The criteria having to be fulfilled in order to characterize the candidate variety as new are defined in Article 6 (1) of the 1991 Act of the UPOV Convention (regarding the CPVR system see Article 10 Regulation (EC) No 2100/94 (here) while the wording of this provision is different to Article 6 (1) of the UPOV Convention 1991, the content is the same – see Würtenberger / Ekvad / van der Kooij / Kiewiet– European Union Plant Variety Protection).
According to Article 6 (1):
“ (1) [Criteria] The variety shall be deemed to be new if, at the date of filing of the application for a breeder’s right, propagating or harvested material of the variety has not been sold or otherwise disposed of to others, by or with the consent of the breeder, for purposes of exploitation of the variety
(i) in the territory of the Contracting Party in which the application has been filed earlier than one year before that date and
(ii) in a territory other than that of the Contracting Party in which the application has been filed earlier than four years or, in the case of trees or of vines, earlier than six years before the said date.”
According to the Explanatory Notes on Novelty Under the UPOV Convention – UPOV/EXN/NOV/1 (here), the extended period for trees and vines takes into consideration the slower growth and multiplication for these types of plants.
The factors determining whether material released to others within certain time limits prior to the application date (outside the relevant grace period) destroys novelty depends on
. whether the purpose of such disposal was for commercial exploitation, i.e. for exploitation for profit, and
. whether the disposal was made by the breeder or with his consent to others (third parties).
Purpose of disposal
The determining factor whether material released to others destroys novelty depends on the purpose of such disposal. Novelty destroying are only those acts which aim at the exploitation of the variety. The purpose of the provision lies in the qualification of commercial exploitation activities, that is to say activities related to exploitation for profit (see Explanatory Notes – UPOV/EXN/NOV/1, here; for the CPVR system see Case T 112/18 – Pink Lady, here).
Article 6 (1) of the 1991 Act of the UPOV and Article 10 (1) Regulation (EC) No 2100/94 (here) state that the selling of variety constituents or harvested material of the variety or the disposition of the same for purposes of exploitation of the variety are novelty destroying. What may be understood as “selling activities” is determined by the civil laws of the relevant Member State.
In the CPVR system, the Community Plant Variety Office (CPVO) requests the breeder to indicate the application papers the date of the first disposal of material of the candidate variety for commercial purposes. The Office does not, however, examine whether the information provided by the applicant is true.
According to Article 53 of the Regulation (EC) No 2100/94 (here), the CPVO must perform a formal examination of an application and, if the formal requirements are fulfilled, enter into a substantive examination according to Article 54 of the Regulation. Afterwards, the technical examination according to Article 55 of the Regulation will be performed.
In the course of the substantive examination the Office shall examine whether the variety is new pursuant to Article 10 of the Regulation (EC) No 2100/94. The examination obligations of the CPVO have to be seen in light of Article 76 of the Regulation which states that the examination of the facts must be made by the Office of its own motion. Hence, the CPVO is obliged in light of Article 76 of the Regulation to examine whether there are. If indications are given that a candidate variety might no longer be new, the Office is obliged to request the applicant to provide suitable evidence that, despite the result of the examination by the Office, the candidate variety fulfills the protection requirement “novelty” (see here Case T-767/14, here).
A disposal for the purpose of testing the variety, which does not amount to sale or disposal of to third parties for the purpose of exploitation of the variety, does not destroy novelty (see Explanatory Notes – UPOV/EXN/NOV/1, here; regarding the CPVR system, see T‑765/17 – Pinova (not published), paragraph 74).
As commercial trials aim at assessing varieties under commercial conditions across a range of soil types and different farming systems to determine their value to customers, commercial evaluation does not amount to commercial exploitation (no exploitation for profit). Accordingly, sales or disposals made for testing purposes before the grace period do not destroy novelty (for the CPVR system see T‑765/17 – Pinova (not published) and Case T 112/18 – Pink Lady – here).
Disposal to the others
According to Explanatory Notes UPOV/EXN/NOV/1(here) following acts may be considered not to result in the loss of novelty:
“(i) trials of the variety not involving sale or disposal of to others for purposes of exploitation of the variety (clarified in 1978 Act);
(ii) sale or disposal of to others without the consent of the breeder;
(iii) sale or disposal of to others that forms part of an agreement for the transfer of rights to the successor in title;
(iv) sale or disposal of to others that forms part of an agreement under which a person multiplies propagating material of a variety on behalf of the breeder where that agreement requires that the property in the multiplied material of the variety reverts to the breeder;
(v) sale or disposal of to others that forms part of an agreement under which a person undertakes field tests or laboratory trials, or small-scale processing trials, with a view to evaluating the variety;
(vi) sale or disposal of to others that forms part of the fulfillment of a statutory or administrative obligation, in particular concerning biosafety or the entry of varieties in an official catalogue of varieties admitted to trade;
(vii) sale or disposal of to others of harvested material which is a by-product or a surplus product of the creation of the variety or of the activities referred to in items (iv) to (vi) above, provided that the said material is sold or disposed of without variety identification for the purposes of consumption; and
(viii) disposal of to others for the purposes of displaying the variety at an official, or officially recognized, exhibition.”
For the CPVR system, Article 10(2) Regulation (EC) No 2100/94 (here) provides:
“The disposal of variety constituents to an official body for statutory purposes, or to others on the basis of a contractual or other legal relationship solely for production, reproduction, multiplication, conditioning or storage, shall not be deemed to be a disposal to others within the meaning of paragraph 1, provided that the breeder preserves the exclusive right of disposal of these and other variety constituents, and no further disposal is made. However, such disposal of variety constituents shall be deemed to be a disposal in terms of paragraph 1 if these constituents are repeatedly used in the production of a hybrid variety and if there is disposal of variety constituents or harvested material of the hybrid variety.”
The purpose of Article 10(2) is to specify the circumstances under which certain (legal) situations are covered by the concept of disposal for purposes of exploitation of the variety or not, within the meaning of Article 10(1) Regulation (EC) No 2100/94 (here) (see also Case T 112/18 – Pink Lady – here).
Published on May 15, 2021