oxford, pp. 201- 202.
185 By means of the Lisbon Treaty, the European Union took the place of the European Community and became its legal successor. Despite this, the regime created by the Regulation (EC) No 2100/94 is still named ‘Community plant variety rights’ system and its implementation and application is still carried out by the ‘Community Plant Variety Office’. In the present contribution the wording ‘European Union plant variety rights and ‘Community plant variety rights’ are going to be indifferently used to indicate the IP regime for plant varieties established by the Regulation (EC) No 2100/94.
agricultural production and the need to supply the EU market with products offering specific features.
In order to implement the rules set out in the text, Article 4 of the Basic Regulation established the Community Plant Variety Office (CPVO), an EU agency governed by European public law, with its own legal personality and its own financial independence. The CPVO is based in Angers, France, and it is managed by its President who is aided by a Vice- President. The tasks of the CPVO includes, inter alia, the examination of the applications, the approval of variety denominations, the grant, and the cancellation of Community plant variety rights. All the decisions of the CPVO are taken under the authority of the President, except those made by its Board of Appeal186. The Board of Appeal has been established according to Article 45 of the Basic Regulation and it decides on appeals filed against the decisions of the Office. In each case, the Board is made up of three members, technically and legally qualified: a chairman and two other members. The Board of Appeal of the CPVO represents a ‘quasi-judicial body’, as defined by the General Court in the Case T-133/08 (Xxxx Xxxxxxxx v. CPVO), resembling the procedures and powers of a court187.
Pursuant to Article 114 of the Basic Regulation, detailed implementing rules have been adopted for the purpose of applying the Basic Regulation through the Commission Regulation (EC) No 1239/95 of 31 May 1995, subsequently recast by the Commission Regulation (EC) No 874/2009 of 17 September 2009, hereinafter referred to as ‘Implementing Rules’. They have been recently amended by the Commission Implementing Regulation (EU) No 2016/1448 of 1 September 2016.
2. Degree of harmonization
The choice of a Regulation lies in the necessity to create a unitary IP right valid throughout European Union, within a distinct system, independent and alternative from national ones. The Community regime co-exists with Member States systems governed by national laws, the content of which is not uniform. The reason for the heterogeneity of
186 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 19.
187 Ekvad M., 2018, The Functioning of the Community Plant Variety Office Board of Appeal, in Xxxxxx C., Xxxx X., Xxxxx X., (eds.), 2018, Intellectual Property and the Judiciary, EIPIN series, Vol. 4, Xxxxxx Xxxxx Publishing.
national laws on IP protection of plant varieties lies in the lack of harmonization at the EU level, differently from other fields of IP rights such as, inter alia, trademarks, designs or copyrights.
Nonetheless, substantial dissimilarities have not been noticed in the DUS technical procedures aimed at granting national or EU plant variety rights, at least among EU Member States which are UPOV members as well188. By way of illustration, the requirements for the protection of a new plant variety are analogous on both national and the EU levels. According to Article 55 of the Basic Regulation, within the CPVO system the technical examination for a new plant variety application is carried out by national offices designated by the CPVO Administrative Council, which shall follow the CPVO guidelines based on the UPOV standards. Therefore, the result is that the national authorities end up following the same test protocol, i.e. the DUS protocol189, both for national applications and CPVO ones. Almost all the EU Member States are UPOV Contracting Parties, thereby the UPOV Convention is being applied by national laws190, except for Malta, Greece, Luxemburg, and Cyprus, which either do not have a specific law protecting new plant varieties or their laws do not conform with the UPOV standards. Therefore, a question springs up: should the EU harmonize the laws of the Member States on plant variety protection? The issue concerning the lack of a Directive about plant breeder’s rights at the national level has been addressed by Xxx Xxx Xxxxx000. The author underlines that national laws are not entirely homogeneous among Member States even among Contracting parties of the 1991 UPOV Convention, due to the several optional provisions in the last version of the Convention, e.g. the ones
concerning the xxxxxx’x privilege192 and the duration of the protection193.
188 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., pp. 6-7.
189 The DUS protocol, provided by UPOV, aims at setting out the principles which are used in the examination the distinctiveness, uniformity and stability - ergo, DUS - of new plant varieties.
190 However, not all the Member States are bound by the same UPOV Convention: some of them follow the 1961 or the 1978 text, other ones the 1991 version.
191 Xxx Xxx Xxxxx P., 2008, Towards an EC directive on plant breeder’s rights?, in Journal of Intellectual Property Law and Practice, 3, 2.
192 See Article 15, paragraph 2 of the 1991 UPOV Convention. Some national laws, e.g. Italian laws, do not recognize the xxxxxx’x privilege; while in other countries it refers only to some specific varieties, e.g. in Germany, or sometimes even to all varieties, like in Austria.
193 See Article 19, paragraph 2 of the 1991 UPOV Convention. The article only establishes minimum terms of duration of the plant variety protection. It follows that some countries apply longer term of protection, for some varieties or for all of them. The consequence is a disadvantageous competitive position for the EU breeders who benefit of a shorter period of protection within the internal market.
