Plant Variety Protection
1. Subject matter and scope
Despite a number of particularities involved with plant variety protection as compared, for example, with patents, plant variety rights are properly considered a part of intellectual property. Unlike patents (patent law), which relate to and protect generic, ie generally applicable technical teachings (instructions), including those in the area of biology (German Federal Supreme Court, BGH 27 March 1969, BGHZ 52, 74), which may consequently be viewed as technology-neutral, plant variety protection relates exclusively to breeding achievements in the area of plant breeding. It does not offer any protection to animal breeders. Contrary to the notion of an invention eligible for patent protection, which the legislature purposely did not define in the statutes, modern plant variety protection legislation explicitly specifies the subject matter of protection, the variety, with a statutory definition that is set forth at an international level and which has been subsequently transformed into national and regional laws. According to Art 1(vi) of the International Convention for the Protection of New Varieties of Plants (UPOV Convention) of 2 December 1961, and, following suit, § 2(1)(a) of the German Plant Variety Protection Act (GPVPA) and Art 5(2) of the Regulation on Community Plant Variety Rights (Regulation 2100/94), the notion ‘variety’ means:
‘A plant grouping within a single botanical taxon of lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be
(i) defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,
(ii) distinguished from any other plant grouping by the expression of at least one of the said characteristics and
(iii) considered as a unit with regard to its suitability for being propagated unchanged.’
By referring to a so-defined plant grouping, it is made clear that plant variety protection may not be understood as a form of (tangible) property. Plant variety protection rather covers the entire body of genetic information, ie the genome of the respective plant grouping. It also extends to the subsequent generations of the said plant grouping as long as the grouping retains the characteristics resulting from expression of the given genotype or combination of genotypes.
The right conferred to the breeder under the plant variety protection system, unlike a patent right, does not relate to a generally applicable and repeatable technical teaching, but exclusively to a given plant variety. Thereby the protected subject matter is not constituted of ‘seeds’, ‘seedlings’, ‘cuttings’, etc, as concrete propagation material, but of the entirety of the genetic information which determines the however-defined plant variety and which is passed over to the progenies.
Owing to Gregor Mendel’s genetics and the progress achieved in plant genetics, plant pathology, biochemistry and molecular biology, plant breeding since the beginning of the 20th century has been remarkably successful. Even before World War II, hybridization, ploidy and backcrossing had made substantial increases of harvest yields possible and thus contributed to a substantial reduction of nutritional problems in a number of countries. The subsequent developments of science and technology, which enriched plant breeding by such new methods as plant tissue culture, protoplasts fusion and microinjection, led—supported by recombinant DNA technology—to targeted gene transfer and, eventually, to herbicide, pesticide or insecticide resistant transgenic plants.
Plant breeding is a costly and time consuming activity. Due to the ability of biological material—seeds, seedlings, cuttings, etc—to self-replicate, however, its results, without adequate protection, can easily be exploited by anyone free of charge. This combination made the need for providing effective protection to plant breeders obvious even at the beginning of the 20th century. Attempts to make plant breeding results eligible for patent protection had, however, encountered numerous obstacles. First, plant breeding material is a living matter; furthermore, it was not possible to describe breeding methods in patent applications in such a complete manner that it could be repeated on the basis of that description alone. In order to overcome these obstacles, a number of European states adopted special statutes for protecting new varieties of plants, which took the specificities of the field into account. The pioneer in this regard was Czechoslovakia with its law of 1921. It was followed by France (1922 and 1932), the Netherlands (1942), Austria (1946) and the Federal Republic of Germany (Seeds Act of 1953). The primary goal of this legislation was to provide incentives for plant breeders to generate new and more efficient varieties in the interest of agriculture, including horticulture and forestry.
In order to at least partly open up patent protection for plant breeding results, in 1930 the US legislature adopted the Plant Patent Act, which introduced lower requirements for an enabling disclosure and a narrower scope of protection for asexually reproduced plants. Although the US Patent Act (35 USC) does not contain any exclusionary provisions regarding the invention of plants and plant varieties, it was only in 2001 that the US Supreme Court finally clarified that plants in general constitute patentable subject matter within the meaning of 35 USC § 101 (J.E.M. Ag Supply, Inc. v Pioneer Hi-Bred International, Inc. 534 US 124 (2001)). The Court has in particular clarified that it would be incorrect to conclude that the separate protection of asexually reproduced plants (under the Plant Patent Act, which has since been integrated into 35 USC) and sexually reproduced plants (under the Plant Variety Protection Act since 1978) means that plants do not constitute patentable subject matter under the general rules of the Patent Act. Rather, while the Patent Act does contain more stringent patentability requirements for ‘utility patents’, it also confers a greater scope of protection than the two other forms of protection.
