Obtaining Plant Variety Protection in Europe

By Stefano Borrini

General introduction

1. In the European Union (EU) plant variety protection – sometimes referred to as Plant Breeder’s Rights or PBRs – is provided by the Community Plant Variety Office (“CPVO”). The CPVO is “a self-financed EU agency responsible for the management of the Community Plant Variety Rights System. Located in Angers, France, the CPVO was created by the Council Regulation 2100/94 and has been operational since April 1995.” National protection is available, but EU and national protection on the same variety cannot coexist, and EU protection would prevail. From 1995 through 2017 the CPVO has received 61,513 applications. In 2017, 3,422 applications were received, with 47.57 % of the applications directed to ornamentals, which continue to be the largest group of applications filed. Figure 1 below gives a view of the geographical coverage of EU Plant Variety Rights (coverage represented by the darker colour). It is to be noted that obtaining protection in Switzerland (in lighter colour) requires a separate application, and a different time frame for novelty applies.

2. The system of Community plant variety rights is established and managed by the CPVO, “the sole and exclusive form of Community industrial property right for plant varieties.” This holds true irrespective of the species, since both sexually and asexually reproduced species may be protected only via Plant Breeder’s rights.
   1. This represents a first difference from the situation in the USA, where Plant Patents are available for the protection of varieties of asexually reproduced plants while certificates obtainable under the Plant Variety Protection Act are available for the protection of sexually reproduced plants. Moreover, it must be noted that the holder of a USA Plant Patent may prevent a third party from using the protected variety in a breeding program, while this is not possible according to EU law. Finally, utility patent protection is not available in the EU for plant varieties.
3. The procedure for obtaining plant variety rights before the CPVO is shown below in Figure 2.
4. The procedure starts with an application for a variety which needs to satisfy the following requirements: novelty, distinctness, uniformity and stability, suitable varietal denomination. A brief description follows.
   1. Novelty is lost only as a consequence of marketing the variety within a certain time frame, provided that such marketing took place with the consent of the breeder and for the purpose of exploitation of the variety. More specifically:A variety shall be deemed to be new if, at the date of application determined pursuant to Article 51, variety constituents or harvested material of the variety have not been sold or otherwise disposed of to others, by or with the consent of the breeder within the meaning of Article 11, for purposes of exploitation of the variety: (a) earlier than one year before the abovementioned date, within the territory of the Community; (b) earlier than four years or, in the case of trees or of vines, earlier than six years before the said date, outside the territory of the Community
   2. To be noted that, unlike USA law (Plant Patents) under which substantially the sale of an (asexually reproduced) plant all over the world triggers a period of one year for filing a valid application, EU law allows a longer period according to the place of sale.
   3. Distinctness is satisfied when the variety is clearly distinguishable from any other variety whose existence is a matter of common knowledge on the date of application. Uniformity is satisfied when the variety is sufficiently uniform in the characteristics included in the examination of distinctness. Finally, stability is satisfied when the expression of the characteristics examined for assessing distinctness or used for the variety description, remain unchanged after repeated propagation.
   4. Varietal denomination. An application shall propose a variety denomination which may accompany the application, to be regarded as the generic designation of the variety.
5. Examination procedure. The CPVO procedure provides for field trials before grant. Such trials (often named DUS trials – Distinctness Uniformity Stability) are carried out in specialized institutes where the candidate variety is grown in comparison with known varieties (so-called varieties of common general knowledge). The aim of the trial is to check the requirements of distinctness, uniformity and stability. This is not only a remarkable difference with USA Plant patent procedure (where a paper example is carried out), but introduces a critical factor – the shipment of plant material – which is even more critical for Applicants from outside the EU. Two main issues have to be faced: a) the start of the period for submission of plant material for examination purposes; and b) the phytosanitary provisions to which the plant material to be submitted must comply.
   1. The beginning of DUS trials – and the submission of plant material – is determined by the filing date. For each species the CPVO sets a date – defined the closing date – which determines the start of trials with respect to the filing date. Taking as an example the case of apple – for which the closing date is December 31 of each year – for all applications filed before 31 December 2018 the trials will start in March 2019, while for all applications filed after 31 December 2018 the trials will start in March 2020. The critical factor is that the CPVO assumes that any Applicant is aware of these deadlines to the effect that requests for deferment are as a rule, refused. The CPVO has however set so-called postponement rules which cover very specific situations (for example, plant material coming from the other hemisphere), but even in this case only one reprieve is granted to any Applicant. Lack of delivery of plant material leads usually to refusal of the application.
   2. The second issue is more complex. In recent years the spread of harmful organisms had led the EU to take emergency control measures. The most known of these organisms is Xylella fastidiosa, which is one of the most dangerous plant bacteria worldwide, causing a variety of diseases, with huge economic impact for agriculture and the environment. This has led the EU to introduce strict control measures which apply also to plant material submitted for the trials. The measures are inconvenient for non-EU based Applicants, and are likely to become stricter in the future. It is strongly advised to deal with these issues before planning any filing.
6. Grant. When the DUS trials have a positive outcome, no bar to novelty is found and the varietal denomination is approved, a Community Plant Variety Right is granted. This right shall run until the end of the 25th calendar year or, in the case of varieties of vine and tree species, until the end of the 30th calendar year following the year of grant. In order to maintain the Community plant variety right, annual maintenance fees must be paid for the whole duration of the right; non-payment of an annual fee before the expiry of the right will lead to a lapse of the right. Another peculiarity of the CPVO system is that the amount of the annual maintenance fee is flat, currently fixed at 330 € for any annuity and for all the territory of the EU – currently comprising 28 States – which makes maintenance of the rights really cost-effective.

About the author: Stefano Borrini is an Italian attorney at Società Italiana Brevetti S.p.A. and has particular experience in plant variety protection as procedural representative before the Community Plant Variety Office (CPVO).

This article appeared in the December 2018 issue of Global Patent Prosecution. To view our past issues, as well as other firm newsletters, please click here.