A different approach to the optional provisions may result in disparities among national laws which ‘may lead to a distortion of competition’194 within the internal market, especially because national plant variety rights have not been replaced by Community rights so far: the entry into force of the Basic Regulation in 1995 has not led towards a considerable decrease of the national applications. Hence, the author believes that harmonization is needed and the adoption of a Directive ‘would not be superfluous’ in view of the possible distortion of the competition that the current national systems are potentially implementing in the EU internal market195.
3. Alternativeness of the system
A significant characteristic of Community plant variety protection lies in its alternativeness from Member States national systems since ‘it neither substitutes nor harmonizes such national system, but is thought to be an alternative to them196’. However, two intellectual property rights on the same plant variety - i.e. the national one and the EU one - could not overlap: a simultaneous claim is not possible according to Article 92 paragraph 1 of the Basic Regulation which states that cumulative protection is prohibited and any cumulative right shall be deemed as ineffective.
National PVRs have not been replaced by Community PVRs: national rights are still granted on new plant variety rights because of the territoriality of some varieties, which can be exploited only in specific countries or even in well-defined areas of a specific country. In such a case, it would be useless to apply for a European Union-wide right for a variety that could be commercially exploited only in a particular country.
In some authors’ opinion, ‘national rights may be maintained as ‘dormant’ rights for the time of existence of the Community right, and can be ‘revived’ once the Community right is no longer effective’197. In other words, national rights have been seen as a further opportunity for the breeder to protect their innovation after the EU plant variety right has expired. However, it is hard to agree with such a point of view.
194 Van Der Kooij P., 2008, op. cit.
195 Ibidem.
196 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 4.
197 Ibidem.
Starting from an obvious consideration, the novelty requirement is needed for the grant of the plant variety right, according to Article 6 paragraph 1 of the 1991 UPOV Convention, which has been transposed into the Article 10 paragraph 1 of the Basic Regulation as well as into national laws of UPOV Member States198. A variety is deemed as new if, when filing of the application for a plant variety right, the propagating or harvested material of said variety has not been sold or otherwise exploited ‘(i) in the territory of the Contracting Party in which the application has been filed earlier than one year before that date and (ii) in a territory other than that of the Contracting Party in which the application has been filed earlier than four years or, in the case of trees or of vines, earlier than six years before the said date’199. Considering that the duration of the EU plant variety rights is twenty-five years for varieties that are not vine and tree species, according to Article 19 (1) of the Basic Regulation, it seems unlikely that the variety was not commercially exploited for the whole period and that the variety could be still considered ‘new’ when the Community right is no longer effective. So, a brand new national right shall not be granted.
In a different scenario, the national right could have been granted before the EU right, with the consequence that the holder is unable to invoke the rights conferred by the national protection for as long as the Community plant variety right remains effective, according to Article 92 paragraph 2 of the Basic Regulation. However, it seems unlikely that after the termination of the Community right, the national law is able to provide the breeder any further year of protection. Indeed, in most of the EU countries that are also UPOV Contracting Parties, e.g. the Netherlands, UK, France, Germany and Denmark, the duration of the protection is twenty-five years200, as for the CPVO system, and sometimes the duration is even shorter201. That means that when the EU breeder’s right is no longer effective, there
198 For example, Article 6 of the 1991 UPOV Convention has been transposed into Article 103 of the Italian Code of Industrial Property - Decreto Legislativo 10 February 2005, n. 30 - as follows: ‘Art. 103. Novità. 1. La varietà si reputa nuova quando, alla data di deposito della domanda di costitutore, il materiale di riproduzione o di moltiplicazione vegetativa o un prodotto di raccolta della varietà non è stato venduto, né altrimenti ceduto a terzi, dal costitutore o con il suo consenso, ai fini dello sfruttamento della varietà: a) sul territorio italiano da oltre un anno dalla data di deposito della domanda; b) in qualsiasi altro Stato da oltre quattro anni o, nel caso di alberi e viti, da oltre sei anni’.
199 Article 6 paragraph 1 of the 1991 UPOV Convention.
200 In case of vine and tree species, the duration is longer, up to 30 years, and in some countries, like Germany, Denmark the Netherlands and UK, the same duration applies to other species, e.g. potatoes.
201 In light of Article 109, paragraph 1 of the Italian Code of Industrial Property, the duration of the protection is twenty years: ‘Art. 109. Durata della protezione. 1. Il diritto di costitutore, concesso a xxxxx di questo codice, dura venti anni a decorrere dalla data della sua concessione. Per gli alberi e xx xxxx tale diritto dura trent'anni dalla data della sua concessione’, according to Article 19 of the 1991 UPOV Convention which
will be no ‘dormant’ national right to ‘revive’. Therefore, one could meaningfully argue that the national right is sic et simpliciter an alternative to the EU breeder’s right and it could hardly act as a ‘dormant’ right.
4. Independence of the system
It is essential to underline that the independence of the Community plant variety protection system does not entail self-sufficiency of said system: indeed, the enforcement of plant variety rights is tied to national systems. In case of infringement of a unitary plant variety rights throughout the European Union, the enforcement is dealt on a national basis, where disputes are litigated before national courts acting as EU courts.
