Neither the International Convention on the Protection of New Varieties of Plants (UPOV-Convention) nor Council Regulation (EC) No. 21 00/94 on Community plant variety rights (CPVR) provide a provision determining the scope of protection of a plant variety. Solely Article 13 para 5 CPVR defines which of the acts described in para 2 of Article 13 are reserved for the right's holder in relation to varieties other than the protected one.

The determination of the scope of protection of a plant variety right lies in the area of conflict of several objectives:

What is to be protected by an industrial or intellectual property right largely depends on the intention of granting an exclusive right in a certain object. As regards inventions, including 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, and thus not only to leverage the investments made in the invention but to induce further research by the inventor/breeder.

The reward concept needs to be considered under three aspects:

  • There is an existent claim to the protection of breeding activities that result in a variety which differs significantly, in at least one decisive characteristic, from every other variety of the particular type generally known on the date of application;
  • On the other hand, an adequate scope of protection must be ensured which, in view of the breeder's exemption, does not allow third parties to simply create something new by using a protected variety, thereby putting into question the amortization of the efforts of the breeder;
  • Finally, the basis of the rights granted must be defined or described as precisely as possible so as to allow the right holder to assess the scope of protection of his right. This mirrors third parties' interests in being able to ascertain whether their activities may possibly infringe granted rights.

The last aspect has a close tie with the objective that the grant of a right should induce third parties to continue their efforts to find or to invent something new in light of the information achieved from the latest technical advances due to the publication of the invention.

I. Object of Protection

1.Article 3 (1) (ii) of the International Convention on the Protection of New Varieties of Plants 1991 (UPOV 1991) obliges the contracting parties to the Convention to grant protection to varieties - not defined in this Article - of all plant genera and species.

Object of Community plant variety rights
Varieties of all botanical genera and species, including, inter alia, hybrids between genera or species, may form the object of Community plant variety rights. (…)

Similarly, Article 5 CPVR defines the object of Community plant variety rights as varieties of all botanical genera and species including, inter alia, hybrids between genera or species.

2. Article 1 (vi) UPOV 1991, which is reflected identically by Section 2 of Article 5 CPVR, defines the term "variety". According to this provision, "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."

In indents one and two reference is made to the expression of characteristics. The requirement "distinguished from any other plant grouping by the expression of at least one of the said characteristics" in indent 2 refers to the distinctness requirement as defined in Article 7 of UPOV 1991 and Article 7 CPVR.

If the above summarized conditions are fulfilled, a plant variety in the sense of the Council Regulation is given, regardless of whether it meets the protection requirements.

Moreover, Section 4 of Article 5 CPVR has to be taken into account for the determination of the object of a plant variety right as well as for its scope of protection. Section 4 emphasizes that all plant material belongs to a variety as defined in Section 2, regardless of whether the expression of the characteristics is invariable or variable between variety constituents of the same kind as long as the differences result from the genotype or a combination of genotypes.

It takes into account that the expression of characteristics is, dependent on the specie, more or less variable not only due to environmental conditions but also due to the fact that living organisms per se are subject to constant variability.

Thus, there is rarely factual identity in the phenotypic characteristics, even among plants of the same variety. As long as variability is caused by the genotype or a combination of genotypes, the same do not determine a different variety.

In order to find out whether variations in the characteristics of a variety are due either to the cultivation conditions and/or to the natural variability of plants of the relevant species, in most cases a technical examination in the form of a comparison trial is performed, including comparison varieties which the Examination Office deems necessary to include in such trials. In the frame of the technical examination of a candidate variety, plant material of the variety will be grown by the Examination Office and, in compliance with Article 57 paragraph 2, examined with regard to the DUS-requirements in accordance with the Test Guidelines issued. If distinctness cannot be assessed in a reliable way by comparing documented descriptions - which is usually not the case -, the candidate variety must be cultivated by the Examination Office side by side with varieties which it deems to be included in the technical examination.

3. The objective protection criteria are summarized in Article 6 CPVR which, in essence, is identical with Article 5 UPOV 1991.

