Observation in the agricultural environment has always been a relevant aspect for those involved in modelling plant growth and development. In the agricultural sector, the reward for the great efforts of farm owners does not usually translate into high numbers that encourage current farmers and motivate young people to invest and commit to this primary sector subjected to changing climate conditions and also, why not say it, to the market and the unfair regulations to which farmers in different countries are subjected.
The very low prices offered season after season to farmers for their products give rise to the collective to pursue profitability, for example, by intensifying production, either by buying new plots of land or by over-intensifying cultivation (preferably with irrigation), or both. But in the not so distant future, this type of crop management will be combined with the use of plant varieties tolerant to biotic (e.g. pests) or abiotic (e.g. frost, drought) stresses that produce products under these conditions or even products with improved characteristics even under these unfavourable growing conditions. There are already thousands of plant varieties that are optimal for use in the new conditions that are being created by climate trends. However, New Genomic Techniques (NGTs) will make it possible to generate multi-tolerant plant varieties in a very specific way, which will undoubtedly be in high demand.
If the farmer chooses to follow the path opened up by large trading companies, that of competing for quantity (greater quantity plus economic profit), cultivating traditional varieties will not make it possible to generate yields that can provide the “expected” profitability. Therefore, in that case, the legal use of these “latest generation” varieties is and will become attractive and even necessary.
Horticultural crops, wheat, vines, olive trees, almond trees, pistachio trees, etc., even golf grass (Agrostis stolinifera) are the subject of continuous improvement by a very active sector that is beginning to replace traditional crop breeding techniques (crossing and selection) with other more sophisticated techniques that will revolutionise the landscape in the future.
In this scenario, all actors involved in the plant production chain, and of course, without fail, plant breeders and farmers themselves, must have the fullest knowledge of the rights that have been generated by breeding new varieties, and the implications of growing them, harvesting and selling any plant material, harvested material or product made from such material. This is essential for obvious reasons.
The requirements for the granting of plant variety rights are limited to novelty, distinctness, uniformity and stability (DUS) of the plant material and having a valid variety name. In order to analyse compliance with DUS (distinctness, uniformity and stability) requirements, the applicant for protection is obliged to fill in a technical questionnaire in which he has to describe point by point the degree of difference of certain morphological (or sometimes physiological) characteristics which are described in detail from the growth habit, stems, leaves, flowers or fruits. Subsequently, the technical examination is carried out in the corresponding examination centre, where the examination is carried out for at least 2 growing seasons in the case of varieties of e.g. horticultural species, but for varieties of woody species many more years are required, especially taking into account that it is the fruit where the differential characteristics with respect to the well-known varieties are to be found, since sometimes (in woody species) the fruits do not start to appear on grown plants being examined until after 3 years (in the best of cases), and it is necessary to check that these differential characteristics remain stable and homogeneous over time and generations. In order to reach this point where the corresponding National/Regional Office issues the Plant Variety Title, the holder has had to spend a lot of time and resources, and it is a gamble with a certain risk and irrecoverable time.
A farmer who uses protected plant varieties for which he does not have authorisation from the holder of the plant variety rights may be infringing the breeder’s rights and, as a consequence, the holder may demand the cessation of the acts that violate his rights, compensation for damages and losses (the infringing plant material may be attributed to him), collection of the plant material and its possible destruction, mainly.
Therefore, by means of the breeder’s authorisation, and always in accordance with the legal regulations and also in accordance with the precedent that is being generated in these matters, the interested parties (nursery operators, farmers, dealers, etc.) could use the propagation material of the protected variety in such a way that they could lawfully carry out the following actions, among others: production or reproduction (propagation), sale or any other form of marketing, export, import, or simply possession for the aforementioned purposes.
Breeders’ rights infringers will be liable for damages and losses for the acts indicated in the previous paragraph and, additionally, in reference to the use of the variety name, for omitting or changing the variety name of the protected variety or for using it in a confusing way for other varieties of the same species or of a botanically close species. An important aspect to consider is that the compensation in favour of the holder of the plant variety right will include the value of the loss suffered, the loss of profit and the damage caused by the loss of prestige of the protected variety due to such infringing use.
The use of harvested material, including entire plants and parts of plants, or products made directly from harvested material, obtained by unauthorised use of propagation material of the protected variety, also requires the authorisation of the holder of the rights, unless the breeder has had reasonable opportunity to exercise his right in relation to such propagation material. This may have an impact on the farmers themselves who are marketing fruit from fruit trees belonging to a protected variety on an annual basis, as it may infringe the breeder’s rights if the breeder has not been able to exercise his right with the nursery operator who sold him the seedlings years ago. This can be very costly for the farmer himself, given that woody varieties take many years to come into production, and therefore makes it necessary for the farmer to properly ensure the legality of the plant material he buys for his commercial exploitation.
A very relevant aspect, which broadened the scope of application of breeders’ rights, making them more attractive and adjusted to the technological capacity to obtain modern varieties, was the extension of breeders’ rights to varieties “essentially derived” from it, included in the 1991 Act of the Convention of the International Union for the Protection of New Varieties of Plants (UPOV). However, this term is very controversial and has given rise to well-known disputes such as the case of the mandarin varieties “Tango” and “Nadorcott” in Spain, or the Gypsophila varieties “Blancanieves” and “Dangypmini” in the Netherlands. According to UPOV, in its latest explanatory notes in this respect (October 2023), discerning the existence of an essential derivation relation between varieties is a matter for the holder of the plant breeder’s right over the initial variety in question, i.e. he has the burden of proof.
