Protecting Your Plant
(I) Certificates of Plant Variety Protection
What Can Be Protected
Protection can be provided by a Certificate of Plant Variety Protection under
the Plant Variety Protection Act (hereinafter, PVPA). Under the PVPA, a breeder of a
sexually reproduced or tuber propagated plant variety who has reproduced the
variety is entitled to plant variety protection for the variety if the variety
is new, distinct, uniform, and stable.
“New” means that the variety “has not been sold or otherwise disposed of to
other persons, by or with the consent of the breeder … for purposes of
exploitation of the variety” in the United States more than one year before the
date of filing the application or outside of the United States more than four
years before the date of filing the application or more than six years in the
case of a tree or vine. Note that this is
similar to the on sale bar for patents.
“Distinct” means that the variety “is clearly distinguishable from any other
variety the existence of which is publicly known or a matter of common
knowledge” at the time of filing the application.
“Uniform” means that “any variations are describable, predictable, and
commercially acceptable.”
“Stable” means that “the variety, when reproduced, will remain unchanged with
regard to the essential and distinctive characteristics of the variety with a
reasonable degree of reliability commensurate with that of varieties of the same
category in which the same breeding method is employed.”
Application Requirements
The requirements for an application for a certificate of plant
variety protection include:
1) the name of the variety;
2) a description of the variety which describes its distinctiveness, uniformity,
stability, and the geneaology and breeding procedure when known;
3) a statement of the basis for the claim that the variety is new, a declaration
that a viable sample of basic seed necessary for propagation of the variety will
be deposited in a public repository;
3) a statement of the basis of applicant’s ownership; and
4) the requisite fees.
According to the application form, the applicant is required to submit at least
3,000 viable untreated seeds of the variety per se and if it is a hybrid
variety, at least 3,000 untreated seeds of each line necessary to reproduce the
variety (obtained from www.ams.usda.gov).
Trademark Considerations
Note that the name of the variety used in the application cannot be used
for a trademark application since varietal names are considered to be generic. Therefore, the name of the variety
should be selected with an eye to a possible trademark application.
The Certificate
The owner has the option of having the certificate of plant variety
protection “specify that seed of the variety shall be sold in the
United States only as a class of certified seed
and if so specified, conform to the number of generations designated by the
owner.” The term of a certificate of
plant variety protection is 20 years from the date of issue except that a tuber
propagated plant variety subject to a waiver has a term of 20 years after the
date of the original grant of the plant breeder’s rights to the variety outside
the United States, and a tree or vine has a term of 25 years from the date of
issue.
Fees
Government fees for filing, examination and grant of a certificate of plant
variety protection are currently $5,150.
Professional service fees are not included and will vary depending on the
complexity of the application and the circumstances of examination.
False Marking
As discussed below and noted by courts interpreting the PVPA, many
provisions of the PVPA are similar to provisions in patent law. For example, similar to patent law,
the PVPA has a false marking statute.
Under the PVPA false marking statute, the following acts in connection
with the sale, offering for sale, or advertising is prohibited:
1) using the words “U.S. Protected Variety” or implicating that the plant is
protected by a certificate of plant variety protection when it is not;
2) implicating that an application for a certificate of plant variety protection
is pending when is isn’t;
3) using the phrases “Unauthorized Propagation Prohibited,” “Unauthorized Seed
Multiplication Prohibited” or phrases similar thereto without reasonable basis;
and
4) failure to use the name of a variety for which a certification of protection
has been issued even after the expiration of the certificate.
The Secretary of Agriculture can issue a cease and desist order if it finds that
one of the prohibited acts is being performed.
If the cease and desist order is violated, a fine ranging from $500 to
$10,000 can be imposed.
Additionally, anyone whose business is damaged or likely to be damaged by a
prohibited act may have remedy by civil action.
Who Can Sue for Infringement
Because the provisions of the PVPA are similar to the provisions of
patent law, courts have consulted cases interpreting patent law to guide their
interpretation of the PVPA and the conduct of infringement actions under the
PVPA. In
Public Varieties v. Sun Valley Seed Co.,
734 F.Supp. 250, fn 4, (N.D. Miss., 1990), cases construing patent law were
consulted to determine whether an exclusive licensee can assert infringement of
the PVPA. The Court held that a party
must be an assignee, not merely an exclusive licensee, in order to bring suit in
his own name under the PVPA.
Impermissible Infringing
Activities
The owner of a certificate of plant variety protection has the “right to
exclude others from selling the variety, or offering it for sale, or reproducing
it, or importing it, or exporting it, or using it in producing … a hybrid or a
different variety therefrom.” Thus,
the following activities constitute infringement of a certificate of plant
variety protection:
1) selling or marketing the protected variety, or offer it or expose it for
sale, deliver it, ship it, consign it, exchange it, or solicit an offer to buy
it, or any other transfer of title or possession of it;
2) import into or export from the
United States;
3) sexually multiply, or propagate by a tuber or part thereof, the variety as a
step in marketing the variety;
4) using the variety in producing a hybrid or different variety therefrom;
5) using seed which has been marked or progeny thereof to propagate the variety;
6) dispensing the variety to another, in a form which can be propagated, without
notice as to being a protected variety;
7) condition the variety for the purpose of propagation, except as conditioning
is done in relation to a permitted activity;
8) stock the variety of any of the activities discussed in 1-7;
9) performing any of 1-8 even in instances in which the variety is multiplied
other than sexually, except in pursuance of a valid plant patent; or
10) instigating or actively inducing performance of any of 1-9.
