The company Subiace brought a court action before the Court of Rome to obtain a declaration of nullity of the Italian plant variety protection for a new bean variety named ETNA, which was also protected in the United States of America (USA) and owned by Asgrow Seed Company (“Asgrow”).
ETNA was first commercialized in the USA on June 19, 1990, and Asgrow filed for plant variety protection in the USA on November 28, 1990.
On December 31, 1992, ETNA was registered in the Italian variety list (List of Varieties of Horticultural Species), and on September 20, 1993, almost three years after the first commercialization in the USA and within one year from the registration in Italy, Asgrow filed for plant variety protection in Italy.
According to Subiace, the above-mentioned activities (commercialization in the USA in 1990, filing for plant variety protection in the USA in 1990, and the subsequent registration of ETNA in the Italian registers in 1992) had destroyed ETNA’s requirement of distinctness.
Subiace did not submit any claim about ETNA’s lack of novelty, likely considering that Asgrow filed the application for plant variety protection in the USA and in Italy within one year from the first commercialization.
As to the distinctness requirement, Subiace argued that it should be assessed extensively, also with respect to the protection of the same variety in other countries, and not just with respect to “any other variety whose existence is a matter of common knowledge.”
Subiace submitted that if the same variety previously registered elsewhere is not considered an “other” variety, it would be possible —in principle— to protect the same variety again with a new plant variety right, once the term of the first right has expired (in the case of ETNA, the one in the USA from 1990).
However, a decision issued by the First Instance Court of Rome in the dispute on 17 April 2018 ruled out this interpretation, clarifying that even though the protection of new plant varieties is defined as “sui generis” and not entirely comparable to patent protection, the Italian Industrial Property Code (IIPC), and particularly its Article 116, refers to its own provisions concerning patents as applicable to plant variety rights; the court thus found that rules concerning the novelty of patentable inventions can apply also to plant variety rights.
According to Article 47 IIPC, an invention that has been disclosed prior to the filing of the relevant patent application keeps its novelty only when:
- the disclosure occurred within the six months before the filing of the application and was due to an evident abuse to the detriment of the applicant (for example, if propagation material from a plant variety was stolen by a disloyal employee and sold to competitors of the breeder)
- the disclosure occurred at international exhibitions recognized under the Paris Convention.
In light of this, The Court of Rome said that there is no risk that the same variety could be protected ad libitum with new plant variety rights (once the previous expire) since a plant variety, like a patentable invention, is not new when it has already been the object of an application for protection. Upon this assumption, the argument raised by Subiace, wrongly based on the assessment of distinctness requirement, was rejected: ETNA could not be protected again with new plant variety rights once the terms of protection are expired, simply because it would not be new.
On the other hand, the decision clarified that the lack of distinctness requirement was not relevant in the specific case, since distinctness, as consistently interpreted by Offices (CPVO, IPTO) and Courts, relates to the comparison of the variety only with other protected varieties, while the possible existence of the variety, whether or not previously protected, affects the novelty requirement.
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