With the permission of Mr. J.H. Selchau
International Symposium on Plant Variety Protection
Taichung City, Taiwan
June 13-14, 2000
Implementation and Enforcement of
Plant Breeders' Rights
- an European Perspective 植物育種加權利的執行與實施
J.H. Selchau, managing director
GPL International as, P.O. Box 29, DK-5200 Odense V, Denmark
Intellectual property advisors and administrators
It is indeed an honour for me to participate in this Symposium, and I do sincerely thank the Organisers for enabling me to elaborate on the topic of the European Community Plant Variety Protection and especially the friendly enforcement of the breeders' rights. I sincerely thank the organisers for the invitation.
I consider the possibility to exchange views and ideas very useful, even better than the trading of the plant material itself, since if you have a penny and I have a penny and we exchange pennies, you still have one cent and I still have one cent. BUT, if you have an idea and I have an idea and we exchange ideas, you now have two ideas and I now also have two ideas!
To a breeder of new plant varieties, a Plant Variety Protection is only as useful as it is enforceable, and in this paper it is my aim to introduce the principles of enforcement, based on the European Community Plant Variety legislation as implemented through a standardised Licence Agreement system.
The convention, which Mr. Barendrecht has been introducing and explaining, is forming basis for the national legislation in most European countries. In fact, the legal acts in the majority of European countries, producing or consuming plant varieties, have for many years been in accordance with the recommended UPOV stipulations, just the list of protectable species have been limited in certain countries. The breeder, domiciled in or represented by a national of the specific country, would file an application in each country, which he considered appropriate.
But, as from 27th April 1995, any breeder, being citizen of or domiciled in any member state of the European Community or in a UPOV member state, can file an application for his plant variety directly with the European Community Variety Office, which is now permanently domiciled in Angers, France.
The Community Plant Variety Right (CPVR) is a form of intellectual property akin to a patent.
Based on a single application to the Community Plant variety Office, a breeder may be granted a single intellectual property right, which is operative throughout the European Community. The CPVR has uniform affect within the territory of the Community and may not be granted, transferred or terminated otherwise than on a uniform basis in relation to that territory.
Based on the regulations of the UPOV-1991-Convention, the EU Council Directive prescribes that it is necessary to obtain the approval of the variety owner (the breeder) in order to perform
a) Production or reproduction (by multiplication)
b) Conditioning for the purpose of propagation
c) Offering for sale
d) Selling or other marketing
e) Exporting from the Community
f) Importing to the Community
g) Stocking for any of the purpose mentioned in a) to f), above
In addition to the stipulations of the UPOV Convention, the EU Directive further entitles the variety owner the right to prescribe conditions and limitations to his authorisation.
Both the UPOV 1991 and the Community Directive authorises the variety owner to collect appropriate royalties on the harvested material only if this has been obtained through unauthorised use of the variety constituents of the protected variety, and unless the holder has had reasonable opportunity to exercise his right in relation to the said variety constituents. In other words, should the variety owner not be able to exercise his rights at the time and place of propagation, he might implement his Breeders' rights through collection of royalties on, for inst. - the tomato juice.
The legislation also includes stipulations for the initial breeder's influence on essential derived varieties as well as the concept of farm saved seed, which is of the utmost interest to Breeders - and producers - of agricultural crops.
The farm saved seed derogation enables farmers to sow, on their own holdings, seed derived from the harvested crop of a protected variety, which has been grown on their own holdings. However, the derogation applies only to certain specified agricultural crops.
Furthermore, the Council Directive lists some categories of acts, which do not fall within the scope of the CPVR,
a) Acts done privately and for non-commercial purposes
b) Acts done for experimental purposes
c) Acts done for the purpose of breeding, or discovering and developing other varieties
The protection is valid until 25 years, however for grape- and tree-varieties, the period is 30 years.
As a prerequisite to commercial exhaustion of a protected plant variety, the variety has to be assigned a name, approved and registered by the appropriate plant novelty authority. And the variety should be designated by this approved variety name, even beyond the expiry of the protection period.
The new system is not intended to replace or even harmonize national systems, but rather to exist alongside them as an alternative; indeed it should be emphasized that it is not possible simultaneously to hold both Community and national plant variety rights in relation to a variety. Similarly, a CPVR cannot co-exist with a patent. Any national plant variety right or patent granted for a variety, in relation to which a CPVR already exists, will be ineffective.