In such a context, the enforcement of Community plant variety rights might be characterized by fragmentation and legal uncertainty, in the sense that there exists the possibility of having opposite rulings in similar cases by different national courts. Also, there is the certainty of not having a harmonized case law in the European Union, not to mention the issues related to the dissimilarity of national judicial procedures and the variability of duration and costs of litigation from one Member State to another. It is worth underlining that only effective enforcement could increase deterrence against plant variety rights infringement.
In this context, the absence of a supranational specialized court may pave the way to expensive and time-consuming parallel lawsuits, it may instigate forum shopping and affect legal certainty, and these factors could undermine the effectiveness of plant variety protection in the European Union. In the field of patent law, these concerns inspired the foundation of the soon-to-be-established Unified Patent Court (UPC)202, a court common to
states that ‘1. The breeder's right shall be granted for a fixed period. 2. The said period shall not be shorter than 20 years from the date of the grant of the breeder's right. For trees and vines, the said period shall not be shorter than 25 years from the said date’.
202 For a more in-depth analysis, see: Xxxxxxxx Xxxxxxxxx F., 2016, The Agreement Establishing a Unified Patent Court and its Impact on the Brussels I Recast Regulation. The new rules introduced under Regulation (EU) No 542/2014 in respect of the Unified Patent Court and the Benelux Court of Justice, in Cuadernos de Derecho Transnacional; 8, 1; Renghini C., 2018, Il sistema xx xxxxxx brevettuale xxxx’Unione Europea: il brevetto europeo con effetto unitario e il tribunale unificato dei brevetti, Doctoral thesis, University of Macerata.
the Contracting Member States which will have exclusive competence about claims on European patents and European patents with unitary effect.
In order to briefly illustrate its functioning, suffice to say that, when hearing a case in accordance with Article 24 of the Agreement, the Court will base its decisions on (a) Union law, including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/20121; (b) the UPC Agreement; (c) the European Patent Convention; (d) other international agreements applicable to patents and binding on all the Contracting Member States; and (e) national law. The UPC rulings will have effect in the territory of the Contracting Member States which ratified the Unified Patent Court Agreement and the enforcement procedures of the decision, as stated in article 82 of the Agreement, will be governed by the law of the Contracting Member State where the enforcement takes place.
As highlighted in the premises of UPC Agreement, the Court aims at improving the enforcement of patents and it wishes to enhance legal certainty for litigation about the infringement and validity of patents.
The Agreement recognized that innovation is disadvantaged by the different national court systems and, in such context, the most affected subjects are the SMEs because they are the ones facing bigger difficulties to enforce their patents. The solution to this problem may be found in the establishment of a supranational and specialized court that will take into consideration the demand of proportionality and flexibility of the parties and that will guarantee quick and high-quality decisions. For the purpose of the current research, the considerations found in the UPC Agreement must be borne in mind since they explicitly connect IP enforcement through a supranational court with promotion of innovation, especially for SMEs.
In conclusion, the Community plant variety protection system, in spite of its independence, has a vital string attached to national systems that might affect its effectiveness.
5. Definition of breeder and entitlement to Community plant variety rights
The definition of breeder, as the person entitled to Community plant variety rights, is enshrined in Article 11 paragraph 1 of the Basic Regulation and it follows the content of Article 1 (iv) of the 1991 UPOV Convention, stating that ‘The person who bred, or
discovered and developed the variety, or his successor in title, both - the person and his successor - referred to hereinafter as 'the breeder', shall be entitled to the Community plant variety right’.
Like its precursor, Article 11 paragraph 1 does not define the content of the breeding notion. However, this wording has been interpreted in Case A 017/2002 by the Board of Appeal of the CPVO as a concept that ‘does not necessarily imply inventing something totally new but includes the planting, selection and growing on of pre-existing material and its development into a finished variety’. Certainly, the use of pre-existing material is intrinsic to plant breeding, which can create new genetic variability only from existent one: again, new plant varieties cannot be created from scratch.
This interpretation paves the way to further unanswered questions: what is then the difference between ‘breeding’ and ‘development’?
The interpretation provided by the CPVO Board of Appeal seems to suggest that the concept of ‘development’ identifies the final stage of the overall breeding procedure. Also, what does ‘finished variety’ mean? One might say that ‘finished variety’ is a synonym of distinct, uniform, and stable variety. However, since the Board of Appeal did not use this wording, the two concepts might not overlap. Again: to what extent does the selection need to be carried out?
The investigation concerning the notion of ‘breeding’ led some authors203 to seek a solution in the CPVO technical questionnaire. They implied that the CPVO gave meaning to the notion of breeding through the technical questionnaire linked to the CPVR application form. When filling the questionnaire, the plant variety right applicant is required to provide mandatory ‘information on the breeding scheme and propagation of the variety’. The required information by each questionnaire, which differs from one another depending on the variety involved, might concern the breeding techniques, the parent varieties, the location and time of the discovery, the developing methods, the origin of the variety, the method of propagation et cetera.
