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The fate of the Cascade rule for the breeder of new varieties
Summary
In its preliminary ruling in the infamous Nadorcott Case, the European Court of Justice does not correctly apply the “cascade” rule of protection.
During the development of the UPOV 1991 Convention this rule was established in order to force the breeder of the protected variety to exercise his right first on the propagating material of the variety. Only if the breeder has no reasonable opportunity to do so, can they exercise it on the harvested material.
Without considering this background, the Court applies this cascade rule during the testing phase of the not-yet-protected mandarin variety in the Nadorcott Case, although this rule can only be applied to a protected variety.
This results in the wrong decision that the mandarin, harvested from the trees produced and planted during the testing period, is not protected after the Community Plant Variety Right (CPVR) has been granted.
This decision has adversely impacted the general interpretation of the protection of harvested material of protected fruit and flower varieties in the European Union, as in all UPOV member states.
In 1988, the breeder Nadori from INRA1in Morocco developed the first mandarin variety without (seeds) pits, a significant characteristic considering consumers’ aversion to spitting out pits while consuming mandarins. Consequently, the breeder sought protection for the new variety, named “Nadorcott,” under the Council Regulation (EC) No 2100/94on Community Plant Variety Rights, hereafter referred to as “the Regulation”.
Plant Variety Rights (PVR) is a specialised Intellectual Property Right covering varieties of all plant species. It is based on the International Convention for the Protection of New Varieties of Plants, commonly known by the French abbreviation 2UPOV Convention. This Convention was last revised in 1991, and the Regulation derived therefrom came into effect in 1994.
During the extensive nine-year testing period between the PVR Application and Grant, numerous Spanish growers seized the opportunity to produce and harvest the valuable mandarins without paying any license fees to the breeder.
This led to a series of legal cases, ultimately resulting in a preliminary ruling by the Court of Justice of the European Union (CJEU) in December 2019. The CJEU’s decision holds significance for interpreting the Regulation and the UPOV Convention concerning the scope of protection during the period between the PVR Application and Grant, as well as for the subsequent period.
However, its relevance goes beyond the provision for provisional protection, as it also has an effect on the possibility to act against harvested material exported from a territory where the variety is not protected into a territory where protection is in place.
The History of the UPOV Convention 1991
To comprehend the structure and scope of protection within the UPOV Convention and the Regulation, it is crucial to delve into its development, as discussed and elucidated below.
The revision of the former UPOV Convention, dated 1978, was undertaken between 1988 and 1991 with contributions from its member states, breeder organisations, and other intellectual property entities. The preparatory papers, containing discussions and text proposals, are readily accessible on the UPOV website.3
♦ The Extension of the Scope of Protection
A primary objective of the new Convention was to broaden the scope of Plant Variety Rights (PVR) to encompass the harvested material of the protected variety.
Article 5 of the existing 1978 Convention, addressing the scope of protection, solely covered the propagating material of the protected variety.4
This sufficed for most agricultural and horticultural crops, predominantly produced by seed, where propagating and harvested material are physically and genetically identical, excluding hybrid varieties.5
For ornamental and fruit species, the flowers and fruits are harvested, mostly for a number of subsequent years, from vegetatively produced propagating material, such as trees and bushes. These harvested products are physically and genetically distinct from the propagating material and are marketed separately. Consequently, as these harvested products could not be protected under UPOV 1978, it was necessary to broaden the scope of protection and include them.
In October 1989, a revised draft of Article 5,6 as discussed with International Organisations, revealed an extension of protected acts, encompassing all material, including harvested material, of the protected variety. Consequently, an additional paragraph addressing exhaustion was incorporated to prevent double income from both propagating and harvested material of the same variety.
♦ The Evolution of the Cascade Provision
However, during discussions in the UPOV Administrative and Juridical Committee (CAJ) in October 1989 that followed the preceding meeting with International Organisations, the extension of the scope of protection to harvested material was deemed acceptable for only a part of UPOV member states. For the other member states, this acceptance depended on the condition that the owner of the protected variety must be compelled first to exercise his right on the propagating material. Only if he had no reasonable opportunity to do so could he then exercise his right on the harvested material. This led to the formulation of the so-called “cascade” provision, presented as a new paragraph in the draft Article 5 as proposed by the German delegation.7
“(2) Where the owner of the breeder’s right is unable to exercise his rights in accordance with paragraph (l)(ii), his right shall extend to the harvested material of the variety. (….)”