Where a CPVR is granted in relation to a variety for which a national right or patent has already been granted, the national right or patent is suspended for the duration of the CPVR. In certain countries, a national right or patent may continue upon the expiry of the CPVR, based on various principles, i.e. payment of a dormant fee etc.
Briefly, what is a plant novelty: It should
In at least one essential characteristic differ from any known variety of
the same species; it should be uniform: homogenous within the specific generation;
and stable: the
variety should - by continued propagation - maintain the characteristics claimed for this
variety, when propagated in accordance with the methods prescribed by the variety owner;
and naturally, it should be new: at the date of application, variety constituents or harvested
material of the variety have not been sold or otherwise disposed of to others within the
community, by or with the consent of the breeder earlier than one year before the above
mentioned date, or four years outside the Community. For trees and wines however, this
period of grace is six years.
The majority of DUS-testing - the so-called comparative trials - are performed at centralised testing stations, but due to the fact, that within the implementation of the new legislation (EU Council Directive 2100/94 and UPOV-1991- based national legislations), any plant species can be protected, the need for extended testing facilities have arisen. It is foreseen to include contractual testing facilities, which even may be at the breeder's own facilities.
Recently, a working committee of Fleuroselect and myself, representing the Ornamental Plants Section of ASSINSEL, have succeeded to obtain the approval of UPOV, the Community Office, appropriate testing officers to establish a preliminary comparative trials at specific Fleuroselect trial grounds in the Netherlands, Germany and Denmark, mainly for seed-propagated ornamental varieties.
The Basic Regulation of the CPVR deals with civil law claims, infringements and jurisdiction.
In Article 94 the acts and omissions, which constitute infringement of a CPVR is described. The Article provides that the holder of a CPVR may bring an action for an injunction or compensation or both, against any person who, without being entitled to do so, effects one of the acts set out in relation to the protected variety. In addition to acts effected in relation to the plant material of the protected variety itself, acts affected in relation to essentially derived varieties, other indistinct varieties and hybrid varieties dependent on the protected variety for their production, may also constitute infringements. The entitlement to effect the acts may derive from the authorisation of the holder, from the farm saved seed derogation or from one of the limitations on the scope of right or from a compulsory exploitation right granted by the Community Plant Variety Office.
The holder of a CPVR may bring an action for an injunction or compensation, or both, against any person, who omits the correct usage of a variety denomination. Any person who, within the Community, offers or disposes of to others for commercial purposes, variety constituents of a protected variety or a variety covered by the extended provisions, must use the variety denomination designated for the variety. The variety denomination shall be readily distinguishable and clearly legible and if a trade mark, trade name or similar indication is associated with the variety denomination, the denomination must be clearly recognisable as such.
If an infringing party has acted intentionally or negligently, he shall be liable to compensate the holder of the CPVR for any further damage resulting from the act of infringement. In addition, where the party liable of such infringement has made any gain at the expense of the holder of the CPVR or a person enjoying exploitation rights, the articles also makes provision for restitution of the profit by the competent courts.
The Articles also provides that a holder of a CPVR may require reasonable compensation from any person who has, in the time between publication of the application for a CPVR and the grant thereof, effected an act that he would be prohibited from performing subsequent thereto.
Claims of this nature should be time barred after three years from the time at which the CPVR has been finally granted and the holder has knowledge of the act and of the identity of the party liable or, in the absence of such knowledge, after 30 years from the termination of the act concerned.
All Community Member States are charged with taking all appropriate measures to ensure that the same provisions are made applicable to penalise an infringement of a CPVR as apply in the matter of an infringement of a corresponding national right. However, winning an infringement case normally results in a breeder only being awarded for lost royalties and not for damages or the cost of the trial. This appears to penalise the holder of rights and discriminate against small breeders. The current policing and enforcement system appear to be ineffective and unsatisfactory, although a number of royalty collection bureaus have established cross-boarder co-operations in order to cope with differences in language and mentality amongst growers.
Generally, most European breeders feel that both national and Community Plant Variety Protection is satisfactory.
The major problem is to enforce these rights in practice. Finding the information needed to challenge those who may be infringing the rights is extremely difficult, but the establishment of specific Licence Agreement systems might be helpful. I would now like to explain the Standardised Licence Agreement system, developed by the Ornamental Plants Section of the Danish Association of Plant Breeders, and upon thorough discussions adopted by the Danish Association of Horticultural Producers in 1995. We are also very pleased, that the international association of Horticultural Producers, AIPH, during their Annual General Meeting last year, approved the system and are recommending their individual member organisations to seek implementation of the system or a system alike.
