A dispute over plant variety rights between Brazilian companies Fibria Celulose and Eldorado Brasil Celulose has caught the attention of IP lawyers, as Alberto Guerra Neto and Rodrigo Ferreira of the Inter-American Association of Intellectual Property (ASIPI) explain.

The Brazilian legal system is facing an unprecedented intellectual property dispute between two of the largest cellulose companies in Brazil. For the first time since Brazil became a member of the International Union for the Protection of New Varieties of Plants (UPOV), and then adopted the Plant Variety Protection (PVP) Act, we are seeing a lawsuit covering the enforcement and potential infringement of rights related to a protected variety of eucalyptus.

Fibria Celulose is a Brazilian company, and owner of plant variety protection rights covering more than 26 protected eucalyptus varieties in Brazil. The rights have been granted by (and/or applied for at) the National Plant Varieties Protection Service, in accordance with Law No. 9.456/97, part of the PVP Act.

A possible violation of rights of Fibria’s eucalyptus variety VT02, for which a PVP certificate was issued on July 25, 2007, motivated the company to file a precautionary measure (judicial seizure of samples for laboratory testing), before the Court of Três Lagoas, against Eldorado Brasil Celulose, a direct competitor in the cellulose market.

According to Fibria, Eldorado was using clones of its VT02 plant variety in its eucalyptus plantation fields.

Brazilian PVP law grants a term of protection of 15 years (or 18 years for trees such as eucalypts) from the issuance of the Provisional Certificate of Protection within Brazilian territory. The protection covers the vegetative propagating material of the whole plant and prevents third parties from producing it for commercial purposes or offering it for sale or marketing, without the owner’s authorisation.

Also, those who sell, offer for sale, reproduce, import, export, pack or store the plants for commercial gain, or provide promotional material, without authorisation, are obliged to compensate the owner.

According to Law No. 9.456/97, the infringer will have to pay a fine equivalent to 20% of the commercial value of the seized material and the infringement will be considered a criminal violation of the plant breeder’s rights, without prejudice to other criminal penalties.

In order to legally obtain substantive proof to file the main lawsuit against Eldorado, Fibria Celulose filed a precautionary measure and requested that the judge issue a preliminary injunction to collect samples from Eldorado’s trees. The samples would be used for a legal analysis conducted by an expert to be indicated by the judge.

Important features

Many appeals have been filed in order to discuss important features of this case. The appeals asked for clarification on matters including:

Which laboratory will be responsible for the DNA test, since the only one capable to do it was responsible for a private test and a report requested by Fibria. The report was shown as evidence to obtain the injunction when the court action was filed;

The content of such report, since the plaintiff asked for a DNA report and the counterpart also asked for a morphologic report; and

The content of the DNA and morphological tests in the same report/conclusion. After favourable decisions for both sides in all those appeals, the High Court has decided to execute only the DNA test by the previous designated lab (a respected and capable one, although it had been hired before by Fibria).

In this regard, the judge designated an expert, whose technical report pointed out that samples collected from Eldoraldo’s eucalyptus fields do not differ from VT02. Based on DNA analysis using microsatellite molecular markers, the report concluded that five out of six of Eldorado’s samples shared 99.99999981% of the same features as Fibria’s VT02.

Although the Brazilian PVP law establishes that plant varieties should be identified based on morphological aspects of the plant (leaves, fruits, flowers, etc), to comply with minimal requirements of distinctiveness, homogeneity and stability, the current practice and guidelines of UPOV accept and even promote the use of modern molecular technologies that may provide high quality results within a less laborious short term, in comparison to traditional methods that may depend on the plant’s stage of growth and other conditions.

Having the technical report available, the judge shall issue a decision on this request for a precautionary measure. This is just the starting point of what it is considered a leading case on IP matters related to plant breeders’ rights in Brazil.

Not only the parties directly involved in this action are interested—the whole Brazilian IP community is engrossed in this case and is looking forward to following future developments.

This article first appeared in World Intellectual Property Review.