This German proposal underwent discussions in multiple UPOV CAJ meetings and consultations with breeder organisations. Eventually, the Office of the Union proposed the following text in June 1990.8
“(b) in respect of harvested material of the protected variety, any of the acts referred to in (a) above, provided that the harvested material was obtained through the use of propagating material whose use, for the purposes of obtaining harvested material, was not authorized by the breeder.”
The final text of the cascade provision, decided upon by the UPOV Diplomatic Conference in March 1991, differs significantly from the ‘Basic Proposal’ as drafted well in advance of the Conference.
However, from the German proposal until the final text, it is obvious that the cascade applies exclusively to the protected variety.
Article 14(2) of UPOV 1991 specifies that propagating material from a protected variety is used to produce harvested material.9(underlining by author).
♦ Extension of Protection to all Plant Species
Another significant enhancement of the 1991 Convention was the extension of protection to all plant species. Until then, countries were required to protect a minimum number of genera and species, resulting in a situation where a variety could be protected in a particular country but not in neighbouring countries.
This scenario gave rise to the so-called “U-turn” construction: propagating material of the protected variety could be used in a neighbouring country to produce harvested material such as flowers or fruit, which could then be freely imported into the country where only the propagating material was protected.
The extension of protection both to all species and to harvested material resolved this issue.
♦ Provisional Protection
Every new variety must undergo testing to qualify for protection, a process that may take one to six years, depending on the crop.
Therefore, it was decided at the first Convention of 1961 to provide for “provisional” protection between the Application date and the Grant of protection.
This form of protection contains only the right on a reasonable compensation for the acts executed with the variety that need the authorisation of the holder after the granting of the PVR.
Until the 1978 convention, this provisional protection was optional for each member state.10
In the 1991 Convention, it became mandatory, allowing each member state to establish a rule requiring the applicant to notify the user of the not yet protected variety, that protection has been applied for.11
♦ The Acts protected with Propagating Material
During the UPOV Diplomatic Conference in 1991, paragraph (viii) in the draft Article 1412 of the Basic Proposal was removed:13
“(viii) use in any way other than those mentioned in (i) to vii) above.”14
Breeder’s organisations, particularly CIOPORA,15 and the representative of the patent organisation AIPPI,16 opposed this deletion, citing the potential emergence of unforeseen technical possibilities and acts beyond the remaining acts specified in paragraphs a (i-vii) of Article 14.
However, the majority of member states saw a risk of unintended extension of the breeders’ rights.
The UK gave a proposal to replace the deleted paragraph with the text:
“use for the commercial production of cut flowers and fruit”17
This was rejected due to concerns about an exhaustion problem if propagating material could be used for both the reproduction and production of commercial material.18
The special ad hoc Working Group addressing this issue in the context of the scope of protection decided to insert a new paragraph (b) in Article 14 (1) with the text:
“the breeder may make his authorization of acts under subparagraphs (1) a (i) to (vii) subject to conditions and limitations.”19
Understanding this history is crucial to grasp why the use of propagating material for the production of non-propagating material (e.g. harvested material) is not protected under paragraph (1) of Article 14.
And, that paragraph (2) of Article 14 requires the breeder’s authorisation for the same acts carried out with the harvested material20 if the conditions of the cascade on the protected propagating material have been met.
The Regulation differs from the provisions in Article 14 of the UPOV 1991 Convention. Instead of the term “propagation material,” it uses the term “variety constituents,” referring to (parts of) plants capable of reproducing the variety.
After nine years of testing, Nadorcott was granted protection by Plant Variety Rights (PVR) in 2004.
The extended testing period resulted from technical requirements and a hailstorm that damaged the trials.
The “Federation of Agricultural Cooperatives of Valencia” initiated proceedings against this decision, leading to the suspension of the PVR’s enforcement until the end of 2005.
During this long testing period, the unprotected Nadorcott became a widely used variety among growers to produce pit-less mandarins inexpensively without obtaining a license or paying fees.
After the right was granted, one of these growers, Martinez Sanchis, was summoned to court for infringement by the Club de Variedades Vegetales Protegidas (CVVP), the representative organisation of the holder, Nadorcott Protection (NCP).
Mr Sanchis had purchased Nadorcott trees from a plant producer and harvested and sold mandarins before and after the Grant of Protection.
After two negative decisions for CVVP, the case was elevated to the Spanish Supreme Court.
♦ Preliminary Questions to the Court of Justice of the European Union (CJEU)
The Spanish Supreme Court posed three preliminary questions to the CJEU, hereafter referred to as “the Court.”
