Extension of Plant Variety Protection in the USA

On December 20, 2018, the Agriculture Improvement Act was signed into law by President Trump. This new Farm Bill amends the U.S. Plant Variety Protection Act to add asexually propagated plant varieties, which were previously not available under the act.

In the US there are three types of intellectual property protection that breeders can obtain for new plant varieties and plant related inventions:

– Plant Variety Protection for seed and tubers (issued by the Plant Variety Protection Office PVPO);

– Plant Patents for asexually propagated plants except for edible tubers (issued by the Patent and Trademark Office PTO); and

– Utility Patents for amongst others genes, traits, methods, plant parts or varieties (issued by the PTO)

Until recently, Plant Variety Protection PVP Certificates could only be used to protect plant varieties that reproduce sexually (through seeds) or through tuber propagation. However, as a result of the new legislation, the PVP has now been extended also to plant varieties that reproduce asexually, i.e. from a single parent, through cutting, grafting, tissue culture or root division.

As a result of the new amendments to the PVP Act the asexual multiplication of a PVP-protected variety now constitutes an act of infringement. The changes also extend the reach of Essentially Derived Variety EDV protection, which provides for coverage of varieties that were “essentially derived” from a PVP-protected variety, now also covering varieties that were asexually reproduced. EDV protection is not provided by plant patent.

The proprietor of a PVP Certificate can sue for injunctive relief, damages and attorney fees in the case of (alleged) infringement. If a court rules that there has been infringement, it may award damages in an amount that is (at least) equal to a reasonable royalty, including a fixed amount of interest and costs, for the infringing use of the variety. The damages awarded may be increased up to three times in case of wilful infringement. Furthermore, in exceptional cases reasonable lawyer fees may be awarded to the prevailing party.

These extensions of the U.S. Plant Variety Protection Act should be especially beneficial to the flower industry. Flower breeding companies should therefore consider the potential advantages of pursuing PVP protection for their new varieties in the U.S.

Mr. Hidde J. Koenraad is partner Intellectual Property at Boekx Advocaten in Amsterdam.