However, it does not seem possible to extrapolate a proper definition of breeding on the basis of the questionnaire. After analyzing it, one might meaningfully assume that the key characteristic of the breeding notion is the use of a systematic method in the creative
203 See, Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 28.
process: in order to provide the information required by the technical questionnaire, the breeding procedure is supposed to be marked by thoroughness, organization, observation, trials and potentially repeatability.
Having said that, one might wonder what differentiates the ‘breeding’ process from the ‘discovering and developing’ one. Indeed, according to the wording of the Articles, there is supposed to be a difference between ‘breeding’ and ‘discover and development’ of a new variety. The CPVO Board of Appeal in Case A 001/2004 stated that ‘discover means that somebody comes across a variety either by search or by chance, being conscious of the fact that it is a new variety, which was unknown to him before and which in his opinion is unknown to other persons as well’.
Although a definition of discover has been determined, an interpretation on the concept of ‘development’ has not been provided by the Board of Appeal so far. Nonetheless, some legal scholars have provided some interesting yet conflicting exegesis. On one side, some authors204 consider that developing a variety ‘could mean simply doing that which is necessary to bring the discovered variety to the European market’. The rationale behind this interpretation rests on what is believed to be the main objective of the Regulation, i.e. promoting the development of new varieties to be commercially exploited within the internal market. Starting from this analysis, the authors draw the conclusion that the Community plant variety system is ‘more monopolistic and commerce-driven than the patent system’ because it does not require an absolute novelty of the new plant variety.
However, this analysis is not acceptable for a twofold reason: 1. it outweighs the ‘discover’ activity at the expense of the ‘development’ one: the wording of Article 11 makes it clear that a ‘developing’ endeavor has to be involved and since there is no progress, no improvement, no modification of the discovered variety, it follows that there is no development; 2. if this was so, the right on such discovered variety shall not be considered an IP right. Suffice to say that intellectual property concern products that are the result of intellectual input. A pre-existing discovered variety is simply not a product of intellectual input, it is not the result of creative endeavor, consequently it shall not receive IP-like protection.
204 Xxxxxxxx X., Xxxxxx M, 2006, European Plant Intellectual Property, Xxxx Publishing, Oxford, pp. 239- 241.
On the other side, some authors205 believe that ‘the notion of ‘develop’ comes quite close to that of ‘breeding’ in its pure sense’. Yet, such a statement might make both the definition of ‘breeding’ and ‘development’ look redundant and tautological. One might argue, conforming to the interpretation of the CPVO Board of Appeal in Case A 017/2002, that the concept of development of a new variety is not similar to the concept of breeding, but it represents a stage of the breeding procedure. The development of a new variety might be considered the second phase of the overall breeding process, a stage that entails field trials, selection, evaluation, and multiplication of the variety; while the notion of ‘breeding’ in its broad sense concerns the entire process of creation of a new variety, from A to Z, starting from germplasm collection and parental selection.
From this interpretation, it might be argued that the distinction between ‘breeding’ and ‘discovering and developing’ a new variety relies on the different premises of the two scientific procedures.
Aside from the definition of ‘breeder’ and ‘breeding’, Article 11 of the Basic Regulation deals with the entitlement of Community plant variety rights. As stated in the abovementioned paragraph 1, it is entitled to CPVRs the person who bred, or discovered and developed the variety or their successor in title. However, plant breeding is often not a one- person-job but the result of teamwork. This situation was taken into account in paragraphs 2 and 3 of Article 11, which establish a joint entitlement of the CPVR in the following cases: ‘2. If two or more persons bred, or discovered and developed the variety jointly, entitlement shall be vested jointly in them or their respective successors in title. This provision shall also apply to two or more persons in cases where one or more of them discovered the variety and the other or the others developed it. 3. Entitlement shall also be invested jointly in the breeder and any other person or persons, if the breeder and the other person or persons have agreed to joint entitlement by written declaration’. Therefore, in such a scenario, more than one person will be entitled to the Community plant variety right.
Article 11 differentiates itself from Article 1 (iv) of the 1991 UPOV Convention regarding the entitlement to the plant breeder’s right on a new plant variety bred or discovered and developed by the employee of the person who has commissioned the work. According to Article 1 (iv) of the 1991 Act of the UPOV Convention, the employer of the
205 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 30.
person who bred, or discovered and developed, the new variety or who has commissioned the latter’s work, is the breeder of the variety, where the laws of the relevant Contracting party so provide. Differently, Article 11 (4) of the Basic Regulation states that ‘If the breeder is an employee, the entitlement to the Community plant variety right shall be determined in accordance with the national law applicable to the employment relationship in the context of which the variety was bred, or discovered and developed’. The provision provides that the national law206 applicable to the employment relationship shall define the subject entitled to the CPVR on the new plant variety207. In so doing, it sets an exception to the rule stated in Article 11 paragraph 1, which establishes that only the breeder is entitled to CPVR.
6. Definition of plant variety
The definition of variety set out in Article 5 (2) of the Basic Regulation literally reproduces the wording of Article 1 (vi) of the 1991 Act of the UPOV Convention, the meaning thereof is so far undisputed and also consistent with the definition provided by the European Patent Convention (Rule 26 paragraph 4 of the Implementing Regulations to the Convention on the Grant of European Patents), as already mentioned above.
