What are the variety plants ?

Fruits, trees, vines, plants, ornemental plants…Protection by

Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights

Why a community plant variety right ?

• To get a common legislation• To improve research on plants and get better

qualities of products• To improve promote research

Why not by patent ?

• The conditions for patent are not suitable for plants : for ex how to transpose the condition of inventive step if the plant has been just found (and not created) in the amazonian forest

• The Münich Convention (art 53) on patent excludes variety plants from patentibility.

• But today we can create new plants thanks to genes and biotechnology and this is normally patentable,

• So there is a conflict between the two scopes of rights. The directive 98/44 on biotechnology protection tries to coordinate the two scopes,

directive 98/44 on biotechnology protection : scope of patent

• Art 3 : inventions…shall be patentable 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…Concretely a gene or a process is patentableBut the result of the patent, this means the plant won’t be patentable. Nevertheless a plant variety right can be registered.The owner can be different from the patent one’s

• Other case (art 4) : Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.This means that the gene has to be usable for any kind of plant and not for a single variety (for example a gene preventing varieties from putrefaction).In this case the plant, as a result from patent, is also protected by patent. So there is a competition between the 2 rights but the patent is stronger, and so more attractive, because there are less exceptions to the monopoly.

Conflicts between monopoly’s titles

• In USA a plant can be patented and even, at the difference with EU (art 92) , companies can cumulate a patent and a plant certificate. So european companies must suffer a distorsion in competition because in most cases they cannot benefit of a patent which is stronger than certificate

• It is also difficult to coordinate patent and certificate, between a gene or a process and the plant as a result : « Where a breeder cannot acquire or exploit a plant variety right without infringing a prior patent, he may apply for a compulsory licence for non-exclusive use of the invention protected by the patent inasmuch as the licence is necessary for the exploitation of the plant variety to be protected, subject to payment of an appropriate royalty”.(art 12 directive)..

Conditions of validity

4 conditions• Distinct• Uniform• Stable• NewRemark : it is not necessary to create the plant. This one can have been just found in nature.

Office’s role

• The Community Plant Variety Office is situated in Angers France

• It controls the conditions of validity (art 116) : analysis of the variety’s samples ; in practice they entrust national offices (art 55). These offices cooperate each others thanks to data bases in order to create common standards for plant varieties.

• The technical examination often requires to grow species of variety during one or several seasons in order to determine if there are differences with previous varieties.

• The technical report is made by national crop experts and the administrative report by the office in Angers

distinctness

• Art 9 regulation act : “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 “

• Office, Aff A-023/2002 8.10.2003,official Bull 15 dec 2003 : refusal because only 3 out of 37 caracters were different from a similar variety

novelty• If it is distinctive it will be probably new• But quid if the variety had been already put on the market ? It is

necessary, in principle : « not been sold … earlier than one year before the abovementioned date (date of file), within the territory of the Community” (art 10)

• If there are several files on a similar variety the first file will be the new one (art 54)

• The fact that the breeder had displayed the variety at an official or officially recognized exhibition won’t distroy novelty

• The right of priority (art 52) : « If the applicant has already applied for a property right for the variety in a Member State or in a Member of the International Union for the Protection of New Varieties of Plants (Upov) , and the date of application is within 12 months of the filing of the earlier application, the applicant shall enjoy a right of priority”

Uniformity

Art 8 “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”… (colours, shape, size…). This means that all species cultivated have to be identical. Only little differences are tolerated (5 %)

Stability

• Art 9. « A variety shall be deemed to be stable if the expression of the characteristics…remain unchanged after repeated propagations or, in the case of a particular cycle of propagation, at the end of each such cycle. “

• This is a condition measured in duration• This condition has to exist even after registration. Article 64

Technical verification : “The Office shall verify the continuing existence unaltered of the protected varieties”. If stability fails there will be a Cancellation of the right (art 21) : “The Office shall cancel the Community plant variety right with effect in futurum if it is established that the conditions laid down in Article 8 or 9 are no longer complied with”.

Registration

• The documents and the species can be filed in a national office or at the central Office in Angers ; the species have to be sain, without virus

• The variety has to be discribed and to receive a new name (denomination)

• Art 59 : Objections to grant of right can be done by “Any person may lodge with the Office a written objection to the grant of a Community plant variety right.” For example if the variety is not new

Nullity and cancellation of the right

• If the conditions are not fullfiled the nullity will be declared by the Office itself (art 20) or after the « objection » of anyone within a short period (3 months)

• Cancellation will occur « with effect in futurum if it is established that the conditions laid down in Article 8 or 9 (= uniformity and stability) are no longer complied with” (art 21), or if the taxes are not paid.

