The mere thought of missing a priority deadline is likely to bring a patent attorney out in a cold sweat but fortunately the world of plant varieties is slightly more lenient as two decisions in Italy highlighted recently.
In the UK and EU a plant variety meets the requirements of novelty as long as there has been no sale or other disposal of the variety in the UK or EU more than one year before the date of application. In addition, sale or other disposal of the variety must not have taken place in any other country earlier than four years, or for trees and vines six years, before the date of the application. This means that even if a subsequent filing for plant variety protection is made outside the 12-month priority period, and therefore priority cannot be claimed, this is not necessarily fatal for the application.
The impact of filing a subsequent application for a plant variety outside the priority period on the assessment of novelty was recently assessed by the Italian Corte Suprema di Cassazione. An earlier US application for a variety of table grape owned by the University of California was judged not to be fatal to the novelty of a later filed Italian plant variety application for the same plant variety. The Corte Suprema di Cassazione considered that the earlier application was not a sale or commercial exploitation and so was not considered relevant for the assessment of novelty. Unlike patents, which require absolute novelty, plant varieties only require that the variety has not been commercialised prior to the grace periods.
As well as novelty, plant varieties must be distinct, uniform and stable in order for a right to be granted. Plant varieties are therefore subjected to testing of distinctiveness, uniformity and stability (DUS) prior to a Plant Variety Right (PVR) being granted. In the UK and EU distinctiveness of the plant variety is based on whether the variety is “clearly distinguishable…from any other variety whose existence is a matter of common knowledge at the time of the application…”. Another decision made by the Italian Corte Suprema di Cassazione in 2023 concerned whether a variety of bean could be considered distinct as it was the subject of an Italian PVR application filed outside the priority period of an earlier US plant variety patent application. During infringement proceedings, the alleged infringer argued that the bean lacked distinctness based on the earlier US application. However, the Corte Suprema di Cassazione concluded that distinctness is assessed by reference to “any other variety” and so the “same” variety cannot be considered when assessing the distinctness of the variety.
These decisions highlight that the effect of not claiming priority for plant variety applications can be minimal compared to patents, where failing to claim priority is often fatal. Our advice for plant breeders making applications to protect their plant varieties is as follows:
- If possible, claim priority to the first plant variety right application within 12 months of filing to benefit from the earliest application date;
- Note the date and country of first commercial sale/disposal of a plant variety (or its propagating or harvested material) and keep the grace periods in mind;
- In the UK and EU file an application within 1 year of the first commercial sale/exploitation in the UK/EU;
- Ensure all applications are filed within 4 years of the first commercial sale/exploitation of the variety anywhere (or 6 years for trees and vines); and
- For other jurisdictions check the law (or ask an attorney specialising in plant varieties) and watch out for any differences, for example differences in grace periods.