Unlike the 1991 UPOV definition of plant variety, Article 5 (1) of the Basic Regulation explicitly refers to ‘hybrids’ as the object of Community plant variety rights, even though it does not provide a legal definition of ‘hybrid’. Therefore, hybrid varieties fall within the scope of the definition of a plant variety under the Regulation (EC) No 2100/94.
Moreover, the Basic Regulation defines the notion of ‘plant grouping’ in its Article 5 (3), stating that ‘a plant grouping consists of entire plants or parts of plants as far as such parts are capable of producing entire plants, both referred to hereinafter as ‘variety
206 For example, Article 111 of the Italian Industrial Code deals with property rights of new plant varieties and its paragraph 2 states that ‘If the new plant variety is created in the context of employment relationship, Article 64 shall apply’. Suffice to say that the referred-to Article 64 affirms in its paragraph 1 that ‘1. When an industrial invention is made in the performance or fulfillment of a contract or work or employment relationship, in which the inventive activity is contemplated by the contract or relationship and is remunerated for that purpose, the rights deriving from the invention belong to the employer, without prejudice to the right for the inventor to be acknowledged as the author’.
207 It is worth mentioning that the last paragraph of Article 11 states that ‘5. Where entitlement to a Community plant variety right is vested jointly in two or more persons pursuant to paragraphs 2 to 4, one or more of them may empower the others by written declaration to such effect to claim entitlement thereto’. It has been affirmed that this provision might be superfluous (Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 30) since entitlement is considered to be as transferable as any other good.
constituents’. This provision clearly illustrates that even a grouping of plant cells, capable of producing entire plants, could represent a ‘variety’ for the purpose of the Basic Regulation.
As it might be easily noticed, the paragraph introduced a new expression: i.e. ‘variety constituents’. Even though the wording is new, the concept thereof is familiar: ‘variety constituents’ is used as a synonym for the ‘propagating material’, which is used in the Basic Regulation as well (e.g. in Article 14 paragraph 1)208.
7. Genera and species
As illustrated in Article 5 (1) of the Basic Regulation, ‘varieties of all botanical genera and species, including, inter alia, hybrids between genera or species’ may form the object of Community PVRs209. The result is that the protectable subject matter under the Community plant variety system is not limited to a certain number of botanical genera or species210.
The extensive protection provided by this paragraph of the Basic Regulation is consistent with the goal of the 1991 Act of the UPOV Convention, which required Contracting parties to recognize plant breeders’ rights (i.e. plant variety rights) on all botanical genera and species in order to promote the harmonization among UPOV Member States and to prevent PBR infringements.
208 Xxx Xxx Xxxxx P.,1997, Introduction to the EC Regulation on Plant Variety Protection, Kluwer Law International, p. 13.
209 Even if most hybrids result from crossing processes within the same taxon (e.g. maize), the Regulation underlines that even hybrids that are the offspring of breeding between different genera or species are protectable subject matter. For further insights, see Xxx Xxx Xxxxx P.,1997, Introduction to the EC Regulation on Plant Variety Protection, Kluwer Law International, p. 12. The author underlines that also “varieties of mushroom and other fungi can be protected, although such varieties are not considered to be plant varieties within the usual meaning”.
210 It is worth mentioning that the Regulation does not provide a definition of ‘botanical genera and species’.
8. Conditions of protection
8.1. The DUS requirement
In order to be protectable under the Community plant variety protection system, a plant variety has to be (a) distinct; (b) uniform; (c) stable and (d) new, according to Article 6 of the Basic Regulation. Furthermore, the variety has to be ‘designated by denomination in accordance with the provisions of Article 63’.
As shown in the previous paragraphs, the same conditions are listed in the 1991 UPOV Convention. The first three technical conditions form the so-called DUS requirement, which deals with the phenotypical characteristics of the plant variety resulting from a certain genotype. As a general rule, the Basic Regulation does not require any commercial or cultivation value of the new plant variety (i.e. value for cultivation and use or VCU). The duration of the DUS technical examination for the grant of Community PVRs varies from one year for most ornamental species to six years for certain fruit tree varieties211.
Article 7 of the Basic Regulation concerns the distinctness requirement and it slightly differs from the wording of the 1991 UPOV Convention by adding that the distinctness has to be determined ‘by reference to the expression of the characteristics that results from a particular genotype or combination of genotypes’212. The provision clarifies that the distinctness requirement has to be assessed through a phenotypic evaluation of the variety. Therefore, the characteristics that distinguish a variety are supposed to imply a certain degree of observability, ergo they should be externally visible in the field during the technical examination carried on by one of the entrusted examination offices of the CPVO network.
211 Source: CPVO website xxxxx://xxxx.xxxxxx.xx/xx/xxxxxxxxxxxx-xxx-xxxxxxxxxxxx. Last access: May 2019 212 Article 7 of the Regulation (EC) No 2100/94, Distinctness: ‘1. A variety shall be deemed to be distinct if it is clearly distinguishable by reference to the expression of the characteristics that results from a particular genotype or combination of genotypes, from any other variety whose existence is a matter of common knowledge on the date of application determined pursuant to Article 51.
