Popović, Popović & Partners
Plant breeders must invest in the creation of new plant varieties to meet the requirements of the modern market, which demands improved quality, disease resistance, productivity and environmental awareness. It is common knowledge that IP protection helps to ensure a return on investment and prevents counterfeiting. Plant breeders’ rights, much like other forms of IP right, protect research and creativity.
Rights on the market
Plant breeders’ rights are like patents but designated for plant varieties, of which the material is produced and commercialised. Such rights must be evaluated and granted by the appropriate competent authority of the Western Balkan territories (ie, Serbia, Montenegro, North Macedonia, Bosnia and Herzegovina), taking into consideration the unique perspective and challenges faced.
Registration of a plant variety will result in entry into the national variety listings, allowing the plant variety to be placed on the market. In practice, this process is often confused with the procedure for granting plant breeders’ rights.
The first procedure is required to place a variety on the market or to import a foreign variety, while the latter procedure recognises breeders’ rights to challenge or create a new variety. Protecting a new plant variety requires granting an exclusive right for the exploitation of the particular variety. It is easier when the rights holder has a predictable, user-friendly and safe regulatory environment to ensure the enforceability of an effective system of plant variety protection, with the aim of encouraging the development of new plant varieties for the benefit of society.
Being part of a uniform group provides such an environment. For plant breeders’ right, this group is the International Union for the Protection of New Varieties of Plants (UPOV), established in Paris in 1961. The UPOV provides an international platform for the recognition of plant breeders’ rights in their varieties. It has members from 75 states, including Bosnia and Herzegovina (since 2017), Montenegro (since 2015), Serbia (since 2013) and North Macedonia (since 2011). To become a member, a country must implement a law on plant variety protection, confirming the provisions of the UPOV.
The protection of plant breeders’ rights is regulated by the following national laws:
- Bosnia and Herzegovina – the Law on the Protection of New Varieties of Plants in Bosnia and Herzegovina (Official Gazette, BIH 14/2010 and 32/2013);
- Serbia – the Law on Protection of Plant Breeders’ Rights (Official Gazette, 41/2009 and 88/2011);
- North Macedonia – the Law on the Breeder’s Rights (Official Gazette, 52/2009); and
- Montenegro – the Law on Protection of Plant Varieties (Official Journal, 48/07, 48/08 and 40/11)
Becoming a member of the UPOV unifies the procedure and provides priority rights and national treatment.
Conditions for the grant of protection and rights
Standard conditions for the grant of protection are examined within a procedure that respects creativity. The competent authority studies whether the variety fulfils certain conditions. One of the most important conditions from a formal procedural point of view is novelty, which means that the variety is new in the sense that it must not have been sold or offered for sale any earlier than one year before the first national filing or, for foreign varieties, no earlier than four years before filing. In case of wine and tree varieties, it is six years before the first filing date in the country of origin.
Within the granting procedure, in addition to the technical (essential) requirements, whether the variety has a suitable denomination is also examined. Denomination can be given in the form of a code or a ‘fancy name’. To be approved, a variety denomination must fulfil several criteria. It must allow for the variety to be identified and ensure that it is different from a denomination identifying an existing variety of the same or related botanical species.
Technical examinations are conducted by the competent authority via a so-called ‘DUS report’. The purpose of this examination is to ensure that the criteria of ‘D – distinctness’, ‘U – uniformity’ and ‘S – stability’ are fulfilled:
- distinctness – the variety in question must be clearly distinguishable from any other variety of common knowledge at the date of filing the application;
- uniformity – the variety is uniform in the expression of its characteristics; and
- stability – the variety remains unchanged after repeated propagation.
The first step is filing the plant breeders’ rights application with a proposed variety denomination. In September 2018 Serbia introduced the UPOV Prisma tool for online filing, which will make the filing of a plant breeders’ rights application much easier. Nevertheless, the application form has six pages, with several enclosed documents (including a technical questionnaire, priority document, documents proving ownership of the variety, authorisation to the representative and photographs of variety).
Bosnia and Montenegro are part of the UPOV, but for now it is only possible to file plant breeders’ rights applications using the Community Plant Variety Office (CPVO) form. Filing such an application is advisable in order to preserve the novelty condition, particularly for foreign varieties, in case the same are sold or offered for sale more than four years after filing anywhere in the world and would not therefore be considered new.
After claiming a priority right by filing a certified copy of the first filed application, the competent authority checks whether the application has been filed within 12 months of the date of the first filing in another UPOV member country. It is also possible to a claim priority right on a US patent for plant variety.
After formal examination of the application, the competent authority enters it into the Register of Application and Proposed Denomination. Publishing details of the application offer the opportunity to third parties to file an opposition within certain time limits.
Substantive examination of variety is actually based on an officially obtained DUS report. Following examination, the decision of grant should be issued with the duration of rights calculated at 25 years, or 30 years for potatoes, trees and vines.
