All CPVO staff wish you a very happy and prosperous New Year!

Introduction.

By  virtue  of  article  1  of  Council  Regulation  (EC)  2100/94  (  “the  Basic  Regulation”)  a  system  of Community plant variety rights has been  established “ as the sole and exclusive form of Community industrial property rights for plant varieties”.  This provision finds it pendant in article 4 (1(a) of the so-called Biotech Directive1: “The  following  shall  not  be  patentable:  (a)  plant  varieties;”.   The European Patent Convention contains in article 53 (b) a similar provision.  

The reason to ask, and try to answer, the question, that forms the title of this article, is, that the European Patent Office (EPO)   until now   did not take up an unequivocal position   on the issue, whether  hybrids are covered by the definition of plant variety. In its decision  T788/07  of  7  January 2008 the Board of Appeal of the EPO (BoA) concluded that ”Hybrid seeds or plants thereof are not considered  as  units  with  regard  to  their  “suitability  for  being  propagated  unchanged”….  and  are therefore not regarded as plant varieties which are excluded from patentability (Article 53(b) EPC).” The consequence of this opinion of the BoA is, that hybrids can be protected with a patent (and would be excluded from protection with a Community plant variety right). 

In a decision of 22 March 2012, concerning the same patent application, that was the subject of the decision of the BoA referred to above,   the Opposition Division of the EPO deviated from this ruling by considering “that in the present case the plant is to be considered unchanged after a cycle of propagation, i.e. a cross between two plant varieties and hence the conditions of Rule 26 (4)(c) is considered to be met” . This rule contains the elements of the definition of a plant variety.  As a consequence the European patent in question   (No. EP-B-8 991 30)   granted as a follow up of the BoA decision, was revoked.  

The decision of the Opposition Division is in line with the practice of the Community Plant Variety Office (CPVO). This agency  has granted as from 1997 a stream of Community plant variety rights for hybrids based on the assumption, that    hybrids , at least F1 hybrids, are covered by the definition of a  plant  variety  and    as  such     protectable  subject  matter  under  the  Community  plant variety protection system.  

Definitions

The jurisprudence of the BoA, the decision of the Opposition Division  and the granting decisions of the  CPVO  referred  to  in  the introduction,  are  based  on  the  same  notion  of  “plant  variety”  and “hybrid” respectively.

Plant variety

Article 1 (iv) UPOV Convention 1991 defines a plant variety as follows:

“variety” means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be

-      defined by the expression of the characteristics resulting from a given genotype or 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; This definition is the basis of the definitions of plant variety laid down in article 5 (2) of the Basic Regulation and in Rule 26 (4) EPC respectively.

Hybrid

Neither the UPOV convention nor as far as I know any other international convention contains an internationally recognized definition of a hybrid in its broad sense.

The decision of the BoA relates to a specific kind of hybrid: that resulting from a crossing between two different homozygous parent varieties, 2   a so called F1 hybrid.3

As the granting practice of the CPVO relates to F1 hybrids as well, the conclusion is that as regards the use of the term “hybrid” the BoA of the EPO, the Opposition Division of the EPO and the CPVO have based their decisions on the same notion of hybrid.

The elements of the variety definition and their applicability to hybrids

The question arises whether F1 hybrids meet   the different elements, or rather conditions, of the variety definition.

-           “ plant grouping within a single botanical taxon of the lowest rank”

The notion of plant grouping is not defined in the UPOV convention , but the EU legislator has filled this lacuna as follows: “A plant grouping consists of entire plants or parts of plants as  far  as  such  parts  of  plants  are  capable  of  producing  entire plants.”  It seems beyond discussion that a hybrid is such a plant grouping even taking into account that the plants they are capable of producing partly genetically differ from them.

But is it a grouping “within a single taxon of the lowest rank”?

Since  a hybrid   always  is the result  of crossing  on variety  level,  even  in the case  of inter specific or inter generic hybrids, and the hybrid is at the same -lowest- botanical rank as its parents, the answer on that question must be in the affirmative.

-     “defined   by  the  expression   of  the  characteristics   resulting   from   a  given   genotype   or combination of genotypes”

Whether it concerns the characteristics of one genotype or of a combination thereof, it is clear that a hybrid can be defined by the expression of such characteristics.  The descriptions of the hybrids protected under the Community pvp system are the convincing proof of that position.

-      “distinguished  from any other plant grouping by the expression  of at least  one of the said characteristics”

As the hybrids is the result of the crossing of two parent lines it will be different from those lines as well as from other (hybrid) varieties. The  conclusion must be that a hybrid fulfills the “distinguished…” condition of the variety definition.

The Opposition  Division   came, in its decision  mentioned  before,   to a similar  conclusion: “since the  crossing of two distinct plant varieties results in a specific phenotype as the result of the combined genotypes and the plant can be distinguished  from the parents and from other plant groupings”.

-      “Considered as a unit with regard to its suitability for being propagated unchanged

As follows from the decision of the BoA of the EPO, partly cited in the introduction  of this article, it was  this element of the definition that constituted  the basis for its conclusion, that hybrids cannot be considered as varieties.

