Protecting new plant varieties in the UK, European Union and internationally
Developing a successful new plant variety can require significant time, expertise and investment. Plant Variety Rights can provide valuable commercial exclusivity, enabling breeders and businesses to protect and commercialise that investment.
Venner Shipley advises plant breeders, agricultural and horticultural businesses, research organisations, universities and international IP firms on the protection, management and commercialisation of new plant varieties in the UK, Europe and internationally.
We advise on UK and EU filing strategies, applications and examination, ownership, licensing, portfolio management and enforcement.
Protecting new varieties in the UK and EU
Plant variety protection is territorial. For a new variety, separate applications are generally required to secure protection in both:
- the United Kingdom, through an application for UK plant breeders’ rights administered by the Animal and Plant Health Agency; and
- the European Union, through an application to the Community Plant Variety Office for a Community plant variety right providing unitary protection across all 27 EU Member States.
We can determine an appropriate UK and EU filing strategy, coordinate the two application and examination processes and manage the resulting rights as a combined portfolio.
Applicants based outside the European Union are generally required to appoint a procedural representative based in the EU. We assist international applicants and work with their existing IP advisers to prepare and file Community plant variety right applications and manage the procedure before the CPVO.
How we can help
We can advise throughout the lifecycle of a new plant variety, from considering protection at an early stage through to commercialisation and enforcement.
Our team can assist with:
- assessing whether a new variety may be eligible for protection;
- developing coordinated UK, European and international protection strategies;
- preparing and filing Plant Variety Right applications;
- advising on novelty and pre-filing commercial activity;
- advising on variety denominations and technical application requirements;
- coordinating DUS testing and examination and the submission of plant material;
- advising on breeder, applicant, ownership, and entitlement issues;
- preparing assignments and recording changes of ownership;
- managing renewals and existing portfolios;
- preparing and advising on licensing and commercialisation arrangements;
- advising on suspected infringement and enforcement; and
- resolving disputes relating to Plant Variety Rights.
Where protection is required in more than one country, we can also help coordinate the filing and examination process across different jurisdictions and work with overseas advisers where necessary.
Building the right IP strategy
Plant Variety Protection is often only one part of the wider IP strategy surrounding a commercially important variety.
Depending on the underlying innovation and how it will be taken to market, patents, trade marks, confidential information, know-how and contractual rights may also be relevant.
Our multidisciplinary IP team can help identify the most appropriate combination of rights and ensure that protection supports the wider commercial objectives for the variety.
This may include considering issues such as:
- whether plant variety right protection, patent protection for related technical innovations, or a combination of complementary rights may be available;
- the effect of proposed publication, trials, supply, sale or commercial launch on the availability of protection;
- ownership where varieties have been developed through collaborations or research projects;
- licensing and other commercial agreements;
- branding and trade mark protection for the variety or related products; and
- enforcement strategy where unauthorised propagation or commercialisation is suspected.
What are Plant Variety Rights?
Plant variety rights are a legal framework giving breeders exclusive rights over qualifying new plant varieties.
To qualify for protection, a variety must generally meet four requirements:
Novelty
The variety must not have been sold or otherwise disposed of for the purposes of exploitation beyond the applicable period before the application is filed. The relevant period varies according to the territory and, in some cases, the type of plant. Advice should be obtained early if material has already been supplied for trials, evaluation, multiplication or commercial purposes.
Distinctness
The variety must be clearly distinguishable from other varieties whose existence is a matter of common knowledge.
Uniformity
The variety must be sufficiently uniform in the characteristics relevant to assessing it.
Stability
The relevant characteristics of the variety must remain unchanged following repeated propagation or, where applicable, at the end of each particular cycle of propagation.
These requirements are commonly referred to as DUS, Distinctness, Uniformity and Stability, alongside the separate requirement for novelty.
Applying for plant variety rights
Applications are made to the relevant national or regional plant variety right authority.
An application will usually include information describing the variety and its distinguishing characteristics, together with a proposed variety denomination.
The authority will then examine the application and may require the variety to undergo technical testing, including growing trials, to assess whether the requirements for protection have been met.
Testing arrangements differ between jurisdictions. In some circumstances, an authority may be able to rely on test results produced by an approved testing authority elsewhere, avoiding the need for the same variety to undergo duplicate testing in several countries.
We can guide clients through this process, coordinate the relevant application and testing requirements and deal with issues arising during examination.
Ownership and entitlement
The right to apply for a plant variety right generally belongs to the breeder, or the breeder’s successor in title. Depending on the circumstances, the breeder may be an individual, an employer or another person entitled under the applicable law..
Ownership can become more complex where varieties have been developed by employees, universities, research organisations, collaborative partners or third-party breeders.
Establishing entitlement early can therefore be important, particularly before filing an application or entering into a commercial agreement.
We can advise on ownership and prepare or review any assignments or other documentation required to establish the correct ownership of the rights.
Commercialisation and enforcement
Once protection has been granted, the holder can generally control specified activities involving propagating material of the protected variety. Depending on the applicable law and circumstances, these can include production or reproduction, conditioning for propagation, offering for sale, sale and other marketing, export, import and stocking for those purposes.
Protection may also extend in certain circumstances to harvested material and to varieties that are dependent on the protected variety, including certain essentially derived varieties.
These rights can be commercialised through licences, assignments and royalty arrangements. Where unauthorised propagation, sale, importation or other use is suspected, we advise on the scope and enforcement of the right and work with our disputes specialists where proceedings or other formal action may be required.
Plant variety rights are subject to exceptions and limitations. These may include private and non-commercial acts, experimental use and the use of a protected variety to breed other varieties. The availability and scope of an exception should be assessed under the relevant national or regional legislation.
Discuss your plant variety strategy
Whether you are developing a new variety, considering where and when to seek protection, reviewing an existing portfolio or dealing with a commercial or enforcement issue, we can help you develop a practical strategy for protecting and making the most of your rights.
Please contact one of our plant variety rights specialists to discuss how we can help.