Annual fees must be paid for the maintenance of granted plant breeders’ rights. The rights of the breeder to the protected plant variety last for 25 years, or 30 years for potatoes, vines, woody fruits and other trees, from the date of recognition of the right, which is the date of issuing the decision on approval of the breeder’s request.
Figure 1. MODI: fancy trade name
Publication of applications
The significance of registration is that as an IP right, a plant breeders’ right is one of the absolute rights and must be entered into the relevant registers. Publishing a plant breeders’ rights application, as well as a granted right, on the websites of the competent authorities provides insight for business opportunities to maintain the newly introduced varieties. Therefore, it is advisable to monitor such online registers to observe what competitors or potential partners are doing.
During the period between the publication of the application and the granting of the right, each UPOV member provides provisional rights protection. During this period, all parties require breeder authorisation.
Figure 2. 100th plant breeders’ rights application via the UPOV Prisma application tool
After granting protection, the following acts in respect to the propagating material of the protected variety require the breeder’s authorisation:
- production or reproduction (multiplication);
- conditioning for the purpose of propagation;
- offering for sale;
- selling or marketing;
- importing; and
- stocking for any of the above-stated purposes.
The breeder may make its authorisation subject to conditions and limitations, as the owner of a new plant variety enjoys the benefits of exploitation of the protected variety. It is also advisable to enter the licence agreement at the Register of Granted Plant Breeder’s Rights in order to have effect towards third parties.
The rights of the breeder can also be assigned to another person, in whole or in part. Both this contract and the licence agreement must be in writing, and it is advisable to be registered at the relevant national register of plant varieties in order that the information regarding the new owner is available to the public.
Fancy trade name
An example of a ‘fancy’ trade name for an apple variety is ‘MODI’, which is well known on the market and is protected under International Trademark Registration 919.581 (see Figure 1). In practice, a trademark such as MODI and a variety denomination such as the plant variety code (CIVG198) for this apple variety must be treated separately as different IP rights relating to same apple variety, but one is a trademark and the other a plant variety denomination.
A sign that things are moving forward electronically is that the 100th plant breeders’ rights application via the UPOV Prisma application tool was filed for an apple in Serbia with the name ‘Star Fruits Diffusion SAS’ (see Figure 2).
Foreign plant varieties
Besides the procedure for granting plant breeders’ rights, it is also necessary to ensure that the new foreign plant variety has been entered into the national listings in order to export it and place it on the market. Such procedure is different from that of obtaining plant breeders’ rights. Here, it is necessary to provide a document stating that the foreign variety is recognised by the competent foreign authority. Together with a request for registration of the foreign plant variety for the particular variety, a description of particular plant variety must also be submitted, as well as the details of the party maintaining the subject plant variety.
The territories of the Western Balkan countries share mutual market traffic, which is supported by a similar local climate, land and other suitable conditions for growing plants. For example, in Bosnia and Herzegovina, to enter the variety listings, a decision from a neighbouring country such as Serbia is acceptable. Using experience from other countries which are part of the UPOV Convention is a good example of coordination in the region.
EU member states have a unique system of legal protection for plant varieties managed by the CPVO. Although the Western Balkan countries are not part of the European Union and, as such, filing plant breeders’ rights applications before the CPVO cannot provide protection in Serbia, Montenegro, Bosnia and Herzegovina and North Macedonia, cooperation between the officials exists in many ways. Results from the CPVO’s DUS testing are relevant for granting protection in these non-EU countries.
Although the countries of the Western Balkan region have relevant laws concerning the protection of plant breeders’ rights, detailed regulation for the appliance of these laws is still required. However, the effort of competent officials has enabled foreign breeders to file their first plant breeders’ rights applications in Bosnia and Herzegovina and Montenegro, even where appropriate procedures and forms were not established. The filing of these applications is necessary in order to secure plant breeders’ rights for novelty, which expires within four years.
In all Balkan countries, the enforcement of a set of laws concerning market and agriculture inspection and customs surveillance is expected, but for the moment court infringement litigation remains possible. The civil protection of breeders’ rights is provided by:
- a lawsuit regarding the violation of breeders’ rights; or
- a lawsuit for determining the rights of breeders.
However, the national courts are unfamiliar with this complex issue of the violation of plant breeders’ rights by the illegal propagation of planting material. In practice, sending a cease and desist letter with a draft of the binding declaration gives solid results. In case of further violation of plant breeders’ rights, a report to the competent phytosanitary inspector may be filed.
Road to Europe
Plant breeders need legal certainty in government policies. The fact that the Balkan countries are either in talks to join the European Union or are at the front of the queue to begin them is very important for a good climate for planting and growing this particularly fruitful IP right.
Required reforms include the effective protection of all IP rights, including plant breeders rights. The Balkan players are EU candidate countries:
- North Macedonia, since 2005;
- Montenegro, since 2010,
- Serbia, since 2012; and
- Bosnia and Herzegovina, a potential candidate.
The Western Balkan countries must pack their delicate plant-breeders’ rights carefully for their EU journey.