Although not backed by any authoritative case law, some patent offices in Europe also started to grant patents for plant breeding methods and also for plant varieties. This was the case with the German Reichspatentamt beginning in the mid-1930s and similarly with patent offices in Belgium, France, Hungary, Italy and Sweden. Outside Europe, Japan followed the same policy. By contrast, neither plant patents nor any sui generis plant variety protection was available in Denmark, Greece, Norway or Switzerland. However, the practice of the German Patent Office, which continued to grant plant patents after World War II, was not initially confirmed by the courts (Federal Patent Court 16 October 1973, Bl. PMZ 1974, 203; BGH 6 July 1962, GRUR 1962, 577). According to the understanding of the courts, the patentability requirement of an enabling disclosure was not satisfied by written description alone. A change in attitude was only observed when the BGH started to accept as an enabling disclosure the deposit of micro-organisms in publicly accessible depositories as a complement to the written description for product patents in the 1980s (BGH 12 February 1987, BGHZ 100, 67; BGH 30 March 1993, GRUR 1993, 651).
2. The international system of plant varieties protection
The legal insecurity which dominated with respect to the availability of patent protection for plants as well as the uncoordinated development of sui generis protection for new varieties of plants in a number of European countries in the second half of the 1950s clearly revealed the need for the establishment of an international regime. An initiative of the French government of 1957, strongly supported by the Federal Republic of Germany and influenced by the principles laid down in the German Seeds Act of 1953, eventually proved successful in 1961 when the International Convention for the Protection of New Varieties of Plants was signed in Paris. With this Convention, the contracting parties have also established a Union for the Protection of New Varieties of Plants (Union pour la protection des obtentions végétales). The Convention, which since then has been known as ‘UPOV-Convention’ (UPOV-C), was established outside the framework of the Paris Convention for the Protection of Industrial Property (PC), thus is not a special agreement under Art 19 PC. The UPOV-C provides for a substantive law solution of problems related to the protection of plant-breeding achievements. It has established unified mandatory standards for its member states regarding the protection requirements, their examination, as well as the scope of protection and the duration of the breeder’s right established by the Convention. The UPOV-C was established outside the Paris Convention because most UPOV member states had not offered any protection for new varieties of plants. Thus, the unlimited application of the principle of national treatment found in Art 2 PC would have had negative consequences for the states parties to the new Convention.
The version of the UPOV-C, which was signed in 1961, did not yet contain a clear definition of the notion ‘variety.’ Under the condition that the new, homogenous, distinct and stable variety (covering also cultivars, clones, lines, stocks and hybrids) was at hand, which belonged to a genus or species included in the list of protected genera or species of the respective country, the UPOV-C accorded the exclusive right for commercial production and commercial distribution of the propagating material of the protected variety to its breeder or discoverer. Under the UPOV-C, no protection of breeding methods is available. The minimum term of protection was generally fixed at 15 years. For wines, fruit trees and their rootstocks, forest trees and ornamental trees, the minimum term of protection was 18 years. Not covered by the effect of the UPOV type of plant variety protection were goods for consumption, whether in the form of whole plants or parts of plants such as fruits. Moreover, the effect of the plant breeder’s right did not extend to the production of propagating material for internal use—eg method of sowing in the field—by the farmer (farmer’s privilege). Also, the 1961 version of the UPOV-C did not institute any dependency. For the use 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, no authorization of the breeder was required (breeder’s privilege). Thus, the breeder’s privilege did not apply where, as is the case with hybrids, the repeated use of the new variety is necessary for the commercial production of another variety. The protection requirements were examined based on field trials. Subsequent national developments were decisively influenced by the fact that under the 1961 UPOV-C, each member state ‘may recognize the right of the breeder provided for in this Convention by the grant either of a special title of protection or of a patent. Nevertheless, a member state whose national law admits protection under both of these forms may provide only one of them for one and the same botanical genus or species’ (prohibition—ban—of double protection).
