Essentially derived varieties in the era of new breeding techniques

The current study sets out to analyse the concept of "essentially derived variety" (EDV) envisaged by the plant variety protection regime when new breeding techniques (NBTs) are employed in the development of new plant varieties. The use of NBTs to develop new plant varieties has grown rapidly over the last years because of their ease of use and their high efficiency. NBT varieties are mono-parental and retain most of the genome of the initial variety, thus most of its essential characteristics. The problem arises when the initial variety used as the source of genetic variation is a variety protected by a plant variety right. In this case, the question is whether the EDV concept should apply to the second variety obtained by NBTs and what can break the EDV chain. It must be noted that the EDV concept has revolutionised the plant variety protection system since it introduced the principle of "limited dependence" as an exception to the general independence principle governing this system. Therefore, as it is an exception, it should be interpreted rigorously.

Towards a Fair Scope of Protection for Plant Breeders’ Rights in an Era of New Breeding Techniques: Proposals for a Modernization of the Essentially Derived Variety Concept

Plant breeders’ rights (PBRs) are an important IP right, and as plant breeding has a crucial role to play in sustainability, it is vital that innovations in plant breeding receive the appropriate innovation incentives. The full breeders’ exemption ensures that there is always free access to the plant variety protected by a PBR for developing new varieties. The price to pay for this exemption is that PBR holders cannot prevent third parties from taking advantage of their efforts and investments in developing a new variety. This invites free-riding, at the detriment of the PBR holder. The concept of “essentially derived varieties” (EDV), introduced in 1991, provided a “fix” for this problem. It allows PBR holders to extend, at least to some extent, the scope of protection of their PBR to those varieties which use all or most essential characteristics of the initial protection variety. Decades have passed, but no adequate interpretation of the complex EDV concept has been found. The advent of new breeding techniques (NBTs) has made the discussion about a fair scope of protection of PBRs all the more relevant. This necessitates a modernization of the EDV concept, if the PBR system is to remain relevant and continue to be an innovation-incentivizing mechanism. I argue that a broader scope for the EDV concept is essential and fair. Determining what essential derivation is will remain a difficult task also in the future. This is why I have additionally proposed a collaborative reward model, which will facilitate the functioning of the EDV system and is capable of providing more legal certainty in this area.

The Future of Essentially Derived Variety (EDV) Status: Predominantly More Explanations or Essential Change

This review examines the categorization of Essentially Derived Varieties (EDV) introduced in the 1991 revision of the Convention of the Union internationale pour la protection des obtentions végétales (UPOV). Other non-UPOV member countries (India, Malaysia, and Thailand) have also introduced the concept of essential derivation. China, a UPOV member operating under the 1978 Convention, is introducing EDVs via seed laws. Challenges in the implementation of the concept and progress made to provide greater clarity and more efficient implementation are reviewed, including in Australia and India. The current approach to EDV remains valid provided (i) clarity on thresholds can be achieved including through resource intensive research on an individual crop species basis and (ii) that threshold clarity does not lead to perverse incentives to avoid detection of essential derivation. However, technological advances that facilitate the simultaneous introduction or change in expression of more than “a few” genes may well fundamentally challenge the concept of essential derivation and require a revision of the Convention. Revision could include deletion of the concept of essential derivation coupled with changes to the breeder exception on a crop-by-crop basis. Stakeholders might also benefit from greater flexibility within a revised Convention. Consideration should be given to allowing members to choose if and when to introduce changes according to a revised Convention on a crop specific basis.

Rights Granted

This chapter deals with the scope of protection once the material and formal conditions for the granting of Community plant variety rights have been granted. It discusses the scope of rights, the limitation of rights, and the duration and termination of rights. It also highlights the acts to which only the holder of the Community plant variety right is entitled, and the products obtained directly from harvested material. This chapter highlights essentially derived varieties and explains the use of variety denominations, as the holder of the plant variety right is entitled to take action in court against persons who omit the correct usage of such denominations. It talks about the Community plant variety rights that are granted after accession of new Member States to the European Union, which are applied throughout the territories of both the new and old Member States.

The Future of Essentially Derived Variety (EDV) Status: Predominantly More Explanations or Essential Change

This review examines the categorization of Essentially Derived Varieties (EDV) introduced in the 1991 revision of the Convention of the Union internationale pour la protection des obtentions végétales (UPOV). Challenges in the implementation of the concept and progress made on a crop-by-crop basis to provide greater clarity and more efficient implementation are reviewed. The current approach to EDV remains valid provided i) clarity on thresholds can be achieved including through resource intensive research on an individual crop species basis and ii) that threshold clarity does not lead to perverse incentives to avoid detection of essential derivation. However, technological advances leading to new varieties resulting from the simultaneous introduction or change in expression of more than “a few” genes will so challenge the concept to require a new Convention. Revision could include deletion of the concept of essential derivation and revision on a crop-by-crop basis of the breeder exception. Countries that allow utility patents for individual plant varieties per se should consider removing that possibility unless plant breeders utilize those encouragements for risk taking and investment to broaden the germplasm base upon which the long-term sustainability of plant breeding resides.

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.

Plant Variety Rights Protection and Essentially Derived Varieties: A Fresh Proposal to Untie the Gordian Knot

The concept of essentially derived varieties (EDVs) under the UPOV Convention 1991 has presented many challenges both to the UPOV and users of the system. The concept of EDVs is not only framed in rather difficult language in the statute, it has proven equally difficult to apply. Moreover, gaining consensus on the exact interpretation of the concept, left to be implemented later on by courts and/or guidelines, has been an equally challenging task due to a lack of clarity in the provisions of the UPOV 1991 Convention. This article constitutes a novel and original contribution to the research that has been carried out in the area of EDVs. Novel approaches are necessary to untie the EDV knot. The approaches presented here are inspired by other areas of (intellectual property) law. A careful study of the solutions presented herein demonstrate that at least some of them can effectively put an end to at least some of the deadlock and legal uncertainty surrounding the EDV concept. It is hoped that this contribution and the approaches it puts forward can be the catalyst for a new debate, which is not only necessary but also long overdue.

One decade of PPV and FRA’s functioning: Crop and institution wise performance and implications

At the time of this study 2270 varieties were registered (about 18%) by the PPV and FRA out of 12691 the applications filed by research organisations, private companies, farmer groups, NGOs and individuals. Large proportion of registered varieties were Extant-varieties (40%), Farmers-varieties (37%) and Extant varieties-of-common-knowledge (10%) while the proportion of New-varieties and Essentially-derived-varieties was considerably low. About 62% applications were under examination or DUS testing. Public-sector (933), including ICAR (718), led varietal registration followed by farmers (832) and private-sector (505). The ratio of varietal registrations to the filed applications was quite high in case of cereals, pulses, oilseeds and cotton while this ratio was dismally low in case of spices and vegetables. Capacity expansion of PPV and FRA, including the DUS testing centres, was very strongly realized for making functioning of the authority more robust and better.