Patents, plant variety protection & the EU common catalogue of plant varieties: the BASF Italia case

A specialized section of the Court of Milan issued on 16 July 2015 a decison, which clearified the distinction between PVP & the EU common catalogue of plant varieties. The decision is briefly explained and commented below:

BASF Italia, licensee of two European patents (EP1126756 and EP1659855) related to technology Clearfield® rice planting system and owner of a plant variety called Pollux CL (which requires the use of the patented technology), sued Società Agricola Magnani alleging that it had infringed the patented technology and the right to use the variety.

The plant variety issue 

As shown in the Common Plant Variety Catalogue, the variety Pollux is registered only in Greece (to be noted that although BASF does not appear as the breeder, it might have stipulated a collaboration agreement with the breeder, known for his work on the Clearfield® technology in Italy). The variety was and is currently not registered in Italy although in 2010 BASF had supplied Pollux CL seeds to Magnani for experimental purposes. Magnani affirmed that the small quantity of Pollux seeds found on his holding in 2012 was a consequence of the experimental planting. On this basis, the Court applied art. 14 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights and exempted Magnani from liability.

The Court also clarified that Directive CE 53/2002 requires Member states to establish one or more catalogues of certified and commercialized plant varieties in their territories. The criteria of art. 4 of the Directive, distinctness, uniformity, stability,value for cultivation and use, differ from those required for PVP: novelty, distinctness, uniformity, stability. Moreover, the purpose of the directive is that of ensuring and facilitating the commercialization of plant varieties, while PVP aims at awarding breeders for their efforts in plant variety improvement and capturing rents.

In any case, Magnani would had not been liable since use of the variety was antecedent to the publication on the EU catalogue and to the national registration in Greece.

The Clearfield® patent issue

With respect to the alleged patent infringment, the Court determined that further investigations were necessary. Here it is to be noted that BASF had already authorized Magnani to use the technology in relation to another rice variety, Sirio, but it alleged that the application of the technology to Pollux CL infringed the Clearfield® patent.