The first two questions to the Court
The First question22 concerns whether the purchase and planting of Nadorcott trees infringe the exclusive right of CVVP on the production of propagating material, as per article 13(2)23 of the Regulation.
The Second question24 pertains to whether Article 13(2) covers the harvest itself or the collection of the harvest and the subsequent storage or marketing of that harvested material.
♦ The Court’s Response
In Paragraph 20 of its judgment, the Court concludes that the purchase and planting of propagating material or variety constituents do not infringe Article 13(2).
The Court argues that these acts are not mentioned in Article 13(2), and the mandarins produced are not considered variety constituents.
In Paragraph 24, the Court emphasises that Regulation 2100/94 provides “primary” protection for the production or reproduction of variety constituents, while “secondary” protection for harvested material is limited by conditions in Paragraph 3 of that article:25
“The constituents must have been used unauthorised and the breeder must have had no reasonable opportunity to exercise his right.”
In the first sentence of Paragraph 32, the Court refers to recitals 17, 18, 5, 14, and 20 of the Regulation, concluding that, although a good protection system is crucial to stimulate breeding, it must not jeopardise public interests such as agricultural production.
The second sentence states that, according to Recitals 17 and 18,26 agricultural production constitutes a public interest justifying restrictions on Community plant variety rights.
To achieve this objective, Article 13(3) of Regulation No 2100/94 specifies that the protection under Article 13(2) applies to “harvested material” only under certain conditions.
As highlighted by the Advocate General in Paragraphs 32-33 of his Opinion,27 it is crucial to determine whether the use of plants for purposes other than propagating material, falls under the protection of article 13(2) of the Regulation.
The Court’s response to the First and Second questions in Paragraphs 36-39 of the Judgment is grounded on this matter:
“36. Under Article 14(1)(a) of that convention, the breeder’s authorisation is required for acts of ‘production’ or ‘reproduction’ in respect of the ‘propagating material of the protected variety’.
37. In addition, as noted by the Advocate General in points 32 to 35 of his Opinion, it is apparent from the travaux préparatoires relating to Article 14(1)(a) of the UPOV Convention that the use of propagating material for the purpose of producing a harvest was explicitly excluded from the scope of that provision which establishes the conditions for the application of primary protection, which corresponds to that of Article 13(2) of Regulation No 2100/94.
38. Therefore, under Article 14(1)(a) of the UPOV Convention, the breeder may not prohibit the use of variety constituents for the sole purpose of producing an agricultural harvest, but merely acts leading to the reproduction and propagation of the protected variety.
39. In the light of all of the foregoing, the answer to the First and Second questions is that Article 13(2)(a) and (3) of Regulation No 2100/94 must be interpreted as meaning that the activity of planting a protected variety and harvesting the fruit thereof, which is not liable to be used as propagating material, requires the authorization of the holder of the Community plant variety right relating to that plant variety where the conditions laid down in Article 13(3) of that regulation are fulfilled.”
The Third question to the Court28 inquires whether, according to Article 13(3),29 to fulfil the condition that the variety constituents were used unauthorised, it is required that the harvested material was produced by the trees purchased before the grant—during the period of provisional protection—or after the grant of the PVR.
In Paragraph 47 of his Opinion, the Attorney General follows the reasoning that, as there was no valid PVR in force during the provisional protection period, the requirement that the harvested material was obtained through the unauthorised use of the variety constituents, could not be fulfilled.30
In its response to the Third question, the Court states in the following four paragraphs that the fruits from the trees planted before the granting of the PVR but harvested after its granting are not protected because the constituents of the variety have not been used unauthorised:
“43. In so far as Article 95 of that regulation refers only to the possibility for the holder of the Community plant variety right to claim reasonable compensation, it must be held that it does not confer on him or her further rights, such as, inter alia, the right to authorise or prohibit the use of variety constituents of that plant variety for the period stated in Article 95.
That protection mechanism is therefore different from that emanating under the prior authorisation mechanism which applies when the acts referred to in Article 13(2) of Regulation No 2100/94 are effected after Community protection has been granted.
44. It follows that, as regards the period of protection referred to in Article 95 of Regulation No 2100/94, the holder of the Community plant variety right may not prohibit performance of any of the acts referred to in Article 13(2) of that regulation on the ground that he or she did not provide authorisation. Therefore, performance of such acts does not constitute ‘unauthorised use’ within the meaning of Article 13(3) of that regulation.”
