Explanatory Notes (EXN) on Essentially Derived Varieties (EDV): all good, but what does it entail?

The global plant breeders’ community welcomed the approval of EXN of EDV made by UPOV on October 27, 2023, after four years of debates and discussions. But what does it entail?

The announcement of new Explanatory Notes, replacing those from 2017, is good news indeed. They are proof that ornamental horticulture is inching towards the harmonisation of international IP Law and – hopefully – that of case law, too. Because the latter is incongruous when handling EDV cases.

It is safe to say that the few cases decided by national courts worldwide led to inconsistency and contrasting decision-making, which made any potential EDV case too risky to be brought to court.

Actually, in many cases, breeders opted for an unwanted settlement agreement instead of a quite expensive and uncertain lawsuit.

Now, the new EXN of UPOV clarifies a number of important aspects:

(a) If an EDV differs from the initial variety in 1 or more essential characteristics, it will not lead to a non-derivation decision per se. Hence, it should be assessed if the derivation decision stands even if one or more essential characteristics are different depending on the method of derivation.

(b) There is no longer a merely quantitative approach in assessing derivation: depending on the method of derivation deployed to develop the EDV from the initial variety, the number of differences could be one or more, and they can include essential characteristics. In a nutshell, even a very few characteristics in common could lead to a derivation if the latter is justifying relying on the specific method followed in developing the EDV.

(c) Monoparental varieties are, per se, predominantly derived from their initial variety.

From the “courtroom” perspective, the EXN is paramount to setting a new standard in managing technical assessments, which are necessary to provide courts with the scientific data to issue their judgments.

Waiting on the harmonisation of the UPOV members’ legislation – EXN is not legally binding as long as they are not embedded in a legislative reformation by UPOV members – they are likely – and hopefully – to be followed by expert witnesses appointed by Courts in UPOV members in order to assess whether or not there is a derivation.

An EDV case is mostly decided in the technical assessment phase, which must include a DNA test as well as a morphologic analysis to detect any possible match between the initial variety and the derived one.

The few precedents we have to study show a blatantly absent consistency in seeking the matches since the criteria and the methods applied were not harmonised. This is not because the scientific methods used to carry out the tests were different but because the matches and the differences were interpreted differently – in some cases, in the opposite way – from both a scientific and a legal viewpoint.

As the discussion inside UPOV highlights, to assess whether or not there is a derivation, you need to analyse the derivation method used (or alleged to have been used). Only then can DNA tests be read properly.

There is no way to make the EXN mandatory. But amending the domestic legislation of each UPOV member is possible. Meanwhile, we shall seek their application in any EDV case to be brought to court in the years to come.

This can lead to a better interpretation and let breeders make a more balanced, informed, and accurate risk assessment when starting an EDV case.

This article was first published in the December 2023 issue of FloraCulture International. The author Emanuela Truffo is a Partner at Studio Legale Jacobacci E Associati.

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