Essentially Derived Varieties in View of New Breeding Technologies – Plant Breeders’ Rights at a Crossroads

Plant breeders’ rights (PBR) within the framework of the International Convention for the Protection of New Varieties of Plants (UPOV) are the sui generis intellectual property (IP) system of choice for plant varieties. It achieves a balance between the protection of new varieties and access to protected breeding material for further improvement. The extension of the protection to essentially derived varieties (EDVs) in the UPOV 1991 Convention1 was controversial from the beginning as it creates a tension with the breeders’ exemption. The 2017 UPOV Explanatory Notes on EDVs further fueled the debate as they were seen to limit the EDV extension, while some argue that the EDV scope should extend to all predominantly derived varieties merely on the basis of genetic conformity. With the rise of new breeding technologies (NBTs), legal certainty on the EDV definition is of fundamental importance to avoid a chilling effect on these promising technologies. Not only would a broad EDV definition block critical innovation and restrict the full potential of NBTs to a few multinational companies,2 it would also substantially limit the scope of protection of NBT-derived varieties, as an EDV itself is not entitled to the EDV extension: Valuable NBT-derived varieties would become easy prey for plagiarism. This article shows that the legislative intent of the EDV provision does not limit innovative breeding to conventional crossing and that there is no basis for extending EDV protection to new, innovative varieties which do not retain the essential characteristics of the initial variety (IV) even if there is a high genetic conformity. By analogy with the doctrine of equivalents under the patent system, a derived variety cannot qualify as an EDV if it (i) does not retain all the essential characteristic of the IV and (ii) is ‘non-obvious’ and causes a ‘significant technical progress of considerable economic interest’. The article finally suggests guidelines and processes to overcome the current EDV dilemma.

APLICATION OF THE PRINCIOLE OF EQUIVALENTS IN THE RESOLUTION OF PATENT DISPUTES: ANALYSIS OF FOREIGN CASE LAW

Currently, the development of a modern economy is based on the rapid development of the latest achievements of science and technology, which in turn are the dominant indicators of state development. Globally, economic globalization and trade liberalization are accelerating, leading not only to the international division of labor, the expansion of markets and the corresponding increase in production, but also to an even greater intensification of competition, increasing the need for innovation and their sound legal protection. The principle (doctrine) of equivalence, which the courts apply in the event of patent disputes, is inextricably linked to these processes. The article reveals the essence and specifics of applying the principle of equivalents by studying the specialized literature and conducting comparative legal analysis of foreign jurisprudence.Despite the fact that the principle of equivalence has attracted the attention of many experts in the field of patent law, however, no criteria and approaches have been developed to put it into practice. An analysis of the literature indicates that researchers focus their attention on determining the principle of equivalence.As a result of the analysis of doctrinal approaches to determining the principle of equivalence, it is concluded that at the legislative level there is no differentiation of features (elements), but there is an indication of the identity of the feature as equivalent. Therefore, the substitution of the characteristic (element) indicated in the claims by the equivalent may be recognized as equivalent from the technical point of view and not from the legal position. Usually, the principle (doctrine) of equivalents is applied after the grant of the patent, and the possibility of assigning features (elements) to equivalents can be evaluated by the real technical means that appeared after the grant of the patent.The principle of equivalents or the doctrine of equivalents is a legal doctrine that was developed in the United States of America in 1850-1860 to counteract imitation, substitution of minor or minor components of a patented invention, while maintaining its other essential identity, to avoid liability.In Germany, the courts have widely used the principle of equivalents in interpreting the formula when dealing with patent infringement cases. In England, the doctrine of equivalents was not used, and the traditional British approach to determining the scope of protection was to interpret the claims literally. The analysis of the jurisprudence of foreign countries on the application of the principle of equivalence in the resolution of patent disputes allows us to draw the following conclusions: the application of the principle of equivalence in resolving the question of the scope of patent protection of inventions strikes a balance between the fair protection of the exclusive rights of the patentee and a certain variation of the elements of the claims by third parties, which will not infringe the patent rights of the patent owners; in determining the limits of patent protection by interpreting the claims, the German courts resort to the principle of equivalence when the claims contain ambiguous restrictions such as numerical ranges; in English courts, patent infringement and patent jurisdiction issues are dealt with in a single trial, whereby judges' reasoning in the prior art has a greater influence on the understanding of the claims, in contrast to German courts that exclusively deal with patent infringement rights without touching on the aspects of the patent power.The analysis of the Ukrainian legislation has led to the conclusion that the understanding of the principle of equivalence coincides with a literal interpretation of the claims, while the new application of a known product or process is not foreseen, since the scope of legal protection of such inventions is exhausted only by their formula, and equivalent features are not taken into account.