Plant Varieties Protection
With the development of new technologies, both opportunities and interests in the creation of new plant varieties have increased, even though their selection and growth needs large investments.
Plant varieties protection aims at boosting the creation of new varieties through the acknowledgement of an exclusive commercial right allowing the breeder to recover the investment costs and profit from the commercial exploitation of the protected variety.
Origin and Regulatory Developments
The regulation on plant varieties was introduced with the International Convention for the Protection of New Varieties of Plants, undersigned in Paris in 1961 and adopted in Italy in 1975.
Before the introduction of a specific regulation, commercial contracts were used to set an exclusive right without a patent, thus allowing third parties to employ the plant material just to obtain the variety and not to make further reproductions of the plant or material.
On the other hand, some countries used to acknowledge plant varieties as patents. In Italy, for example, in 1951 a patent for a rose variety was granted (N. 466572), but not many like this were registered later on.
The Convention was then revised in Geneva in 1991, when the UPOV (Union pour la protection des obtentions végétales) was also established to foster the development and protection of plant varieties.
In Europe, the EU Council issued the EU Regulation in 1994 establishing the Community plant variety right (Reg. CE n. 2100/94) with the purpose of harmonizing the industrial property systems for plant varieties, also taking into account the evolution of plant breeding techniques and the need to encourage the selection and development of new plant varieties.
The International Convention for the Protection of New Varieties of Plants revised in 1991 was adopted in Italy in 1998 and its content is now part of Section VIII of the Industrial Property Code.
Based on the above-mentioned rules, the special protection of plant varieties is therefore separate from patents on botanical types or species. However, as we’ll see later, these two kinds of protection have some points of contact and overlap.
Definition of Plant Variety
A plant variety is defined as a plant grouping within a single botanical taxon of the lowest known rank which can be – whether the conditions to grant a protection right for new plant varieties are fully met or not:
- Defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,
- Distinct from any other plant grouping based on the expression of at least one of the above-mentioned characteristics, and
- Considered as a unit with regards to its suitability to be propagated unchanged.
For example, bean plants (species Phaseolus vulgaris) include several varieties like Borlotto rosso, Cannellino, Etna; rice plants (species Oryza sativa) include varieties such as Arborio, Carnaroli, Venere; artichokes plants (specie Cynara scolymus) include varieties like Ernesto, Romolo, Romano, Tizio, Caio. Each one of these varieties is distinguished from the others for specific characteristics which remain unchanged throughout subsequent reproductions.
The protection tool of plant varieties is called breeder’s right or right for a new plant variety.
Both the Italian and the European regulations establish that, in order to be granted, each right for a plant variety should meet the requirements of novelty, distinction, homogeneity and stability.
A plant variety is considered new when, starting from the filing date, it hasn’t been commercialized, both on the Italian and the European territory, according to the Italian and EU regulations, for more than one year, or anywhere else outside di EU for more than four years (extended to six years for trees and grapevines).
A plant variety fulfills the requirement of distinction when it is clearly distinguishable from any other variety whose existence is widely known on the filing date. Then, the variety is considered homogeneous if it is consistent enough in the expression of those distinctive characters which are relevant for protection. Finally, the variety is stable when such distinctive characters remain unchanged after subsequent reproductions or multiplications.
An example of a plant variety protected in the EU (N. 33448) is the so-called ERMO, belonging to the species Cannabis sativa, with the peculiarity not to produce any cannabinoid. This characteristic is associated with a feature of the leaf which is unified rather than palmately lobed. In this way, the leaf shape allows to distinguish immediately ERMO variety from other hemp plants producing cannabinoids, without even conducting further chemical analyses.
Duration of the Protection
The breeder’s right lasts twenty years (twenty-five for EU rights), starting from the date it is granted, while trees and grapevines are protected for thirty years.
Rights Conferred and Limitations
According to the Italian and EU regulation, the breeder’s authorization is required for the production, the reproduction and the conditioning for the purposes of reproduction or multiplication, the sale, the offer for sale or any other form of commercialization, the exportation and importation, the possession for any of the above purposes of the reproduction or multiplication material of the protected variety.
An authorization is also necessary for the harvested product obtained with non-authorized reproduction or multiplication material of a protected variety; for those varieties essentially derived from a protected variety; for varieties not clearly distinguishable from the protected one and those whose production entails the repeated use of a protected variety.
The regulation establishes also some limitations for the breeder’s right, based on which the right doesn’t cover private acts for non-commercial purposes, acts performed for experimental purposes or acts carried out with the aim to create other varieties. Therefore, for these actions the breeder’s authorization is not necessary. However, anyone who wants to multiply a protected variety in order to create a new one is required to inform the breeder.
Moreover, it’s worth mentioning the farmer’s privilege: he can reproduce and multiply on his/her own the patented material of plant origin of some forage crops, cereals, potatoes and some oil or fiber plants.
Plant Varieties Protection and Patents
As mentioned above, plant varieties protection is different from patent protection.
While the right upon plant varieties regards only one single plant variety, patents can regard plants – for example species of plants – with characteristics making them new and inventive, but cannot claim a specific plant variety.
Nevertheless, patent protection upon a plant species also includes all plant varieties of that species bearing the same characteristics.
For example, a patent can be filed upon a genetically modified tomato plant thus becoming resistant to a particular disease, but cannot be claimed upon a specific tomato variety with this characteristic. The specific variety can be protected only with a plant variety right.
Therefore, it can happen that both a patent and a plant variety right coexist upon a specific patented plant variety.
In this case, both the patent owner and the breeder will be entitled to a compulsory license to use the invention or the protected plant variety, as far as they can prove to have contacted without success the patent owner or the breeder in order to obtain a contractual license and that the plant variety or the invention represents a significant technical progress of considerable economic interest compared with the invention or the protected variety.
In order not to prevent the creation of new plant varieties and make available the biological material patented to this end, the regulation has recently established that trials with the purpose of selection or discovery and development of other plant varieties will not interfere with patent protection. Therefore, it is legit to use biological material patented to this end.
It is also currently under discussion at a European level whether or not plant exclusively obtained with essentially biological processes, such as crossing and selection processes, should be excluded from patent protection scope. The Enlarged Board of Appeal of the European Patent Office (EPO), with decisions G2/12 and G2/13 regarding tomato and cabbage plants, agreed to the patentability of plants obtained with essentially biological methods. However, later on the European Commission provided a completely opposite interpretation to the Biotechnology Directive (Dir. 98/44/CE), in particular against the patentability of plants obtained exclusively with essentially biological methods.
Therefore, EPO amended Rules 27 and 28 of the European Patent Convention (CBE) aiming at harmonizing the regulation compared to the new interpretation.
However, this amendment was not sufficient to clarify the topic of patentability of this kind of plants. So much so that a recent decision of the EPO Board of Appeal (T1063/18) confirmed the patentability of a capsicum plant obtained with essentially biological methods, by explaining that the interpretation provided by the Enlarged Board of Appeal decisions about the CBE’s articles prevails upon the Convention’s rules.
In this uncertain situation, the chance to bring the issue again to the Enlarged Board of Appeal is now under discussion. Therefore, we will have to wait and see how patentability will develop in this field.