The actual system is a revised version, which has not yet formally been adopted, but obviously only minor changes will be necessary, since the revision in principle is only of practical nature.
A set of the contracts will be available in the Proceeding.
The contractual system consists of Standard Licence Stipulations, similar to the overall rules and regulations of an insurance policy, outlining the rights and obligations of licensor as well as licencee. In addition, the licencee being he propagator, grower or dealer - will have to sign a Licence Agreement for the specific use of certain varieties, and valid for a specified period. The Licence Agreement may also include further restrictions or conditions, i.e. territory of exhaustion, limitation of production quantities, compulsory use of trade marks or labels etc.
The Licence Agreement entitles the Licencee
eitherpropagation and sale of propagation material;
or propagation and sale of the finished product;
or production of finished plants only;
or production of cut flowers.
Special Licence Agreement arrangements with trade organisations and distributors as well as Non-Propagation and Trial Agreements are also available.
Let us take a short look at some details of the agreements:
The agreement is entered between the variety owner (the holder of rights) or his representative and the applicable propagating nursery.
The Young Plant Propagation Agreement, entitles the licencee - at his own or designated premises - to propagate the variety(-ies), comprised by the agreement and to sell the propagation material to third party nurseries, provided such third party nurseries have signed or will sign an appropriate Licence Agreement, provided their intended use of the plant material. The Licencee is also entitled, at his own or designated premises - to produce and sell finished plants of the variety(-ies) for final consumption.
The Propagation Agreement, entitles the licencee - at his own or designated premises - to propagate the variety (-ies), comprised by the agreement for his own use and to produce and sell finished plants of the variety(-ies) for final consumption.
The Production Agreement, entitles the Licencee at his own or designated premises, to grow and sell the variety (-ies) in question for final consumption.
By establishing the Licence Agreement, both parties accepts certain obligations and commitments, including the necessary control of non-violation of the terms and stipulations of the legislation on Plant Variety Rights and the Licence Agreement as such. The variety owner is entitled, at due notice, to perform control visits to the Licencee's premises in order to verify the quantities of propagation and/or production.
However, most variety owners are performing this control through the service of non-profit royalty collection bureaus, in order not to mingle commercial interests and the Police work of controlling their customers.
The two types of Propagation Agreements are clearly indicating the specific amount of royalties, which are due by propagation of the variety(-ies) in question and the agreed method for calculating and reporting the number of propagated plants. The reporting periods and deadlines for handing-in of such reports as well as the applicable dates of payment are also stipulated in the Licence Agreement.
The mere mentioning of the word ROYALTY raises the blood pressure of many flower growers around the world.
why is it necessary to pay extra for a plant with a fancy name? The subject is often avoided, because it raises controversy, but try once to consider the idea, that you are paying a rental fee to the variety owner for using his invention.
In other words,
也就是說，You do not buy the variety, you only rent the right to use it.
If I develop a new plant with characteristics, you want to produce and sell, why not rent my technology? And why complain about the rent? Aren't you using my inventiveness for your own gain?
The question of how much rent or royalty is a different issue.
If you think the rent is too high, you do not have to rent my technology. But just because you think, it is too high, does not give you the right to use my technology without paying the rent.
Because, royalty payment is not just an add-on cost for the propagator. Royalty payment is to pay the inventor for his inventiveness and the development cost of a new cultivar. One new plant cultivar that is truly superior must support development costs for itself, as well for all the sisters and brothers, that didn't quite make it.
Royalty payment for using superior plant cultivars is very necessary in our industry; new plant development depends on it; honesty demands it; and if you do not support the concept of royalty, development of new cultivars will suffer a very serious set-back.
If you think the royalty is too high, grow a different cultivar.
But if you choose to grow a cultivar with a royalty,
Figure the cultivar rent as a necessary cost.
In the end, it is in the best interest of every grower to have the opportunity to grow good varieties, although the grower has to pay compensation in the form of a royalty to the breeder. If new varieties allow the grower to have higher harvest or better products with higher profits, it is worth paying the royalty to the breeder. After all, we need new products to meet stricter demands form the public, from our customers.
Remember, some day, we will all have to account for our excesses; it is just a deferred settlement......!
Thank you very much for your attention.