And the Court concludes as a consequence of its reasoning:
“45. In the present case, it follows from the foregoing that, in so far as the propagation and sale to Mr Martínez Sanchís of plants of the protected variety at issue in the main proceedings was effected during the period referred to in Article 95 of Regulation No 2100/94, those acts may not be regarded as ‘unauthorised use’.
46. Thus, fruit obtained from those plants may not be regarded as having been obtained through unauthorised use within the meaning of Article 13(3) of that regulation, even if harvested after the Community plant variety right was granted. (…).”
Comments on the Judgment
The reasoning of the Court makes it clear that the distinction between the protection of propagating and harvested material is considered contrary to the original intention of the drafters of the UPOV 1991 Convention.
The ‘Cascade,’ intended to force the breeder to exercise his right (e.g. by reaching an agreement on the license conditions) first on the propagating material, is transformed from this gradual step-by-step process to exercise the right, into two different levels: a dominant Primary level and a Secondary, more inferior level, based on the argument to protect the public interest in harvested material.
It is evident that the Court, in interpreting this crucial issue, did not delve into and consider the history of the development of the cascade.25
On the other hand, the Court extensively explored the history concerning the limitation of the scope of protection for propagating material.31
Another noteworthy issue is the reference to the Recitals of the Regulation and their interpretation by the Court.
Recitals 17 and 18 refer to the so-called “farmer’s exemption” of Article 15(2) of the UPOV 1991 Convention.
This exemption has been implemented in Article 14 of the Regulation 32 as a derogation from Article 13(2), permitting farmers to use the harvested product of propagating material for further production on their own holding until, eventually, the final “harvested product.”
As mentioned in Paragraph 2 of Article 14, this exemption is restricted to some agricultural seed crops: fodder plants, cereals, potatoes, and a few oil and fibre crops.
This crucial exemption, under Paragraph 2 and not Paragraph 3 of Article 13, is related to the tradition that farmers are accustomed to produce the seed and the final product of these crops on their own farm.
Paragraph 3 of Article 14 of the Regulation comprises a number of conditions to safeguard the legitimate interest of the breeder, including paying equitable remuneration to the holder of the PVR.
In short, Recitals 17 and 18 have no connection at all with the protection of harvested material in general and do not constitute any restriction or a limited level on the scope of protection for harvested material.33
The Court’s conclusion that, for such reason, Paragraph 3 of Article 13 restricts the exercise of the PVR for harvested material, is therefore not correct.
It must also be noted here that the Court is quite familiar with this farmer’s privilege, as it has already dealt several times in the past with this issue and with these Recitals.34
Therefore, although the answer to the first Two questions is nevertheless correct, underlining the meaning of Article 13, it does not provide the appropriate background and the precise way to apply this Article.
Concerning the answer to the Third question, it must be clear that the ‘protection’ based on Article 9535 of the Regulation, is not a PVR but merely a temporal measure that can only be exercised after the grant of that PVR.
The “Cascade,” as formulated in Article 13(3) of the Regulation, can solely be applied to a variety protected by PVR. Article 13(3) clearly states (underlining by the author):
“The provisions of Paragraph 2 shall apply in respect of harvested material only if this was obtained through the unauthorised use of variety constituents of the protected variety.” Likewise, Article 14(2) UPOV rules “obtained through the unauthorised use of propagating material of the protected variety.”
It is obvious and self-evident that during the period of provisional protection, the owner of the variety cannot authorise any of the acts as mentioned in Article 13. Such is only the privilege of the holder of the PVR, and not (yet) of the applicant during the testing period of the variety.
Moreover, the “Cascade,” as shown hereabove, was introduced for the reason that the holder should first exercise his existing right on the propagating material (constituents) of the protected variety, and if he had no reasonable opportunity to do so, he may exercise his right on the harvested material.
This rule can only be applied on a protected variety. Such has always been the intention, as shown in the preparatory papers of the UPOV Convention and the discussions during the Diplomatic Conference, as presented hereabove.
Therefore, the conclusion of the Court, stating that, “fruit obtained from those plants may not be regarded as having been obtained through unauthorised use within the meaning of Article 13(3) of that regulation, even if harvested after the Community plant variety right was granted”, does not hold.
During the testing period, between the Application for PVR and its Granting, there is simply no right available. Article 9535 applies just retrospectively after the Grant of the PVR.