2. The existence of another variety shall in particular be deemed to be a matter of common knowledge if on the date of application determined pursuant to Article 51: (a) it was the object of a plant variety right or entered in an official register of plant varieties, in the Community or any State, or in any intergovernmental organization with relevant competence; (b) an application for the granting of a plant variety right in its respect or for its entering in such an official register was filed, provided the application has led to the granting or entering in the meantime. The implementing rules pursuant to Article 114 may specify further cases as examples which shall be deemed to be a matter of common knowledge’.
Those characteristics might be externally observable even only under specific circumstances, in a certain period of time or in a well-defined environment.
As in the 1991 UPOV Convention, Article 7 (2) of the Basic Regulation affirms that the new plant variety has to be distinct from other varieties whose existence is a matter of common knowledge on the date which a valid application for the grant of a PVR has been received by the CPVO or by an entitled national agency. The registration into an official catalogue or the granting of a PVR or even the application for a PVR, provided that the application has not been refused or withdrawn in the meantime, make the variety a matter of common knowledge. Moreover, in its decision of 3 June 2002 (Case 023/2002, Comtesse Xxxxxx Xxxxxx), the CPVO Board of Appeal expanded the criteria of common knowledge taking into account the aspects considered in one of the UPOV Test Guidelines Procedures. This document states that, in order to establish common knowledge of a plant variety, the commercialization of propagating material and the existence of living plant material in publicly accessible plant collections have to be considered. Therefore, a variety that has been offered to sale and maintained in a botanical garden open to the public shall be considered to be of common knowledge. This interpretation extends the notion of common knowledge beyond the literal wording of the provision under analysis.
Even the Court of Justice of the European Union had the chance to answer a question regarding the meaning of common knowledge in plant variety protection. In its decision of 15 April 2010 (Case C-38/09, Xxxxxxxx v. CPVO), the Court confirmed the interpretation provided by the UPOV, in particular by the point 5.2.2.1 ‘Common Knowledge’ of the UPOV Document TG/1/3 of 19.04.2002, which reads as follows: ‘the publication of a detailed description is, inter alia, one of the aspects which should be taken into consideration in order to establish common knowledge’.
The debate connected to a balanced application of the distinctness requirement is strictly related to the remarkable meaning of such a requirement in the overall plant variety protection system: distinctness represents the main pillar providing the logical basis of IP protection for new plant varieties. Indeed, using the words of Xxxxxxxxxxxx, Xxx Xxx Xxxxx, Kiewiet, Ekvad, ‘when a candidate variety meets the distinctness requirement one could say that the variety has been added by the breeder to the plant kingdom or, to put it in patent terms, to the state of the art. This fact is the major justification for a possible protection of the variety with an industrial property right. The simple copying or multiplication of a
variety that has already existed as such, either in nature or in cultivated conditions, would not qualify for such a right’213.
Article 8 of the Basic Regulation deals with the uniformity condition of protectable varieties. This provision is similar to the one concerning uniformity in the UPOV Convention; the only difference concerns the clarification added in its final part214. Instead of stating that the new crop has to be ‘sufficiently uniform in its relevant characteristics’ as laid down in Article 8 of the UPOV Convention, it says that a candidate variety has to be ‘sufficiently uniform in the expression of those characteristics which are included in the examination for distinctness, as well as any others used for the variety description’. This added part does not seem to deviate from the UPOV text: it appears that the legislator wanted to emphasize the role of the expressed characteristics of the candidate variety when assessing its uniformity.
Compliance with this requirement does not entail that the candidate variety shall be entirely uniform. The use of the word ‘sufficiently’ makes it clear that limited variation is expected and tolerated: it is rooted in the nature of plants as living organisms and connected to the propagation of the variety. Consequently, the level of uniformity and the determination of off-types differ from one variety to another, depending on the method of plant propagation in question215 and whether the candidate crops are hybrids or not216.
Article 9 of the Basic Regulation laid down the stability condition for CPVP217 and, like for the uniformity requirement, the sentence ‘expression of those characteristics which are included in the examination for distinctness, as well as any others used for the variety description’ took the place of the UPOV wording ‘relevant characteristics’. Therefore, no
213 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 39.
214 Article 8 of the Regulation (EC) No 2100/94, Uniformity: ‘A variety shall be deemed to be uniform if, subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in the expression of those characteristics which are included in the examination for distinctness, as well as any others used for the variety description’.
215 Briefly, plant reproduction may be accomplished sexually or asexually. Sexual reproduction in plants relies on the key role of pollination, which might be either self-pollination or cross-pollination. Unless mutation occurs, the offspring produced by means of asexual pollination are genetically identical to the parent plant, unlike sexually reproduced plants which differ from the parent plant (or plants).
216 The UPOV General Introduction and DUS Test Guidelines, already mentioned in the previous paragraph, are the benchmarks against which the level of uniformity is usually measured.
