http://ipkitten.blogspot.com/2024/01/plant-varieties-and-priority-periods.html
The Italian Corte Suprema di Cassazione issued some interesting judgments about plant varieties in 2023. In particular, two cases clarified the assessment of novelty and distinctness of plant varieties that were the subject of earlier foreign IP rights, but didn’t claim priority in their subsequent Italian plant variety rights (PVR) applications.
Priority for Plant Varieties
| This Kat was full of beans after reading these decisions on Italian plant variety law. Images from Pexels. |
PVR applicants can claim priority from a foreign application made in a member state of the UPOV Convention (see Article 11). Breeders enjoy this right of priority for a period of twelve months. This principle was incorporated into Italian law with Presidential Decree of 12 August 1975, No. 974, Article 3.
But what are the consequences if a breeder files a PVR application after the priority period has expired? Last year, the Italian courts took the opportunity to provide guidance on whether an earlier PVR application would destroy novelty and whether an earlier PVR application should be included in the assessment of distinctness.
Distinct Beans?
One of the key criteria for PVR protection is that the plant variety must be distinct. The Italian Code of Industrial Property defines distinctness in Article 104, which provides as follows:
(1) The variety is deemed to be distinct if it is clearly distinguishable from any other variety whose existence, as of the date of filing of the application, is well known.
(2) In particular, another variety is deemed to be well known when: a) an application for the conferral of the breeder’s right or entry in an official register has been filed, in any country, provided that the application has the effect of conferring a breeder’s right or the entry of the varieties in the official register; b) it appears in public collections.
This provision was at the centre of an Italian Corte Suprema di Cassazione judgment issued on 28 February 2023 (an English translation was recently published in GRUR International here). The case concerned a variety of bean (Phaseoulus vulgaris) named ‘Etna’. It was a type of cranberry bean, whose uncooked beans are creamy white with maroon or magenta specks (like in the photo above).
In 1990, the Asgrow Seed Company applied for US plant variety protection (granted in 1992 as PVP Certificate No. 9100043). The company then filed an Italian PVR application for the same variety in 1993, which was well beyond the twelve month priority period. During the course of infringement proceedings, the alleged infringer argued that the Italian PVR was invalid for lack of distinctness. They argued that since the variety in the Italian PVR application was identical to the variety described in the US PVP certificate, it could not be distinct.
The Corte Suprema di Cassazione disagreed. As emphasised in the text of Article 104 above, distinctness is assessed by reference to “any other variety”. The court interpreted this to mean that when a breeder (or their successor) has applied for PVR for the same variety in another state:
the ‘same’ variety cannot be included in the concept of any ‘other’ variety that is a matter of common knowledge; the same variety is not therefore relevant for the purposes of the distinctness assessment provided for by law.
Therefore, the US PVP certificate for the ‘Etna’ bean would not be included in the assessment of distinctness of that same variety in Italy.
Novel Grapes?
US plant variety rights caused trouble in Italy again, but this time concerning the novelty assessment. The Italian Code of Industrial Property defines novelty in Article 103, which provides as follows:
1. The variety shall be deemed to be new when, as of the date of filing of the breeder application, the vegetative reproduction or multiplication material or a harvest product of the variety has not been sold or otherwise transferred to third parties, by the breeder or with his consent, for the purposes of exploitation of the variety: a) on the Italian territory for more than one year from the date of filing of the application; b) in any other Country for more than four years, or in the case of trees and vines, for more than six years.
The case (summarised in English here) concerned a variety of table grape owned by the University of California, which obtained a plant patent in the US and then sought PVR protection in Italy more than one year later. Facing infringement proceedings, some unauthorised growers argued that the variety lacked novelty due to the earlier US application.
In the judgment issued on 29 August 2023 (No. 25439), the Corte Suprema di Cassazione again held that it was not fatal that the Italian application was made after the priority period had expired. Looking at the text of the statute, which corresponds to the language of the UPOV Convention and the EU Basic Regulation, the court highlighted that the novelty standard for plant varieties is very different from patents.
Rather than the ‘absolute novelty’ required for patents, plant varieties require ‘commercial novelty’. The propagating or harvested material of the new variety must not have been subjected to sale or other commercial exploitation outside of the grace periods set out in Article 103. Thus, for example, as previously discussed by Katfriend Dr Titilayo Adebola, the EU courts held that the novelty of the Pink Lady apple variety was not destroyed by plantings in Australia for experimental purposes that occurred outside of the grace period. Similarly, the Corte Suprema di Cassazione held that the filing of a foreign IP application would not be considered a sale or commercial exploitation of the variety, and therefore was not relevant for the novelty assessment.
Remarks
Judges and commentators often describe plant variety rights as a ‘patent-like’ form of IP protection, but as the Corte Suprema di Cassazione has made clear, these analogies can easily lead practitioners astray. Patent lawyers who are accustomed to ‘absolute’ novelty may be surprised by the lengthy grace periods and focus on commercial acts under plant variety laws. Nevertheless, during the development of the UPOV Convention, there was a very deliberate choice to depart from the approach to novelty in the Paris Convention, to better suit the needs of plant breeders.
It is worth noting that the same is not true for the US Plant Patent Act of 1930, which predates the UPOV Convention and adopts the same one year grace period as for US utility patents. This has occasionally frustrated American plant breeders, leading to some attempts to introduce a ten year grace period for plant patents in the early 2000s (but these failed). Consequently, breeders should not dawdle if they plan to seek plant patent protection in the US after obtaining PVR in another jurisdiction, lest they get caught out by priority rules that are much less forgiving than Italy’s.
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