Introduction

Novelty is a key point of vigilance in the protection of plant varieties. A single transfer of plant material, an insufficiently regulated trial, or a premature commercial presentation may be enough to trigger the novelty period and, ultimately, jeopardize the validity of the title sought.

Novelty period in plant variety rights: what exactly does it cover?

Under the plant variety rights regime, novelty is assessed primarily by reference to the commercial exploitation of the variety. This approach reflects Article 6 of the 1991 Act of the UPOV Convention, under which a variety is deemed to be new where, at the filing date of the application, propagating or harvested material of the variety has not been sold or otherwise disposed of to others by the breeder, or with the breeder’s consent, for purposes of exploitation of the variety, beyond the applicable time limits. Novelty should therefore not be confused with the mere prior existence of the variety: the decisive criterion lies in certain acts of making the variety available for exploitation.

Article 10 of Regulation (EC) No. 2100/94, for Community plant variety right , and Article L. 623-5 of the French Intellectual Property Code, for French national plant variety certificates, mainly provide for the following time limits :

  • one year before the filing date for sales or disposals carried out within the territory of the European Union, in the case of Community plant variety right, and within the French territory or the European Economic Area, in the case of a French title;
  • four years before the filing date for sales or transfers carried out outside the European Union;
  • this period is extended to six years, outside the European Union, for trees and vines.

This territorial distinction must be taken into account at a very early stage. Where a variety has been subject to trials, transfers of material or commercial steps in several countries, it is advisable to establish a territory-by-territory chronology, identifying, for each country, the date of the first transfer, the purpose of the operation, the recipient, the volumes transferred and the applicable contractual framework.

However, a distinction must be drawn between transfers that may trigger the novelty period and certain transfers that are expressly neutralized under French law. Article L. 623-5 of the French Intellectual Property Code provides that transfers of material of the variety to an official or officially authorized body for regulatory purposes are not considered transfers to third parties for novelty purposes. The same applies to transfers to third parties for experimental purposes or for presentation in an officially recognized exhibition, provided, in these latter two cases, that the breeder has expressly stipulated that commercial exploitation of the variety whose material has been transferred is prohibited.

This logic distinguishes plant variety law from patent law, where novelty is assessed against the state of the art according to an absolute novelty standard. In the field of plant variety rights, certain trial, description or presentation operations may therefore be carried out without destroying novelty, provided that the threshold of commercial exploitation is not prematurely crossed and that the conditions governing the transfer of material are rigorously documented.

Which acts may jeopardize the novelty of a variety?

Identifying the acts likely to trigger the novelty period is a central step in any pre-filing audit. An error of assessment at this stage may result in the irreversible loss of rights, with no possibility of subsequent regularization.

Sale or disposal for consideration

The sale or disposal of propagating or harvested material of the variety is the clearest example of commercialization.

Neither the status of the recipient, distributor, nursery operator, farmer, industrial partner or end customer, nor the quantity transferred is decisive. A single transfer may be sufficient to trigger the novelty period where it forms part of a logic of exploitation.

Offers for sale and commercial communications

An offer for sale may also constitute an indication of commercialization where it reveals that the variety has been made available for the purposes of exploitation. This is particularly the case where the communication is accompanied by orders, a commitment to deliver, an announcement that the material is available, or an actual transfer to third parties.

Conversely, a purely institutional, technical or scientific communication, limited to the presentation of the variety without any possibility of ordering or obtaining the material, should not, in itself, be sufficient to trigger the novelty period.

Transfers free of charge

The fact that a transfer is made free of charge does not, in itself, eliminate the risk of triggering the novelty period. A free transfer to an industrial partner or potential customer may amount to a transfer to third parties for the purposes of exploitation if it forms part of an economic or commercial rationale.

Conversely, a regulated free transfer carried out for experimental purposes may be distinguished from commercial exploitation, provided that its purpose is properly documented.

In practice, free transfers should be governed by an agreement specifying, in particular, the purpose of the trial, the prohibition on multiplication, the prohibition on transfer to third parties, confidentiality obligations, the conditions for return or destruction of the material, and the arrangements for monitoring the results. In the absence of such safeguards, the free transfer may be recharacterized and may trigger the novelty period.

acts jeopardy novelty

Pre-commercial trials and exploitation: where is the line drawn?