Moreover, Article 13 UPOV 1991 determines unmistakably that the member state shall provide measures to safeguard the interests of the breeder between the filing for the grant of a breeder’s right and the grant of that right, such that the holder shall at least be entitled to equitable remuneration for acts which, once the right is granted, require the breeder’s authorisation.11
Just after the grant of the PVR, Article 13 becomes then applicable. Paragraph (3) states that:
“The provisions of Paragraph 2 shall apply in respect of harvested material only if this was obtained through the unauthorized use of 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.”
After the grant of the PVR, the holder must first (try to) exercise his right on the constituents.
From the perspective of this right, the constituents produced and planted before the grant, were used unauthorised, but the holder had no opportunity to exercise his right.
Therefore, as according to Article 13 Paragraph (3) the harvested material was obtained through the unauthorised use of the variety constituents, and the holder has had no reasonable opportunity to exercise his right in relation to the said variety constituents, the protection of Paragraph 2 applies now also to the harvested material.
Subparagraph 13(2(a))36 requires the authorisation of the holder for the production of the harvested product, which needs the authorised use of the variety constituents of the protected variety.
As these now truly unauthorised acts also took place during the provisional protection period, the holder has the right on a reasonable compensation, according to Article 95 of the Regulation.
But, concurring to the Court’s reasoning, the holder is not entitled to this reasonable compensation because its Judgment rules that the acts performed during the provisional protection period are not prohibited after the grant of the PVR.
Similarly, the Spanish Supreme Court ruled in the case STS 282/2020 of June 11, 2020, CVVP – Mr. Federico, applying the Nadorcott decision of the CJEU:
“The necessary presupposition for the provisional protection provided for in Article 95 of the Regulation is that the defendant ‘has performed an act that would be prohibited after this period on the basis of Community plant variety protection. To the extent that these same acts denounced in the lawsuit, of planting and harvesting mandarins carried out by the defendant after the granting of the PVR, were outside the ius prohibendi that conferred on the breeder the granting of the Nadorcott plant variety right, they would also be those carried out before the granting of the variety with respect to provisional protection.”37
The correct conclusion is that the holder of the PVR for Nadorcott has the right to authorise the production of mandarins on the trees planted before and after its grant, and has the right to a reasonable compensation for the use of those trees and the production of the mandarins during the period between the application for PVR and its grant.
Similarly, the holder of the PVR had no reasonable opportunity to exercise his not-yet-granted PVR during the period of provisional protection.
The correct answer on the Third question, as repeated hereunder:
“In applying the scheme for extending the cumulative protection to ‘harvested material’, provided for in Article 13(3) of Regulation [No 2100/94], in order for the first condition to be satisfied, is it necessary for the purchase of the plants to have taken place after the holder obtained Community protection for the plant variety, or is it sufficient that at that time the plant variety enjoyed provisional protection, as the purchase took place in the period between publication of the application and the grant of the plant variety right coming into effect?”
Should, therefore be:
“Article 13(3) of Regulation No 2100/94 must be interpreted as meaning that the fruit of a plant variety, which is not likely to be used as propagating material, may not must, after the grant of the Community Plant Variety Right, be regarded as having been obtained through the ‘unauthorised use of variety constituents’ of that plant variety, within the meaning of that provision, even where those variety constituents were propagated and sold to a farmer by a nursery in the period between the publication of the application for a Community plant variety right in relation to that plant variety and the grant thereof. Where, after such protection has been granted, those variety constituents were propagated and sold without the authorisation of the right holder, the latter may assert his or her right under Article 13(2)(a) and (3) of that regulation in respect of that fruit, unless he or she had reasonable opportunity to exercise his or her right in relation to those variety constituents.”
As the Court’s Judgment cannot be reversed, it is therefore very important for the UPOV member states to work on a correct interpretation of the cascade, which is still continuing in the UPOV working group for the “Explanatory Notes on Harvested Material”.
Moreover, member states may use Article 14( 4) UPOV 199138 to add acts that require the authorisation of the breeder, like the production of fruits and flowers.
Footnotes
1. INRA was the French agricultural research institute—now known as INRAE—France’s National Research Institute for Agriculture, Food and Environment. It was created on January 1, 2020, by the merger of INRA and IRSTEA, the National Research Institute for Science and Technology for the Environment and Agriculture (www.inrae.fr). ↑
2. L’ Union Internationale pour la Protection des Obtentions Végétales (UPOV) is an intergovernmental organisation based in Geneva (Switzerland). The first Convention was adopted in Paris in 1961 and revised in 1972, 1978, and 1991. UPOV’s mission is to provide and promote an effective system of plant variety protection, with the aim of encouraging the development of new varieties of plants for the benefit of society. ↑
3. Preparatory papers containing discussions and text proposals are readily accessible on the UPOV website from this link www.upov.int/meetings/en/topic.jsp↑
4. Propagating material contains seeds or (parts) of plants that can reproduce the variety true to its type. Harvested material is the product for the market, like flowers, fruits, and grain, and usually can or cannot be used to reproduce the variety. However, due to the development of new techniques, harvested material may, for example, be capable of reproducing the variety by cell culture in some cases. ↑
5.Hybrid varieties are produced by crossing 2-4 parent lines, which are genetically different from the Hybrid.