At this point, we would like to highlight two very important aspects. The first of these concerns the limitations of the breeder’s right, since it will not extend to acts carried out in a private context for non-commercial purposes, to acts carried out for experimental purposes and, in a Sui generis manner (exclusive to this intellectual property right), to acts carried out for the purpose of creating new varieties. It is the latter act that is particularly relevant, as the plant material of protected varieties can be used by the breeders’ own competitors for the purpose of improving the variety. However, it should not go unnoticed that the acts of generating new varieties will fall within the breeder’s right if the varieties obtained are essentially derived from or not clearly distinguishable from the protected variety from which they are derived. In other words, in addition to the commercial use of these new varieties obtained, the very act of creating the new varieties, by crossing or selection or by any other more recent technique (e.g. NGTs), would constitute an infringing act.
The second aspect to highlight is really useful for farmers themselves, namely the well-known “farmer’s privilege”. According to Article 14 of Law 3/2000 on the legal system for the protection of plant varieties, farmers are authorised to use for propagation purposes on their own holdings (owned or leased land) the product of the harvest obtained from the sowing of propagation material of a protected variety that has been lawfully acquired and is neither hybrid nor synthetic.
This exception has two particularly relevant aspects:
- In the case of protected varieties covered by the Plant Variety Protection Law (Spain), the exception applies only to any protected variety belonging to the species listed in Annex 1 of that Law. Many of these species have an important impact on animal or human food: Chickpea, alfalfa, pea, broad beans, oats, barley, rice, rye, spelt, potato, rapeseed, lentils or beans.
- Regarding remuneration:
- Small farmers shall not be obliged to pay remuneration to the holder of the variety.
- Other farmers are obliged to pay the holder a remuneration, which is significantly lower than the amount charged for the licensed production of propagation material of the same variety in the same area.
Therefore, a small farmer who lawfully buys seeds or seedlings of protected varieties of e.g. rice, or barley, will be able to propagate the seeds obtained from the harvest on his own holdings without having to repeatedly pay the breeder for it.
Despite the facilities and advantages that his represents, farmers are recommended to enter into agreements with the holder (or licensees) for the proper exploitation of the protected varieties in order to achieve legal certainty, as there are aspects to be agreed on with the holder himself, such as the reporting obligation or the amount of remuneration for those who are not considered small farmers.
To date, 4,224 licences have been registered for the exploitation of plant breeders’ rights in Spain, which we understand to be for good and valuable consideration, which evidently represents the dominant trend in the form of exploitation of this type of intellectual property right. However, a few years ago, some initiatives were taken to liberalise breeders’ rights. The best known case is the Open Source Seed Initiative (OSSI), initiated in 2012 by an interdisciplinary team from Wisconsin, USA, whose aim is to maintain fair and open access to plant genetic resources worldwide in order to ensure the availability of germplasm to farmers, breeders, etc. According to information on their website https://osseeds.org/, there are currently 529 varieties shared in the OSSI Pledge, 50 breeders, 77 seed company partners.
In Germany there is another example, based on the OSSI initiative, which is taking a different approach based on a legally binding contract that is attached to each bag of seeds and which indicates that opening the bag implies agreement to the terms and conditions of the contract. This German initiative hopes to identify violations of these contracts using modern genomic techniques and through the application of the Nagoya Protocol. DNA sequence data could indicate that a plant covered by this open source has been used in a plant breeding process.
As in other types of intellectual property rights (e.g. patents), the breeder’s right can be limited for reasons of public interest, as stated in Article 17 of Law 3/2000 on the legal system for the protection of plant varieties. This limitation for reasons of public interest must be agreed on by Royal Decree. There will be reasons of public interest (i) where initiating, increasing or scaling up the exploitation of the protected variety is of primary importance for public health or for national defence or for the environment, (ii) also in the case where the lack of exploitation or insufficient quality implies serious damage to the economic or technological development of the country, (iii) where the needs of national supply so require, or (iv) where the protected varieties contain genetically modified organisms and risks to human or animal health and to the environment must be prevented.
Plant breeders’ rights not only give rise to litigation concerning infringement for unauthorised use of protected plant material by third parties, but also for improper use of the variety name of a new plant variety. This is the well-known case of the Pedrosillano chickpea in the lawsuit brought by Asaja-Sevilla, the company Legumbres Luengo and the Asociación de Legumbristas de España (Association of Spanish Legume Growers), against the Agrupación de Consejos Reguladores Legumbres de Calidad (Group of Regulatory Councils for Quality Legumes). The Quality Legumes group had a guarantee mark “garbanzo pedrosillano” approved by the Spanish Patent and Trademark Office, but in May 2019, the Madrid High Court of Justice ruled in favour of the plaintiffs because “the name pedrosillano is the name of a plant variety of chickpea, with validity and effects throughout Spain, thus excluding the possibility that this name alludes to an indicative geographical origin of chickpeas”.
As we can see, this important economic sector has aspects related to a Sui generis right that deserve due attention so that all parties involved have legal certainty in the course of carrying out their economic activities. However, we should not think that this is not a fight between the breeder and farmers; the farmer will be the first beneficiary of these varieties and the farmer can also be a deserving breeder, and the breeder or licensee must be careful not to infringe on earlier rights. From now on, new varieties will be obtained by means of NGTs that are available to everyone (CRISPR Cas, TALEN, ZFN), from farmers (better in groups than as individuals) to plant breeders, and this is likely to trigger an unprecedented level of plant variety creation. This will generate a myriad of intellectual property rights through Sui generis plant variety protection or through patent protection (currently under evaluation), the interaction and dependence of which requires expert consultants to guide the process of commercial exploitation with legal certainty.
Rafael López
Technology Transfer Manager at PONS IP and Manager of the Valencia Office