217 Article 9 of the Regulation (EC) No 2100/94, Stability: ‘A variety shall be deemed to be stable if the expression of the characteristics which are included in the examination for distinctness as well as any others used for the variety description, remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle’.
substantial dissimilarity shall be noticed between the two provisions. As illustrated by Article 9, stability concerns the capability of the plant to ‘remain unchanged after repeated propagation’. It has been highlighted that this requirement is particularly hard to test (the wording ‘remain unchanged’ implies that several tests have to be performed) and that is the reason why a specific technical examination on stability is not carried out by the entitled official bodies across EU218. Undeniably, it would be quite demanding to repeatedly propagate a variety for an unlimited number of life cycles in order to check whether and to what extent the crop changed its expressed characteristics after each propagation. For such reason, it has been argued that stability tends to be more ‘the expression of an expectation than the reflection of a fact’219.
Nevertheless, stability has proved to be linked with uniformity so it can be assessed in connection with it. As stated in the already-mentioned UPOV General Introduction: ‘7.3.1.1 In practice, it is not usual to perform tests of stability that produce results as certain as those of the testing of distinctness and uniformity. However, experience has demonstrated that, for many types of variety, when a variety has been shown to be uniform, it can also be considered to be stable. Furthermore, if the variety is not stable, material produced will not conform to the characteristics of the variety, and where the breeder is unable to provide material conforming to the characteristics of the variety, the breeder’s right may be cancelled. 7.3.1.2 Where appropriate, or in cases of doubt, stability may be tested, either by growing a further generation, or by testing a new seed or plant stock to ensure that it exhibits the same characteristics as those shown by the previous material supplied. Further guidance on the examination of stability is considered in document TGP/11, ‘Examining Stability’220. As a result, a candidate variety is deemed to be stable when it is proved to be uniform during the field test.
When it is established that a protected variety no longer meets the requirements set in Article 8 or 9 of the Basic Regulation, the CPVO will cancel the CPVR on that variety with effect in futurum, according to Article 21 of the Basic Regulation.
218 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p.46.
219 Ibidem.
220 UPOV, 2002, General Introduction to the Examination of Distinctness, Uniformity and Stability and the Development of Harmonized Descriptions of New Varieties of Plants, TG/1/3, Geneva.
It has been argued that, when it is established that a variety is no longer stable, this variety has not been stable from the beginning: it follows that the CPVR shall be declared null and void instead of being canceled221. This interpretation seems utterly valid and it is strictly connected to the intrinsic nature of the stability requirement which concerns the condition of the variety to remain unchanged in its expressed characteristics from one generation to the next one. The Basic Regulation does not refer to a particular window, therefore one might assume that this requirement has to be maintained over time. In conclusion: either a variety has been stable ab initio, or it never was.
As already mentioned, distinctness, uniformity, and stability are tested during a technical examination of the candidate variety aimed to assess whether these requirements are met. This technical examination is not conducted by the CPVO itself, which does not have a technical infrastructure. Instead, the examination is carried out by the competent office or offices in at least one of the Member States ‘entrusted with responsibility for the technical examination of varieties of the species concerned’ (so-called Examination Office), in accordance with Article 55222. The relevant Examination Office is chosen on the basis of defined principles, e.g. the climatic and environmental growing conditions of the specific variety and the preference expressed by the breeder during the application process223.
The CPVO Technical Unit provides the Examination Offices with several technical guidelines and protocols aimed at harmonizing the determination of whether a CPVR shall
221 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., p. 47.
222 Article 55 of the Regulation (EC) No 2100/94, Technical examination: ‘1. Where the Office has not discovered any impediment to the grant of a Community plant variety right on the basis of the examination pursuant to Articles 53 and 54, it shall arrange for the technical examination relating to compliance with the conditions laid down in Articles 7, 8 and 9 to be carried out by the competent office or offices in at least one of the Member States entrusted with responsibility for the technical examination of varieties of the species concerned by the Administrative Council, hereafter referred to as the 'Examination Office or Offices'. 2. Where no Examination Office is available, the Office may, with the consent of the Administrative Council, entrust other appropriate agencies with responsibility therefore or establish its own sub-offices for the same purposes. For the purpose of the provisions of this Chapter, such agencies or sub-offices shall be considered as Examination Offices. They may avail themselves of facilities made available by the applicant. 3. The Office shall forward to the Examination Offices copies of the application as required under the implementing rules pursuant to Article 114. 4. The Office shall determine, through general rules or through requests in individual cases, when, where and in what quantities and qualities the material for the technical examination and reference samples are to be submitted. 5. Where the applicant makes a claim for priority pursuant to Article 52 (2) or (4), he shall submit the necessary material and any further documents required within two years of the date of application pursuant to Article 51. If the earlier application is withdrawn or refused before the expiry of two years, the Office may require the applicant to submit the material or any further documents within a specified time limit’.
223 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., op. cit., p. 76.
be granted or not. The Examination Offices shall conduct the DUS test in accordance with those guidelines and following the instructions given by the Office, as provided for in Article 56 of the Basic Regulation224. Detailed protocols adopted by the CPVO Administrative Council exist in each of the four crop sectors, i.e. 1) agricultural; 2) vegetable; 3) ornamental and forestry; 4) fruit. Every protocol refers to a specific botanical taxon in each crop sector and it describes the technical procedures to be followed during the technical examination. The list of protocols is updated on a regular basis by the CPVO, with additions of new protocols and revisions to existing ones: currently, there are 194 protocols225.
