Breeder's Right to Harvested Material: Could Breeders Benefit a Bit More Often, Please?
This article addresses one of the topics of the upcoming Madrid (Oct 20-21)and Amsterdam (Nov 4-5) Workshops on IP for Plants in the framework of the CIOPORA Academy project - learn more about the workshops & register.
This contribution is not about breaking news’. Instead, it is about something that has been and continuously remains on CIOPORA’s agenda: what subjects could our association address to further strengthen the protection afforded by Plant Variety Rights (PVR)? Among others, it is the extended protection which enables a breeder to enforce his right to harvested material of his variety.
1. Traditionally, the breeder could exercise his plant variety right only in relation to propagating material of his protected variety.
In the 1991 Act of UPOV Convention the right of the breeder was extended in the sense that, under certain circumstances, the breeder may also exercise this right in relation to harvested material of his variety.
Picture: Katy Belcher, Unsplash.com
2. The UPOV 1991 Convention contains the following provision on this subject:
“[Acts in respect of the harvested material] Subject to Article 15 and Article 16, the acts referred to in items paragraph (1)(a)(i) to paragraph (1)(a)(vii) 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.”
3. Why has the breeder's right been extended to include harvested material?
At the time when there was no protection available for harvested material, breeders often faced challenges.
For example, consider this illustration:
Propagating material of a variety ends up in a country where no PVR can be obtained, or where such rights have not been obtained. In this country, the material is propagated, without the breeder receiving any royalties, and is used to obtain end products (flowers or fruits). Subsequently, the flowers or fruits are returned to a country in which the variety does in fact enjoy legal protection and are sold on its territory.
In the cross-border traffic of plant material, the problem in fact concerns all situations in which end products originating from countries where they were grown and where the propagating material was not protected, are imported into countries where the propagating material is indeed protected. In the context of plant variety law, the routes taken with the preconceived intention of circumventing Plant Variety Protection are referred to as “U-turn schemes”.
The conditions for extension of the right in relation to harvested material
4. According to Article 14(2) UPOV 1991 and the substantive provisions based thereon, the extension of the right in relation to harvested material applies only:
(i) if it was obtained through the unauthorized use of propagating material of the protected variety;
(ii) unless the breeder has had reasonable opportunity to exercise his right in relation to the said propagating material.
5. Article 14(2) UPOV 1991 is generally considered to be an ambiguous provision. For example, it is not clear when there is unauthorized use, or use without authorization. The notion of ‘reasonable opportunity’ also raises questions. There has even been a debate about the question as to how the ‘exercise of his right’ should be interpreted. For the sake of brevity, let us focus on the issue of ‘unauthorized use’.
‘Unauthorized use’ – unauthorized or without authorization?
6. For questions regarding use without authorization, one can conceive four different situations:
1. In the country, in which propagating material of the variety is used to propagate, the variety is protected by a valid PVR,
(1a) yet the propagator has not obtained a licence;
(1b) yet the propagator violates the provisions of the licence agreement.
2. In the country, in which the propagating material of the variety is used to propagate, the variety is not protected by a valid PVR (either because the country does not offer a form of Plant Variety Protection, or because no PVR has been obtained for the variety in the country in question):
(2a) yet the propagating material has been obtained under contractual restrictions;
(2b) and no contractual restrictions apply to the used propagating material.
7. As regards the ‘unauthorized use’, there is an interesting interpretation issue:
‘unauthorized use’ means ‘use without authorization’/for which no authorization has been granted.
We can look at this in two ways:
An act is only ‘unauthorized’ if you have not been granted authorization for it, whereas this was in fact required;
Purely as a matter of fact: no authorization has been granted – in this context we can leave aside whether this authorization is or was required.
To date, the official versions of the Explanatory Notes of UPOV have always included that ‘unauthorized’ should be read as set out under (a) above:
“4. “Unauthorized use” refers to the acts in respect of the propagating material that require the authorization of the holder of the breeder’s right in the territory concerned (Article 14(1) of the 1991 Act), but where such authorization was not obtained. Thus, unauthorized acts can only occur in the territory of the member of the Union where a breeder’s right has been granted and is in force.”
Such a narrow approach put forward by UPOV is a missed opportunity for the much-desired reinforcement of the Plant Variety Right. Indeed, under the narrow interpretation, there will never be ‘unauthorised use’ in the situation described under 2(b) above and, likely, not in the situation described under 2(a), either. However, if the question whether an authorization is required is not considered and, based strictly on facts, we only check whether the breeder has granted an authorization, there could be use without an authorization in both 2(a) and 2(b) cases.
8. The narrow interpretation in the UPOV papers, therefore, means that the extension of the right to harvested material remains out of reach for a significant part of the conceivable situations. Even the U-turn constructions that the addition of the right to harvested material was all about can still constitute a formidable loophole in the protection. If Article 14(2) of 1991 Act of UPOV were given a broader interpretation of ‘any use without authorization from the breeder’, breeders could more often enforce their rights against the trade in harvested material which was propagated without the breeder’s authorization. In addition to the ample ambiguity of the regulation, this could well be one of the reasons why in case law we see so few cases in which the right to harvested material is relied upon.
It would be a great help for breeders if the interpretation of the word ‘unauthorised’ would be broadened and would include all cases in which material is propagated without the breeder’s authorization. The text of the convention provides sufficient basis and room for such interpretation.
Have you ever been confronted with situations in which you wanted to enforce your right to harvested material in order to prevent erosion of the royalty income streams? Share your experiences in this area with CIOPORA! Write us an email to firstname.lastname@example.org.
 The EU Basic Regulation uses the term ‘variety constituents’.
 Explanatory Notes on Acts in Respect of Harvested Material under the 1991 Act of the UPOV Convention, adopted by the Council at its forty-seventh ordinary session on October 24, 2013.
About the Author:
Partner, Vondst Advocaten, the Netherlands
Tjeerd Overdijk studied Law at the Leiden University and has been a lawyer since 1984. He is an all-rounder in the field of Intellectual Property for more than 25 years, with a special interest in matters balancing on the edge of IP and information technology as well as Plant Variety Rights. He was involved in the first court case in the world on the concept of essentially derived varieties (EDVs) and he has gained considerable experience on this subject. He also has experience with litigation before the Board of Appeal of the Community Plant Variety Office in Angers, France. Tjeerd regularly teaches in post-graduate programmes on his fields of expertise. He is a co-author of the loose-leaf iIntellectual Property textbook ‘Intellectueel Eigendom’ (chapter on copyright) and of a monograph on Intellectual Property & ICT (chapter on patent law). Tjeerd is a member of various professional associations, including the Netherlands Copyright Association, the AIPPI, INTA, MARQUES and the European Communities Trademarks Association (ECTA).