I. 1) What are protectable plant varieties under the UPOV Convention

Nursery Hiedl, Altusried, Germany – Calluna vulgaris – © PBRights

The International Union for the Protection of New Varieties of Plants (UPOV) is an intergovernmental organization located in Geneva, Switzerland. The UPOV was established by the International Convention for the Protection of New Varieties of Plants (the “UPOV Convention”),  signed in Paris in 1961 and revised  in Geneve in 1972 (here), 1978 (here) and 1991 (here – see also WÜRTENBERGER, UPOV 1991 – A modern system of property rights for plant breedings or time for a new property right? ).

The goals of the UPOV is to provide and promote a sui generis protection system of plant variety protection, “with the aim of encouraging the development of new plant varieties for the benefits of the society.” (see here)

Furthermore, the main objectives of UPOV are to:

“- provide and develop the legal, administrative and technical basis for international cooperation in plant variety protection;

– assist States and organizations in the development of legislation and the implementation of an effective plant variety protection system; and

– enhance public awareness and understanding of the UPOV system of plant variety protection.” (see here)

On the one hand, the UPOV promotes international harmonization of plant variety protection between its members by developing a legal frame. For this purpose the UPOV establishes basic legal concepts, as for example a minimum term of protection for plant varieties or rules to be applied in the conduction of the examination of new plant varieties in order to seek protection (see here TGP/9/2). On the other hand, the UPOV assists its members in the development of its national legislation (see here UPOV/INF/6/5), provides information on the legal development of plant variety protection worldwide (see here UPOV publication No. 438(E)) and serves as a forum for the discussion of the UPOV system of plant variety protection and for exchanging experiences.

In order to join the UPOV, new candidate members have to develop national laws in accordance with the UPOV Act 1991. For this purpose, the candidate member shall adopt all measures necessary for the implementation of the Convention. In particular and according to the Guidance Document on how to ratify or accede to the 1991 Act of the UPOV Convention (see here UPOV/INF/14/1) it shall:

“(i) provide for appropriate legal remedies for the effective enforcement of breeders’ rights;

(ii) maintain an authority entrusted with the task of granting breeders’ rights or entrust the said task to an authority maintained by another Contracting Party;

(iii) ensure that the public is informed through the regular publication of information concerning – applications for and grants of breeders’ rights, and – proposed and approved denominations.”

Furthermore, the candidate state must be in a position, under its laws, to give effect to the provisions of the  1991 Act of the UPOV Convention

Old Members, which have joined the UPOV while older Convention Acts were in force, may at their discretion adopt a more recent Act.  Actually 17 members were bound by the 1978 Act, namely:  Argentina, Bolivia, Brazil, Chile, China, Colombia, Ecuador, Italy, Mexico, New Zealand, Nicaragua, Norway, Paraguay, Portugal, South Africa, Trinidad and Tobago and Uruguay (see here Annual Report of the Secretary-General for 2019).

There are some important differences between the 1978 and 1991 Acts, namely regarding the minimum scope of coverage, dual protection with patent, the minimum scope of exclusive rights in propagating material and  harvest material, the scope of protection the breeders’ exemption and farmers´ privilege.

Generally speaking, the 1991 Act creates a higher minimum standard of protection.

 
UPOV 1978
UPOV 1991
Duration of protection
Art. 8 The right conferred on the breeder shall be granted for a limited period. This period may not be less than fifteen years, computed from the date of issue of the title of protection. For vines, forest trees, fruit trees and ornamental trees, including, in each case, their rootstocks, the period of protection may not be less than eighteen years, computed from the said date.
Art. 19 (2) [Minimum period] The said period shall not be shorter than 20 years from the date of the grant of the breeder’s right. For trees and vines, the said period shall not be shorter than 25 years from the said date.
Scope of coverage
Art. 4 (1) This Convention may be applied to all botanical genera and species.
Progressive application of the provisions to additional genera or species within the following time frame: from five genera or species at time of accession to twenty-four genera or species eight years later (Art. 4 (2) and (3))
Members may limit the Act’s application within a genus or species to varieties with a particular manner of reproduction or multiplication, or a certain end-use (Art 2, (2))
Art. 3 (1) For states already members of the Union: after expiration of a period of five years after adhering to the 1991 Act to all plant genera and species ten years later.
Art. 3 (2) For new members of the Union: Progressive application of the provisions from fifteen plant genera or species to all plant genera and species ten years later.
Dual protection with patent
Art. 2 (1) Each member State of the Union may recognise 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 of the Union whose national law admits protection under both these forms may provide only one of them for one and the same botanical genus or species.

(Dual protection is not allowed)
(Prohibition of dual protection is removed)
Scope of exclusive rights in propagating material
Art. 5 (1) The effect of the right granted to the breeder is that his prior authorisation shall be required for - the production for purposes of commercial marketing; - the offering for sale and - the marketing of the reproductive or vegetative propagating material, as such, of the variety.
Art. 14 (1) [Acts in respect of the propagating material] (a) Subject to Articles 15 and 16, the following acts in respect of the propagating material of the protected variety shall require the authorization of the breeder: (i) production or reproduction (multiplication), (ii) conditioning for the purpose of propagation, (iii) offering for sale, (iv) selling or other marketing, (v) exporting, (vi) importing, (vii) stocking for any of the purposes mentioned in (i) to (vi), above.