The commercial product of seed crops is seed that growers purchase and use to produce grain or vegetables like tomato, lettuce, kale, etc.
Some of the harvested products (e.g. cut flowers) can also be used for reproduction. ↑
6. IOM IV/2 (October 1989) page 10|Proposed New Text |Article 5: Effects of the Right Granted to the Breeder.
“(1) A right granted in accordance with the provisions of this Convention shall confer on its owner the right to prevent all persons not having his consent:
(i) from reproducing or propagating the variety:
(ii) from offering for sale, putting on the market, exporting or using material of the variety:
(iii) from importing or stocking material of the variety for any of the aforementioned purposes.
(2) The right shall not extend to (i) acts described in paragraphs (1), (ii), and (iii) above concerning any material which has been put on the market in the member State of the Union concerned by the breeder or with his express consent, or material derived from the said material in accordance with the purpose intended when it was put on the market.” ↑
“In respect of the harvested material of the protected variety, any of the acts referred to in (a) above, provided that the harvested material was obtained through the use of propagating material whose use, for the purpose of obtaining harvested material, was not authorized by the breeder [and if, but only if, the breeder has had no legal possibility of exercising his right in relation to the propagating material].”
The final text of Article 14(2) — including the underlined additions and the stricken deletions.
“[Acts in respect of the harvested material of the protected variety] Subject to Articles 15 and 16, any of the acts referred to in items (i) to (vii) of paragraph (1)(a)above provided that suchin respect of harvested material, including entire plants and parts of plants, was obtained through the unauthorized use of propagating material of the protected varietyfor the purpose of obtaining harvested material, was not authorized byshall require the authorization of the breeder, and if, but only if,unless the breeder has had no legal possibility reasonable opportunitiesyof to exerciseing his right in relation to the said propagating material.” ↑
10. UPOV Act 1978 Article 7: Official Examination of Varieties; Provisional Protection:
“(1) Protection shall be granted after examination of the variety in the light of the criteria defined in Article 6. Such examination shall be appropriate to each botanical genus or species.
(2) (…)
(3) Any member State of the Union may provide measures to protect the breeder against abusive acts of third parties committed during the period between the filing of the application for protection and the decision thereon.” ↑
11. UPOV 1991 Article 13: Provisional Protection:
“Each Contracting Party shall provide measures designed to safeguard the interests of the breeder during the period between the filing or the publication of the application for the grant of a breeder’s right and the grant of that right. Such measures shall have the effect that the holder of a breeder’s right shall at least be entitled to equitable remuneration from any person who, during the said period, has carried out acts which, once the right is granted, require the breeder’s authorization as provided in Article 14. A Contracting Party may provide that the said measures shall only take effect in relation to persons whom the breeder has notified of the filing of the application.
The EU Regulation determines that the filing date is published in the official gazette of the CPVO. Professional plant and seed producers are required to consult this gazette regularly.” ↑ ↑
12. UPOV 1991 Article 14: Scope of the Breeder’s Right:
“(1) [Acts in respect of the propagating material] (a) Subject to Articles 15 and 16, the following acts in respect of the propagating material of the protected variety shall require the authorization of the breeder:
(i) production or reproduction,
(ii) conditioning for the purpose of propagation,
(iii) offering for sale,
(iv) selling or other marketing,
(v) exporting,
(vi) importing,
(vii) stocking for any of the purposes mentioned in (i) to (vi), above,
(viii) use in any way other than those mentioned in (i) to vii) above.” ↑
13. Records Diplomatic Conference 1991 Paragraphs: 859-876 ↑
17.Records Diplomatic Conference 1991 DC 91-110 | Page 141. ↑
18.Records Diplomatic Conference 1991 Paragraphs 1005-1049 and 1528-1549. ↑
19.This provision was already present in Article 5 of UPOV 1978 | Records Diplomatic Conference 1991 Pages 144-146. ↑
20.UPOV 1991 Article 14(2):
“[Acts in respect of the harvested material] Subject to Articles 15 and 16, the acts referred to in items (i) to (vii) of paragraph (1)(a) 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.” ↑
21. ECLI:EU: C:2019:1131 | JUDGMENT OF THE COURT (Seventh Chamber) |19 December 2019 | In Case C‑176/18.
“This request for a preliminary ruling concerns the interpretation of Article 13 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community Plant Variety Rights (OJ 1994 L 227, p. 1).
