The protection of plant varieties

With the term “variety” one means the diversity of characteristics within a biological species; however, for plants the term has also taken on a meaning in a distinctive sense; with “a variety” one means a restricted part of the group of a single species, having characteristics that are uniform and in some way distinguishable from the rest of the varietal range. Hence, plants belonging to each variety present morphological and physiological differences compared with plants belonging to other varieties within a single species, characteristics that must be transmissible to future generations.

As is well known, plant varieties cannot be protected via patents for inventions, even when they are obtained through genetic engineering, unless the genetic modification, not being limited to a single variety, can be obtained in all species. In this case there will not be, indeed, a single new variety, but a new plant, where the modification can be theoretically introduced in all existing varieties of that species. For example, not a new variety of maize, but a new maize.

However, given the ever increasing economic efforts that are needed to obtain new varieties and the economic and social importance of such an activity, that is not only a generator of GDP, but above all the instrument with which to face the challenges of climate change with the aim of guaranteeing, in future, the feeding of mankind, ad hoc regulations have been introduced in the system of industrial property, that guarantee the protection of new plant varieties through a special application for plant variety rights. The aim is the same that has promoted the development of the patent system: to guarantee to those innovating the payback of the investments that have been carried out and to support economic development.

However, what has guided the legislator has been the acknowledgement of the special characteristics of the agricultural world and of its complex mechanisms, even though this has introduced some problems of consistency with the industrial invention patents law, yet to be fully solved.

At present, in Europe, agricultural innovators have the possibility to obtain a double protection, to be chosen depending on their needs: Community legislation (Council Regulation (EC) No 2100/94 with the related implementing rules according to Commission Regulation (EC) No  874/2009), or national legislation. In Italy the subject is regulated by section VIII of the Code of Industrial Property (CPI), articles 100 to 116. The majority of non-EU countries have their own national legislations as well. Moreover, all this legislature uses as reference the same international agreement, i.e. the 1991 UPOV Convention.

Both legislations, Italian and Community, have similar guiding principles, though setting themselves apart for certain practical aspects. For example, the requirements of protectability, meaning those that have to be verified in order to obtain the right, are basically the same: a protectable plant variety is new, clearly distinguishable, in its main characteristics, from any other well-known variety, it is uniform and stable in the expression of its characteristics, especially those that make it distinguishable. With regard to the requirement of novelty, it should be noted that, while for traditional inventions any disclosure, that is an event that makes the creator lose the direct control on the innovation (for example the sale or transfer to third parties) destroys the novelty of the invention, a plant variety remains protectable for a certain period of time also after the possible disclosures. Moreover, the novelty requirement is not precluded due to the fact that the new variety has undergone culture tests.

If the new variety has the prescribed requirements, it can be the subject of an application for a plant variety right, namely a national (to be filed at the Italian Patent and Trademark Office in Rome) or Community (to be sent to the Community Plant Variety Office, that has its headquarters in France, in Angers). All new varieties are protectable, without the exclusion of any species. In both cases, besides the indication of the denomination of the variety (that has to be different from a possible registered trademark and cannot be used to this effect), a technical description (for Italy) or a technical Questionnaire (for the Community right) that lists and illustrates (also through the use of photographs) the distinctive morphological and physiological characteristics of the new variety, meaning those characteristics that are not only part of the variety’s genotype but that, being expressed, contribute to define the phenotype, will have to be attached to the application.

The (Italian or Community) application undergoes a technical examination for the verification of the presence of the above-mentioned requirements, carried out at a specifically designated Office. The results of the possible national examinations for the same variety can be used for the Community plant variety right; the Italian examination, at the moment, costs less than the Community one, it could therefore be convenient for the Applicant to firstly file an Italian application, begin the examination and only subsequently file a Community application, possibly claiming the priority (that is the filing date) of the national application, to then use the results of the national examination in the Community examination. However, to date, the conduct of the national examination (carried out by the Ministry of Agricultural Food and Forestry Policies) has proved to be unpredictable in terms of duration and outcome, therefore such a choice is not to be recommended.

The Community plant variety right has a duration of 30 years for wooden trunk varieties (trees and vines) and of 25 years in the case of non-wooden varieties, starting from the granting. For Italy the second deadline is decreased to 20 years only. The proceedings for the development of new plant varieties remain protectable according to the general provisions of industrial invention patents, they are therefore protectable provided that they do not only include essentially biological phases, such as cross-breeding and selection, also if bioengineered markers are used for the selection. The new varieties that result from spontaneous mutation are also protectable, as long as they maintain their characteristics over time, that is provided that they are stable.

Only the Community plant variety right provides for a derogation, the so-called “farmer’s privilege”, pursuant to which, only for some species, the farmers can use the seeds obtained from protected varieties without paying royalties to the holder of the plant variety right (only for the small farmers) or paying a fair remuneration (all the others). The plant variety right is declared null (with retroactive effect) if it is ascertained that the variety lacked the foreseen requirements or if it has been granted to a person that was not entitled to it, while it lapses (ex tunc) if it is found that the conditions of stability and uniformity are no longer satisfied or the (annual) taxes due for the preservation of the plant variety right, as for the patents, have not been paid.

For the Community plant variety right, an opposition procedure to the granting is foreseen, through which third parties may intervene in the granting procedure becoming part of it, lodging their objections, based on the breach of one or more articles of the Regulation or on the alleged absence of one or more of the necessary requirements. Furthermore, a Board of Appeal of first instance, to which to appeal any decision of the Community Plant Variety Office (CPVO), is envisaged. The appeal of second instance is lodged directly to the Court of Justice (CJEU). Finally, after the granting, the rights for new plant varieties can be subject to legal proceedings, both for counterfeiting (a variety on the market is considered not distinguishable from a protected variety), and for nullity.

Studio TORTA has an extensive experience in the field of the protection of plant varieties, both as regards filing and prosecution of Italian, Community and international applications, both in terms of oppositions and appeals with the CPVO, and at judicial level in Italy and abroad, as consultants of a party or of the Judge. For example, we have been involved in famous litigations concerning the Ballerina lettuce variety and rice varieties. We handle plant variety rights for our Clients regarding many different species, amongst which the most frequent are: strawberries, kiwi fruits, apples, vines and poplars, as well as ornamental plants and vegetables.

RINALDO PLEBANI

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