The Ten Pillars: The Position of the European Seed Industry on the Interpretation and Practical Application of the EDV Concept

The understanding of the European Seed Industry of the EDV notion boils down to the following 10 main elements:

1. The conditions that an EDV must fulfil, as listed in indents (i) to (iii) of Article 14(5)(b) UPOV 1991 Act, should be regarded as cumulative criterions [predominant derivation, clear distinctness, conformity in the essential characteristics]. A case-by-case approach should apply for examining whether the alleged EDV at hand meets all three listed requirements.
2. In assessing whether a variety is an EDV, the focus should fall on both the genotype and the phenotype of such variety in relation to the concerned initial variety. The wording “expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety” in Article 14(5)(b) UPOV 1991 Act reflects this double-fold component.
3. The term “essential characteristics” in Article 14 (5)(b) indents (i) and (iii) UPOV 1991 Act should be interpreted as encompassing any relevant characteristic for the considered species such as, for example, inheritable morphological, physiological, agronomic or industrial characteristics. The UPOV legislator did not define the expression “essential characteristics”, so this expression should accordingly not be restricted to a limited sub-set of characteristics that are relevant for marketing of the variety. Further, it is noted that in the UPOV 1991 Act the adjectives “essential”, “important” and “relevant” are used interchangeably in relation to variety characteristics, so these terms should be regarded as synonyms. In assessing if the initial variety and the putative EDV present the same essential characteristics, those which have been modified by the act(s) of essential derivation should be set aside and disregarded. The comparison should then be based on the remaining essential characteristics.
4. If a variety shows only a difference in one essential characteristic compared to the original variety, it could still qualify as an EDV.
5. The principle of “cascade” of derivation enshrined in the UPOV Explanatory Note on EDVs (2017) ensures that further EDVs down the chain having been developed either from the initial variety or from another EDV of the initial variety are subject to the authorisation of the title holder of such initial variety. Consequently, each EDV shall only be made dependent on the protected initial variety.
6. The enumeration of methods exposed in Article 14 (5)(c) UPOV 1991 Act should be regarded as a non-exhaustive list. The wording “may be obtained for example” constitutes a clear indication that this was the intention of the legislator, where the latter opted for using the words “may be” in connection with “for example” to reinforce such intention. From this reading it cannot thus be excluded that other methods besides the listed ones may as well result in EDVs, provided that such methods include in any case the physical use of the initial variety. Likewise, despite the listed methods do indeed very often lead to EDVs, such likelihood should not translate into automatically inferring that varieties obtained by means of these methods are all EDVs. The focus of the examination should be the resulting variety as fulfilling the above cited triple-fold criteria (p. 1), not the method itself. In sum, an individual evaluation of each case should proceed in the light of the applicable legislation.
7. The difference in wording between Article 13(6) EU Regulation 2100/94 and Article 14(5) UPOV 1991 Act should not be attached substantive weight, in so far it does not derive from it that under the EU regime other requirements different from those of the UPOV system apply.It seems that both wordings, namely, “conform essentially” [in the EU Regulation] and “conforms in the expression of the essential characteristics” [in the UPOV 1991 Act]) is merely meant to clarify that the conformity should be assessed between the two varieties as a whole.
8. The decision on whether a certain variety is (or not) an EDV should be the competence of the judiciary power, given that the EDV notion is a matter of scope and enforcement of rights. Therefore, decisions on EDVs should not lay in the hands of national plant variety rights’ authorities, which are responsible for deciding on the grant of plant variety right titles. Nonetheless, examination offices can play an important role as independent experts to legal proceedings. First, the staff of examination offices is highly specialised and trained in plant variety rights. Second, the employees that conduct the examination of a certain variety have a sound knowledge about the reference collection concerned, what proves important when establishing whether the initial variety and the EDV are more conform than the normal variation in a given species.
9. The burden of proof should be reversed to be in favour of the holder of the plant breeders’ right of the initial variety. In practice, two stages would take place before the court: one where the title holder of the initial variety raises suspicion as to the possible existence of an EDV by showing that there is a certain degree of genotypic similarity between its variety and the alleged EDV; and another where, based on such presumption, the breeder of the alleged EDV opens its breeding records to prove the contrary. The rationale behind the reversal of the onus of proof in EDV cases lays in the principle that the breeder of a certain variety is in a better position to show how the variety it developed was obtained and to demonstrate that the development of its EDV was independent from the initial variety.
10. A scientific threshold that serves to signalise whether an act of predominant derivation has taken place needs to be determined for each species or group of species. When exceeding this threshold, the above cited reversal of the burden of proof would be triggered. Such thresholds should not be set at an excessively low level to avoid that derivation is deemed too easily, since this could lead to an increased number of unjustified EDV court cases. This could eventually translate in greater reluctance of breeders in the use of germplasm of their competitors’ varieties and thereby to a factual limitation of the breeders’ exemption. Another important aspect about scientific thresholds is that their validity should be regularly reviewed in the light of the most recent technical developments affecting the species at stake. By way of example, it is reminded that Euroseeds has developed a specific position on EDVs in potatoes,[1]where the cited threshold for the reversal of the burden of proof has been set at 92% of the genetic “similarity coefficient”. The threshold is based upon a study[2]in which three genetically closely related varieties have been crossed with each other and as selfings to see what the highest possible genetic similarity will be as long as the varieties are not used in acts of predominant derivation.

The European seed industry now looks forward to the “Seminar on the impact of policy on essentially derived varieties (EDVs) on breeding strategy” that will be held on 30 October 2019 at the UPOV premises in Geneva, Switzerland. This seminar constitutes an excellent opportunity for breeders to present how they deal with EDVs in practice, as well as for UPOV members to voice how they interpret the EDV concept.

Finally, to learn more about the position of the European Seed Industry on EDVs, you may wish to consult the Euroseeds position paper on the concept of EDV[3]as currently standing on the Euroseeds official website.

Editor’s Note: Ángela Martínez López is Manager of Intellectual Property & Legal Affairs at Euroseeds

[1]https://www.euroseeds.eu/esa1304762-esa-spo-position-essential-derivation-and-dependency-potato.

[2]https://www.euroseeds.eu/system/files/publications/files/esa_12.0838.pdf.

[3]https://www.euroseeds.eu/system/files/publications/files/esa_11.0043.1.pdf.