(In comparison with 1978 Act, extensive enumeration of exclusive rights)
Scope of exclusive rights in harvest material

Art. 5 (1) (…) Vegetative propagating material shall be deemed to include whole plants. The right of the breeder shall extend to ornamental plants or parts thereof normally marketed for purposes other than propagation when they are used commercially as propagating material in the production of ornamental plants or cut flowers.
(With the exception of ornamental plants that are used for commercial propagating purposes, the 1978 Act does not provide protection for harvested material)
Art. 14 (2) [Acts in respect of the harvested material] Subject to Articles 15 and 16, the acts referred to in items (i) to (vii) of paragraph (1)(a) in respect of harvested material, including entire plants and parts of plants, obtained through the unauthorized use of propagating material of the protected variety shall require the authorization of the breeder, unless the breeder has had reasonable opportunity to exercise his right in relation to the said propagating material.
(Exclusive rights apply not only to propagating material but also to harvested material)
Breeder´s exemption
Art. 5 (3) Authorisation by the breeder shall not be required either for the utilisation of the variety as an initial source of variation for the purpose of creating other varieties or for the marketing of such varieties. Such authorisation shall be required, however, when the repeated use of the variety is necessary for the commercial production of another variety.
(Right of the breeders to freely use protected varieties to created new varieties is not limited)
Art 15 (1) [Compulsory exceptions] The breeder’s right shall not extend to
(i) acts done privately and for non-commercial purposes,
(ii) acts done for experimental purposes and
(iii) acts done for the purpose of breeding other varieties, and, except where the provisions of Article 14(5) apply, acts referred to in Article 14(1) to (4) in respect of such other varieties.
(Right of the breeders to use protected varieties to create new varieties is limited to such new varieties that are not “essentially derived varieties.)
Farmer´s Privilege
(As Art. 5 1978 Act of the UPOV Convention does not make any specific mention of replanting seed of a protected variety by farmers, farmer´s privilege is implicitly allowed without restrictions)
Art. 15 (1) [Compulsory exceptions] The breeder’s right shall not extend to (iii) acts done for the purpose of breeding other varieties, and, except where the provisions of Article 14(5) apply, acts referred to in Article 14(1) to (4) in respect of such other varieties.
(2) [Optional exception] Notwithstanding Article 14, each Contracting Party may, within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder, restrict the breeder’s right in relation to any variety in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety or a variety covered by Article 14(5)(a)(i) or (ii) [essentially derived varieties]
(Farmer´s privilege is allowed, within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder / with exception of essentially derived varieties).

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (see here ) establishes minimum standards of protection for intellectual property for all WTO member states. While the TRIPS Agreement requires the WTO member states to comply with the standards of preexisting agreements, such as the Paris Convention for the Protection of Industrial Property[1] and the Berner Convention for the Protection of Literary and Artistic Works[2], it does not mention or require member states to comply with the requirements of the UPOV Convention.

The only provision of the TRIPS Agreement regarding plant varieties is in Article 27, where it is defined which inventions must be eligible for patenting, and what can be exclude from patenting. Article 27.3(b) allows member states to exclude some kinds of inventions from patenting, i.e. plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, member states shall provide for the protection of plant varieties either by i) patents; ii) by an effective sui generis system or iii) by any combination thereof. 

The CPVR system

The Community plant variety rights system (CPVR system) is regulated by Council Regulation (EC) No 2100/94 on Community plant variety rights (the “Basic Regulation”) and it is implemented by the Community Plant Variety Office (CPVO) based on the UPOV 1991 Act. With exception of Greece, Cyprus, Luxembourg and Malta all EU States are UPOV members and have implemented a sui generis system of plant variety protection. As the CPVR system does not substitute the national laws of the EU, legislation of the Member States on plant variety protection and the CPVR system coexist. However, cumulative protection is prohibited (see WÜRTENBERGER/EKVAD/VAN DER KOOIJ/KIEWIET – European Union Plant Variety Protection).


[1] According to the World Intellectual Property Organization (WIPO) “the Paris Convention applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models (a kind of “small-scale patent” provided for by the laws of some countries), service marks, trade names (designations under which an industrial or commercial activity is carried out), geographical indications (indications of source and appellations of origin) and the repression of unfair competition.” To learn more about the Paris Convention see here.

[2] According to the World Intellectual Property Organization (WIPO) “The Berne Convention deals with the protection of works and the rights of their authors. It is based on three basic principles and contains a series of provisions determining the minimum protection to be granted, as well as special provisions available to developing countries that want to make use of them. To learn more about the Berne Convention see here.


I. Introduction

I. 2) The definition of the notion “variety” and its requirements


Published on May 15, 2021

Last updated on 19 June 2021