The owner has the right to enforce their certificate of plant variety protection
with a civil action for infringement brought in a United States District Court. Appeals are brought before the United
States Court of Appeals for the Federal Circuit which has exclusive
jurisdiction, similar to patent law.
Permitted Non-infringing
Activities
There are two activities that are permitted, and thus non-infringing, under
PVPA. One permitted activity is the
right for a person to save seed obtained, or descended from seed obtained, by
authority of the owner for seeding purposes and use the save seed in the
production of a crop for use on the farm or for sale to another farmer, known as
the crop exemption. Another
permitted activity is the use and reproduction of a protected variety for plant
breeding or other bona fide research, known as the research exemption.
Court Treatment of the Crop Exemption
There have been several cases that dealt with the crop exemption of the PVPA. The Supreme Court of the United
States addressed the crop exemption in
Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1995). In
Asgrow, the Supreme Court found that a farmer who plants seed protected by a
certificate of plant variety protection in order to sell the harvested seed does
not have protection from an infringement suit under the crop exemption (Id.).
The only seed that the farmer can sell under the crop exemption is the seed that
the farmer saved for replanting on his acreage but, due to a change in plans, is
not used for replanting (Id.). Because the Supreme Court found the
sales at issue to be unlawful under the PVPA, it did not reach the issue on
whether sales under the crop exemption of §2543 are subject to the notice
requirement of §2541(a)(6) (Id.).
The United States Court of Appeals for the Federal Circuit noted in dicta that
Asgrow must have carved out an
exemption for the transfer of possession of protected seed, an infringing
activity under 7 U.S.C. §2541(a)(1), from the farmer to a delinter because, for
some seed types, in order for the farmer to plant the saved seed, the seed must
first be delinted (Delta and Pine Land Co.
v. Sinkers Corp., 177 F.3d 1343 (Fed. Cir. 1999)).
Before appeals of PVPA infringement cases became the exclusive jurisdiction of
the United States Court of Appeals for the Federal Circuit, the Court of Appeals
for the Fifth Circuit narrowly interpreted the crop exemption and found that a
third party cannot broker the sale of seed protected under the PVPA between two
farmers, instead the sale must be brokered between the two farmers themselves (Delta and Pine Land Co. v. Peoples Gin
Co., 694 F.2d 1012 (C.A. 5 (Miss), 1983)).
Because the third party was actively brokering the sale between two
farmers, the Court found that 7 U.S.C. §2541(a)(1) was violated. The United States Court of Appeals
for the Federal Circuit revisted the interaction between the 7 U.S.C. §2543 crop
exemption and 7 U.S.C. §2541(a)(1) in
Delta and Pine Land Co. v. Sinkers Corp., 177 F.3d, 1343 (Fed. Cir. 1999). In
Sinkers, the issue was “whether a
passive third-party to a sales transaction, such as a ginner or a delinter, can
be held liable for infringement under 7 U.S.C. §2541(1)” (Id.).
The Federal Circuit held that 7 U.S.C. §2541(a)(1) “requires that a delinter,
ginner, or other third-party transferor facilitating a farmer-to-farmer sale
know or should reasonably know that its unauthorized transfer of possession is
an infringing transaction, i.e., that the sale is not exempt under section 2543
[the crop exemption]” (Id.). The Federal Circuit distinguished the
instant case from Peoples because the
parties in Peoples were selling and
soliciting offers to buy protected seed and therefore the court in that case did
not need to reach the clause in 7 U.S.C. §2541(a)(1) regarding the transfer of
possession of protected seed as being an infringing action which was the issue
in Sinkers (Id.).
Additional Defenses to Allegation of
Infringement
In addition to the crop exemption and the research exemption, there are several
defenses to an allegation of infringement of the PVPA:
1) non-infringement, absence of liability for infringement, or unenforceability;
2) invalidity because the variety was not new, distinct, uniform, and/or stable
as required by 7 U.S.C. §2402;
3) invalidity for failure to comply with the application requirements listed in
7 U.S.C. §2422;
4) that the asserted infringement was performed under an existing certificate
adverse to that asserted and prior to the notice of the infringement; and
5) any other fact or act made a defense by this chapter.
Damages
If the certificate of plant variety protection is found to be infringed, the
owner can get an injunction, damages which are not less than a reasonable
royalty together with interest and costs as fixed by the court.
Similar to §287 of the Patent Act, the owner of a certificate of plant variety
protection must give notice by marking or labeling by stating “Unauthorized
Propagation Prohibited,” “Unauthorized Seed Multiplication Prohibited,” or “U.S.
Protected Variety”. If the variety
is not marked, the owner cannot get damages unless the infringer has actual
notice and then only for infringement occurring after such. The owner must allege and prove the
marking or actual notice under 7 U.S.C. §2567 in the infringement suit. There is a time limitations on
damages so that the owner is not able to recover damages for infringement
committed more than six years, or known to the owner more than one year, before
the complaint was filed. Similar to
utility patent infringement, the court may award reasonable attorney fees to the
prevailing party in exceptional cases.
This article was prepared by Jennifer Buss and Walter Steinkraus.
Disclaimer
This article should not be
considered legal advice. Your receipt of this article does not establish an
Attorney-Client Relationship. We do, however, invite you to contact us if you
would like us to represent you.