The UPOV-C was first revised in 1978. Member states were allowed to broaden the content of the breeder’s right so as to also cover the end product. In order to enable the United States—whose laws provided protection for plant breeding results by plant patents as well as by plant breeder’s rights—to join UPOV, the ban of double protection was weakened. In the course of its general revision in 1991 (UPOV-C 1991), the double protection ban was removed definitively and entirely from the Convention.
Apart from the fixing of the notion ‘variety’ in Art 1(vi), a number of other changes were also introduced. They all have brought plant variety protection closer to patent protection. Under the UPOV-C 1991, after 10 years, contracting parties are obliged to offer protection for plant varieties of all genera and species. In case the breeder had no reasonable opportunity to exercise his right in relation to the propagating material, his right is extended to the harvested material, including entire plants and parts of plants (Art 14(2)). Moreover, in the event that the breeder had no reasonable opportunity to exercise his right in relation to the harvested material, contracting parties may extend his right as to also cover products directly obtained from the harvested material (Art 14(3)). Finally, Art 14(5) also extends the scope of protection to varieties that are essentially derived from the protected variety, where the protected variety itself is not an essentially derived variety.
Although UPOV-C 1991 retained the so-called breeder’s privilege, ie it continues to allow the use of protected varieties for further breeding purposes without authorization of the breeder, an authorization of the breeder is required for marketing if the result of the further breeding is an essentially derived variety (Art 14(5)). Contracting states are further allowed to provide for a farmer’s privilege (sometimes called agricultural privilege), however, only within reasonable limits and subject to the safeguarding of legitimate interests of the breeder (Art 15(2)), which in practice means subject to reasonable remuneration.
Without using the term ‘compulsory licence’, Art 17 allows contracting parties to restrict the exercise of a breeder’s right for reasons of public interest and only if the contracting party concerned takes all measures necessary to ensure that the breeder receives equitable remuneration. The term of protection was extended to a minimum of 20 years and in case of trees and wines, to at least 25 years (Art 19). Under Art 20 UPOV-C 1991, every variety has to be designated by a denomination which will be its generic designation. Consequently, a variety is identified by its denomination. This leads not only to problems of distinguishing specific variety denominations, but also to conflicts in relation to marks. According to § 13(1) and (2) no 4 of the German Trademark Act, an older variety denomination constitutes a relative protection obstacle (reason for cancellation).
After a very hesitant development of membership in the 45 years of its existence, UPOV now has 68 members (as of February 2011). The relatively recent increase in number of member states has primarily to be seen in the context of Art 27(3)(b) of the TRIPS Agreement, which obliges all WTO member states to provide for new varieties of plants protection either by patents or by an effective sui generis system or by any combination thereof.
3. Union level plant variety protection
By the adoption of Reg 2100/94 on Community plant variety rights in 1994, the European Union established a Community Plant Variety Rights System as the sole and exclusive form of Union industrial property rights for plant varieties (Art 1), having uniform effect within the territory of the Union and which can be granted, transferred or terminated only on a uniform basis (Art 2). Despite the exclusivity claim, however, Reg 2100/94, as a matter of principle, does not interfere with national plant variety rights, which continue to be granted in the Member States of the Union. The only limitation in this respect is that any variety which is the subject matter of an EU plant variety right cannot also be the subject of a national plant variety right. National rights granted contrary to this rule—prohibition of cumulative protection—are ineffective (Art 3 in connection with Art 92 Reg 2100/94). Regarding the protection requirements and the effects of protection, the regulation follows the UPOV-C 1991 standards. The general term of protection runs until the end of the 25th calendar year, or in case of varieties of tree and wine species until the 30th calendar year, following the year of grant (Art 19(1)(2) Reg 2100/94).
Regulation 2100/94 not only follows the principles of the 1991 UPOV-C, but is also in compliance with the TRIPS Agreement and the European Patent Convention (EPC). It has upheld the prohibition of double protection. The recitals of the regulation made it clear that the EPC excludes from patentability plant varieties as such. The so-called farmer’s privilege under the regulation is available only for fodder plants, cereals, potatoes and oil and fibre plants, whereby farmers have to pay the right holder an equitable remuneration, which is sensibly lower than the licensing fee charged for the production of propagating material of the same variety in the same area. Exempted from this obligation are, however, small farmers (Art 14 Reg 2100/94).
