Filing to protect a plant variety? Bear in mind that the novelty requirement is not the same as for patents: the Italian Supreme Court has recently ruled that the mere existence of an earlier application abroad filed by the same applicant for the same plant variety does not amount to a disclosure or to a commercial act that can affect the novelty of the plant variety.
The Italian Supreme Court, in a decision issued on August 29 (No. 25439), has clarified that, unlike patents, the novelty of a plant variety registered with the Italian Patent and Trademark Office is not compromised if a former application for the same variety has been previously filed by the same applicant in a different country.
Facts in the case
The exclusive licensee for Italy of a table grape variety, whose rights were owned by the University of California, sued two growers for the unauthorized use of the plant variety protected both in the US and in Italy. The growers counterclaimed for the nullity of the plant variety registration based on the alleged lack of novelty, arguing that the Italian application was filed more than a year after the corresponding application in the US for the same variety.
The Supreme Court upheld the decision of the Court of Appeal of Catania, confirming that, unlike patents, novelty for plant varieties cannot be considered strictly absolute. Indeed, novelty is not affected if the breeder (or another entity with the breeder’s consent) has already filed an application for the same variety in another country (in the instant case, in the US). According to the relevant provisions (specifically, Article 1 of the Decree of the President of the Republic No. 974/1975, applicable ratione temporis to the proceedings, and now almost fully reproduced in Article 103 of the Italian Industrial Property Code), a plant variety fails to meet the novelty requirement for registration only if the propagating or harvesting material of the new variety has been subjected to sale or other commercial exploitations, in Italy more than one year before the filing of the application or, in other countries, more than four years before the filing of the application for new variety (the four-year term is extended up to six years for trees and vines).
In this regard, as clarified by the Italian Supreme Court, the registration of the same variety cannot be considered a sale nor a commercial exploitation of the variety, since such acts (the sale or the other form of commercial exploitation) consist of the commercialization of variety material, for instance variety constituents or harvested materials.
In fact, as the Court considered, to obtain a new plant variety the breeder must test the plants of the new variety through field tests that could last years and potentially expose the variety to the public. In this regard, Article 1 of the Decree of the President of the Republic No. 974/1975 established that the fact that a new variety has been subjected to field tests or has been presented or inscribed in an official variety register cannot be used to oppose novelty by the breeder or the breeder’s assignee.
Finally, the Court observed that the only relevant term of a one-year term in the field of plant varieties relates to the possibility to claim for the priority of a former application for the same variety in a member State of the International Union for the Protection of New Varieties of Plants (UPOV). In other words, as established by the UPOV Convention, any breeder who has filed an application for the protection of a variety in one of the UPOV Contracting States enjoys a right of priority for a period of 12 months for the purpose of filing an application for the grant of a breeder’s right for the same variety with the competent authority of any other Contracting State.
Based on the above, the Italian Supreme Court stated that the previous plant variety application filed in the US did not affect the novelty of the Italian application for the same variety.
Breeders seeking to preserve the novelty of a plant variety should pay attention to acts amounting to the commercial exploitation of the variety, such as the sale or the free assignment for promotional purposes of propagating material of the variety to nurseries.