What is to be protected by an industrial or intellectual property right largely depends on what the intention is in granting an exclusive right in a certain object. As regards inventions – in the context of this contribution this term relates to technical inventions as well as to improvements in plant breeding – the purpose is to foster progress by granting, for a limited period of time, the right to the creator to exclude others from using his achievements in order to allow the exploitation of the invention to the best possible extent in order not only to leverage the investments made in the invention but to induce further research.
Simultaneously, third parties should be induced to continue their efforts to find, or to invent, something new in light of the information obtained from the latest technical advances due to the publication of the invention. Finally, moreover, third parties must have the possibility to inform themselves on existing property rights and their scope by means of appropriate sources of information.
Article 3 (1) (ii) UPOV 1991 obliges the contracting parties to the Convention to grant protection to varieties – not mentioned in this Article – of all plant genera and species.
Article 5 of Council Regulation (EC) No. 2100/94 of 27 July 1994 on Community Plant Variety Rights is more precise about what should be protected by a plant variety right (pvr). It defines the object of Community plant variety rights as varieties of all botanical genera and species including, inter alia, hybrids between genera or species.
The objective protection criteria are summarized in Article 6 CPVR which, in essence, is identical with Article 5 UPOV 1991.
Article 1 (vi) UPOV 1991, which is reflected identically by Section 2 of Article 5 CPVR, defines the term “variety”.
According to this provision, the term “variety” means
“a plant grouping within a single botanical taxon of the lowest known rank”
as far as it can be
– defined by the expression of the characteristics that results from a given genotype of combination of genotypes,
– distinguished from any other plant grouping by the expression of at least one of the said characteristics, and
– considered as a unit with regard to its suitability for being propagated unchanged.”
The intermediary result to be derived from this definition is that the object of the protection is the genome defined by its specific characteristics which
-must be determined by its genotype or a combination of genotypes, thus, excluding characteristics caused by external factors and
– such characteristics which allow a clear objective distinction between the varieties and are capable to be described.
In order to establish legal certainty for rights holder as well as for third parties, the protected object must be described as precisely as possible so that the scope of protection can be reliably determined. While a description of the genotype would nowadays be possible, it is still unknown which sections in the genome are responsible for certain characteristics; thus, a description of the object of a pvr as defined in Article 1(vi) UPOV 1991 and Article 5(2) CPVR is not yet possible.
For this reason, Article 62 of the Regulation obliged the Office to include an official description of the variety alongside the decision to grant the application for registration of a Community plant variety right.
At the end of the technical examination, the Examination Office shall, according to Article 57, at the request of the Office or if it deems the result of the technical examination to be adequate to evaluate the variety, send the Office an examination report and, where it considers that the DUS-conditions are complied with, a description of the variety as part of the decision of the granting Office.
Article 62 creates the impression that the characteristics established by the granting authorities as a result of the technical examination, and on which the grant of plant variety protection was based, allow an unambiguous determination what is precisely protected.
That is, however, not the case. As the description in Article 1(vi) UPOV 1991 outlines, it is the genetic structure of a new variety. The characteristics of a variety are only an auxiliary means visualizing the genetic character of the same. However, unlike the subject matter of patents, namely an abstract solution to a technical problem, plants – as living organisms – are essentially subject to the conditions under which they are propagated or grafted and cultivated. The environment and cultivation conditions, such as soil properties, water supply, fertilization, quantity of light and similar factors, are crucial to the expression of the characteristics of plants. The consequence of this interaction between plants and the environment is that, depending on the environmental and cultivation conditions, the same genotype could produce different manifestations, that is to say different phenotypes. Changes in the phenotype caused by external factors are reversible, as opposed to evolutionary (genotype) adaptation which relates solely to hereditary properties. The variations to the expressions of characteristics caused by the environment and other cultivation conditions change the outer appearance. These changes are not due to genotype or a combination of genotypes determining the plant.
As living material is continuously subject to changes, the variety description has to be seen as the summary of the observations made by the Examination Office during the year or years of examination. It only describes the expression of the relevant characteristics in relation to the expression of the characteristics of the comparison varieties included in the technical examination in the relevant year or years, as the expression of the characteristics in the plant variety description is dependent, on the one hand, on the external conditions in the relevant examination year and, on the other hand, on the expression of the characteristics of varieties included in the comparison tests.
Thus, although in fact the laws protect the variety in its genetic composition, the plant variety description is the only possible means at the moment to determine what is protected. The reason why a determination through DNA markers is not yet applicable may be enumerated as follows:
– DNA markers are not yet predictive of many of the phenotypic characteristics due to a lack of genetic linkage information, not to mention the complex way in which genetics control the phenotypic traits;
– if markers were used to determine distinctness they must also be used to determine uniformity and stability, which could give rise to both financial and technical problems;
– their use would not recognize the extent of existing variability within a variety, which avoids narrow genetic diversity and could serve to emphasize cosmetic or non-valuable characteristics and, finally,
– they could serve to decrease the minimum distance between varieties and jeopardize the value of the right granted.
Apart from difficulties to precisely define the differences in a DNA structure which may justify the grant of a plant variety right, the more difficulties will arise with regard to the determination of a scope of protection. The scope of protection of a protected variety is determined by the combination of the characteristic features specified in the decision by the granting Office – in the European Union the CPVO. In view of the fact that the characteristic features set out in the variety description are induced by environmental conditions and therefore vary to a greater or lesser extent, the scope of protection of the protected variety also encompasses the variations to be expected for the pertinent species. The German Federal Supreme Court referred to this as the so called “tolerance range”. The tolerance range is not reflected by the variety description but has to be investigated by comparison trials.
In light of the above factors to be taken into consideration, the variety description will remain, for the time being, the only practical and reliable instrument to determine the object protected by a cpvr, namely the genome, and its scope of protection. The scope of protection, however, can only be determined by a comparison of the protected variety with other varieties of the same species over an appropriate period of time under the same cultivation conditions allowing to access the tolerance range which determines the scope of protection of a protected variety.
This article is based on a speech given by the author on the occasion of the Josef Kohler Symposium at the Humboldt University Berlin on 30 October 2015 titled “Intellectual Property on Plants: Patents, Plant Variety Rights and Alternative Approaches.
 Straßburger, Lehrbuch der Botanik [Textbook of Botany], 35. Edition, Kap. 10.1, Page 523.
 BGH [Federal Supreme Court], GRUR [Journal of the German Association for the Protection of Intellectual Property] 2009, 750, 752 – Lemon Symphonie/Seimora.
Published on 7 Dec 2016