Plant breeder’s rights (PBRs) have entered the litigation spotlight in the UK with the recent decision in the case between Nador Cott Protection SAS (NCP) and Asda Stores Limited & International Procurement and Logistics Limited (IPL). PBRs (known in other jurisdictions as plant variety rights (PVRs)) are the most overlooked intellectual property right but this recent case highlights their importance and value. Ignore them at your peril!
Essentially derived varieties (EDVs)
EDVs are plant varieties derived from an initial variety and fulfil certain criteria to qualify as “essentially derived”. According to the UK Plant Varieties Act (PVA), which closely mirrors the UPOV Convention on EDVs, a variety is essentially derived from another (initial) variety if:
- it is predominantly derived from the initial variety (or a variety itself predominantly derived from the initial variety) whilst retaining the expression of the essential characteristics resulting from the genotype or combination of genotypes of the initial variety;
- it is clearly distinguishable from the initial variety by one or more characteristics which are capable of a precise description, and
- except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety.
If a variety is determined to be an EDV then the rights of a holder of a PVR to the initial variety extend to a variety essentially derived from it.
The concept and limitations concerning EDVs were introduced relatively recently by the International Union for the Protection of New Varieties of Plants (UPOV) in 1991. Provisions concerning EDVs entered EU law in 1994 and UK law in 1997. Whilst the UK provisions mirror those of UPOV the EU laws on EDVs differ. UPOV’s purpose in introducing EDVs was to ensure that the holder of a right to an initial variety could share any revenue generated by a new plant variety that was the result of a minor change from the initial variety.
There is very little case law and guidance on the interpretation of EDVs but UPOV provides some non-binding Explanatory Notes on EDVs and published their latest version in 2023 p
Predominantly derived
According to the UPOV Explanatory Notes on EDVs “predominant” derivation means that more of the genome of the initial variety is retained in the derived variety than would be retained by a normal crossing with different parents. The Notes go on to state that a “variety should only be considered predominantly derived from the initial variety if it retains almost the whole genome of its initial variety”.
Retaining the expression of the essential characteristics resulting from the genotype(s) of the initial variety
The UPOV Notes explain that the essential characteristics are largely unlimited and can include morphological, physiological, agronomic, industrial and/or biochemical characteristics. The “essential characteristics” are defined as being fundamental for the variety as a whole that should contribute to the principal features, performance, value or use of the variety and be relevant for the producer, seller, supplier, buyer, recipient, use of the propagating and/or harvested material and/or the directly obtained products and/or the value chain.
Clearly distinguishable
Even though the essentially derived variety must be predominantly derived from the initial variety it must also be distinct from it.
Except for the differences resulting from derivation, it conforms to the initial variety in the expression of the essential characteristics resulting from the genotype(s) of the initial variety.
The UPOV notes provide the following, non-limiting, examples of methods by which EDVs may be obtained:
- selection of a natural or induced mutant, or of a somaclonal variant;
- selection of a variant individual from plant of the initial variety;
- backcrossing;
- transformation by genetic engineering.
The Notes appear to provide an interpretation which is more favourable to the breeder of the initial variety as they state that there is no upper limit to the number of differences and that these differences may include essential characteristics. However, the Notes are non-binding and open to interpretation by UPOV members.
It is notable that unlike the UK PVA and the UPOV Convention the EU Regulations on EDVs do not contain the term “whilst retaining the expression of the essential characteristics resulting from the genotype or combination of genotypes of the initial variety”. Instead it states that “except for the differences which result from the act of derivation, it conforms essentially to the initial variety in the expression of the characteristics that results from the genotype or combination of genotypes of the initial variety”.
Scope of protection of the initial variety with respect to EDVs
Both the initial varieties and any varieties essentially derived from the initial variety may be protected by PVRs if they fulfil the criteria for novelty, distinctness, uniformity and stability. The scope of protection of the initial variety is extended to a variety essentially derived from it, as per the criteria above, and the authorisation of the holder of the PVR of the initial variety is required for acts such as production, sale, marketing, importing/exporting, and stocking for any of these purposes of the EDV. If the initial variety is not protected then no such authorisation is required. It should also be noted that an EDV cannot act as an “initial variety” and so if a variety is derived from an EDV the holder of a PVR to the EDV has no rights over a variety derived from it. Instead it is the holder of rights to the initial variety who has rights over all essentially derived varieties regardless of the number of generations.
EDVs- watch out!
The NCP v Asda, IPL case highlights that even if you are at the end of a chain handling plant varieties you can still find yourself in the middle of a very costly litigation. Granted PBRs are published every month in the APHA’s Special Edition of the Seeds Gazette but EDV’s are not identified in this and nor are the rights holders of the initial variety. There is a provision under the Basic Regulation for Community PVRs (EU) for the identification of initial and essentially derived varieties and the parties concerned but this is only on agreement of the holders of the initial variety and EDV or following a final decision/judgment. It should also be noted that unlike the UK Patents Act the UK PVA provides no relief for innocent infringement.
There is currently no way for anyone working with or selling plant varieties in the UK to know definitively if they are handling an EDV and no relief for an infringement they would have had no possible means of knowing about. Currently, the application form for a PBR does not require an applicant to declare if their variety is essentially derived from another variety. Perhaps this option should be explored to enable clear marking of EDVs to provide some certainty to those working with and selling plant varieties in the UK.
Until such changes are made our advice to growers, importers/exporters and retailers of plant varieties in the UK is to check if there is a PBR for the plant varieties they are handling and if it is being imported from and/or grown in another country check its protection elsewhere. We would also recommend checking the Community Plant Varieties Register for plant varieties identified as EDVs and researching any ongoing litigation or invalidity actions anywhere in the world in relation to the variety.
If you have any concerns, questions or would like us to conduct any of the checks mentioned above please do get in touch.