With Reg 2100/94, the Community Plant Variety Office, located in Angers, France, has also been established. It is a body of the EU whose organs are the administrative council, the president and the boards of appeal. Whereas the formalities of examination of applications are undertaken by the Office, the substantive protection requirements are examined by plant variety protection offices of the Member States.
On application by a Member State, by the European Commission or by an organization set up at EU level and registered by the Commission, the Office may grant a compulsory exploitation right, either to a category of persons satisfying specific requirements or to anyone in one or more Member States or throughout the Union on grounds of public interest and under reasonable conditions subject to approval by the administrative council. The reasonable conditions may include, inter alia, the payment of an appropriate royalty as equitable remuneration to the holder. On application and on the grounds of public interest, the Office can also grant a compulsory licence in respect of an essentially derived variety against the payment of an appropriate royalty as equitable remuneration to the holder of the initial variety (Art 29 (1)–(5) Reg 2100/94). Finally, subject to payment of an appropriate royalty to the respective right holder, the Office can also grant a compulsory licence to the owner of a patent for a biotechnological invention which cannot be exploited without infringing a prior plant variety right, and where the patentee has unsuccessfully sought the grant of a contractual licence, and provided also that the patented invention constitutes significant technical progress of considerable economic interest compared with the protected variety (Art 12 Directive 98/44). In case a holder of a Union plant variety right was granted a compulsory licence for the non-exclusive use of a patented invention under Art 12 of Directive 98/44, the Office, on application and subject to payment of an appropriate royalty as equitable remuneration, will grant a non-exclusive compulsory cross-licence for the use of the variety (Art 29(5)(a) Reg 2100/ 94).
Within two months of decisions of the Office, an appeal can be lodged with the Board of Appeal. Within two months from the service of decision of the Board of Appeal, a further appeal can be brought before the European Court of Justice (ECJ) on the grounds of lack of competence, infringement of an essential procedural requirement, infringement of the treaty, of Reg 2100/94 or of any rule of law relating to their application, or misuse of power (Art 73(1) and (2) Reg 2100/94). Courts of the Member States are competent for deciding on the infringements of Union plant variety rights according to the rules of the Lugano Convention (Art 101 Reg 2100/94).
Peter Lange, ‘Die Natur des Züchterrechts (Sortenschutzrecht) in Abgrenzung zur patentfähigen Erfindung’  GRUR Int 88; Joseph Straus, ‘The Relationship Between Plant Variety Protection and Patent Protection for Biotechnological Inventions from an International View Point’ (1987) 18 IIC 723; Hans Neumeier, Sortenschutz und/oder Patentschutz für Pflanzenzüchtungen (1990); Barry Greengras, ‘The 1991 Act of the UPOV Convention’ (1991) 12 EIPR 466; Noel Byrne, Commentary on the Substantive Law of the 1991 UPOV-Convention for the Protection of Plant Varieties (1991); Joseph Straus, ‘Der Schutz biotechnologischer Erfindungen, insbesondere von Pflanzenzüchtungen’ in Festschrift zum hundertjährigen Bestehen der Deutschen Vereinigung für Gewerblichen Rechtsschutz und Urheberrecht und ihrer Zeitschrift, vol I (1991) §§ 363; Rudolf Teschemacher, ‘Die Schnittstelle zwischen Patent- und Sortenschutz nach der Revision des UPOV Übereinkommens’ in Festschrift Nirk (1992) §§ 1005; Joseph Straus, ‘Pflanzenpatente und Sortenschutz—Friedliche Co-Existenz’  GRUR 794; Alfred Keukenschrijver, Sortenschutzgesetz unter Berücksichtigung der Verordnung No. 2100/94 (EG) des Rates über den gemeinschaftlichen Sortenschutz (2001); Michael A Kock, Susann Porzig and Eva Willnegger, ‘Der Schutz von pflanzenbiotechnologischen Erfindungen und von Pflanzensorten unter Berücksichtigung der Umsetzung der Biopatentrichtlinie’  GRUR Int 183; Margaret Llewelyn and Mike Adcock, European Plant Intellectual Property (2006); Herbert Leßmann and Gert Würtenberger, Deutsches und europäisches Sortenschutzrecht, Handbuch (2009).