The distinction between a pre-commercial trial and commercial exploitation is one of the most sensitive issues. Breeders must be able to test a variety and assess its agronomic potential without prematurely triggering the novelty period.

The case law of the European Union, in particular the Pink Lady America LLC v CPVO  (General Court, 24 September 2019, Case T-112/18) case, clarified the scope of the concept of “exploitation” within the meaning of Article 10 of Regulation (EC) No. 2100/94. The General Court notably distinguished evaluation operations intended to assess the behavior or commercial value of the variety from acts revealing exploitation of the variety for profit-making purposes and an intention to place it on the market.

A pre-commercial trial should not, in principle, be treated as exploitation where its purpose remains experimental, the volumes are proportionate to the needs of the assessment, the partners are identified, the material is controlled, and the operation does not reveal an intention to place the variety on the market. It is therefore essential to secure such situations through precise documentation; otherwise, the breeder may be exposed to a risk that the trial will be recharacterized as an act of exploitation.

What documentation should be kept to demonstrate compliance with the novelty period?

In the event of a dispute, evidence becomes decisive: the breeder must be able to establish the chronology of the acts carried out, their purpose and the safeguards governing them. The CPVO General Guidelines on Article 10 of Regulation (EC) No 2100/94 recall, in this respect, that the relevant date for assessing the first commercial exploitation is, in principle, the date of physical delivery of the varietal constituents or harvested material. Delivery notes, dispatch notes and logistical traceability records should therefore be kept with particular care, as they may help identify the starting point of the novelty period.

Category of documents Documents to be kept Evidentiary purpose
Selection and development of the variety Selection notebooks, laboratory records, timestamped files, minutes, internal correspondence, etc. Reconstruct the chronology of creation, stabilization and evaluation of the variety.
Pre-commercial trials Trial agreements, confidentiality clauses, prohibitions on multiplication/transfer, protocols, reports, proof of return, etc. Demonstrate that the transfers were limited, controlled and experimental.
First commercialisation Invoices, purchase orders, dated delivery or dispatch notes, transport documents, distribution agreements, catalogues, etc. Identify the first act of commercialization and the starting point of the novelty period.

Conclusion

In the field of plant variety rights, novelty is rarely lost by sheer accident: it is often lost through a lack of anticipation. A poorly framed trial, an insufficiently documented transfer or premature communication may be enough to weaken the protection of a variety.

Securing the filing therefore requires organizing, at an early stage, the chronology of trials, transfers of material and initial commercial steps. Protection does not begin on the filing date: it is built from the very first exchanges with third parties.

Dreyfus law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

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Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can a transfer free of charge trigger the novelty period?
Yes, if it in fact amounts to a disposal to third parties for purposes of exploitation. The fact that the transfer is free of charge is not decisive. An unregulated transfer to an industrial partner, distributor or potential customer may trigger the novelty period if it forms part of a logic of exploitation.

2. Is a trial agreement sufficient to eliminate all risk?
The agreement is essential, but it is not sufficient if the actual practice reveals commercial exploitation. The volumes transferred, the duration of the trial, the remuneration, the rights granted to the partner and the communications surrounding the variety must remain consistent with an experimental purpose.

3. What happens if the deadline is exceeded by a single day?
Exceeding the time limit may result in loss of novelty and therefore jeopardize the protection sought. If the title has already been granted, it may be exposed to an action for invalidity.

4. Are the rules identical in all countries?
The principles derived from the UPOV Convention are broadly harmonized, but their implementation may vary from one jurisdiction to another. The applicable time limits, the qualification of trials, the treatment of free transfers and the scope of acts of commercialization may differ.

5. Which documents should be kept as a priority?
All documents capable of demonstrating the chronology and purpose of the acts carried out should be kept: trial agreements, delivery notes, invoices, purchase orders, trial protocols, agronomic reports, confidentiality clauses, proof of return or destruction of the material, catalogues and dated commercial communications.

This publication is intended to provide general guidance to the public and to highlight certain issues. It is not intended to apply to specific situations or to constitute legal advice.