The tension in the relationship between patent rights and plant breeder's rights (PBR) is widely known. Recently, some EU member states have opposed the decision taken by the Enlarged Board of Appeals of the European Patent Office (EPO) in cases G2/12 and G2/13 .
G2/12 and G2/13 concluded that plants obtained by an essentially biological process, excluded from patentability according to Article 53(b) EPC, are not excluded from patentability, but in December 2016 the EPO decided to stay all proceedings in examination and opposition cases in which the invention was a plant or animal obtained by an essentially biological process. This decision was taken following the discussion on the recent Notice of the European Commission related to the exclusion from patentability of said plants interpreted from the Biopatent Directive (98/44/EC) and supported by Spain jointly with Austria, Belgium, the Czech Republic, Denmark, France, Germany, Greece, the Netherlands, Norway, Poland, Portugal, Romania and Switzerland.
If finally the EPO follows the interpretation offered by the European Commission Notice, PBRs would be the main route of the protection of plants derived from essentially biological processes.
In order to obtain PBRs, the plant material must be novel, distinct, stable and homogeneous, but also it must be assigned a valid variety denomination. Since time elapsed between the application date and the grant of PBRs, it is advisable to protect this denomination simultaneously as a trade mark but taking into account proceeding of the Guidelines established by the Community and national regulations. At European Community level, at the time the PBR is granted, the trade mark will be annulled since the variety denomination would be generic. Nevertheless, the breeder would have the exclusive right to prevent third parties with an identical or similar denomination during this period. At national level, in Spain, according to the Article 48.4 of the Law No 3/2000, the applicant must undertake to waive the Spanish trade mark rights at the time the PBR is granted.
It is also remarkable that, according to article 19 of the Spanish Regulation (Real Decreto) No 1261/2005 which approves the regulation of protection of plant varieties, it is necessary to register in the corresponding Spanish Ministry a Community plant variety licence contract to ensure that infringements of the corresponding national PBRs are equally applicable to infringements of the Community PBRs. From 2005, the licences of exploitation of PBRs have shown a clear and surprising upward movement, indicating that the PBRs generated by the breeding sector are growing strongly in this country.
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