• The appeal against the examination commision‘s decision shall be remitted to the Board of Appeal. Then there is an appeal before the CJ court of first instance and then before CJ

• The appeal is suspensive (art 67)

The owner• Art 11. « The person who bred, or discovered and developed the

variety, or his successor in title”= the breeder. • Is the creation of a employee devoted to the employer ? The

Regulation act refers to national law• You can have also co-breeders (joint ownership)• A legal person can file (art 12) • Claiming entitlement to a Community plant variety right (art 98) : “If

a Community plant variety right has been granted to a person who is not entitled to it under Article 11, the person entitled to it may, without prejudice to any other remedy which may be open to him under the laws of the Member States, claim to have the Community plant variety right transferred to him. “ For example a breach of contract

Duration of Community plant variety rights

Art 19 : 25 or 30 years according to the type of plants

Monopoly (art 13)

• A Community plant variety right shall have the effect that the holder or holders of the Community plant variety right, hereinafter referred to as 'the holder', shall be entitled to effect the acts set out in paragraph 2 : (a) production or reproduction (multiplication); (b) conditioning for the purpose of propagation; (c) offering for sale; (d) selling or other marketing; (e) exporting from the Community; (f) importing to the Community; (g) stocking for any of the purposes mentioned in (a) to (f)

• The juice or the jam of the fruit is also protected• The monopoly also concern the protection of the variety

denomination

Exception : farmer privilege (art14)• farmers are authorized to use for propagating purposes in the field,

on their own holding the product of the harvest which they have obtained by planting, on their own holding, propagating material of a variety

• This means that the farmer can reemploy freely the seeds from the crop in order to produce one another crop,

• The privilege is only for some varieties listed in art 14.2• The exception is free only for small farmers ; for big one’s they have to

“pay an equitable remuneration to the holder, which shall be sensibly lower than the amount charged for the licensed production “. The UE Court has estimated that the level could be at 50 % of the normal price of a license (8 th june 2006). The amount can be negociate (it is the case in Germany) between professional trade unions.

farmer privilege bis

• The concrete problem for the holder is to determine who are the users of the privilege.

• “relevant information shall be provided to the holders on their request, by farmers and by suppliers of processing services” (seed suppliers)

• This privilege is strictly personal to the farmer. Nevertheless it shows a strong lobby of agriculture in UE

Exception of the derived variety breeder

• The breeder can freely exploit the essentially derived variety. • From a variety protected you create a new variety, itself subject to protection or

not. It concerns « varieties which are essentially (this means mainly) derived from the variety in respect of which the Community plant variety right has been granted, where this variety is not itself an essentially derived variety”. This means that only the first generation of production is protected by the exception. If the distinction is not enough clear it is not derived and therefore the variety will still be in the monopoly’s scope.

• But if the new variety can be protected by variety plant the privilege doesn’t work. Why ? If you want to be protected there is no reason to have this benefit freely. You want a new monopoly, so do respect the previous monopoly (art 15 d).

• In this case the breeder must negociate a license with the previous owner (as for improvement license in patent). If the negociation fails a compulsory license is possible. After derivation a crossed license is possible in favor of the first variety ‘ s breeder (art29)

Other exceptions (art 15)

The Community plant variety rights shall not extend to: • (a) acts done privately and for non-commercial

purposes; • (b) acts done for experimental purposes; • (c) acts done for the purpose of breeding, or

discovering and developing other varieties; • exhaustion of Community plant variety rights

(art 16)

Counterfeiting• No common court of justice but an appreciation by national

specialized Courts on the basis of Regulation act• Provisional measures in order to stop counterfeiting are possible

if it is urgent to do so• Counterfeiting seizure measures can be taken in order to prove

the infringement• To appreciate it the judge has to compare the species and if

necessary after having growed these species. Frequently the judges need the report of an an expert

• The title’s owner can sue but also the licensee (art 104)• Prescription : 3 years. Starting point : knowledge of the act• States are free to establish criminal sanctions

Counterfeiting bis • Stay of proceedings by court. (art 106). In association with art 105 this text is not

clear : « Where an action relates to a Community plant variety right that has been granted and in respect of which proceedings for revocation or cancellation pursuant to Articles 20 or 21 have been initiated, the proceedings may be stayed in so far as the decision depends upon the validity of the Community plant variety right. “

• It seems that the national Court’s decision may not be given before the Office has decided on the validity of the right (nullity or cancellation for future), but it seems that the Court is not obliged to stay the procedure if it considers the right as valid (presumption of validity of art 105).

• If the court stays the procedure the text doesn’t say who can bring the action to the Office : the defender or the Court itself ? It seems that the defender has to bring the action

• Another solution would be that the Court would be self competent to decide of validity’s title as it is the case for community trademark and community design. The presumption of validity of art 105 seems to rule out this solution, TGI Paris has decided so, but in appeal Court of Paris modified the solution : the Office is competent for nullity

Other trials

• Sue for equitable remuneration• Dispute between the giver of license and licensee • “Claiming entitlement to a Community plant

variety right…If a Community plant variety right has been granted to a person who is not entitled… claim to have the Community plant variety right transferred to him” can be done. (art 98). But the text doesn’t tell who is competent : community Office or national Court

Licenses

• Either classical voluntary license (art27)• Either compulsary license in case of :- Conflict between two certificates (art 29 of

Regulation act) « On application, the compulsory exploitation right shall be granted to the holder in respect of an essentially derived variety”

- on grounds of public interest (art 29)

Other acts

• Transfer of the registered title (property right)• A variety plant design may be given as security

or be the subject of rights in rem (given for guarantee).

• A registered variety plant may be levied in execution.

• Theses acts have to be registered

statistics

• 48000 files in total in 2013 and 36000 titles granted. About 2500 applications per year ; this number si now nearly constant

• Cost : if only one seasonal crop 2500 €