The request has been made in proceedings between Club de Variedades Vegetales Protegidas (‘CVVP’), which represents the interests of the holder of Community plant variety rights in respect of the mandarin tree variety ‘Nadorcott’, and Mr. Adolfo Juan Martínez Sanchís concerning the latter’s exploitation of plants of that variety.” ↑
22.When a farmer has purchased some plants belonging to a plant variety from a nursery (establishment owned by a third party) and planted them before the grant of the variety right has come into effect, in order for the subsequent activity of that farmer of collecting the successive harvests to be covered by the “ius prohibendi” in Article 13(2) of Regulation [No 2100/94], must the requirements under Article 13(3) be satisfied for Article 13(2) to be interpreted as relating to “harvested material”?
Or must Article 13(2) be interpreted as meaning that the activity of harvesting is an act of production or reproduction of the variety which results in “harvested material”, whose prohibition by the holder of the plant variety does not require the conditions in Article 13(3) to be satisfied. ↑
23.EU Regulation Article 13(2):
“Without prejudice to the provisions of Articles 15 and 16, the following acts in respect of variety constituents, or harvested material of the protected variety, both referred to hereinafter as ‘material’, shall require the authorization of the holder: (a) production or reproduction (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 purposes mentioned in (a) to (f).” ↑
24.Is an interpretation to the effect that the cumulative protection scheme covers all of the acts listed in Article 13(2) [of Regulation No 2100/94] that refer to “harvested material” and also the harvest itself, or that it covers only acts subsequent to the collection of that harvested material, whether the storage or marketing of that material, compatible with Article 13(3) of [that regulation]? ↑
25.The Court copies an earlier interpretation of the cascade, from which nothing of its original intention appears:
“It should be noted that the Regulation provides for different levels of right and different means of obtaining redress. First, there is a ‘primary’ right, which covers variety constituents in accordance with Article 13(2) Harvested material, for its part, is covered by a ‘secondary’ right, which, although also referred to in Article 13(2) of that regulation, is significantly restricted by paragraph 3 of the same article. (see, to that effect, Judgment of 20 October 2011, Greenstar-Kanzi Europe, C 140/10, EU:C:2011:677, Paragraph 26).”
Greenstar-Kanzi Europe:
“25 As regards the plant variety right established by Regulation No 2100/94, it should be noted that the Regulation provides for different levels of right and different means of obtaining redress.
26 First, there is a ‘primary’ right, which covers variety constituents in accordance with Article 13(2) of Regulation No 2100/94. Harvested material, for its part, is covered by a ‘secondary’ right, which, although also referred to in Article 13(2) of that regulation, is significantly restricted by paragraph 3 of the same article. Thus, although variety constituents and harvested material are both covered by the term ‘material’, within the meaning of Article 13(2) of that regulation, the right laid down for each category is none the less different.” ↑ ↑
26.Recital 17 EU Regulation:
“Whereas, the exercise of Community plant variety rights must be subjected to restrictions laid down in provisions adopted in the public interest”
Recital 18 EU Regulation:
“Whereas this includes safeguarding agricultural production; whereas that purpose requires an authorization for farmers to use the product of the harvest for propagation under certain conditions” ↑
27.Court of Justice of the European Union – Opinion of Advocate General Saugmandsgaard Øe, delivered on 18 September 2019 (ECLI:EU: C:2019:758):
“32. Moreover, the history of the UPOV Convention, as revised in 1991, reveals the intention of its authors not to include the use of reproductive material for the purpose of producing a harvest amongst the acts which require the authorisation of the breeder. That inclusion was, nevertheless, specifically referred to in Article 14(1)(a) of that convention as initially proposed by the UPOV (15) – a reference which would, moreover, have been unnecessary if the concept of ‘production’, also referred to in that provision, already covered such use. (16)”↓
“33. In that regard, several proposals for amendments to support the insertion of the use of reproductive material for the production of cut flowers or fruit among the acts referred to in Article 14(1)(a) of the UPOV Convention, put forward during the Diplomatic Conference which led to its adoption, motivated the creation of a working group mandated to examine that issue. (17) As observed by the Commission at the hearing, that working group and, subsequently, the authors of the UPOV Convention rejected those proposals.” ↑ ↓
