A system developed specifically to protect respective plant varieties suggests that it clearly rules out, or leaves only limited space to, patent protection.
The first difference between the PBR and the patent system is related to the object of protection. While the PBR system covers new plant varieties defined by specific phenotypical characteristics that are expressed as the result of a given genotype, the patent system covers inventions in all fields of technology abstract teachings. Consequently, Article 53(b) European Patent Convention (here), for example, excluded plant varieties as such from patent protection (see WÜRTENBERGER, Patentability of Plants and Animals exclusively obtained by Essentially Biological Processes, here).
However, as modern techniques (‘SMART Breeding’), where chemical or physical— or, in any case, nonbiological — nowadays play an increasing role for the breeding of new varieties, the differentiation of biological plant variety protection and technical patent protection have become significantly less important. Thus, the question of the relationship between plant variety and patent protection is more relevant than ever and has practical legal implications as the requirements for obtaining plant variety protection are less strict.
The patent requires a technical instruction (i.e. teaching), whereby the invention has to be new, involve an inventive step, and has to be susceptible to industrial application (see here Art. 27 TRIPS). On the other hand, the requirements for the grant of a plant variety right – distinctness, uniformity, and stability, are less demanding and easier to determine. This results in a relatively narrow scope of protection of a plant variety right: it does not generally extend to all products (particularly not to those for consumption or use), but only to the propagation material of the protected variety and material directly obtained from unauthorized propagation material.
Furthermore, the scope of plant variety protection is limited by the so-called ‘breeder’s exemption’, which enables any other breeder to use material of a protected variety to breed and develop new varieties, without the consent of the breeder of the initial (protected) variety (although a certain dependence is provided for by the legislator). In contrast, a patent has the legal effect of giving comprehensive exclusive rights which the owner, alone, is entitled to exercise (see Würtenberger / Ekvad / van der Kooij/Kiewiet – European Union Plant Variety Protection, Chapter I).
If the patented invention is a process, the inventor is the only person who is allowed to explore said process. His right, as far as a process patent is concerned, does not extend only to the application of the patent, but also to products directly obtained from the process. Apart from a special exemption for research, there does not exist a general freedom to develop further patent-protected objects or processes as with regard to protected plant varieties.
Another difference is linked to the justification of exclusive rights. In the case of plant variety rights the justification lies in the contribution of the breeder having created something previously unknown. Moreover, while in patent law the question whether an invention is new, inter alia, is determined by whether it forms part of the state of the art (see EPC, Article 54), the question of novelty in a wider sense in plant variety law is two-folded: novelty in relation to the varieties as described as distinctness, and novelty in relation to the candidate variety (see I. 3) Novelty).
Dual protection with patent
A prohibition of dual protection with patent right has been established in the 1961 UPOV Convention. Admittedly, in the latest 1991 UPOV Convention, the dual protection is no longer expressly contained (see table here). Nevertheless, it is questionable whether the conclusion may be drawn that it is abolished, or that there is no legal necessity for double protection.
Regarding the European CPVR system, prohibition of dual protection is provided in Article 92 of the Regulation 2100/94 (here), as well in Article 4, paragraph 1(a) of the Directive on the protection of biotechnological inventions (here). Therefore, patent protection cannot exist alongside plant variety protection for the same object. While a patent may protect a component to be implemented into plants of different varieties or species, plant variety rights protect only one individual variety. There are, however, areas of protection where plant variety protection alone should be applied, and there are others where patent protection may be granted either alongside or on its own (see Würtenberger / Ekvad / van der Kooij – European Union Plant Variety Protection – Chapter I).
Published on May 15, 2021