This element of the definition did not appear in the Basic Proposal, that formed the basis of the discussions  during the Diplomatic  Conference  for the revision of the UPOV convention held  in  March  1991  in  Geneva  ( “the  Diplomatic Conference”).  It was  introduced  on  the initiative of the working group, that was given the task to review the  definition of “Variety”. The proposal to add this element to the definition was made “ in order to take into account the notion of “reproduction and multiplication” connected with the variety”4

The history of the addition of this part of the variety definition shows clearly, that it was the intention of those who proposed its addition,  that it would not put hybrids outside the scope of the definition of “plant variety”. The following quote from the Records 5may illustrate this: “ Mr. Guiard (Chairman of the Working Group ) replied that  the Group had held a detailed discussion on whether hybrid varieties could be covered by the sentence as proposed. It had seemed to the Group that the answer was yes …. since the sentence referred to a “suitability,” that was to say a very broad notion, and used the passive form( “for being propagated” and not  “for  propagating”).  That  suggested  the  possibility  of  outside  intervention  making  use either of plant groupings that were not necessarily included in the variety or of special techniques.”

There is no indication, that the opinion of Mr. Guiard was not shared by the signatories of the final text of the 1991 UPOV convention. This implies, that as regards compliance with this element of the variety definition the term “propagated” covers the propagation of hybrids through the crossing of its parental lines. The opinion of the BoA apparently based on the idea that “propagated” refers to propagation by seed of the hybrid itself, is thus not in line with the intention of the fathers of the UPOV 1991 convention.

When considering the intention of the signatories of the convention, it should be taken into account ,that some years before the diplomatic conference took place, the BoA of the EPO had taken the decision, that hybrid seed could not be considered  as varieties as they are” lacking  stability  in  some  trait  of  the  whole  generation  population.”6   At  the  time  of  that decision  of the  BoA  the  UPOV  conventions  in  force  did  not  contain  a  definition  of  plant variety. Reason why the BoA based its decision on a notion of variety developed by itself. It is probable, that the representatives of the European UPOV member states participating in the Diplomatic  conference,  were  aware  of  this  jurisprudence   of  the  BoA  of  the  EPO  and intentionally deviated from it by accepting  the variety definition in its present form.

The conclusion, that hybrids also comply with this element of the plant variety definition is shared by the Opposition Division. In its  decision referred to in the Introduction the following consideration  can  be  found:  “OD  considers  that  in  the  present case  the  plant  is  to  be considered unchanged after a cycle of propagation , i.e. a cross between two plant varieties and hence the conditions of Rule 26(4)(c)  is considered by the OD to be met.”

Other relevant provisions of the UPOV convention and the Basic Regulation

Confirmation that hybrids are included in the variety concept of the UPOV convention can be found in its article 9 . The wording in that provision, “ in the case of a particular cycle of propagation , at the end of each such cycle” clearly refers to the propagation of hybrids. Also in article 14 (5) (iii) of the convention  mentioning  “varieties  whose  production  requires  the  repeated  use  of  the protected variety “ makes clear that F1 hybrids are varieties as defined in the convention. Similar provisions can be found in the Basic Regulation.

Whereas the UPOV convention does not explicitly make reference to “hybrids” or “hybrid varieties”, the Basic Regulation does. In article 5(1) the following provision appears:

“1. Varieties  of all botanical  genera and species , including  , inter alia, hybrids between genera or species, may form the object of Community plant variety rights.”

Article  10(2) of the Basic Regulation  concerning  the novelty  requirement,   refers even twice   to a “hybrid variety” .

Also  Art  14.1  of  the  Basic  Regulation  excludes  hybrids  from  the  scope  of  the  farm  saved  seed exemption . If hybrids were not considered to be varieties, there would be no need to make such exemption to the FSS exemption.

Conclusion.

To  qualify  a  hybrid  as  a  plant  variety  is  supported  by  the  legislative  history  of  the  UPOV  1991 convention  and  the  wording of  some  of  its  provisions.  The  provisions  of  the  Basic  Regulation mentioned above are even more pertinent  in that respect.

The  conclusion  is,  that  the  question,  that  forms  the  title  of  this  note  must  be  answered  in  the affirmative. This implies, that the Board of Appeal of the EPO by ruling that a patent be granted in respect of the Brassica hybrid, that was the object of its decision of 7 January 2008, in my opinion, did not respect the exclusion from patentability of plant varieties as laid down in Article 53(b) EPC.

Fortunately the BoA has been offered the occasion   to review   its jurisprudence concerning the patentability of hybrids, because it has to decide on an    appeal lodged against the decision of the Opposition  Division of 22 March 2012 ( case T1208/12).  As the oral proceedings  have taken place during a hearing held on   7 February 2017 , a decision of the BoA may be expected in the coming months.

Apeldoorn , 14 February 2017

Bart Kiewiet

Former president CPVO, Of Counsel Vondst Advocaten, Amsterdam, consultant D Young & Co , Southampton and London.

This article is partly based on an article of the author of July 2011 published on the website of the CPVO.

1 Directive 98/44/EC of the European Parliament and the Council of 6 July 1998 on the legal protection of biotechnical inventions.

2 « The invention, namely a hybrid seed, or hybrid plan thereof , produced by a cross between a plant obtained from one of four seeds …as male parent and a second Brassica plant as a female parent.. » (paragraph 2. Of the Reasons for the decision)

3 The International Code of Nomenclature for Cultivated Plants (ICNCP) gives the following definition of F1 hybrids:”the result of a deliberate repeatable single cross between two pure-bred lines.”

4 Para 16 page 138 of the Records.

5 Para 1002 page 330 of the Records.

6 Decision of 10 /11/1988 - T0320 (hybrid plants)

This article has been published in the "berichten industriële eigendom", special issue 2017.

Written in honor of Paul van der Kooij