28.In applying the scheme for extending the cumulative protection to “harvested material”, provided for in Article 13(3) of the Regulation in order for the first condition to be satisfied, is it necessary for the purchase of the plants to have taken place after the holder obtained Community protection for the plant variety, or is it sufficient that at that time the plant variety enjoyed provisional protection, as the purchase took place in the period between publication of the application and the grant of the plant variety right coming into effect? ↑
29. EU Regulation Article 13(3):
“The provisions of Paragraph 2 shall apply in respect of harvested material only if this was obtained through the unauthorized use of 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.” ↑
30. Attorney General Opinion Paragraph 47:
“On the other, Mr Martínez Sanchís and the Commission claim, in essence, that, in so far as the acts listed in Article 13(2) of Regulation No 2100/94 do not require authorisation from the breeder during the provisional protection period, those acts cannot be regarded as ‘unauthorised use’ of the variety constituents if they have been effected during that period. In the alternative, the Commission claims, in the same way as the Greek Government, that those acts must, if effected during the provisional protection period, be regarded as unauthorised if they have not given rise to the payment of an equitable remuneration. (26)” ↑
31. See inter alia Paragraphs 32 and 33 of the Opinion of the Advocate General, as mentioned under note 27. ↑
32. EU Regulation Article 14: Derogation from Community plant variety right.
“Notwithstanding Article 13 (2), and for the purposes of safeguarding agricultural production, farmers are authorized to use for propagating purposes in the field, on their own holding the product of the harvest which they have obtained by planting, on their own holding, propagating material of a variety other than a hybrid or synthetic variety, which is covered by a Community plant variety right.” ↑
33. Grain from cereals can be used either as propagation material or harvested material; both are physically and genetically identical. The farmer’s exemption deals with the use of grain as propagation material. The recitals explain that the restrictions to exercise the rights that are provided for in the Regulation, such as the farmer’s exemption, are there to serve the public interest based on a historical habit. The protection of harvested material of art. 13(3) is not such a restriction, but an extension of the right. ↑
34. See Judgment of 10 April 2003, C-305/00 (Schulin), ECLI:EU: C:2003:218 and C-336/02 – Judgment of the Court (First Chamber) of 14 October 2004 (Brangewitz). ↑
35.EU Regulation Article 95: Acts prior to the grant of Community plant variety rights:
“The holder may require reasonable compensation from any person who has, in the time between publication of the application for a Community plant variety right and grant thereof, effected an act that he would be prohibited from performing subsequent thereto. Article 95 is placed in Part Six of the Regulation under the heading “Civil Law Claims, Infringements, Jurisdiction. While Article 13 is positioned in Part One, Chapter 3: “Effects Of Community Plant Variety Rights”. ↑ ↑
36.EU Regulation Article 13: Rights of the Holder of a Community Plant Variety Right and Prohibited Acts.
“1. A Community plant variety right shall have the effect that the holder or holders of the Community plant variety right, hereinafter referred to as ‘the holder’, shall be entitled to effect the acts set out in paragraph 2.
2. Without prejudice to the provisions of Articles 15 and 16, the following acts in respect of variety constituents, or harvested material of the protected variety, both referred to hereinafter as ‘material’, shall require the authorization of the holder:
(a) production or reproduction (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 purposes mentioned in (a) to (f).
The holder may make his authorization subject to conditions and limitations
3. The provisions of paragraph 2 shall apply in respect of harvested material only if this was obtained through the unauthorized use of 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.” ↑
37.Spanish Supreme Court STS 282/2020 of June 11, 2020, CVVP – Mr Federico.
“El presupuesto esencial paraque opere la protección provisional prevista en el art. 95 del Reglamento, es que el demandado”haya realizado un acto que, transcurrido este periodo, lehabría sido prohibido en virtud de la protección comunitaria de obtención vegetal”. En la medida en que estos mismos actos denunciados en la demanda,de plantación y recolección de mandarinas realizados por el demandado después de la concesión de la variedad, estaban fuera del ius prohibendi que confería al obtentor la concesión de la variedad vegetal Nadorcott, también lo estarían los realizados antes de la concesión de la variedad respecto de la protección provisional.” ↑
“Each Contracting Party may provide that, subject to Articles 15 and 16, acts other than those referred to in items (i) to (vii) of paragraph (1)(a) shall also require the authorization of the breeder.” ↑
