Is There a Need to Change UPOV? A Seed Industry View on Essentially Derived Varieties

The adoption of the UPOV 1991 Act saw the advent of the Essentially Derived Variety (EDV) concept into the Plant Breeders’ Rights (PBR) system. The idea was to broaden the scope of protection for breeders of Initial Varieties (IV) by way of creating a form of dependency between the IV and their EDVs in such a way that the EDVs are dependent on its IV. Within the EDV concept, an EDV falls under the scope of its protected IV and cannot not be commercialized without the authorization of the title holder of the IV.

Ever since its creation, the EDV concept and its interpretation are cause for heated debates, most recently over the adoption of the UPOV Explanatory Notes on EDV’s. The discussions saw Member States and observer views differ on crucial topics, such as what are essential characteristics, whether there should be a separation between various UPOV characteristics into important and unimportant characteristics, the impact of GMO’s and plant breeding innovation techniques on EDVs, and if there is a need to change the Explanatory Note or perhaps the UPOV Convention. European Seedwanted to learn more about the various viewpoints on EDVs, so we sat down with Magali Pla, Deputy Manager in the IP Department of Limagrain, to get her take on the matter.

European Seed (ES): Magali, what is your view on what are essential characteristics?

Magali Pla (MP): Essential characteristics are any characteristics, i.e. morphological, agronomical or even biochemical characteristics which help to define or identify a variety amongst others. They should not be restricted to DUS characteristics.

ES: Should UPOV make a distinction between more important and less important characteristics, and if yes, why?

MP: UPOV should not make any difference between important or less important characteristics.

A variety is defined as a whole through the combination of many different characteristics that finally makes that variety. Consequently, defining an essential characteristic as a characteristic supporting for example the distinctness criteria is too much restrictive.

Inversely, a characteristic shared by many different varieties can still be essential for identifying a variety amongst others.

Although we do not see a need of a classification according to the importance, a characteristic should be, for the best, reproducible in different environmental contexts.

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ES: If an essential characteristic was changed due to an act of derivation, can a variety still be an EDV?

MP: Yes. We do believe that to conform to the initial variety, the derived variety does not need to retain all the characteristics of the Initial variety. This would be the case of a variety derived by introgressing a new allele changing the expression of a gene and therefore changing a characteristic of the initial variety. This is strictly in accordance with the article 14(5)(b)(iii), wherein, except for the differences which result from the act of derivation, the EDV conforms to the Initial variety.

ES: Is a mutant or GMO-variety in all cases an EDV? And why?

MP: An EDV is understood as being an improvement of the initial variety. Such improvement can be achieved by adding new traits or characteristics through any type of technologies (NBT, chemical or physical treatment, transgenesis or backcrosses).

By essence, an EDV is defined by the combination of the (or almost all the) characteristics that define the initial variety and its improvement. Consequently, as long as the derived variety is improved by the derivation and retains almost all the genotypic and phenotypic characteristics of the initial variety, it shall be considered as an EDV: this should indeed be the expected outcome for any mutagenesis- improved variety and also for GMO-versions of existing varieties obtained via backcross introgression of the trait

ES: Where do you feel should a decision lie on whether a variety is an EDV or not? With the national (PBR) authorities, or with a judge or arbitrator? And why?

MP: Deciding if a variety is within or not the scope of EDV concept should depend on a court decision like any enforcement question regarding IP title. The system providing a judicial decision on the basis of an IP title in a country shall be independent of the authority of that country in charge of the delivery of IP titles.

Now, the decision to enforce or not its title depends on the title holders. So, at the end, this is a matter between breeders and, in this context, arbitration can be a suitable tool to solve a litigation.

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ES: What will be the impact of plant breeding innovation techniques on EDV?

MP: The concept of EDV shall keep all its meaning and scope whatever the technologies used to obtain the derivation of an initial variety. Therefore, the use of new plant breeding technologies shall have no impact on the EDV concept and its legal interpretation.

However, practically we could expect that the broad use of technologies such as genome editing could generate more cases of EDV. We all thought about that years ago with the arrival of transgenesis. Today, it will depend on how broad the use of the technologies will be and moreover how players will use them. Time will tell us, but it does not change the first part of my answer: the arrival of new technologies shall not change the EDV concept and its legal framework as introduced in the UPOV Convention.

ES: Is there a need to revise the current UPOV Explanatory Note on EDV?

MP: We believe that there is a misinterpretation of the UPOV EDV concept and legal framework provided by the current Australian law which we think is a threat for a harmonized implementation of this UPOV right.

Most of our breeding programs and business are built in the respect of the EDV concept provided by the UPOV Convention. We, and, we believe, the whole sector, need to rely on a strong EDV legal framework which admits no misinterpretation.

Although UPOV Explanatory Notes are not legally binding, they are tools made to be used by national courts to help in interpreting the law. Therefore, we believe that a revision of the Explanatory Note on EDV as adopted in 2017 is necessary to clarify specific meanings.

ES: Is there a need to revise the EDV provisions in the UPOV Convention?

MP: The revision of the UPOV Convention is not desired as there is no point as of today to change the paragraph from the Convention related to EDV. Again, we believe that a clarification of the interpretation of that paragraph through the Explanatory Note is necessary and sufficient.