Article 6 - CPVR
Protectable varieties
Community plant variety rights shall be granted for varieties that are:
(c)stable; and

Moreover, the variety must be designated by a denomination in accordance with the provisions of Article 63 CPVR.

In the frame of this Article the distinctness requirements need to be scrutinized more closely.

4. Article 7 of UPOV 1991 defines a variety to be distinct

"… if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the filing of the application".

In contrast to Article 6 (1) (a) of the 1978 Act, no further explanation is given with regard to "clearly distinguishable". The 1978 Act included the requirement that the characteristics which define a distinguishable variety "must be capable of precise recognition and description".

Article 7 of the CPVR is more precise. It requires with regard to distinctness that the variety must be clearly distinguishable, by reference to the expression of the characteristics that results from a particular genotype or combination of genotypes, from any other variety whose existence is a matter of common knowledge on the date of application. From this definition the conclusion must be drawn that the object of protection is plant material 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 must allow a clear objective distinction between the varieties and are capable to be described.

5. A PVR protects the variety in its genetic singularity which finds its expression in a characteristic outer appearance. This appearance must be sufficiently different (distinct) from the appearance of varieties of the same species and the relevant application date. Distinctness, however, is not sufficient. It must be determined by the genetic structure of the variety and not by any external factors which take influence from the outside, such as cultivation and environment conditions. Moreover, the differences must be obvious.

In comparison to patent rights, not an abstract idea - the exercise of which leads to a technical solution - is protected but the object of the breeder's activi- ties, namely the plant material achieved as a result of his breeding activities. "Result of breeding activities" means in this context not only the systematic striving to obtain plants with desired characteristics by using classical (technical) breeding techniques but also the discovery of plant material which shows characteristics which make it distinctive from plants of the same species. While wholly naturally occurring plant groupings, such as sports or mutations, regularly do not fulfill the protection requirements of uniformity and stability, the finder of such material is awarded by the grant of a plant variety right if he achieves removal of lack of uniformity and/or stability through his skills.

II. Scope of Protection

1. According to Article 62 CPVR, a decision to grant the applied for Community plant variety right shall include an official description of the variety.

At the end of the technical examination, the Examination Office shall, according to Article 57 CPVR, 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 which is part of the decision of the CPVO.

The scope of protection of a protected variety is determined by the combination of the characteristics specified in the granting decision of the Community Plant Variety Office, as set forth in the official description of the variety in accordance with Article 62, sentence 2, of the Community Plant Variety Regulation, insofar as the same can be attributed to the genotype or a certain combination of genotypes. Most of the characteristics specified in the variety description are subject to environmental impacts and hence fluctuate more or less according to these influences; the scope of protection of a protected variety also incorporates the variations/alterations expected for the plant species in question. The German Federal Supreme Court names this the  so-called  "tolerance range".This ascertainment of the German Federal Supreme Court creates the impression that the official variety description, which was generated within the framework of granting protection, determines the range of identity. Equally, 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. This, however, is not the case as the variety description does not mention the fluctuation range.

2. Unlike the subject matter of patents, 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.2 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 and, thus, do not characterize another variety than the protected one.

Only the genotype is decisive. All variations in the phenotype that can be traced back to the same genotype thus fall into the range of identity of the protected variety. As, despite developments in the analysis of genetic structures, it is not yet widely possible to determine which sequences of a DNA are "responsible" for reducing specific physical characteristics, phenotypical properties which determine the variety, it has to be decided on the basis of the outer characteristics whether any differences, which can be ascertained in different years of observation, are caused by one and the same genotype, or by a different genotype or by external factors. In order to make such an assessment, the fluctuations of the phenotypical characteristics, i.e. modification in the sense described above under II.1, must be known within the plant species to which the variety in question belongs. All fluctuations of a variety typical for a certain species traced over a number of years, if viewed comprehensively, determine the variation range of the species. If the range of modifications of characteristics of the respective variety lies within this variation spectrum, it can be concluded that these fluctuations are exclusively determined by outer factors and not due to a different genotype. These different characteristic features determine the identity range of the protected variety in a legal sense. The equivalence range in the sense of plant variety protection law is then determined by alterations going beyond the variation or modification range that are not clearly distinctive in the sense of Article 7 of the CPVR and Article 7 UPOV 1991. The above may be illustrated by the following drawings:

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.

