2016 CIOPORA Guide to Plant Breeders' Rights

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Plant variety protection is provided on a territory-by-territory basis throughout much of the world to encourage the origination of new plant varieties by rewarding the originators of new varieties that meet certain prerequisites with the right to a limited exclusivity in the new plant variety that they developed. One such prerequisite that must be satisfied in each country/ territory is that the variety is ‘new’ or ‘novel’. However, what is meant by ‘novel’ is not necessarily uniform across territories. by Travis W. Bliss and Benton Duffett Buchanan Ingersoll & Rooney, P.C. Overly stringent ‘novelty’ requirement for U.S. Plant Patents Does the U.S. miss out on additional new varieties developed abroad? Because of the territorial nature of plant protection, an originator of a new variety has certain choices to make regarding protection of said variety. Is variety protection to be sought? If so, should the protection be in a single country, or should additional countries be considered? Making these decisions frequently involves an analysis of many factors, including the type of plant that was developed and the climate and cultural habits of the country for which protection is being considered. This decision-making process is further complicated by the fact that the U.S. applies a novelty standard for its Plant Patents that differs from – and is much more stringent than – the standard applied by much of the world. As a result of the differing legal standards, it is a distinct possibility that the U.S. is actually missing out on the introduction of some new plant varieties that were developed abroad. History of plant protection in the U.S. The United States was the first country in the world to provide a governmental system to grant exclusivity to the originator of a plant via the Plant Patent Act of 1930 (now 35 U.S.C. § 161 et seq.). This system grants a U.S. Plant Patent to the creator(s) of new vegetatively (asexually) reproduced plants. The Plant Patent provides the holder with an initial period of exclusivity (currently 20 years from the application submission date), after which the exclusivity ends and the plant is considered to have passed into the public domain. Nearly 27,000 vegetatively reproduced plant varieties have been protected in the United States by this method, to date. In 1961, the UPOV International Convention encouraged countries throughout the world to offer protection for new plants, generally referred to as Plant Breeders Rights (“PBR”). Subsequent amendments, including those of 1991, have brought further refinements to the UPOV Plant Breeders Rights system. Seventy-four countries have chosen to embrace this treaty, including the U.S. To be a member of the UPOV, a country must have plant variety protection laws that meet certain criteria. To meet that requirement, the U.S. enacted the Plant Variety Protection Act of 1970, which primarily protects seed reproduced plants (7 U.S.C. § 2321- 2582). As a result, the U.S. now has two separate systems for protecting new plant varieties: the original Plant Patent system and the newer Plant Variety Protection (“PVP”) system. Two different plant protection laws The existence of these two different plant protection laws in the U.S. has caused an interesting scenario in terms of ‘novelty’ requirements in the U.S. While the U.S. Plant Variety Protection Act of 1970, directed toward seed reproduced plants, has adopted the prescribed UPOV “novelty” standard, the original U.S. Plant Patent system for vegetatively reproduced plants has not been amended to conform to the UPOV definition of ‘novelty’, but rather the novelty requirement for U.S. Plant Patents remains consistent with that of other types of inventions. The plant protection system of UPOV has recognized that the introduction of a new plant variety in various countries/territories throughout the world commonly requires unique considerations unlike those encountered when contemplating the introduction of non-plant inventions (e.g., machines or inanimate products). More specifically, the satisfactory functioning of a previously unknown plant variety under diverse growing environments is subject to confirmation through time-consuming experimental growing at differing locations. Only thereafter can an informed decision be made concerning where introduction and protection of the new plant variety should be pursued. Additionally, plant quarantine issues additionally influence whether a plant variety can be grown in another country and under what circumstances. The UPOV system includes standards, such as the ‘novelty’ standard, that take into account these special considerations for new plant varieties. The UPOV ‘novelty’ approach is believed to provide a more realistic standard for determining when novelty is lost once a new plant variety has been introduced to the public. Under the UPOV rules, for a new variety to be ‘novel’, the PBR Application must be filed less than one year after the variety was first “sold or otherwise disposed of to others” in the territory where the Application for protection is filed and must be filed less than four years after the variety was first “sold or otherwise disposed of to others” elsewhere in the world (or 6 years for a tree or vine). This is in stark contrast to the novelty requirement for a U.S. Plant Patent. 26 www.FloraCultureInternational.com | October 2016
Guide To Plant Breeders' Rights 2016 The one-year window The America Invents Act, effective March 16, 2013, among other things, restates the ‘novelty’ requirement for all U.S. Patents, including traditional Plant Patents. Under this standard, ‘novelty’ is now deemed to end in the United States when a plant was “on sale, or otherwise available to the public before the effective filing date” anywhere in the world. However, if the public availability was less than one year prior to the filing date of the Plant Patent Application, then it will not destroy novelty so long as the public availability was the result of actions of the breeder/inventor (or another who obtained the plant directly or indirectly from the breeder/inventor). Thus, though the novelty standards are similar for U.S. Plant Patents and UPOV Plant Breeder’s Rights with regard to availability of the new variety within the territory in which protection is being sought, they differ greatly with regard to public availability outside of the territory. More specifically, unlike the UPOV ‘novelty’ standard of 4 years (6 years for trees and vines) for availability outside the territory, a patentability issue will likely arise for a U.S. Plant Patent if there was plant availability (sufficient for the general public to gain possession of the plant) anywhere in the world more than one year prior to the effective filing date in the United States. Plant originators/inventors outside the U.S. need to be alert to this important precondition – Plant Patent protection must be timely sought in the United States once a new plant is introduced anywhere in the world. Global harmonization? Thus, one is left to reflect on whether this issue may be resulting in the United States missing out on the introduction of additional asexually reproduced plant varieties from abroad due to the owners of those new varieties being discouraged from entering the U.S. as a result of the atypically stringent ‘novelty’ standard applied to U.S. Plant Patents. For example, if an originator of a new plant variety introduced the new variety abroad >1 year earlier, why would he/ she then bring that variety into the U.S. when no Plant Patent protection can now be obtained? This raises the ultimate question: Should the traditional Plant Patent law of the United States (35 U.S.C. § 161 et seq.) should be modified to achieve global harmonization with respect to the definitions of plant ‘novelty’? Doing so would likely make the current ‘novelty’ standard being applied more realistic in view of the unique challenges faced by persons developing new plant varieties while simultaneously providing the U.S. with the benefit of an expanded array of recently-created plants. Thus, it seems there is a strong argument that an adjustment to the novelty standard for U.S. Plant Patents would be beneficial for both plant breeders and the public as a whole. |||
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2016 CIOPORA Guide to Plant Breeders' Rights

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