USA: Plant Intellectual Property (IP) Protections Grow

In the past, Plant Variety Protection (PVP) Certificates could only be used to protect plant varieties that reproduce sexually (through seeds) or through tuber propagation. However, the Agricultural Improvement Act of 2018 recently amended the Plant Variety Protection Act (PVPA) by extending protection to plant varieties that reproduce asexually from a single parent (through cutting, grafting, tissue culture, and root division).¹

 

To be eligible for a PVP Certificate, a plant variety must be new, meaning that propagating or harvested material of the variety has not been sold for more than one year in the U.S. or more than four years in a foreign country prior to the filing date. For trees and vines, it must not have been sold more than six years prior to the date of filing. The variety must be distinct from other varieties also, where distinctness is based on identifiable morphological, physiological, or other product/processing characteristics. The variety, in addition, must be uniform so that any variations are describable, predictable, and commercially acceptable. Further, the variety must be stable so that upon reproduction, the essential and distinctive characteristics remain unchanged. A very comprehensive description of the Origin and Breeding History must be included in the application too along with a detailed Statement of Distinctness.

 

Another requirement for a PVP Certificate is a deposit of propagation material with a government repository. Notably, the propagation material is only available with the Applicant’s permission while the certificate is in force, which period is 20 years from issuance of the certificate for plants and 25 years for trees and vines. Once the certificate expires, the material is publicly available.

 

An interesting fact about multiple applicants for a Certificate directed to the same variety is that if two or more applicants submit applications for a Certificate on the same day, the applicant who first complies with all the requirements shall be entitled to the Certificate; however, if the varieties are indistinguishable, a single Certificate shall be issued jointly to the multiple applicants. Another fact is that the applicant can claim priority to a previously filed U.S. application if still pending and/or foreign application based on the same variety, if filed within twelve months from the earliest date on which such foreign application was filed.

 

The protection offered by the certificate includes several intriguing exemptions, the crop exemption and the research exemption. The crop exemption allows a person to save seeds from his own plants to replant them for his own use and also to sell them for use in other than reproductive purposes (i.e., food consumption). For asexually reproduced plants, there are no seeds involved, so it appears that there is no crop exemption. The research exemption permits the use or reproduction of a protected variety to develop new varieties, if used in bona fide research; however there is no requirement that seeds be provided publicly for research. Also, there is a noncommercial use defense to PVP Certificate infringement pertaining to an act of infringement done privately.

 

The PVPA requires that the Certificate holder must give notice to the public that the variety is protected by labeling the variety or container of seed. The label must contain either the words “Unauthorized Propagation Prohibited” or “Unauthorized Seed Multiplication Prohibited.” After the Certificate issues, the label must contain additional words such as “U.S. Protected Variety.” If the variety is not labeled, then the owner cannot recover any damages unless the infringer has had actual notice or knowledge that propagation is prohibited or that the variety is a protected variety.

 

The remedy for infringement of a PVP Certificate is by civil action under 7 U.S.C. 2541, which applies to any variety that is essentially derived from a protected variety, unless the protected variety is an essentially derived variety; or any variety that is not clearly distinguishable from a protected variety; or any variety whose production requires the repeated use of a protected variety; or harvested material (including plants and parts of plants) obtained through the unauthorized use of propagating material of a protected variety. The term “essentially derived variety” means a variety that is predominantly derived from another variety or from a variety that is predominantly derived from the initial variety, while retaining expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety and is clearly distinguishable from the initial variety but conforms to the initial variety in the expression of the essential characteristics that result from the genotype(s) of the initial variety.

 

An owner can sue for injunctive relief, damages, and attorney fees upon belief of infringement. If a court finds that there has been an infringement, then the court shall award damages in an amount that is at least equal to a reasonable royalty, plus interest and costs that are fixed by the court, for the use of the variety by the infringer. The court may increase the damages up to three times the amount determined for willful infringement. In exceptional cases, the court may also award reasonable attorney fees to the prevailing party.

 

Now that the PVPA has been amended to include the granting of PVP Certificates for asexually reproduced plants, it will be interesting to see whether there will be more PVP certificates filed and whether there will be additional discourse, especially in light of the exemptions pertaining to sexually reproduced plant varieties that weren’t carried over to asexually reproduced plant varieties in the newly amended PVPA (saving seeds for personal use; sales of seeds for use in non-reproductive purposes; bona fide research; non-commercial use done privately).

 

(1) The PVPA (7 U.S.C. § 2321 et seq.) was amended as follows: § 2401(a) has been amended to include a definition of “asexually reproduced.” Asexually reproduced has been defined as a plant that is “produced by a method of plant propagation using vegetative material (other than seed) from a single parent, including cutting, grafting, tissue culture, and propagation by root division.” § 2402(a) has been amended to include “asexually reproduced” plants to the list of plant types entitled to production. § 2541(a)(3) has been amended to include “asexually multiply[ing]” a plant as an act of infringement. § 2568(a) has been amended to include “asexually reproducible” to plant material as a prohibited act under false marking.