For this reason, the examination whether a new variety fulfills the DUS requirements is not based on a comparison of the variety description - being part of the decision to grant the right - with descriptions of the comparison varieties but is made by means of a biological comparison as described earlier.

In light of the above, the Board of Appeal of the CPVO most recently outlined the following in its decision of 2 September 2016 in appeal case A007/2007- RENV under paragraph 36:

"The unique nature of the plant variety right is reflected by the fact that the emphasis is on the physical material, the plants themselves, and not on the description of the variety. In other words, both the evaluation is to grant and also decisions relating to infringement of registered plant variety rights are also made by reference to the actual plants concerned. In particular, for assessing the distinctness, uniformity and stability (DUS) crite- ria, the plant material of the candidate plant is normally compared with control varieties from within the same species in a comparative cultivation. Variety descriptions of plant varieties do not have the same legal value as patent claims. Whereas the scope of protection of patents is assessed on the basis of the plant claim, the assessment of a plant variety is general conducted in a trial (technical examination and technical verifications) and not on the basis of the variety description. The variety description is nothing more than a "snapshot" of the plant variety right when that right was tested."

III. Outlook

Since it is, in principle, impossible to examine distinctiveness by a comparison of variety descriptions, and bearing the deficiencies in a description of the features of a protected variety in mind, the object should be given thought whether in light of the progress achieved in recent decades by analyzing the genetic structure of plants modern DNA technology should be used to determine whether a variety is distinct or not. This question has been a matter of debate among Breeders Organizations for quite some time.

In light of the difficulties already given with regard to proving the main protection criteria "distinctness" by a clear visible distance between the relevant phenotype characterization of the candidate variety and its closest neighboring varieties within the same species, it seems that using the genotype or a combination of genotypes represented by the plant's DNA as the basis for examination might not only increase the difficulties to determine a right which gives sufficient scope of protection but, presumably, will create more legal uncertainty for the rights' holder as well as for third parties. The reasons are the following:

Already now, minimal distances are of great debate. The value of a right depends on the scope of protection it grants. The less innovative a new development achievement is in comparison with what is common knowledge, the less value a granted right will have. Exclusive property rights have, as already mentioned, inter alia the purpose to allow the holder to leverage his investments. This cannot be achieved by rights which only grant a minimum of protection. Apart from the fact that there is insufficient information about genetic linkage making DNA marker profiles not predictable for most phenotypic characteristics, the use of such markers could, as pointed out by the ESA Position Paper published in 2003, result in a decrease of distance between varieties and would, therefore, "jeopardize the value" of the rights. The ESA Paper mentions, moreover, that markers would have to be used to test uniformity and stability as well as distinctness and there could be consequences in using the markers for that purpose. While this argument, however, is not further specified by ESA, I suppose that assessing uniformity and stability by comparison of DNA profiles will be even more complex or possibly impossible in comparison with the present practice.

The ESA position is shared by the ISF. The ISF is opposed to the use of DNA markers for DUS testing because

  • these 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 these markers were used to determine distinctness, they could 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,
  • could serve to decrease the minimum distance between varieties and jeopardize the value of the right granted.

The debate with regard to DNA analysis to establish whether a new variety is essen- tially derived from a protected variety proves that, for the time being, determination of the degree of similarity in the genetic structure through genetic analysis is only a rather simplified method. Such a method to examine whether a new variety is sufficiently distinct to varieties of common knowledge is not (yet) apt to, first of all, justify the grant of an exclusive right. Moreover, such an approach does not guarantee that something really new has been created which deserves to be protected. Finally, with all probabilities it will not allow to determine the scope of protection for others not to run into infringement problems with the required certainty. The most reliable technique to determine the scope of protection of a variety is a comparison test as provided in Article 56 CPVR.

1BGH [Federal Supreme Court], GRUR [Journal of the German Association for the Protection of Intellectual Property] 2009, 750, 752 - LEMON SYMPHONY/SEIMORA.

2Straßburger, Lehrbuch der Botanik [Textbook of Botany], 35. Edition, Kap. 10.1, Page 523.