In this bulletin we summarise 4 recent agribusiness developments involving different IP issues.

1. Summary

  • The products of essentially biological processes are not necessarily excluded from patentability under Art. 53(b) EPC
  • Equitable remuneration for use of farm-saved seed should be paid to the plant variety rights holder by the end of the marketing year in which the use is made
  • OHIM should consider the decisions of Community trade mark courts, if it is seized of a case that relates to the same marks between the same parties
  • Sanctions for failure to comply with the Nagoya Protocol come into force in the UK in October 2015

2. Tomato II, Broccoli II and Red Radish

The Enlarged Board of the EPO has recently considered the exception to patentability in Article 53(b) EPC for 'essentially biological processes for the production of plants'. In Tomato II (Case G2/12) and Broccoli II (G2/13) (heard together), a narrow construction was adopted whereby the product of such a biological process can still be patented, provided that it does not comprise a specific individual plant variety (as per the first part of Article 53(b)). In addition, the product must satisfy the usual requirements of novelty, inventiveness and a sufficient definition in the claims of the patent. We will be providing an extended article on this decision in due course.

On a related point, in Taste of Nature Holding v Cresco Producktie, The District Court of The Hague found Taste of Nature's red radish product-by-process patent invalid for lack of novelty. The patent describes a plant that can exclusively be bred by using an essential biological process. In an interim hearing the Court of Appeal had held that products obtained from an essential biological process were not necessarily excluded from patentability, but upon considering the merits in this case, the patent was nevertheless found invalid.

3. Farmer's Privilege

In STV v Gerhard Vogel & Ors the CJEU clarified the time period in which the farm saved seed derogation from the Community plant variety rights (also referred to as 'Farmer's Privilege') applies. Article 14 Council Regulation 2100/94 provides that farmers are entitled to use the product of their own harvest which they have obtained by planting protected varieties as seed for propagating purposes on their own holding (known as using ‘farm-saved seed’), without obtaining the authorisation of the right holder provided they pay the right holder equitable remuneration. The regulation is silent on the timing of such payments. The CJEU held that the payment should be made within a period beginning on the date on which the farmer actually planted the seed product of his harvest and expiring at the end of the marketing year in which that use took place. It follows a long line of cases seeking to clarify the obligations upon farmers to pay equitable remuneration for use of farm saved seed, at a level 'sensibly lower' than the certified royalty rate.

4. Apple and Pear Australia Ltd and Star Fruits Diffusion v OHIM, Carolus C. BVBA (Case T-378/13)

In the above trade mark case, the General Court of the European Union (Fourth Chamber) annulled but did not alter a decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) for failing to take into account a related judgment for infringement by a Community trade mark court. In its capacity as a Community trade mark court, the Tribunal de commerce de Bruxelles annulled the Benelux mark 'ENGLISH PINK' as confusingly similar to the word mark 'PINK LADY'. The Fourth Board of Appeal did not acknowledge the existence of this judgment when dismissing an appeal brought by the same opponents regarding the registration of 'ENGLISH PINK' as a Community trade mark. In failing to state reasons as to the inferences to be drawn from the judgment, the Fourth Board of Appeal had breached Article 75 of Regulation No. 207/2009 and the principle of sound administration. However, neither Regulation No. 44/2001 nor res judicata applied because the subject-matter and causes of action were not identical.

5. Nagoya Protocol Sanctions  

The Nagoya Protocol (Compliance) Regulations, SI 2015/821, comes into force in the UK on 12 October 2015 and set out the civil and criminal sanctions for failure to comply with the Nagoya Protocol.

The Protocol provides the enforcement mechanism for the Convention on Biological Diversity ("CBD") which aims to ensure that countries are permitted to control access to their natural resources and share in the benefits of their utilisation. It includes the requirement that a person that utilises genetic resources or associated traditional knowledge shall:

  • exercise due diligence to ascertain that such resources or knowledge have been accessed in accordance with applicable access and benefit-sharing legislation and that benefits are fairly and equitably shared upon mutually agreed terms, and to submit evidence of such due diligence at the final stage of development of any products developed.
  • keep for 20 years details of the source of the genetic resources and associated traditional knowledge and the benefit sharing agreements

Civil sanctions for non-compliance include a compliance notice, a stop notice or a variable unlimited monetary penalty. Failure to comply with a notice or obstruction of an inspector trying to ascertain compliance will result in criminal sanctions which carry a maximum of 2 years in prison and/or a fine of £5000. In addition, failure to keep the required records for 20 years may result in a fine of up to £5000.

The definition of 'genetic material' in the Protocol is "any material of plant, animal, microbial or other origin containing functional units of heredity". The Regulations will therefore inevitably cover a wide range of researchers in the UK and compliance may prove to be time consuming and costly and may result in research being moved out of the EU to countries where the CBD does not apply, such as the US.

The EU implementation of the Nagoya Protocol is currently subject to legal challenge at an EU level by 17 German plant breeding companies (Case T-559/14) and 16 Dutch companies (Case T-560/14).