The CPVO technical documents used in the DUS testing rest upon the UPOV guidelines. These guidelines recommend the characteristics to take into consideration during the DUS evaluation with regard to all botanical genera and species. The UPOV protocols are not directly translatable into the Community plant variety protection system because of their optional provisions226. It is important to highlight that the CPVO guidelines, even when they are based on the UPOV protocols, are independent of those of other jurisdictions and the CPVO is not obliged to accept their findings, although they are all UPOV-based. The CPVO Board of Appeal has remarked this aspect in Case A 003/2003 (Prophyl Pty Ltd and Swane Bros Pty Ltd vs CPVO), whose decision reads as follows: ‘the fact that a plant variety right has been granted for Probril in other UPOV-member states did not oblige the Office to take over their test reports or their decisions. The Community system is independent –
224 Article 56 of the Regulation (EC) No 2100/94, The conduct of technical examinations: ‘1. Unless a different manner of technical examination relating to compliance with the conditions laid down in Articles 7 to 9 has been arranged, the Examination Offices shall, for the purposes of the technical examination, grow the variety or undertake any other investigations required. 2. The conduct of any technical examinations shall be in accordance with test guidelines issued by the Administrative Council and any instructions given by the Office.
3. For the purposes of the technical examination, the Examination Offices may, with the approval of the Office, avail themselves of the services of other technically qualified bodies and take into account the available findings of such bodies. 4. Each Examination Office shall begin the technical examination, unless the Office has otherwise provided, no later than on the date on which a technical examination would have begun on the basis of an application for a national property right filed on the date on which the application sent by the Office was received by the Examination Office. 5. In the case of Article 55 (5), each Examination Office shall begin the technical examination, unless the Office has otherwise provided, no later than on the date on which an examination would have begun on the basis of an application for a national property right, provided the necessary material and any further documents required were submitted at that date. 6. The Administrative Council may determine that the technical examination for varieties of vine and tree species may begin at a later date’.
225 Source: xxxxx://xxxx.xxxxxx.xx/xx/xxxxxxxxxxxx-xxx-xxxxxxxxxxxx/xxxxxxxxx-xxxxxxxxxxxx/xxxxxxxxx- protocols?t=&field_crop_sector_tid=All&order=field_crop_sector&sort=asc. Last access: April 2018.
226 Xxxxxxxxxxxx G., Van Der Kooij P., Xxxxxxx B., Xxxxx M., 2015, op. cit., pp. 36-37.
and different – from their systems. The Office has to examine the application in accordance with the provisions of the Council Regulation’.
The President of the CPVO has the power to add further characteristics to be tested during the technical examination for the DUS assessment of a candidate variety. In particular, in its judgment of 08.06.2017 (Case C-625/15, Schniga GmbH v. CPVO), the Court of Justice of the European Union stated that: ‘the CPVO’s task is characterised by the scientific and technical complexity of the conditions governing the examination of applications for Community plant variety rights and, accordingly, the CPVO must be accorded a broad discretion in carrying out its functions (see, to that effect, judgment of 19 December 2012, Brookfield New Zealand and Elaris v CPVO and Schniga, C-534/10 P, EU:C:2012:813, paragraph 50). […] In those circumstances, only the flexibility that allows the recognised power of the President of the CPVO, under Article 23(1) of the implementing regulation, to insert additional characteristics in respect of a variety is also capable of ensuring the objectivity of the procedure for granting Community plant variety rights’. Therefore, in the view of the Court of Justice, the President of the CPVO has the power to add a new characteristic in the technical examination of a variety, even if that characteristic was not mentioned to in either the technical questionnaire or in the test guidelines/protocols. Upon conclusion of the DUS examination, the Examination Office has to send an examination report to the CPVO when requested by the CPVO itself or if the Examination Office considers the results of the test adequate to evaluate the variety, as laid down in Article 57 of the Basic Regulation227. Where the Examination Office deems that the DUS conditions are met, it shall send a description of the variety to the CPVO as well. Subsequently, the CPVO has to communicate the results of the technical examinations and the description of the variety to the applicant, who has the opportunity to comment thereon.
227 Article 57 of the Regulation (EC) No 2100/94, Examination reports: ‘1. The Examination Office shall, at the request of the Office or if it deems the results of the technical examination to be adequate to evaluate the variety, send the Office an examination report, and, where it considers that the conditions laid down in Articles 7 to 9 are complied with, a description of the variety. 2. The Office shall communicate the results of the technical examinations and the variety description to the applicant and shall give him an opportunity to comment thereon. 3. Where the Office does not consider the examination report to constitute a sufficient basis for decision, it may provide of its own motion, after consultation of the applicant, or on request of the applicant for complementary examination. For the purposes of assessment of the results, any complementary examination carried out until a decision taken pursuant to Articles 61 and 62 becomes final shall be considered to be part of the examination referred to in Article 56 (1). 4. The results of the technical examination shall be subject to the exclusive rights of disposal of the Office and may only otherwise be used by the Examination Offices in so far as this is approved by the Office’.